OPPOSITION No B 2 477 928

Aroma da Terra-Cosméticos Naturais, Lda, Rua Dr. Sousa Martins, 9 Apt. 364, 2726-902 Mem Martins, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

MTM Industries Sp. z o.o., ul. Wysoka 5a, 62-800 Kalisz, Poland (applicant), represented by Patent-Service Kancelaria, ul. Starorudzka 80, 93-424 Łódź, Poland (professional representative).

On 28/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 477 928 is upheld for all the contested goods.

2. European Union trade mark application No 13 271 317 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 271 317 for the figurative mark , namely against all the goods in Class 3. The opposition is based on, inter alia, Portuguese trade mark registration No 294 074 for the word mark ‘AROMACAR’. 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 Portuguese trade mark registration No 294 074.

a) The goods

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

Class 3: Cleaning products and hygiene products for personal use.

The contested goods are the following:

Class 3: Scented and air-freshening preparations, essential oils.

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 and the opponent’s cleaning products and hygiene products for personal use have the same nature and purpose. Furthermore, they have the same distribution channels, target the same relevant public and are produced by the same undertakings. Therefore, they are similar to a high degree.

The contested scented and air-freshening preparations are used to give a pleasant smell or to remove odours and the opponent’s cleaning products and hygiene products for personal use also remove unpleasant odours. Therefore, these goods have similar natures and purposes. Furthermore, they may be found on the same shelves and in the same sections in supermarkets and target the same relevant public. They could also be manufactured by the same companies. Therefore, they are similar.

b) 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 highly similar and similar are directed at the public at large.

The degree of attention is considered average.

c) The signs

AROMACAR
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

It must be clarified from the onset that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). With respect to the earlier mark, even though the elements ‘AROMA’ and ‘CAR’ are not visually separated with a space, consumers naturally look for a meaning when reading a word, and they will recognise the said words as having the meanings explained below.

In the present case, the signs coincide in the element ‘AROMACAR’, which, however, is visually divided into the elements ‘AROMA’ and ‘CAR’ in the contested sign.

The sequence of the first five letters, ‘AROMA’, of the earlier mark, which coincides with the top verbal element of the contested sign, has the same meaning in Portuguese as in English, that is, ‘a strong, pleasant smell’ (information extracted from Collins Dictionary on 13/08/2018 at https://www.collinsdictionary.com/dictionary/english/aroma). It refers to the characteristics of the goods in question and its distinctiveness is, thus, weak. The sequence of the last three letters of the earlier mark, ‘CAR’, which coincides with the bottom verbal element of the contested sign, is understood in the relevant territory, since it can be considered a basic English word (see, for example, 27/11/2017, B 2 832 346, TRAVELER CAR / Travelercar), or a word that will be perceived by the relevant public as referring to a vehicle (see, for example, 19/02/2018, R 1592/2017-2, CARFACTORY / cFactory, which, however, concerns the Spanish public but is considered analogous to the current case). As the relevant goods are scented and air-freshening preparations and essential oils, the distinctiveness of this element is weak, since it refers to the characteristics of the goods in question in terms of their place of use.

The earlier mark is a word mark, consisting solely of the element ‘AROMACAR’.

The contested sign is a figurative sign that consists of the elements ‘AROMA’ and ‘CAR’, depicted in slightly stylised white upper case letters, the top verbal element in a bold font and the bottom verbal element in a regular font. Above them is a golden figurative element that part of the public will perceive as a decorative stylisation of a car, thus reinforcing the meaning of the bottom verbal element of the sign. Therefore, the distinctiveness of this element is considered limited. The verbal and decorative elements are against a slightly shiny black circle inside a matt black ring, surrounded by a white ring, all set within a grey square. These simple geometrical shapes merely serve decorative purposes and are frequently used as frames and labels in the market sector in question. For this reason, these banal elements are considered non-distinctive.

The element ‘AROMA’ in the contested sign is the dominant element, as it is the most eye-catching, due to its central place, larger size and bold font (in comparison with the element ‘CAR’ and the merely decorative figurative element reinforcing this element). However, the element ‘CAR’ will definitely be perceived in conjunction with the dominant element when encountering the sign.

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).

Furthermore, consumers generally tend to focus on the beginning (the top) of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left and/or the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the verbal element(s) ‘AROMACAR’/‘AROMA’ and ‘CAR’. The signs differ in the decorative golden element above the verbal elements and in the composition, simple geometrical shapes and colours of the contested sign. Reference is made to the conclusions reached above regarding the distinctiveness of the elements of the signs under comparison.

As the signs coincide in the sole element of the earlier mark, part of which is dominant in the contested sign, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AROMACAR’ and ‘AROMA CAR’, present identically in both signs. The space between the two elements in the contested sign does not change the overall pronunciation of the contested sign from the pronunciation of the earlier mark. The figurative elements of the contested sign are non-verbal elements and will, therefore, not affect the pronunciation.

Therefore, the signs are considered aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by some of the elements of the marks. The relevant public will perceive the concepts of aroma and car in both signs.

Therefore, the signs are considered conceptually identical.

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 elements of the earlier trade mark refer to the characteristics of the goods from the perspective of the public in the relevant territory, as explained above. However, the combination of those elements renders to the mark as whole a certain distinctiveness, albeit lower than average.

According to case-law, the earlier mark as a whole should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether European Union trade marks or national trade marks, enjoy a presumption of validity. The Court has made it clear that ‘in proceedings opposing the registration of a Community trade mark [European Union trade mark], the validity of national trade marks may not be called into question.’ (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41).

Therefore, the distinctiveness of the earlier mark must be seen as below average.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services are similar to a high degree or similar. The consumers are the public at large and their degree of attention is considered average.

The signs are visually highly similar, and aurally and conceptually they are considered identical. The first verbal component of the earlier mark includes the dominant element of the contested sign. The distinctiveness of the earlier mark is below average.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This perception arises because the entire earlier mark is contained in the contested sign.

The Court has emphasised on several occasions that a finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Therefore, the Opposition Division considers that, even though the distinctiveness of the earlier mark is below average, due to the high visual similarity and aural and conceptual identity between the signs originating from the inclusion of the entire verbal element of the earlier mark in the contested sign, when consumers encounter the signs at different times, they may assume that the goods and services found to be highly similar or similar come from the same undertaking or economically linked undertakings.

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 Portuguese trade mark registration No 294 074. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right Portuguese trade mark registration No 294 074 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 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Rosario GURRIERI

Mads Bjørn Georg JENSEN

Vita VORONECKAITE

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 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.