Fap RESINE | Decision 2478793
DECORS DE FERRYVILLE
Fap Resine S.r.l.
OPPOSITION DIVISION
OPPOSITION No B 2 478 793
Decors de Ferryville, Société par Actions Simplifiée, RD 2007 (ex RN7) – KM 26,
45700 Mormant-Sur-Vernisson, France
(opponent), represented by
Marks & Clerk
France, Immeuble &Visium& 22, avenue Aristide Briand, 94117 Arcueil Cedex, France
(professional representative)
a g a i n s t
Fap Resine S.r.l., Via Sostegno 78/A, 25124 Brescia, Italy (applicant), represented
Piacentini,
Modigliani
(professional
representative).
On 26/10/2017, the Opposition Division takes the following
1. Opposition
No B 2 478 793
contested goods:
Class 1: Waterproofing preparations [chemical]; water repellents [chemical];
chemical preparations having conductive pr acrylic
conductive
hydrocarbon polyamide
urea-formaldehyde r
fluorinated
polyethylene
artificial
polyvinylidene
[semi-finished];
unsaturated
polypropylene
polystyrene
polyacetal
co-polyester
thermoplastic resin
synthetic resin
artificial and
unprocessed
[semi-processed
synthetic];
unprocessed
[unprocessed]; thermoplastic resins [unprocessed]; artificial resins
[unprocessed];
[unprocessed]
artificial
unprocessed
fluoropolymer
ultraviolet
unprocessed
artificial
unprocessed
artificial
unprocessed
unprocessed
artificial
unprocessed
polypropylene
ion-exchange
preparation]; ion exchange
resists of light sensitive r
synthetic resins [semi-processed]fo mouldable
synthetic resins [unprocessed]; polyethylene resins [unprocessed];
thermoplastic
unprocessed
photosensitive
expanded synthetic resins [unprocessed]; unprocessed propionate
unprocessed polybutylene
unprocessed polysulfone
unprocessed
polycarbonate
unprocessed
polybenzimidazol
unprocessed
unprocessed
Decision on Opposition No B 2 478 793 page: 2 of 14
polyarylate
[unprocessed];
foams made from synthetic
raw synthetic resins in the form
raw synthetic resins in the form of
synthetic resins
unprocessed
artificial
formaldehyde resins [unprocessed]; rust preventive resins of high
r unprocessed
polyvinyl alcohol
unprocessed
styrene acrylonitrile
unprocessed polyphenylene oxide
unprocessed polymethyl
methacrylate
unprocessed
polybutylene
terephthalate
polyvinyl chloride resins [unprocessed]; synthetic resins in
the form of ion- synthetic resin plastics [unprocessed];
unsaturated polyester resin based
urethane modified co-
polyester resins [unprocessed]; raw [unprocessed] artificial resins
unprocessed
polyphenylene
unprocessed polyethylene terephthalate
unprocessed diallyl
isophthalate
unprocessed
acrylonitrile
synthetic resins for use in glass fibre reinforced
synthetic resins for powder coatings in industrial
exchange resins for use in water
synthetic resins for use
in glass fibre reinforced
liquid photosensitive resin for
the fabrication of three-dimensiona synthetic resins for use
[unprocessed] for use in
artificial resins for use in the
printing ink
synthetic resins for use in the manufacture of
unprocessed
artificial
processing
synthetic resin compositions [unprocessed] for industrial
preparations
unsaturated polyester resins [unprocessed]; charged resins for the
manufacture of casing of electrical
synthetic resins in the
form of solvents for use as
synthetic resins for use in the
manufacture of plastic molding
adhesive compositions
(unprocessed -) for use as additives to
synthetic resins for
use in the manufacture of blast cleaning
synthetic resin
compounds in the form of microspheres used to incorporate various
unprocessed artificial resins as raw materials in
the form of powders, liquids or
mixtures of resin and filler
for use as an adhesive [other than for stationery or household use];
unprocessed artificial ion exchange resins for treating water used in
adhesi tanning substances.
