Polysil Coatings | Decision 2646506
Date Published: Sep 25, 2017
OPPOSITION No B 2 646 506
Pirelli & C. S.p.A., Viale Piero E Alberto Pirelli, 25, 20126 Milano, Italy (opponent), represented by Wirsing Hass Zoller, Maximilianstr. 35, 80539 München, Germany (professional representative)
a g a i n s t
Advanced Adhesive Coatings Technology AG, Flughofstrasse 52, 8152 Glattbrugg, Switzerland (applicant), represented by Schultheiss & Sterzel Patentanwälte PartG mbB, Berner Strasse 52, 60437 Frankfurt, Germany (professional representative).
On 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 646 506 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 717 871, namely the goods in Classes 1 and 2 and services in Class 37. The opposition is based on European Union trade mark registrations No 10 449 098 and No 9 483 389, both registered for goods in Classes 1-34 and services in Classes 35-45. The opponent invoked both Article 8(1)(b) and Article 8(5) EUTMR but then limited the ground to this latter.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
• The signs must be either identical or similar.
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs
EUTM 10 449 098 EUTM 9 483 389 | |
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).
Earlier EUTM No 10 449 098 is a figurative sign composed of a device element that could be seen, at least by part of the relevant public, as a highly stylised letter ‘P’ in black. Its upper element is elongated. Both, the footing of the letter and its right-side upper element, are bold, whereas the middle horizontal parts are thin. The upper element on the right side is visibly rounded.
Earlier EUTM No 9 483 389 is a figurative sign composed of the word ‘PIRELLI’ depicted in black, bold upper case letters. It contains the letter ‘P’, stylised as described above, which is its first character. The remaining letters, that is, ‘IRELLI’ are placed beneath the elongated element of the letter ‘P’.
The contested sign is a figurative sign made up of two words, ‘POLYSIL’ and ‘Coatings’. The first letter ‘P’ is highly stylised, as its upper part is elongated. It is thin and has orthogonal shape. Furthermore, there is a gap between its footing and the elongated upper part of the letter. The rest of the letters (i.e. ‘OLYSIL’) appears below the elongated upper part of the letter ‘P’. The letter ‘O’ is stylised by means of two gaps in the middle. Beneath the word ‘POLYSIL’ there are two elements, namely a line which starts at the letter ‘P’ and ends at the letter ‘Y’, and the verbal element ‘Coatings’, which appears below the letters ‘SIL’. The letters ‘P*LYSIL’ are depicted in dark grey, the letter ‘O’ of the word ‘POLYSIL’ and the line described above are depicted in green, and the word ‘Coatings’ in bright grey.
Neither of the earlier marks has a meaning for the relevant public.
With regard to the contested sign, the verbal element ‘POLYSIL’ itself has no meaning and is distinctive even if it might be associated by part of the public with some words that start with ‘polysil’, for example ‘polysiloxane’ (i.e. ‘a polymer composed of silicon and oxygen atoms’, information extracted from Collins Dictionary on 29/06/2017 at www.collinsdictionary.com/dictionary/english/polysiloxane), ‘polysilicic acid’ (i.e. ‘any one of a series of acids formed by the condensation of two or more molecules of silicic acid, with elimination of water’, information extracted from The Free Dictionary on 29/06/2017 at www.thefreedictionary.com/Polysilicic+acid) or ‘polysilicon’ (i.e. ‘a polycrystalline form of silicon used especially in electronic devices’, information extracted from Merriam Webster Dictionary on 29/06/2017 at www.merriam-webster.com/dictionary/polysilicon). The word ‘coatings’ (which is a plural form of ‘coating’) will be understood by part of the public, namely by those who speak English, as ‘a layer or film spread over a surface for protection or decoration’, information extracted from Collins Dictionary on 29/06/2017 at www.collinsdictionary.com/dictionary/english/coating).
The earlier marks have no elements that could be considered clearly more dominant than other elements.
The element ‘POLYSIL’ in the contested sign is the dominant element as it is the most eye-catching.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs coincide merely in the letter ‘P’. However, it is depicted in a different manner in the marks under comparison. As explained above, the letter ‘P’ in the earlier marks is rather bold and its upper element is rounded, whereas the letter ‘P’ in the contested sign is thin and has an orthogonal shape. The marks differ in the rest of the letters of the contested mark, namely ‘*OLYSIL COATINGS’, and, as regards earlier EUTM No 9 483 389, in the letters ‘*IRELLI’ of that mark. The number of letters, the compositions and the stylisations of the signs are different. Earlier EUTM No 10 449 098 contains only one letter, earlier mark No 9 483 389 is composed of one word, whereas the contested sign is a complex composite sign made up of two words and several graphical elements.
As the signs only coincide in irrelevant aspects, it is concluded that the signs are not visually similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the letter ‘P’, present identically in the signs under comparison. They differ in the rest of the letters of the contested mark, namely ‘*OLYSIL COATINGS’, and, as regards earlier EUTM No 9 483 389, in the letters ‘*IRELLI’ of that mark.
As the signs coincide aurally only in irrelevant aspects, it is concluded that the signs are not aurally similar.
Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the contested sign, as explained above, the other signs have no meaning in that territory. Since the earlier marks will not be associated with any meaning, the signs are not conceptually similar.
As the signs merely coincide in irrelevant aspects, they are dissimilar.
The opponent refers to previous decisions of the Office to support its arguments (i.e. 06/08/2016, 8973 C, Ts.Project and 23/01/2015, 8803 C, P). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as the factual circumstances are different. Each of the cases cited by the opponent involves different marks, where different verbal and figurative elements weighted in favour of the conclusion of likelihood of confusion. As the present case is different, this claim has to be set aside.
Furthermore, the opponent claims that the words used in the contested sign are descriptive. The Opposition Division is of the opinion that the word ‘Coatings’ can be descriptive with regard to the goods and services in question. However, as far as the dominant verbal element of the contested sign is concerned, that is, ‘POLYSIL’, an interpretative step would be required in order to associate this verbal element with the meanings given above. In addition, it should be noted that the aforesaid definitions concern different objects and their characteristics. Therefore, the opponent’s argument has to be set aside.
- Conclusion
As seen above, identity/similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected insofar it is based on Article 8(5) EUTMR, and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C 552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Natascha GALPERIN | Michal KRUK | Jessica LEWIS |
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.