OPPOSITION No B 2 916 180

Frey + Lau GmbH, Immenhacken 12, 24558, Henstedt-Ulzburg, Germany (opponent), represented by Stork Bamberger Patentanwälte Partmbb, Meiendorfer Str. 89, 22145, Hamburg, Germany (professional representative)

a g a i n s t

E.U.D. Group a.s., J. Palacha 121/8, 690 02, Břeclav, Czech Republic (applicant), represented by Kateřina Vaňková, Nerudova 1095, 664 34, Kuřim, Czech Republic (professional representative).

On 22/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 180 is partially upheld, namely for the following contested goods:

Class 3: Cleaning agents of all kinds; Perfumery; Cosmetics; Soaps; Soaps in liquid form; Hair and body shampoos; Bath foams and bath salts; Ladies' and men's cosmetics; Skin and body cleansing preparations.

2. European Union trade mark application No 16 220 824 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 220 824 for the figurative mark . The opposition is based on international trade mark registration No 1 040 704 designating the European Union for the word mark ‘CAPSO’. 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.

a) The goods

The goods on which the opposition is based, after a partial refusal, are the following:

Class 1: Chemicals for the food industry, namely chemical additives for flavorings and aromatic essences, as far as contained in this class; chemical compounds and chemical compositions for the manufacture of essences and flavorings; chemicals used as essences and flavorings; chemicals as flavor carrier for food and foodstuff, dietary supplements, alcoholic and non-alcoholic beverages, fodder and pharmaceutical preparations; nature identical and artificial flavorings and aromas (chemical preparations) (other than essential oils and flavorings for cakes) for food and beverages as well as for pharmaceutical preparations); all aforementioned goods with the exception of chemical preparations for keeping fresh and preserving foodstuffs.

Class 3: Essential oils, in particular for the preparation of pharmaceutical preparations, fodder and food, in particular beverages; fragrances; flavorings for cakes (essential oils), all the aforementioned goods only for industrial processing and not directed to end consumers.

Class 30: Natural flavorings (other than essential oils) for food and beverages as well as for pharmaceutical preparations; natural aromas (other than essential oils) for food and beverages as well as for pharmaceutical preparations; coffee and tea flavorings; natural essences (other than essential oils) for food and beverages as well as for pharmaceutical preparations; flavorings for cakes (other than essential oils), all the aforementioned goods only for industrial processing and not directed to end consumers.

Class 31: Natural, nature identical and artificial flavorings (other than essential oils) for fodder; aromas (other than essential oils) for fodder; essences (other than essentials oils) for fodder.

The contested goods are the following:

Class 3: Washing and bleaching preparations for laundry use; Cleaning agents of all kinds; Polishing, scouring and abrasive preparations; Scouring preparations for laundry; Perfumery; Cosmetics; Soaps; Soaps in liquid form; Hair and body shampoos; Bath foams and bath salts; Ladies' and men's cosmetics; Skin and body cleansing preparations.

Class 5: Sanitary preparations for medical purposes; feminine care products, In particular sanitary napkins (towels); Panty liners and Tampons; sanitary pads and briefs; Interlabial pads for feminine hygiene; pants for feminine hygiene; Napkins for incontinents; Pads and pants; Disposable napkins of paper and/or cellulose; Paper diapers; Sanitary pads and pants and napkins for incontinents; Pads and pants.

Class 16: Hygienic paper; Paper tissues; Cloths and wipes of paper.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

It is to be noted that the limitations in the opponent’s lists of goods, namely ‘all aforementioned goods with the exception of chemical preparations for keeping fresh and preserving foodstuffs’ in Class 1 and ‘all the aforementioned goods only for industrial processing and not directed to end consumers’ in Classes 3 and 30, do not change the nature of the goods and therefore they do not influence the outcome of the comparison. Therefore, it will not be repeated in each of the comparisons.

Contested goods in Class 3

The contested perfumery covers all perfumes collectively, which are fragrances used for enhancing the odour or aroma the body or of other items by giving them a pleasant scent that overlap with the opponent’s fragrance. Therefore, they are identical.

The contested cleaning agents of all kinds; cosmetics; soaps; soaps in liquid form; hair and body shampoos; bath foams and bath salts; ladies' and men's cosmetics; skin and body cleansing preparations include washing, body cleaning and beauty care preparations that are similar to the opponent’s essential oils. The goods usually coincide in relevant public, distribution channels and producer.

The opponent’s goods include essential oils and fragrances in Class 3, chemicals used as essences and flavourings for the industry in Class 1, flavouring and essences for food and beverage in Class 30 and flavourings, aromas and essences for fodder in Class 31.