Class 17: Thermosetting
[semi-processed];
semi-worked
(insulating
[semi-worked];
resins (artificial -) [semi-finished products]; resins (artificial -) [semi-
products];
[semi-processed];
repair resins (synthetic
[semi-finished products];
(artificial
[semi-finished
products];
resins [semi-finished]; resins in liquid form [semi-processed]; semi-
processed synthetic polymer
resins for use in
unsaturated polyester resins [semi-finished]; insulatory coatings of
(artificial
[semi-finished
products];
formaldehyde resins [semi-worked]; polyvinyl chloride resins [semi-
processed];
unsaturated
Decision on Opposition No B 2 478 793 page: 3 of 14
processed]; semi-finished polyamide resins for use in
unsaturated synthetic polyester resins [semi-finished]; semi-worked
polymer resins in the form of
semi-worked polymer resins in
the form of
glass reinforced resins [semi-worked or semi-
finished]; semi-worked polymer resins in the form of
semi-finished
semi-finished
resins in the form
polymer resin fibres [other than for use
in textiles]; resins for use in controlling the viscosity of
impregnated
impregnated with synthetic resins for insu resins in extruded
form for general industrial
synthetic resin compositions [semi-
processed] for industrial
transparent acrylic resin sheets
incorporating conductive
synthetic resins in rod form for
resins for use in forming a hardened skin on
mixtures of resins with fillers for use as
resins for
controlling
properties
forming a hardened skin on
carbon fibre reinforced synthetic
impregnated
fibreglass
resins for use in forming a dust proof skin on
weatherstripping
plastics in extruded form for use in manufacture.
Class 19: Finish
artificial
waterproof
materials (non-
metallic);
non-metallic
rigid pipes for
and asphalt.
2. European Union trade mark application No 13 404 603
is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
Regulation
(codification),
Regulation
Implementing
Regulation
transitional
provisions.
references
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods of European Union trade mark
application
No 13 404 603
opposition
registration
No 8 817 892 ‘RESINEA’.
invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 478 793 page: 4 of 14
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
or services in
question, under
the assumption that they bear the marks in
undertaking
economically linked undertakings. Whether a likelihood of confusion exists depends
appreciation
assessment
interdependent. These factors include the similarity of the signs, the similarity of the
distinctiveness
distinctive
dominant elements of the conflicting signs, and the relevant public.
a) The goods
The goods on which the opposition is based are the following:
Class 17: Artificial resins (semi-finished products) except plastic film.
Class 19: Linings (buildings, not of metal) and materials (buildings, not of metal)
except plastic film.
The contested goods are the following:
Class 1: Chemicals
waterproofing
preparations
[chemical];
repellents
[chemical];
purification
industrial organic
preparations
antistatic
preparations
conductive propert chemical products for preventing
chemical products for
preserving products during
chemical preparations for the binding of liquid
chemical preparations for use in the food
chemical substances for preserving foodstuffs; chemicals used in in chemical
preparations
conductive
hydrocarbon
urea-formaldehyde
fluorinated
polyethylene
artificial
artificial r polyester r polyurethane resins; polyvinylidene chloride
chemical resins [semi-finished]; unsaturated polyester
polypropylene
polystyrene
polyacetal
co-polyester
emulsifiers
precursors
artificial
thermoplastic resin for use in m synthetic resin
artificial and synthetic
unprocessed r additives (chemical -) for use in
charged resins
[semi-processed
synthetic];
unprocessed
[unprocessed];
thermoplastic
[unprocessed];
artificial
[unprocessed];
[unprocessed]
artificial
unprocessed
fluoropolymer
ultraviolet
unprocessed
artificial
unprocessed
artificial
metal exchange
polyvinyl acetate
unprocessed casein
epoxy resins,
unprocessed artificial
resins for use in the
unprocessed synthetic polypropylene
synthetic resins for
ion-exchange resins [chemical preparation]; ion exchange
[semi-processed]for
[unprocessed];
polyethylene
