OPPOSITION No B 2 903 766

The Procter & Gamble Company, One Procter & Gamble Plaza, 45202 Cincinnati, United States of America (opponent), represented by Deborah Brincat, Procter & Gamble France SAS, 163, quai Aulagnier, 92665 Asnières Cédex, France (employee representative)

a g a i n s t

Polo Grup Inversions S.L., C/. Santander, nº 31, 08020 Barcelona, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Vía 69 -4°, Of. 412, 28013 Madrid, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 903 766 is partially upheld, namely for the following contested goods:

Class 3: Abrasives; essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; animal grooming preparations; detergents; detergent soap; soap; stain removing agents; lime removers; liquid soap for laundry; laundry additives; washing conservation agents; rinsing agents for laundry; natural starches for laundry purposes.

2. European Union trade mark application No 16 390 106 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 3: Tailors' and cobblers' wax.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 390 106 . The opposition is based on European Union trade mark registration No 299 347 ‘P&G’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark on the Proof of Use request

On 01/12/2017 the applicant requested the opponent to submit proof of use of the earlier mark on which the opposition is based. This request was included as part of its arguments.

As informed to the parties by letter dated 14/12/2017, this request for proof of use was rejected as inadmissible, as it was not submitted by way of separate document, as required by 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.

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.

The contested goods are the following:

Class 3: Abrasives; essential oils and aromatic extracts; toiletries; tailors' and cobblers' wax; cleaning and fragrancing preparations; animal grooming preparations; detergents; detergent soap; soap; stain removing agents; lime removers; liquid soap for laundry; laundry additives; washing conservation agents; rinsing agents for laundry; natural starches for laundry purposes.

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.

The contested abrasives; essential oils; cleaning and fragrancing preparations; soap are also included in the opponent´s list of goods, either identically or by using synonyms.

The contested aromatic extracts are included in the broad category of the opponent´s perfumery. They are therefore considered identical.

The contested toiletries include, as a broad category, the opponent´s cosmetics. 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 animal grooming preparations include the opponent´s soaps and hair lotions, since the latter include soaps and hair lotions used for animals. 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 detergents; detergent soap are included in the broad category of the opponent´s soaps. They are therefore considered identical.

The contested stain removing agents; lime removers are covered by the broad category of the opponent´s cleaning preparations. They are therefore considered identical.

The contested liquid soap for laundry; laundry additives; washing conservation agents; rinsing agents for laundry; natural starches for laundry purposes are covered by the broad category of the opponent´s substances for laundry use. They are therefore considered identical.

However, the contested tailors' and cobblers' wax have no relevant commonalities with any of the opponent’s goods. Tailors’ or cobblers’ wax are intended for very specific purposes. In particular, tailors’ wax essentially is chalk, or pipeclay, used to mark seams, darts etc. on material, or for transferring patterns onto fabrics. It is used by tailors and dressmakers. Cobblers’ wax is a resin for waxing thread, used in making or mending shoes. There are vast differences in the natures, purposes, usual origin, relevant public and distribution channels of these goods in comparison with the opponent’s goods in Class 3. Furthermore, these goods are neither complementary, nor in competition. Therefore, they are dissimilar.

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 attention paid by consumers during their purchase is deemed to be average.

3. The signs

P&G
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.

The words elements ‘fresh’, ‘Multi color’ and ‘WASHING POWDER’ in the contested mark constitute differing elements between the marks (see comparison below). All of them exist as such in English. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public (i.e. consumers in Malta, Ireland and United Kingdom) since, for these consumers, the differing elements referred to will have a reduced impact, at least in relation to part of the goods involved, as will be explained below. It is therefore considered that focusing the comparison of signs on this part of the public constitutes the best-case scenario for likelihood of confusion to occur.

The earlier mark ‘P&G’ is perceived as formed by three independent elements, namely the letters ‘P’ and ‘G’, and the symbol ‘&’ (used to indicate ‘and’), that have the concepts of the letters and symbol they represent. As a whole, combined, they have no meaning and, they are of average distinctive character.

Regarding the contested mark, the element ‘P&G’ is perceived in the same way as explained in the previous paragraph. The words ‘Multi’, ‘color’ (perceived as one conceptual unity, ‘Multi color’, to refer to the idea of many/various colours), ‘fresh’ and ‘WASHING POWDER’, are understood as having their natural meanings. In fact, ‘Multi color WASHING POWDER’ could be understood as a conceptual unity, referring to a kind of powder that is suitable for washing colours.

As will be explained in detail below, the elements different from ‘P&G’ in the contested sign constitute differing elements between the signs. These differing elements are descriptive or allusive of the characteristics of part of the goods involved, namely those used for laundry/washing, such as the contested liquid soap for laundry. Some are seen as references of the result obtained after using the product (e.g. ‘fresh’), or of the kind of goods in relation to which the product is meant to be used (e.g. ‘Multi color’, image of the colourful clothes drying and the rainbow depiction), or of the format in which the goods are sold (i.e. ‘WASHING POWDER’). In these cases, the differing verbal and figurative elements forming the contested mark are of reduced impact, being ‘P&G’ the most distinctive element in the mark.

