life | Decision 2157504 - Henkel AG & Co. KGaA v. Super-Pharm (Israel) Ltd.
Date Published: Oct 10, 2017
OPPOSITION No B 2 157 504
Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)
a g a i n s t
Super-Pharm (Israel) Ltd., Super-Pharm Building, 16 Shenkar Street, Corner of Hachoshlim, Herzlia Pituach 46725, Israel (applicant), represented by Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa, Al. Jana Pawła II 70/36, 00-175 Warszawa, Poland (professional representative).
On 10/03/2017, the Opposition Division takes the following
1. Opposition No B 2 157 504 is upheld for all the contested goods, namely
Class 3: Soaps; Perfumes; Scented essential oils; Cosmetics; Hair lotions; Dentifrices.
2. European Union trade mark application No 11 334 588 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against some of the goods of European Union trade mark application No 11 334 588, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 984 245. The opponent invoked Article 8(1)(b) CTMR.
On 19/02/2014 the Opposition Division rendered a decision which resulted in partial refusal of the contested trade mark in respect of class 3 goods.
The decision was appealed and the Board of Appeal decided in case R 1072/2014--2 on 20/11/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution.
The Board considered that taking into account that on 20/05/2015 the Cancellation Division rendered a decision No 9 242 C, which has become final and in which it partially revoked CTM registration No 984 245 for soaps, perfumery, namely deodorants for personal use, cosmetics, preparations for cleaning and perming hair in Class 3, the earlier CTM No 984 245 only covers, for the purpose of the present proceedings preparations for treating, dyeing, colouring, bleaching and styling hair in Class 3.
Furthermore, taking into account that the decision of the Opposition Division rejected the trade mark applied for in large part based on similarity of the contested goods with the opponent’s cosmetics, which the earlier mark no longer covers, the Opposition Division should carry out an overall assessment of the likelihood of confusion between the earlier mark covering now only preparations for treating, dyeing, colouring, bleaching and styling hair in Class 3 and the contested mark covering soaps, perfumes, scented essential oils, cosmetics, hair lotions, dentifrices in Class 3.
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 3: Preparations for treating, dyeing, colouring, bleaching and styling of hair.
The contested goods are the following:
Class 3: Soaps; Perfumes; Scented essential oils; Cosmetics; Hair lotions; Dentifrices.
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 3
The contested cosmetics is a broad category of beauty preparations which also includes products such as shampoos, hair balms and conditioners and, as such, overlaps with the opponent’s preparations for treating of hair. They are considered identical.
Similarly, the contested hair lotions overlap with the opponent’s preparations for treating of hair. They are considered identical.
The contested soaps; perfumes; scented essential oils are similar to the opponent’s preparations for treating of hair. Although these goods have different natures and purposes, they share distribution channels and are directed at the same consumers. Moreover, they are often produced by the same manufacturers.
The contested dentifrices are similar to a low degree to the opponent’s preparations for treating of hair which include shampoos. Although they have different natures, they have the same purpose, i.e. to clean (hair vs. teeth). Moreover, they share distribution channels and can have the same consumers.
- 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 or similar to various degrees are directed at the public at large. The degree of attention will be average.
- The signs
Earlier trade mark
The relevant territory is 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 earlier mark is a word mark. In the case of word marks, it is the word that is protected, not its written form. As a word mark, it has no dominant elements.
The contested sign is a figurative mark containing a word element in a fairly standard white typeface on a black oval background.
For those who understand at least basic English, both words ‘LIVE’ and ‘LIFE’ have meanings:
LIVE – refers to something or someone being/remaining alive; showing characteristics of life;
LIFE – refers to the existence of a human being; the period between birth and death.(both from Oxford English Dictionary).
As such, these verbal elements are not considered weak or non-distinctive for any of the relevant goods.
As regards the contested sign, it should be noted that it is composed of a distinctive verbal element and less distinctive figurative element, an oval shaped background in black, of a purely decorative nature. It is for this reason that the verbal element is considered more distinctive than the figurative element. Consequently, the additional figurative element has only a limited impact when assessing the likelihood of confusion between the marks.
The contested mark has no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘in the letters ‘LI_E’. On the other hand, they differ in their third letters, V/F, and in the typeface and the background element (found less distinctive) of the contested sign, not present in the earlier mark.
However, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / Betstone (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / Device of an Elephant (fig.), § 59).
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘LI_E’, present identically in both signs, and to that extent the signs are aurally similar. There can also be a certain aural similarity in the pronunciation of the letters ‘V’ and ‘F’. The two word elements have a phonetically similar rhythm.
Therefore, the signs are aurally similar to an average degree.
Conceptually, for those who understand at least basic English, both words have meanings as indicated above. As they both refer to a state of being alive, they are conceptually similar to an average degree for this part of the relevant public.
For the remaining part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.
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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods have been found to be partially identical and partially similar to various degrees. The visual, aural and conceptual similarities and dissimilarities have been established.
The signs have been found to be similar to the extent that they have in common the letter sequence ‘LI_E’. The differentiating letters, ‘V’/‘F’, are placed in a non-prominent, secondary position in the middle of the signs and do not catch the consumer’s initial attention. The two word elements have a phonetically similar rhythm and are confusingly similar for the consumer aurally and visually. Furthermore, there is also a certain aural similarity in respect of the letters ‘V’ and ‘F’.
The additional differentiating elements, namely the device element (found less distinctive) and stylisation (in the contested sign), are not sufficient in themselves to counteract the high degree of visual and aural similarity between the words ‘LIVE’ and ‘LIFE’, which have the same beginnings and endings. Although the signs have a certain conceptual similarity for the English-speaking public, these words do not exist in the majority of European languages. The public for whom the words in the signs are meaningless will focus on the visually and aurally similar aspects of the marks.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
Taking into account the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to cause at least part of the public in the relevant territory to believe that the conflicting goods, which are identical and similar, come from the same undertaking or economically linked undertakings. The same applies also to goods found similar to a low degree, due to the sufficient level of similarity between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 984 245. It follows that the contested trade mark must be rejected for all the contested goods.
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Francesca CANGERI SERRANO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.