[unprocessed]; thermoplastic resin for use in unprocessed packaging
Decision on Opposition No B 2 478 793 page: 5 of 14
photosensitive
[unprocessed];
unprocessed
propionate
unprocessed
polybutylene
unprocessed
polysulfone
unprocessed
polycarbonate
unprocessed
polybenzimidazol resi unprocessed furan
unprocessed polyarylate resins;
artificial
[unprocessed];
flexibilizers
artificial
unprocessed
artificial
formaldehyde resins [unprocessed]; rust preventive resins of high friction
raw synthetic resins
adhesive compounds
photoinitiators for
the polymerization of
artificial
solvents for
washing out li unprocessed poly unprocessed
styrene acrylonitrile
unprocessed polyphenylene oxide
unprocessed
polymethyl
methacrylate
unprocessed
polybutylene
terephthalate
chemical compounds for the manufacture of artificial r chemical compounds for
the manufacture of artificial
polyvinyl chloride resins [unprocessed]; synthetic
[unprocessed];
unsaturated
manufacture
polyurethane
co-polyester
[unprocessed]; raw [unprocessed] artificial resins for use in
unprocessed
polyphenylene
unprocessed
polyethylene
terephthalate
unprocessed diallyl isophthalate
unprocessed acrylonitrile butadiene styrene
synthetic resins for use in glass fibre reinforced
synthetic resins
for powder coatings in industrial
ion exchange resins for use in water
reinforced
photosensitive resin for the fabrication of three-dimensional
fire absorbent
chemicals for use in the manufacture of fire retardant
synthetic resins for use
in the treatment of surfaces of
synthetic resins [unprocessed] for use in
artificial resins for use in the printing ink
synthetic resins for
manufacture
unprocessed
artificial
processing
compositions
[unprocessed]
industrial
preparations
laminating
unsaturated
[unprocessed]; charged resins for the manufacture of casing of electrical w
synthetic resins in the form of solvents for use as
fire absorbent chemicals
for use in the manufacture of fire retardant
synthetic resins for use in the
manufacture of plastic molding co adhesive compositions with a base of
epoxy resins for use in
acrylic resins (unprocessed -) for use as additives to
manufacture
synthetic resin compounds in the form of microspheres used to incorporate various
unprocessed
artificial
resins for rock
enzymes for removing resins from pulp in the paper
fabrication
mixtures of resin and filler for use as an adhesive [other than for
stationery or household use]; unprocessed artificial ion exchange resins for treating
water used in power
adhesives used
tanning fire
extinguishing compositions.
Class 17: Thermosetting resins [semi-processed]; semi-worked polymer
(insulating
[semi-worked];
(artificial
finished products]; resins
(artificial -) [semi-finished
products];
[semi-processed];
(synthetic
[semi-finished
products];
(artificial
[semi-finished
products];
[semi-finished];
[semi-processed];
semi-processed
resins for use in cable
unsaturated polyester resins [semi-
Decision on Opposition No B 2 478 793 page: 6 of 14
finished];
insulatory
(artificial
[semi-finished
products]; urea-formaldehyde resins [semi-worked]; polyvinyl chloride resins [semi-
processed]; expanded unsaturated polyester resins [semi-processed]; semi-finished
unsaturated
[semi-finished];
semi-worked
semi-worked
polymer resins in the form of
glass reinforced resins [semi-worked or semi-
finished]; semi-worked polymer resins in the form of
semi-worked polymer
resins in the form of
semi-finished polyamide resins in the form of
semi-finished polyamide resins in the form of
polymer resin fibres [other than
textiles];
controlling
impregnated with synthetic resins for use in manufact fibres impregnated with
industrial
synthetic resin compositions [semi-processed]
industrial
transparent
acrylic resin sheets incorporating conductive synthetic resins in rod form for
use in manuf synthetic resins in sheet form for use in
resins for
use in forming a hardened skin on
mixtures of resins with fillers for use as
resins for use in controlling the flow properties of
resins for use
in forming a hardened skin on
carbon fibre reinforced synthetic resins for use
impregnated
fibreglass
synthetic resin coatings for the surface
resins for use in forming a dust proof
resins for use in forming a dust proof skin on f gutta-
weatherstripping com
flexible pipes, not of
in extruded form fo asbestos.