For the goods in relation to which the differing verbal and figurative elements of the contested mark are neither descriptive nor allusive of their characteristics (e.g animal grooming preparations), they are of average distinctive character.

However, it is important to note that, the contested mark consists of the image of the front part of a laundry products´ packaging, that would be expected to be used in relation to the goods commonly used for laundry (e.g.liquid soap for laundry; laundry additives; washing conservation agents; rinsing agents for laundry; natural starches for laundry purposes), but that is not likely to be used in relation to any other products (e.g. toiletries, animal grooming preparations). The Opposition Division notes that, seeing the contested mark as a whole, it is likely that consumers perceive the element “P&G” (i.e. an invented combination of elements) as the element identifying the commercial origin of the goods within the mark, and accompanied by additional secondary elements.

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 this case, the verbal elements of the contested sign will have stronger impact than the figurative elements.

The words ‘Multi color’ are of bigger size than the rest of verbal elements in the contested mark, as well as the rainbow and drying clothes´ depictions. These elements are visually co-dominant. However, the rest of words in the contested mark are clearly perceivable, and will not be overlooked due to their smaller size or position.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. In this case, the earlier mark “P&G” is entirely contained in the contested sign, in which it is positioned as the first element read and pronounced.

Visually, the signs coincide in ‘P&G’, which is the only element forming the earlier mark, and entirely contained in the contested sign, being in this later one the first element read and pronounced when perceiving the mark. In addition, at least in relation to part of the goods involved, ‘P&G’ constitutes the most distinctive element in the mark.

The differing elements are, at least in relation to part of the goods involved, either descriptive or allusive, for the reasons explained above, which decreases their impact in relation to those goods.

As explained above, even in a scenario in which all the elements in the contested mark were perceived as of average distinctive character, it is likely that consumers perceive the element “P&G” as the element identifying the commercial origin of the goods within the mark, accompanied by additional secondary elements.

For all of the above, it is considered that the marks are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘P&G’
(/piː/-/ænd/-/dʒiː/) identically contained in both signs, and positioned at the beginning of the contested mark. The marks differ in the pronunciation of the elements ‘fresh’, ‘Multi color’, ‘WASHING’ and ‘POWDER’.

For consumers trying to identify the commercial origin of the goods, the differing words contained in the marks that have been considered to be descriptive or allusive of the characteristics of part of the goods involved, are not as useful as the distinctive terms, in relation to those goods. Therefore, in this case and in relation to said goods, it cannot be totally disregarded that part of the public could omit the differing words described above, and refer to the contested sign by pronouncing only the distinctive element ‘P&G’. This is also likely to be the case also for the part of the public perceiving the contested mark as formed by the mark ‘P&G’ and additional secondary verbal and figurative elements.

For all of the above, it is considered that the marks are aurally similar to at least an average degree, if the differing terms of the contested mark are pronounced, and aurally identical, if only the distinctive element ‘P&G’ is pronounced when referring to this later mark.

Conceptually, the earlier mark is formed by letters that have the concept of the letters they represent but, the combination ‘P&G’ as a whole has no meaning. Therefore, although the public in the relevant territory will perceive the meanings in the contested mark as explained above, since the earlier mark will not be associated with any meaning, the signs are not conceptually similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

The goods compared are partly identical and partly dissimilar. Those found to be identical are directed at the public at large, who is deemed to pay an average degree of attention during the purchase.

The earlier mark is of average distinctive character.

The applicant claims that the visual differences between the marks are enough to avoid confusion between them, and that the signs also differ in rhythm and intonation. It argues that the signs are so different, that no comparison of the goods is needed, since the opposition should be rejected on this basis.

However, as explained in detail in section c) above, the Opposition Division does not share the applicant´s view, and considers that the signs are visually similar to at least a low degree, aurally either similar to at least an average degree or identical (see aural comparison above) and not conceptually similar. These conclusions come from the fact that the signs coincide in ‘P&G’, which is the only element forming the earlier mark, and entirely contained in the contested sign, being in this later one the first element read and pronounced when perceiving the mark. In addition, in relation to part of the goods, the common element ‘P&G’ constitutes the most distinctive element in the contested mark.

The differing elements are descriptive or allusive, in relation to part of the goods involved, and/or of secondary impact. In addition, as already explained, even in the scenario in which the contested mark has no elements more distinctive than others, it is likely that consumers perceive the element “P&G” as the element identifying the commercial origin of the goods within the mark, accompanied by additional secondary elements.

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). The average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

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 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 this case, for all of the above, it is considered that the coincidences between the signs, together with the identity of part of the goods involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods found to be identical come from the same or economically-liked undertakings.

Regarding the coincidence in ‘P&G’, the Opposition Division notes that it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 993 347. 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 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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Vanessa PAGE

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.