In its observations, the Opponent argues that the essential oils, essences, aromas and flavouring covered by the earlier mark may form a component of the contested goods. The opposition notes that the remaining contested washing preparations for laundry use; bleaching preparations for laundry use; polishing, scouring and abrasive preparations; scouring preparations for laundry are products that serve to clean, bleach, polish and scour clothing or surfaces. The mere fact that the contested goods have aromas or fragrances as components does not render the goods similar. The goods are different in nature and they are marketed though different distribution channels and usually do not have the same commercial origin. Furthermore, there is no complementarity or interchangeability either. Therefore, they are considered dissimilar to all the opponent’s goods.

Contested goods in Class 5

The contested sanitary preparations for medical purposes; feminine care products, in particular sanitary napkins (towels); panty liners and tampons; sanitary pads and briefs; interlabial pads for feminine hygiene; pants for feminine hygiene; napkins for incontinents; pads and pants; disposable napkins of paper and/or cellulose; paper diapers; sanitary pads and pants and napkins for incontinents; pads and pants are all sanitary preparations and articles that are dissimilar to all the opponent’s goods. Reference is made to the previous assertions on the goods protected by the earlier mark in Classes 1, 3, 30 and 31. The contested goods have no relevant points in contact with any of the opponent’s goods. There is a fundamental difference in the nature and purpose. They neither target the same public nor move through the same distribution channels. Furthermore, there is no complementarity or interchangeability either.

Contested goods in Class 16

The contested hygienic paper; paper tissues; cloths and wipes of paper have a different nature and relate to different products than the opponent’s goods in Classes 1, 3, 30 and 31. They are addressed at different public, have different producers and meet different needs. They are neither complementary nor are they in competition. Therefore, the contested hygienic paper; paper tissues; cloths and wipes of paper are dissimilar to all the opponent’s goods.

In its observations, the opponent argues that the goods of the earlier mark, namely, fragrances, essential oils, essences, flavourings and aromas in classes 3, 30 and 31 may form a component of the contested goods in Classes 5 and 16. In view of the Opposition Division, the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Therefore the argument is to be set aside.

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 identical or similar are directed at the public at large. The degree of attention is average.

c) The signs

CAPSO
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the verbal element ‘Cappo’ present in the contested sign is meaningless in the relevant territory, due to its similarity to the Italian word ‘capo’, the Italian public may consider it as a misspelling of the original one and therefore understand the word as the upper part of the human body or the head of a tribe or clan. However, the vast majority of the non-Italian-speaking part of the public will not perceive any meaning in it.

The Opposition Division finds it appropriate to focus the comparison of the signs on the non-Italian-speaking part of the public where the verbal element ‘Cappo’ is meaningless and which constitutes the best-case scenario for likelihood of confusion to arise.

The contested mark is composed by the verbal element ‘Cappo’ written in a rather standard typeface and underlined. The word ‘Cappo’ is meaningless for the relevant public and therefore distinctive to an average degree. The underline will be perceived as such, stressing the verbal element above, and will not be attributed trade mark significance. It is therefore considered non-distinctive.

Moreover, 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).

In its arguments the applicant claims that the term ‘CAPSO’ in the earlier mark will be perceived as the word ‘capsule’ and a substantial part of the relevant public would understand the term due to its similarity in different languages such as ‘capsula’ in Italian, ‘kapsel’ in German or ‘kapsule’ in Slovak. In view of the Opposition Division the term ‘CAPSO’ is not an abbreviation that the general public is aware, but rather specialists, and will not link it to the term ‘capsule’. Therefore, the applicant argument is to be set aside.

In view of the above, the term ‘CAPSO’ of the earlier mark as a whole has no meaning for the relevant public. Thus, its distinctiveness in relation to the goods concerned is normal.

Furthermore, the signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘CAP*O’ which represents four out of five letters. However, they differ in the fourth letter ‘S’ and ‘p’ respectively and the slight stylisation and the underline, both in the contested sign. However, as remarked above, the underline has a reduced impact.

When figurative marks with word elements, like the contested one, and word marks, like the earlier one, are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylised. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour.

It is therefore considered that the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of ‘CAP*O’ present identically in both signs. The pronunciation differs in the sound of the fourth letter of the signs, namely the consonant ‘S’ and ‘P’ respectively.

It is therefore considered that the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

e) 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. 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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It has been established that the contested goods are partially identical, partially similar and partially dissimilar to the goods of the earlier mark. The relevant public is composed of the public at large and its degree of attention is average. The earlier mark has a normal degree of distinctiveness with respect to the goods in question. Finally, the signs have been established to be visually similar to an average degree, aurally highly similar and the conceptual comparison is not possible.

In the light of the foregoing, a likelihood of confusion is considered to exist with respect to the goods found to be identical or similar. The established similarities between the signs and the goods may not be outweighed by the differences between the signs. These differences are mainly confined to elements of lesser importance for the overall impression created by the signs, such as the slight stylisation and the underline, designed mainly to further focus the attention on the word element of the sign. As for the difference of one letter, it is not sufficient to outweigh the similarities, which lead to an overall similarity of the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the non-Italian-speaking part of the public of the public where the verbal element ‘Cappo’ is meaningless and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 040 704 designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Anna BAKALARZ

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.