Class 19: Finish plasters made of coloured artificial
building boards made
from wood and waterproof building materials (non-metallic); non-metallic rigid
non-metallic
transportable
monuments, not of metal.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 1
The contested
waterproofing preparations [chemical]
(e.g. waterproof resin); water
repellents
[chemical]
water-repellent
coatings);
preparations
conductive
conductive
hydrocarbon
urea-formaldehyde
fluorinated
polyethylene epoxy
artificial
artificial
polyester r polyurethane
polyvinylidene
[semi-finished];
unsaturated
polypropylene
polystyrene
polyacetal
co-polyester
thermoplastic resin for use in m synthetic resin
artificial and synthetic
unprocessed
charged resins [semi-processed synthetic]; unprocessed
[unprocessed];
thermoplastic
[unprocessed]; artificial resins for use
urea resins [unprocessed]; raw
[unprocessed] artificial
unprocessed fluoropolymer
polyvinyl chloride
ultraviolet curable
unprocessed artificial
unprocessed artificial
Decision on Opposition No B 2 478 793 page: 7 of 14
epoxy resins,
metal exchange
polyvinyl acetate
unprocessed casein
epoxy resins, unprocessed artificial
resins for use in the printing
unprocessed synthetic polypropylene
synthetic resins for use ion-exchange resins [chemical preparation]; ion
resists of light sensitive
synthetic resins [semi-processed]for
mouldable synthetic resins [unprocessed]; polyethylene resins
[unprocessed]; thermoplastic resin for use in unprocessed packaging
photosensitive
[unprocessed];
unprocessed
propionate
unprocessed
polybutylene
unprocessed
polysulfone
unprocessed
polycarbonate
unprocessed
polybenzimidazol resi unprocessed furan
unprocessed polyarylate resins;
resins in liquid form [unprocessed]; syntactic foams made from synthetic
synthetic resins in
unprocessed
artificial
formaldehyde resins [unprocessed]; rust preventive resins of high friction
raw synthetic resins
adhesive compounds
unprocessed polyvinyl alcohol
unprocessed styrene acrylonitrile
unprocessed
polyphenylene
unprocessed
polymethyl
unprocessed
polybutylene
[unprocessed];
synthetic resin plastics [unprocessed]; unsaturated polyester resin based
co-polyester
[unprocessed];
[unprocessed]
artificial
resins for use in
unprocessed polyphenylene sulfide
unprocessed
polyethylene
terephthalate
unprocessed
isophthalate
unprocessed acrylonitrile butadiene styrene
synthetic resins for use in glass
reinforced
industrial
ion exchange resins for use in water
synthetic resins for use
in glass fibre reinforced
liquid photosensitive resin for the fabrication of
three-dimensional m synthetic resins for use in the treatment of surfaces of
synthetic resins [unprocessed] for use in
artificial resins for
use in the printing
synthetic resins for use in the manufacture of molding
unprocessed artificial resins
for processing
synthetic resin
compositions [unprocessed] for industrial
epoxy resin based preparations
laminating
unsaturated polyester resins [unprocessed]; charged resins for the manufacture of
electrical
synthetic resins for use in the manufacture of plastic molding
adhesive compositions with a base of epoxy resins for use in
acrylic resins
(unprocessed
manufacture of blast cleaning
synthetic resin compounds in the form of
microspheres used to
incorporate various other
unprocessed artificial
resins as raw materials in the form of powders, liquids or
mixtures of resin
stationery
unprocessed
artificial
adhesives used in industry
(e.g. synthetic resin
for industrial
purposes); tanning substances (which could be resins) are (or could be) resins and
resin-based preparations which are unprocessed or semi-finished products. These
share the inherent purpose of the opponent’s artificial resins (semi-finished products)
except plastic film in Class 17, such as to waterproof, to isolate, to serve for surface
resin-based
Furthermore, they can
be produced by
same producer.
