OPPOSITION No B 1 938 151

Saraya Co., Ltd., 2-8, Yuzato 2-chome, Higashisumiyoshi-ku, Osaka, Japan (opponent), represented by Octrooibureau Los En Stigter B.V., Weteringschans 96, 1017 XS Amsterdam, The Netherlands (professional representative)

a g a i n s t

Cederroth Polska S.A., ul. Polna 21, 05-250 Radzymin, Poland (applicant), represented by JWP Rzecznicy Patentowi Dorota Rzążewska Sp. J., ul. Żelazna, 28/30, 00-833 Warszawa, Poland (professional representative).

On 11/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 938 151 is upheld for all the contested goods and services.

2. European Union trade mark application No 10 234 111 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 234 111. The opposition is based on, inter alia, European Union trade mark registration No 4 259 917 and United Kingdom trade mark registration No 2 584 491. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 259 917 and United Kingdom trade mark registration No 2 584 491.

1. The goods and services

The goods on which the opposition is based are the following:

European Union trade mark registration No 4 259 917

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; dentifrices.

Class 5: Veterinary preparations; food for babies; material for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides.

United Kingdom trade mark registration No 2 584 491

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions.

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters; material for dressings; disinfectants.

After a limitation filed by the applicant on 29/06/2012, the contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; all the aforementioned goods except products and preparations within the scope of Class 3 used for dental purposes, dental and oral cleaning, refreshing and whitening, and refreshing mouthwashes.

Class 5: Cosmetic preparations for medical purposes, mud and peat baths for medical purposes, bath salts and mineral water baths for medical purposes, pharmaceutical preparations and substances against sweating; pharmaceutical preparations for treating dandruff; tissues impregnated with pharmaceutical lotions; plasters, materials for dressings; pharmaceutical preparations and herbal medicines; medical preparations and slimming tea for medical purposes; dietetic products and substances adapted for medical use; baby food; food supplements; sanitary substances for medical purposes; disinfectants; preparations for destroying vermin; camphor for medical purposes; all the aforementioned goods except products and preparations within the scope of Class 5 used for dental purposes, dental and oral treatment, disinfectant and medicated mouthwashes.

Class 44: Beauty care, including beauty salons, information and consultancy relating to beauty care and the application of cosmetic preparations.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; all the aforementioned goods except products and preparations within the scope of Class 3 used for dental purposes, dental and oral cleaning, refreshing and whitening, and refreshing mouthwashes are included in the broad categories of the opponent’s bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations covered by European Union trade mark registration No 4 259 917. Therefore, they are identical.

The contested soaps; perfumery, essential oils, cosmetics, hair lotions; all the aforementioned goods except products and preparations within the scope of Class 3 used for dental purposes, dental and oral cleaning, refreshing and whitening, and refreshing mouthwashes are included in the broad categories of the opponent’s soaps; perfumery, essential oils, cosmetics, hair lotions covered by United Kingdom trade mark registration No 2 584 491. Therefore, they are identical.

Contested goods in Class 5

The contested baby food; all the aforementioned goods except products and preparations within the scope of Class 5 used for dental purposes, dental and oral treatment, disinfectant and medicated mouthwashes is included in the opponent’s broad category of food for babies covered by the earlier European Union trade mark registration No 4 259 917. Consequently, these goods are identical.

The contested preparations for destroying vermin; all the aforementioned goods except products and preparations within the scope of Class 5 used for dental purposes, dental and oral treatment, disinfectant and medicated mouthwashes are included in the broad category of preparations for destroying vermin covered by the earlier European Union trade mark registration No 4 259 917. Thus, these goods are identical.

The contested pharmaceutical preparations and substances against sweating; pharmaceutical preparations for treating dandruff; tissues impregnated with pharmaceutical lotions; pharmaceutical preparations and herbal medicines; medical preparations and slimming tea for medical purposes are included in the opponent’s broad category of pharmaceutical preparations covered by United Kingdom trade mark registration No 2 584 491. Therefore, these goods are considered identical.

The contested sanitary substances for medical purposes; disinfectants; plasters, materials for dressings are also included in the opponent’s list and, therefore, these goods are considered identical.

The contested dietetic products and substances for medical use include as a broad category the opponent’s dietetic substances adapted for medical use. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested food supplements overlap with the opponent’s dietetic substances adapted for medical use, because there can be food supplements for medical use. Therefore, the goods under comparison are considered identical.

The remaining contested cosmetic preparations for medical purposes, mud and peat baths for medical purposes, bath salts and mineral water baths for medical purposes, camphor for medical purposes are substances prepared with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical preparations insofar as they are used to improve the medical condition of patients. The relevant public coincides and these goods generally have the same distribution channels. Therefore, these goods are considered similar.

Contested services in Class 44

As a preliminary remark, it should be noted that, by their nature, services are generally dissimilar to goods. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between services and goods can be found. This applies to the present case.

