OPPOSITION No B 2 227 331

Colgate-Palmolive Company, 300 Park Avenue, New York, New York 10022, United States of America (opponent), represented by Klawitter Neben Plath Zintler KNPZ Rechtsanwälte, Kaiser-Wilhelm-Str. 9, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Regal Impex Limited, 64 Tregenna Avenue, Harrow HA2 8QS, United Kingdom (applicant), represented by Graham Coles & Co., 24 Seeleys Road, Beaconsfield, Buckinghamshire HP9 1SZ, United Kingdom (professional representative).

On 08/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 227 331 is upheld for all the contested goods.

2. Community trade mark application No 11 785 003 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 of Community trade mark application No 11 785 003. The opposition is based on, inter alia, Swedish trade mark registration No 158 254. The opponent invoked Article 8(1)(a) and (b) CTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) AND (b) CTMR

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 first to examine the opposition in relation to the opponent’s Swedish trade mark registration No 158 254.

1. The goods

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

Class 3:Bleaching preparations and other preparations for the washing of clothing; preparations for cleaning, polishing and spot removers as well as abrasives; soap; perfumery, essential oils, cosmetic preparations, hair lotions; preparations for cleaning the teeth.

Class 5:Pharmaceutic, veterinary and hygenic preparations; dietetic preparations for children and ill; plasters and bandage materials; materials for filling and dental impression; disinfectants; preparations for the extermination of weeds, vermin and vermin.

The contested goods are the following:

Class 3:Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; carpet freshening preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; anti-perspirants; personal deodorants; dentifrices.

Class 5:Air fresheners; air deodorants; air purifying preparations; sanitizers for household use; preparations for the neutralising of odours; fabric deodorizers.

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

Cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices are identically contained in both lists of goods (including synonyms).

The contested bleaching preparations and other substances for laundry use and the opponent’s bleaching preparations and other preparations for the washing of clothing designate, to a very large extent, the same goods. They are identical.

The contested anti-perspirants; personal deodorants are included in the broader category of the opponent’s cosmetic preparations. Therefore, they are identical.

The contested carpet freshening preparations are products used to eliminate odours from carpets and give them a pleasant smell. They are highly similar to the opponent’s preparations for cleaning, which include preparations for cleaning carpets. The goods under comparison have a similar nature, purpose and method of use. They target the same relevant public, are sold in the same outlets and can be produced by the same manufacturers.

Contested goods in Class 5

The contested sanitizers for household use are included in the broad category of, or overlap with, the opponent’s disinfectants. Therefore, they are identical.

The contested air fresheners; air deodorants; air purifying preparations; preparations for the neutralising of odours; fabric deodorizers are similar to the opponent’s hygienic preparations. They have a similar purpose of use and can coincide in producer, relevant consumer and distribution channels.

2. The signs

IRISH SPRING	IRISH SPRING
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical, and some of the contested goods, namely bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; anti-perspirants; personal deodorants; dentifrices in Class 3 and sanitizers for household use in Class 5, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) CTMR for these goods.

Furthermore, the contested carpet freshening preparations in Class 3 and air fresheners; air deodorants; air purifying preparations; preparations for the neutralising of odours; fabric deodorizers in Class 5 were found to be similar or highly similar to the goods covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) CTMR, and the opposition must be also upheld for these goods.

As the earlier Swedish trade mark registration No 158 254 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Anna BAKALARZ

Vít MAHELKA

Carmen SÁNCHEZ PALOMARES

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.