These are,
therefore,
considered to be similar to a low degree.
chlorinated
Decision on Opposition No B 2 478 793 page: 8 of 14
purification
industrial
preparations
antistatic
chemical products for preventing
chemical products for
preserving products during
chemical preparations for the binding of liquid
chemical preparations for use in the food
chemical substances for preserving foodstuffs; chemicals used in in chemical
preparations for use as
emulsifiers for
catalysts for synthetic
precursors
artificial
fire retardant additives for
additives (chemical -) for use in
and liquid diluents for artificial
flexibilizers for artificial
photoinitiators
polymerization
artificial
manufacture
artificial
manufacture
artificial
manufacture
polyurethane
manufacture
manufacture
synthetic resins for rock enzymes for removing resins from pulp in the
fabrication
extinguishing
compositions
ingredients for final
products, or they are semi-finished products used in different
industries. Even though some of them are ingredients to be used in the production of
resins or are meant to be used on resins (e.g.
emulsifiers for resins, enzymes for
removing resins from pulp in the paper fabrication industry), this is not enough to find
similarity
opponent’s
semi-finished
building materials
comparison do not have the same
ingredients
unfinished
semi-finished
products with a purpose clearly different (e.g. fire extinguishing) than the opponent’s
goods. Furthermore, they are not in competition, nor complementary, even when one
is the ingredient of the other, as the raw material is in general intended for use in
comparison
distribution
usually target a different public. These are, therefore, considered to be dissimilar.
Contested goods in Class 17
The contested
thermosetting resins [semi-processed]; semi-worked polymer
(insulating
[semi-worked];
(artificial
finished products]; resins
(artificial -) [semi-finished
products];
[semi-processed];
(synthetic
[semi-finished
products];
(artificial
[semi-finished
products];
[semi-finished];
[semi-processed];
semi-processed
resins for use in cable
unsaturated polyester resins [semi-
finished]; resins (artificial -) [semi-finished products]; urea-formaldehyde resins [semi-
worked]; polyvinyl chloride resins [semi-processed]; expanded unsaturated polyester
[semi-processed];
semi-finished
unsaturated synthetic polyester resins [semi-finished]; semi-worked polymer resins in
the form of semi-worked polymer resins in the form of
glass reinforced
[semi-worked or semi-finished];
semi-worked polymer
resins in the
semi-worked polymer resins in the form
semi-finished polyamide
resins in the form of
semi-finished polyamide resins in the form of
polymer resin fibres [other than for use in textiles]; resins for use in controlling the
viscosity of
resins in extruded form for general industrial
synthetic resin
compositions
[semi-processed]
industrial
transparent
incorporating
conductive
synthetic resins in sheet form for use in
resins for use in
forming a hardened skin on
resins for use in controlling the flow properties
Decision on Opposition No B 2 478 793 page: 9 of 14
resins for use in forming a hardened skin on
carbon fibre reinforced
synthetic resins for use in
resins for use in forming a dust proof skin on
resins for use in forming a dust proof skin on flooring are a variety of resins in
different forms. These are
to the opponent’s
artificial resins (semi-finished
products) except plastic film, either because they are identically contained in both
lists (including synonyms) or because the opponent’s goods include, are included in,
or overlap with, the contested goods.
The contested insulatory coatings of plastic
fibres impregnated with synthetic
resins for
tapes of epoxy impregnated fibreglass for
weatherstripping
insulating
materials, or materials that in general are used in construction. They share the nature
and purpose with the opponent’s materials (buildings, not of metal) except plastic film
distribution
manufactured
undertakings. These are, therefore, considered to be similar to a high degree.
impregnated
mixtures of resins with fillers for use as intermediates are semi-processed materials
opponent’s
artificial
(semi-finished
(which are often used for insulation purposes and are also semi-processed products)
constitute a major component and/or give the characteristics of the contested goods.