The contested beauty care, including beauty salons, information and consultancy relating to beauty care and the application of cosmetic preparations are similar to the opponent’s cosmetics in Class 3 covered by United Kingdom trade mark registration No 2 584 491, as they have the same purpose, namely to improve people’s appearance and hygiene, and they target the same relevant public. Furthermore, the goods and services at issue may have the same distribution channels. The undertakings providing the contested services, such as wellness and beauty centres and hair salons, may also offer ‘beauty products’ to their clients, as it is common practice for these establishments to sell various products for further home treatments. These products can be the same as those already applied or suggested during a beauty session or beauty consultancy in one of these centres. Moreover, the goods and services are complementary to each other, as it can be necessary to use the opponent’s products to perform the contested services.

2. 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 and services found to be identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to, as regards goods involving healthcare such as certain kinds of pharmaceutical preparations, relatively high.

3. The signs

SARAYA
Earlier trade marks	Contested sign

The relevant territory is the European Union as regards European Union trade mark registration No 4 259 917 and the United Kingdom as regards United Kingdom trade mark registration No 2 584 491.

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, in relation to the earlier European Union trade mark registration No 4 259 917, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier marks are a word mark consisting of the word ‘SARAYA’.

The contested sign is a figurative mark consisting of the word ‘SORAYA’, depicted in a slightly stylised white typeface on a black background with a grey frame. On the left of the abovementioned word element and still within the frame, a figurative device is placed, consisting of two white curved lines. Below these elements the words ‘BIO’ and ‘REPAIR’ are depicted, using a thicker black typeface in the case of the word ‘BIO’.

The earlier marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The elements ‘BIO’ and ‘REPAIR’ of the contested sign will be associated with something related to life, biological (BIO) and the idea of restoring (something damaged, faulty, or worn) to a good condition. The way they are placed beneath the frame containing the word ‘SARAYA’, they give the impression of being a descriptive addition to the main trade mark. Bearing in mind that the relevant goods and services are related to health, cleanness and beauty, these elements are weak for these goods and services in Classes 3, 5 and 44.

Visually, the signs coincide in the letters ‘S*RAYA’ and they differ in their second letters ‘A’ vs. ‘O’ of the words ‘SARAYA’ and ‘SORAYA’. The marks differ in the additional elements of the contested mark. However, as regards the elements ‘BIO’ and ‘REPAIR’, they are weak. Moreover, as concerns the figurative element of the contested sign, account must be taken on the fact that 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 similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘S-*-R-AY-

A’, present identically in both signs, namely in the distinctive terms ‘SARAYA’ and ‘SORAYA’.

The pronunciation differs in the sound of the second letters ‛A’ and ‘O’ of the aforementioned words and in the sound of the weak elements ‘BIO’ and ‘REPAIR’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, while the public in the relevant territory will perceive the word ‘SORAYA’ of the contested sign as a feminine given name and the weak elements ‘BIO’ and ‘REPAIR’ in the manner already explained above, the other earlier signs lack any meaning in that territory and for the English-speaking part of the relevant public. Since the earlier signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute have been found partly identical and partly similar. As stated above in section d) of the present decision the distinctiveness of the earlier mark is normal.

The signs in question coincide in five letters, ‘S-*R-A-Y-A’, and differ in the second letters, ‘A’ of the earlier marks versus ‘O’ of the contested sign, and the additional figurative and word element of the contested sign.

As already explained above in section c) of the present decision, it is however likely to expect that consumers will focus more on the other, more distinctive, element of the sign, ‘SORAYA’, which is visually and aurally highly similar to the earlier trade marks, ‘SARAYA’. This is due to the weak character of the word elements ‘BIO’ and ‘REPAIR’ and 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

The difference, reduced to the different vowels ‘A’ of the earlier marks versus ‘O’ of the contested sign, is so insignificant that it can easily be overlooked by the relevant consumers, including the professionals. Therefore, the impact of this difference on the consumers is insufficient to exclude a likelihood of confusion.

Considering all the above and in particular the identity and similarity between the conflicting goods and services, the Opposition Division finds that the striking visual and aural similarities displayed in the first verbal elements of the conflicting signs, namely ‘SARAYA’ and ‘SORAYA’, outweigh the differences between the marks under comparison, and may induce consumers to believe that the relevant contested goods and services come from the same undertaking or from economically-linked undertakings, even for the part of the public that is more attentive.

Taking into account the similarities between the marks, the fact that part of the public may perceive the earlier mark, but not the contested sign, as a feminine name is not in itself sufficient to prevent a likelihood of confusion. This is especially true considering 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).

In view of all the above, there is a likelihood of confusion on the part of the public for what concerns United Kingdom trade mark registration No 2 584 491 and also, as regards European Union trade mark registration No 4 259 917, on the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s aforementioned earlier rights. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier United Kingdom trade mark registration No 2 584 491 and European Union trade mark registration No 4 259 917 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Gregor SCHNEIDER

Andrea VALISA

Gueorgui IVANOV

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.