OPPOSITION No B 2 666 710

Alcantara España, S.A., Polígono El Montalvo, Parcela 48, 37008 Salamanca, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

JVG Finance B.V., Craneveldstraat 181, 5914SH Venlo, The Netherlands (applicant), represented by Thomas Cluesmann, Aegidientorplatz 2 B, 30159 Hannover, Germany (professional representative).

On 16/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 666 710 is upheld for all the contested goods, namely:

Class 3: Cleaning and fragrancing preparations; household fragrances; perfuming sachets; extracts of flowers; cushions filled with perfumed substances; cushions filled with fragrant substances; potpourris [fragrances]; room fragrancing preparations; ethereal essences; ethereal essences and oils; oils for cosmetic purposes; essential oils; essential oils for aromatherapy use; essential oils for the care of the skin; cosmetic oils for the epidermis; flavour enhancers for food [essential oils]; massage oils; distilled oils for beauty care; natural oils for cosmetic purposes; flavorings [flavourings] for beverages [essential oils]; oils for toilet purposes; bath herbs; body cleaning and beauty care preparations; perfumery and fragrances; soaps and gels; beauty balm creams; beauty serums; serums for cosmetic purposes; tissues impregnated with essential oils, for cosmetic use; washing creams; scented oils; non-medicated oils; aromatherapy oil; aromatics for perfumes; aromatics; aromatics for fragrances; aromatic essential oils.

2. European Union trade mark application No 14 828 214 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 14 828 214, namely against all the goods in Class 3. The opposition is based on Spanish trade mark registration No 2 715 271. 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; hair lotions; dentifrices; deodorants for personal use.

The contested goods are the following:

Class 3: Cleaning and fragrancing preparations; household fragrances; perfuming sachets; extracts of flowers; cushions filled with perfumed substances; cushions filled with fragrant substances; potpourris [fragrances]; room fragrancing preparations; ethereal essences; ethereal essences and oils; oils for cosmetic purposes; essential oils; essential oils for aromatherapy use; essential oils for the care of the skin; cosmetic oils for the epidermis; flavour enhancers for food [essential oils]; massage oils; distilled oils for beauty care; natural oils for cosmetic purposes; flavorings [flavourings] for beverages [essential oils]; oils for toilet purposes; bath herbs; body cleaning and beauty care preparations; perfumery and fragrances; soaps and gels; beauty balm creams; beauty serums; serums for cosmetic purposes; tissues impregnated with essential oils, for cosmetic use; washing creams; scented oils; non-medicated oils; aromatherapy oil; aromatics for perfumes; aromatics; aromatics for fragrances; aromatic 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 cleaning preparations; essential oils; perfumery; soaps are also contained in the list of goods of the earlier trade mark, and are, therefore, identical.

The contested ethereal oils and the opponent’s essential oils are synonymous. Therefore, they are identical.

The contested fragrancing preparations; household fragrances; perfuming sachets; cushions filled with perfumed substances; cushions filled with fragrant substances; potpourris [fragrances]; room fragrancing preparations; fragrances are included in the broader category of, or overlap with, the opponent’s perfumery, which is interpreted in the broadest sense possible and includes not only perfumes for humans and animals but also preparations used in the household for scenting premises in order to promote wellbeing, for example room fragrancing preparations. Therefore, they are identical.

The contested oils for cosmetic purposes; cosmetic oils for the epidermis; distilled oils for beauty care; natural oils for cosmetic purposes; bath herbs; body cleaning and beauty care preparations; beauty balm creams; beauty serums; serums for cosmetic purposes; tissues impregnated with essential oils, for cosmetic use are included in the broader category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested essential oils for aromatherapy use; essential oils for the care of the skin; flavour enhancers for food [essential oils]; massage oils; flavorings [flavourings] for beverages [essential oils]; oils for toilet purposes; scented oils; non-medicated oils; aromatherapy oil; aromatic essential oils are natural oils, typically obtained by distillation, that have the characteristic odour of the plant or other source from which they are extracted. They are included in the broader category of, or overlap with, the opponent’s essential oils, which are liquids carrying a distinctive scent or essence frequently used in order to give a pleasant scent. Therefore, they are identical.