The goods in comparison can also share the purpose of insulating and/or sealing.
Furthermore, they can coincide in end user and distribution channels and their usual
origin. It follows that these are similar.
The contested
plastics in
extruded form for use in manufacture
semi-worked
substances,
opponent’s
artificial
(semi-finished
semi-finished
products and could be directed for use in manufacture. The goods in comparison
also share the same distribution channels and relevant public. These are, therefore,
considered to be similar.
same, however,
does not apply to the contested
unprocessed
materials,
elastomers
mineral fibers. Even though, some of them could be used for isolation purposes, this
is not enough for finding similarity with the opponent’s goods. The contested goods
usually need to be further processed in order to find their industrial application. The
comparison
different nature
method of use.
complementary,
competition
distribution
channels. It follows that the contested goods are dissimilar to the opponent’s goods
in Classes 17 and 19.
Contested goods in Class 19
The contested
building materials (non-metallic)
include, as a broader
opponent’s
(buildings,
Opposition Division
ex officio
goods, they are considered identical to the opponent’s goods.
The contested finish plasters made of coloured artificial
building boards made
from wood and waterproof non-metallic rigid pipes for building are included in
the broader
category of
the opponent’s
materials (buildings, not
of metal) except
plastic film. These are, therefore, considered identical.
Decision on Opposition No B 2 478 793 page: 10 of 14
The contested
pitch, tar, bitumen and asphalt
are unprocessed or semi-processed
materials, which share a similar purpose with the opponent’s materials (buildings, not
construction
Furthermore, these goods are also used at the same or similar industrial level and
target the same public (in the construction sector). In view of this, it is very likely that
the distribution channels will be the same. These are, therefore, considered similar to
a low degree.
non-metallic
transportable
prefabricated,
finished products that can easily be dismantled, reassembled and transported from
one location to another. They may include trade-show booths and model houses that
transported
exhibitions
installation.
goods may contain materials included in the opponent’s list of goods, a connection
sufficiently close for a finding of similarity cannot be established. The purpose of a
transportable building as a finished product and the purpose of the resins and the
building materials (required for constructing buildings) are clearly different, as are the
transportable
generally do not produce the building materials required to make them (or the resin
products used in them) and, therefore, will not assume that the finished building and
components
commercial
therefore considered dissimilar to the opponent’s goods in Classes 17 and 19.
The contested monuments, not of metal are different from all of the opponent’s goods
competition with or complementary to each other. The mere fact that some of the
building materials for which the earlier mark is registered may form part of various
monuments is not sufficient for a finding of similarity between them. Therefore, the
contested goods are dissimilar to the opponent’s goods in Classes 17 and 19.
b) Relevant public — degree of attention
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 or similar to different degrees are
professional knowledge or expertise, such as the ones working in the construction
The public’s degree of attentiveness may vary from average to higher than
average, depending on the price, sophistication, and the frequency of purchase of
the goods.
c) The signs
Earlier trade mark Contested sign
Decision on Opposition No B 2 478 793 page: 11 of 14
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:, § 23).
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
(18/09/2008,
C-514/06 P,
EU:C:2008:511,
Therefore,
likelihood
relevant public of the European Union is sufficient to reject the contested application.
The elements ‘RESINEA’ of the earlier mark and ‘RESINE’ of the contested sign do
particular
Bulgarian-,
Hungarian-
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on these parts of the relevant public.
earlier mark is a word
mark, consisting
of the sole
element ‘RESINEA’. The
particular
therefore, distinctive.
