POLYMIND | Decision 2723875
Date Published: Sep 28, 2017
OPPOSITION No B 2 723 875
Solvay Specialty Polymers USA, L.L.C., 4500 McGinnis Ferry Road, Alpharetta, Georgia 30005-3914, United States of America (opponent), represented by Stephanie Missotten, Solvay Société Anonyme, rue de Ransbeek, 310, 1120 Bruxelles, Belgium (professional representative)
a g a i n s t
Cabopol Polymer Compounds, S.A., Apartado 39, 2481 917 Porto de Mós, Portugal (applicant), represented by Francisco de Novaes, Av. Duque d'Ávila, 32-1º, 1000-141 Lisbon, Portugal (professional representative).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 875 is upheld for all the contested goods.
2. European Union trade mark application No 15 124 258 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 124 258. The opposition is based on European Union trade mark registration No 3 465 085. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 1: Unprocessed artificial and synthetic resins, unprocessed plastics.
Class 17: Semi-finished articles of plastic.
The contested goods are the following:
Class 1: Unprocessed plastics, namely thermoplastic compounds.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
The contested unprocessed plastics, namely thermoplastic compounds (reference is made to the interpretation of the term ‘namely’ given above) are included in the broad category of the opponent’s unprocessed plastics. Therefore, they are identical.
- Relevant public – degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at professionals with specific knowledge or expertise in chemical industry.
The relevant public will display a high degree of attention when purchasing the goods at issue, since they are highly specialised goods that imply a high degree of sophistication and professional knowledge on the part of the consumers.
- The signs
POLYMIST | POLYMIND |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish-speaking public for which neither of the signs as a whole has a meaning (which means that the best case scenario for the opponent is examined).
The signs under comparison are word marks, each of which is composed of one verbal element. The earlier mark consists of the word ‘POLYMIST’ and the contested sign consists of the word ‘POLYMIND’. As seen above, both words are meaningless for the part of the public on which the Opposition Division focuses its examination and are, therefore, distinctive to an average degree for the relevant goods.
The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
With respect to the present case, it can be reasonably assumed that professionals in chemical industry will discern the commonly used prefix ‘POLY’ included in both signs and will understand it as meaning ‘many, much’. This is also true because of the existence of a similar equivalent of this word in Spanish, ‘poli’. However, this association has no impact on the distinctiveness of the signs’ verbal elements, since there is no direct connection with any characteristic of the goods in question. In contrast, it cannot be denied that for a certain part of the professional public the word ‘POLY’ may allude to ‘polymer’ (polímero in Spanish), i.e. a chemical substance. Bearing in mind that the conflicting goods are unprocessed plastic materials in Class 1, this allusion renders the element weak, as it only indicates that the goods contain or are made of polymers or are to be used with polymers.
Consequently, for a part of the public, the signs under comparison have no elements that could be considered clearly more distinctive than other elements whereas for another part of the public, the word ‘POLY’ that the signs have in common, is weak in relation to the goods in question.
Each being composed of a single verbal element, neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in their initial letters/sounds ‘POLYMI**’. They are of the same length and composition, both being unitary word marks composed of eight letters, and have the same rhythm and intonation. However, the signs differ in their last two letters/sounds, ‘ST’ of the earlier mark and ‘ND’ of the contested sign.
It is important to note that the coinciding element is at the beginning of both signs. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Given that the signs have in common six out of eight letters/sounds in identical positions, and considering their identical beginnings and the impact of the weak element ‘POLY’ for a part of the public, the signs are visually and aurally similar to at least an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory on which the examination is focused in the present case, the element ‘POLY’, included in both signs, will be associated with the meanings explained above. To that extent, considering the impact of the weak element ‘POLY’ for a part of the public, the signs are conceptually similar to at least a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant goods from the perspective of the Spanish-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for part of the public as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account must be also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The present assessment of likelihood of confusion considers the perception of the Spanish-speaking part of the public in the relevant territory. The relevant public consists of professionals, the degree of attention is high and the earlier mark has a normal degree of inherent distinctiveness.
As concluded above, the contested goods are identical to the opponent’s goods.
The signs in conflict are visually and aurally similar to at least an average degree and conceptually similar to at least a low degree, as explained in detail above in section c) of this decision. The differences between the signs are limited only to their last two letters/sounds. However, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar visual and aural impressions given by the signs when being perceived by the public as a whole. Even the professionals with a high degree of attention may be confused as to the origin of the goods in question.
Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 465 085. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested sign must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Alexandra APOSTOLAKIS | Martin MITURA | Vít MAHELKA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.