OPPOSITION No B 2 828 963

Harper Hygienics SA, Aleje Jerozolimskie 142A, 02-305 Warszawa, Poland (opponent), represented by Marta Malgorzata Krzyśków-Szymkowicz, Wilcza 54/1, 00-679 Warszawa, Poland (professional representative)

a g a i n s t

Orkla Care S.A., ul. Polna 21, 05-250 Radzymin, Poland (applicant), represented by Renata Anna Bugiel, ul Mokotowska 40 lok. 27, 00-523 Warszawa, Poland (professional representative).

On 14/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 828 963 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 435 605 , namely against all the goods in Class 3 and some of the goods in Class 5.

The opposition is based on:

 European Union trade mark registration No 9 291 931 .

 European Union trade mark registration No 13 653 753 .

 European Union trade mark registration No 13 653 811 .

 European Union trade mark registration No 13 653 861 .

 European Union trade mark registration No 13 653 911 .

 Polish trade mark registration No R. 170 657 .

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF POLISH TRADE MARK REGISTRATION No R. 170 657

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards one of the earlier trade marks on which the opposition is based, namely the Polish trade mark registration No R. 170 657.

On 29/03/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/04/2019.

The opponent did not submit any evidence concerning the substantiation of this earlier trade mark. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use of the European Union trade mark registration No 9 291 931 by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 9 291 931.

a) The signs

The distinctiveness of the marks’ elements will be assessed in relation to the following goods and services.

The goods and services on which the opposition is based:

Class 3: Cosmetics; tissues impregnated with cosmetic lotions; cotton wool for cosmetic purposes; make-up removing pads and tissues; cotton sticks for cosmetic purposes; cleaning, polishing, scouring and abrasive preparations.

Class 5: Sanitary preparations for medical purposes; disinfectants; skin sanitisers for medical hygiene purposes.

The contested goods are the following:

Class 3: Cosmetics; skin care (cosmetic preparations for -); creams; emulsions for cosmetic purposes; milk for cosmetic purposes; astringents for cosmetic purposes; lotions for cosmetic purposes; gels for cosmetic purposes; cosmetic masks; oils for cosmetic purposes; oils for toilet purposes; oils for perfumes and scents; essential oils; deodorants; perfumery; eau de cologne; eau de toilette; baths (cosmetic preparations for -); shower gels; soaps; medicated soap; shampoos, conditioners and hair-care preparations; pomades for cosmetic purposes; dentifrices; mouthwashes for cosmetic purposes; bath and shower salts not for medical purposes; sun-tanning cosmetics and preparations, after-sun cosmetics and preparations, and sunscreen cosmetics and preparations; make-up and make-up removing products; make-up preparations; hair-coloring and hair-decoloring preparations; depilatory preparations; tissues impregnated with cosmetic lotions.

Class 5: Cosmetics for medical purposes; tissues impregnated with pharmaceutical lotions.

Signs to be compared

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 depicting six slightly curved strokes in fuchsia, which may resemble a schematic depiction of a rose, for part of the public. Bearing in mind that the opponent’s goods are cosmetics and cleaning preparations in Class 3 and disinfectants and sanitary preparations in Class 5, this element is weak for all those goods if perceived as a rose, since it indicates one of the good’s components or characteristics (e.g. the goods smell of roses). For the part of the public that will not associate the figurative element with a concept, the earlier mark has an average degree of distinctiveness.

The contested sign is a figurative mark depicting a fanciful device, which is a semi-circular concave stroke with a smaller convex semi-circular stroke above, both in shades of pink, that will not be associated with any meaning. Therefore, it is distinctive.

Visually, although the signs are depicted with strokes, the earlier mark has six strokes, while the contested sign has only two. Moreover, the earlier mark’s strokes are shorter and depicted in different directions while the strokes in the contested sign form two semi-circular forms, one against the other. The colouring of the earlier sign is even, while that of the contested sign resembles brush strokes. Even though both signs are depicted in fuchsia and pink, which are colours of the same range, this is insufficient for the finding of similarity as this is an irrelevant, decorative aspect in terms of distinctiveness.

Therefore, as the signs only coincide in irrelevant aspects, such as a similar colour range, it is concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, although the public in the relevant territory may perceive the earlier mark as a rose as explained above, the other sign will be perceived as a fanciful device without any specific meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. In the case that the earlier mark is not perceived as a rose, neither of the signs has any meaning and a conceptual comparison is not possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 13 653 753 .

2. European Union trade mark registration No 13 653 811 .

3. European Union trade mark registration No 13 653 861 .

4. European Union trade mark registration No 13 653 911 .

These earlier rights invoked by the opponent are not similar to the contested sign either. This is because, although the figurative element in these marks are also in pink, the abovementioned differences in its depiction persist as regards the figurative element of the contested sign. Moreover, they contain additional verbal elements, namely ‘CLEARIC’ (earlier mark 1), ‘CLEANTIC’ (earlier mark 2), ‘CLEANETTE’ (earlier mark 3) and ‘CLEANCELL’ (earlier mark 4) in slightly stylised blue upper case, which include additional aural and visual differences between them and the contested sign. Furthermore, irrespective of whether they can be associated with a meaning or not, as the contested sign does not have any meaning, the same conclusion as regards the earlier mark, which has already been compared, is reached. Therefore, these signs are also dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

Vít MAHELKA

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.