Vitivin | Decision 2564956 - Laboratoires ARKOPHARMA v. Alchemica Valgelata S.r.l.
Date Published: May 17, 2018
OPPOSITION No B 2 564 956
Laboratoires Arkopharma, 1ère Avenue 2709M Lid de Carros Le Broc, 06510 Carros, France (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)
a g a i n s t
Alchemica Valgelata S.r.l., Cian de Sciuscia - Loc. Valgelata, 17014 Cairo Montenotte (SV), Italy (applicant), represented by Ranieri Marino, Contrà Paolo Lioy, 24, 36100 Vicenza, Italy (professional representative).
On 18/01/2017, the Opposition Division takes the following
1. Opposition No B 2 564 956 is upheld for all the contested goods.
2. European Union trade mark application No 13 681 374 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 681 374. The opposition is based on European Union trade mark registration No 6 435 846. 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, amongst others, the following:
Class 3: Gel for tired and aching legs.
The contested goods are, after limitation, the following:
Class 3: Essential oils for cosmetic purposes, for skin care.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice 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.
The contested essential oils for cosmetic purposes, for skin care are a specific type of cosmetic, namely oils for cleaning or enhancing human skin. The earlier right’s gel for tired and aching legs is also a specific type of cosmetic, one consisting of a solid jelly-like substance for soothing tired and sore legs. Therefore, despite having different specific natures and purposes, they are both cosmetics, they have a similar method of use (being applied to the skin), are the type of products (cosmetics gels creams, lotions, oils, etc.) that may be produced by the same manufacturers, will appear in the same sections of similar outlets and will target the same consumers. Therefore, the contested goods are similar to the opponent’s goods.
- 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 similar are directed at the public at large, and are all types of cosmetics. The degree of attention is considered to be average.
- The signs
Earlier trade mark
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).
Both signs are word marks, as shown above. Being word marks means they do not claim any particular figurative element or appearance and differences in the use of lower or upper case letters are, therefore, immaterial.
Neither sign has any element that has any meaning in relation to the goods at hand and consequently they have no element that could be considered clearly more distinctive than other elements.
Finally, being word marks, neither sign has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs are both unitary word marks of the same length (seven letters long), and coincide in six of these letters, namely ‘VITIV*N’. They differ in their sixth letter, which is an ‘E’ in the earlier mark and an ‘I’ in the contested sign.
The signs are considered to be visually similar to a high degree.
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 ‘VITIV*N’ present identically in both signs. The pronunciation differs in the sound of their sixth letters, an ‘E’ in the earlier mark and an ‘I’ in the contested sign.
The signs have the same length, the same consonants and the same number of vowels in the same positions (and two out of the three vowels are the same). Consequently, the signs have the same number of syllables and a similar rhythm and intonation.
Therefore, the signs are aurally similar to a high degree
Conceptually, neither of the signs has a clear meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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 contested goods have been found similar. The earlier mark is deemed to have a normal degree of distinctiveness.
In the present case the signs are both unitary word marks of the same length and share six of their seven letters in the same order. The only difference between the signs is their sixth letters, an ’E’ vs. an ‘I’. The signs have no graphical elements or clearly assigned concepts to assist consumers in differentiating between them.
The difference is located towards the end of signs, and this is an area where consumers generally tend to focus less when being confronted by a trade mark. Furthermore, the difference in this one letter does not, by itself, introduce sufficient differences into the signs as it neither alters greatly the visual or aural comparison, which have both been found to be similar to a high degree, nor does it create a conceptual difference between the signs that could assist the public in distinguishing between them.
Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect recollection of them that they have kept in their minds.
Considering all the above, and especially bearing in mind the lack of differentiating elements in the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 435 846.
It follows from the above that the contested trade mark must be rejected in its entirety.
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
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.