The contested sign is a figurative sign, consisting of the element ‘fap’, written in black
bold lower-case, rather standard letters, followed by the element ‘RESINE’, written in
black bold and rather standard upper-case letters, in which the letter ‘I’ is depicted
with a black bold ring above it. The elements ‘fap’ and ‘RESINE’ have no particular
meaning for the relevant parts of the public and are, therefore, distinctive. The ring
above the letter ‘I’ is a pure geometrical form and it is decorating and complementing
the letter ‘I’, therefore its distinctiveness is limited.
The element ‘RESINE’ in the contested sign is the dominant element as it is the most
eye-catching due to its larger size (and the use of capital letters) in comparison to the
other verbal element ‘fap’.
Following from the above, conceptually, neither of the signs has a meaning for the
conceptual
comparison
conceptual aspect does not influence the assessment of the similarity of the signs.
Visually, the signs coincide in the sequence of letters ‘RESINE’, forming the first six
out of seven letters in the earlier mark and all the letters of the element ‘RESINE’ of
the contested sign. The signs differ in the last letter ‘A’ of the earlier mark and the
element ‘fap’ of the contested sign, as well as in the additional ring above the letter ‘I’
conclusion
distinctiveness of the elements of the signs.
Bearing in mind that the signs coincide in almost all the letters of the earlier mark,
forming the entire second verbal and dominant element of the contested sign, the
signs are considered visually similar to an average degree.
Decision on Opposition No B 2 478 793 page: 12 of 14
the pronunciation of the signs coincides in the sound of the sequence of
letters ‘RESINE’, forming the first six out of seven letters in the earlier mark and all
the letters of the element ‘RESINE’ of the contested sign. The pronunciation differs in
the sound of the last letter ‘A’ of the earlier mark and the sound of the element ‘fap’ of
conclusion
distinctiveness of the elements of the signs.
Bearing in mind that the signs coincide in the sounds of almost all the letters of the
earlier mark, forming the entire second verbal and dominant element of the contested
sign, the signs are considered aurally similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 goods in question from the perspective of the relevant parts of
the public in the relevant territory. Therefore, the distinctiveness of the earlier mark
must be seen as normal.
e) Global assessment, other arguments and conclusion
identical,
partly similar to various degrees and partly dissimilar to the goods of the earlier mark.
choosing the relevant goods.
likelihood
situations
themselves,
connection
conflicting
goods/services covered are from the same or economically linked undertakings.
Furthermore,
considered
distinctiveness for the relevant parts of the public. It has also been established above
coincidences in the sequence ‘RESINE’ forming the first six out of seven letters in the
contested sign. Therefore the earlier mark ‘RESINEA’ and the element ‘RESINE’ of
the contested sign differ only in the last letter ‘A’ of the earlier mark, which being
conspicuous
difference that would not be so readily perceivable by the relevant parts of the public.
Therefore, due to the shared sequence, present as separate, recognizable element
in the contested sign, it is likely that the relevant public may consider the contested
sign as a new line of goods marked with the opponent’s sign and configured in a
Decision on Opposition No B 2 478 793 page: 13 of 14
different way.
The particular depiction of the element ‘RESINE’ (separated from the
differing element ‘fap’ and depicted with larger letters) favours such a conclusion, as
it makes the element clearly perceptible on its own and not only as part of a letter
Taking into account the visual and aural similarity between the signs, as explained
above, it is concluded that the relevant parts of the public may believe that the goods
found to be
and similar, including to
a low degree
come from the
undertaking or economically linked undertakings even when the level of attention is
higher than average.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Bulgarian-, Greek- and Hungarian–speaking parts of the
opposition
opponent’s European Union trade mark registration. As stated above in section c) of
likelihood of
European Union is sufficient to reject the contested application.
It follows from
the above that
contested trade
mark must be rejected for
goods found to be identical or similar, including to a low degree to those of the earlier
trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
Article 109(3)
Opposition
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Irina SOTIROVA Irina SOTIROVA Loreto URRACA LUQUE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
Decision on Opposition No B 2 478 793 page: 14 of 14
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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.}