OPPOSITION No B 2 600 461

Arom, S.A., Ctra. Molina a Fortuna, Km. 2, 30500 Molina de Segura, Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Südwestdeutsche Salzwerke AG, Salzgrund 67, 74076 Heilbronn, Germany (applicant), represented by Friedrich Graf Von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 600 461 is upheld for all the contested goods, namely:

Class 3: Perfumery, essential oils, cosmetics, hair lotions; Soaps; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Dentifrices; Cosmetic preparations for baths; Exfoliants.

2. European Union trade mark application No 14 320 303 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 320 303, namely against all the goods in Class 3. The opposition is based on Spanish trade mark registration No 3 004 821.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.

1. The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, lotions hair; toothpastes.

The contested goods are the following:

Class 3: Perfumery, essential oils, cosmetics, hair lotions; Soaps; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Dentifrices; Cosmetic preparations for baths; Exfoliants.

Perfumery, essential oils, cosmetics, hair lotions; soaps; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations are identically contained in both lists of goods (including synonyms).

The contested dentifrices include, as a broader category, the opponent’s toothpastes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cosmetic preparations for baths; exfoliants are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

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 found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

	MONTESOL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark, composed of the verbal element ‘MOLTESOL’ written in a vertical manner, with the letters one above the other, with the letters ‘MOLTE’ in purple and the letters ‘SOL’ in orange colour. To the right of this verbal element is a depiction of a happy baby, wearing diapers.

The contested mark has no specific meaning as a whole for the Spanish public. However, it is a word mark composed of two verbal elements, namely ‘MONTE’ and ‘SOL’. ‘Monte’, among others, means mountain or hill in Spanish and ‘sol’ means sun (information extracted from Collins Spanish-English Dictionary on 22/03/2017 at www.collinsdictionary.com).The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The element ‘MOLTE’ of the earlier mark has no meaning for the relevant Spanish public and is, therefore, distinctive.

The element ‘MONTE’ of the contested sign will be associated with ‘mountain’ or ‘hill’. However, this element has no meaning in relation to the relevant goods and it is therefore also distinctive.

The element ‘SOL’ in both the earlier and the contested mark will be understood as ‘sun’ by the relevant public, as described above. Bearing in mind that the relevant goods are, inter alia, cosmetics, this element is weak for some of the relevant goods that can be used for sun protection, namely for essential oils, cosmetics, lotions hair.

The figurative element of the baby in the earlier mark might be alluding to the targeted public of the goods, namely for babies (or their guardians). Bearing in mind that the relevant goods are, inter alia, laundry preparations, soaps and hair lotions, this element is also weak for the relevant goods that could be adopted for (sensitive) babies use, namely for Bleaching preparations and other substances for laundry use; soaps; perfumery, essential oils, cosmetics, lotions hair; toothpastes.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in seven out of eight letters, ‘MO*TESOL’. However, they differ in the third letters, ‘L’ respectively ‘N’ and in the depiction of the earlier mark, including the verbal element that is written on edge, and the, at least for part of the goods weak, depiction of the baby. The element ‘SOL’ is also partly weak in both marks, as described above.

Therefore, the signs are visually similar, at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MO*TESOL’, present identically in both signs. The pronunciation differs in the sound of the third letter ‘L’ of the earlier sign, and the third letter ‘N’ in the contested mark, which have no counterparts in the opposite marks. The element ‘SOL’ is weak for some of the goods, as described above.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘SOL’ included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar. However, the conceptual similarity between the signs is lowered by the fact that the common element SOL was found to be weak in relation to at least a part of the relevant goods. The signs are conceptually similar at least to a low degree.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22).

The contested goods are identical to the goods for which the earlier mark is registered. It is directed at the public at large with an average degree of attention.

When signs consist of both verbal and figurative components, in principle, the verbal element of the sign usually has a stronger impact on the consumer than the figurative component. The graphic depiction including the figurative element of a baby, as described above, does not offset the presence of the verbal element. On the contrary, it is highly likely that consumers will refer to this mark as ‘MOLTESOL’ rather than by describing its graphic depiction.

The signs under comparison are similar to the extent that they include, or are, single words, coinciding in seven out of eight letters including the same ending, ‘SOL’. They are visually similar, at least to an average degree, aurally highly similar and have a conceptual coincidence in the element ‘SOL’, even though being of limited distinctiveness for some of the relevant goods.

Furthermore, the difference between the earlier mark’s verbal element, ‘MOLTESOL’, and the contested sign, ‘MONTESOL’, are in the middle of these elements, where they are more likely to go unnoticed by the consumers.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and services. Therefore, a lesser degree of similarity between the 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 identity between the goods offsets any lesser degree of similarity between the signs.

Consequently, the visual and aural differences do not enable average consumers, who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, to safely distinguish the marks, in the context of all the goods that are identical.

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 Spanish trade mark registration No 3 004 821. It follows that the contested trade mark must be rejected for all the contested goods.

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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Janja FELC

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.