The contested gels are a broad category of goods that includes, inter alia, gels for cosmetic purposes. The opponent’s cosmetics include, inter alia, cosmetic gels. Therefore, given that these goods overlap, they are identical.

The contested washing creams, being substances mainly used for personal hygiene, overlap with the opponent’s soaps, which include, inter alia, soaps for washing the human body in a liquid or cream form. Therefore, they are identical.

The contested extracts of flowers; ethereal essences; ethereal essences; aromatics for perfumes; aromatics; aromatics for fragrances are, basically, scented extracts obtained from plants or other sources that are used, inter alia, in the perfumery industry. It follows that these contested goods have the same purpose, nature, relevant public and method of use as the opponent’s perfumery. Therefore, they are similar to a high degree.

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 or similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise in the cosmetic and perfumery industry.

If a significant part of the relevant public for the goods at issue could be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused. In the present case, since the goods in question target both the general public and specialists, the likelihood of confusion will be assessed against the perception of the part of the public that displays the lower degree of attentiveness, that is, the general public, as it will be more prone to confusion.

The relevant public’s degree of attention is considered average.

3. The signs

	Millenium
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 two words, ‘Millenium’ and ‘Touch’, written in a rather standard typeface in title case. The verbal elements are separated by a thin curving line, which is interrupted in its bottom part.

The contested sign is a word sign consisting of one verbal element, ‘Millenium’.

The word ‘Millenium’, which the signs have in common, even though it does not exist as such in Spanish, may be associated by a part of the general public with a foreign version of the Spanish word ‘Milenio’, which means a period of 1 000 years. The distinctiveness of this word is, in any case, considered average for the relevant goods.

The second word of the earlier mark, namely ‘Touch’, has no meaning for the general public in the relevant territory. Therefore, it will be seen as an invented word with an average degree of distinctiveness for the relevant goods. However, the curving line of the earlier mark performs only a decorative function within the mark, so it is less distinctive.

Neither of the signs has any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘Millenium’, so the contested sign is entirely incorporated within the earlier mark. However, they differ in the remaining elements of the earlier mark, namely the less distinctive curving line and the word ‘Touch’. In addition, the signs differ in the slight stylisation of the earlier mark.

However, in this regard it must be pointed out 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).

It is important to note that the coinciding element, ‘Millenium’, is at the beginning of the earlier mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Considering all the above, the signs are visually similar to an average degree.

Aurally, irrespective of whether the general public pronounces the signs according to Spanish pronunciation rules or by applying some foreign language rules, the pronunciations of the signs coincide in the sound of the word ‘Millenium’, and differ in the sound of the additional word ‘Touch’ in the earlier mark.

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

Conceptually, reference is made to the statements made above regarding the meanings of the signs and the elements of which they are composed.

For a part of the general public in the relevant territory, neither of the signs taken as a whole has a meaning. For this part of the public, a conceptual comparison is not possible and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

However, as outlined above, part of the relevant public may perceive the word ‘Millenium’, included in both signs, as referring to a period of 1 000 years. For this part of the public, the signs are conceptually similar to an average 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 relevant goods from the perspective of the general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a less distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The present assessment of likelihood of confusion is carried out against the perception of the part of the public in the relevant territory that is more prone to confusion, namely the general public. The degree of attention is average and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

As concluded above, the contested goods are identical or similar to a high degree to the opponent’s goods.

The conflicting signs are visually, aurally and (at least for part of the public) conceptually similar to an average degree. This is because they have in common the word ‘Millenium’, which constitutes the entire contested sign and plays an independent and distinctive role within the earlier mark.

As regards the differing elements in the earlier mark, it has to be recalled that 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 covered are from the same or economically linked undertakings. Furthermore, it has to be pointed out that it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image. In the present case, it is conceivable that the relevant public will regard the goods designated by the signs at issue as belonging to two ranges of goods coming from the same undertaking under the ‘Millenium’ brand.

Considering all the above, the Opposition Division finds that the differences between the signs do not outweigh the similarities between them. They are not of such a nature as to enable the relevant public to safely distinguish between the signs in the context of identical or highly similar goods.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of a significant part of the public. Regarding the focus on the general public, if a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 715 271.

It follows from the above that the contested sign 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

Bekir GÜVEN

Martin MITURA

Solveiga BIEZA

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.