OPPOSITION No B 2 918 558

Mistral LLC, 420 North Cedros Ave, 92075 Solana Beach, United States of America (opponent), represented by Casalonga Alicante S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Mistral International B.V., Industrieweg 4 A, 7641 AT Wierden (Overijssel), the Netherlands (applicant), represented by Inaday, Hengelosestraat 141, 7521 AA Enschede, the Netherlands (professional representative).

On 09/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 918 558 is upheld for all the contested goods.

2. European Union trade mark application No 16 421 612 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 421 612 for the word mark ‘MISTRAL’. The opposition is based on, inter alia, European Union trade mark registration No 3 085 339 for the figurative mark . 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.

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 3 085 339, since this earlier mark has less differentiating elements while being compared with the contested sign.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3: Body soaps, foam bath oils, body lotion, body cream, essential oils for personal use, linen water, shower gel, eau de toilette, perfumery, namely, perfume and cologne, massage oils, non-medicated bath salts, incense, and hair lotions, namely shampoo and conditioner.

The contested goods are the following:

Class 3: Body cleaning and beauty care preparations; skin care preparations; hair care cosmetics; soaps; soaps for body care; bath and shower sets included in class 3; perfumery; cosmetics; antiperspirants [toiletries]; antiperspirants [toiletries]; perfume; oils for hair conditioning; hair lotion; ointments included in class 3; scented water; preparations for washing hair; make-up preparations; facecare products; lip pencils; eyebrow pencils; nail care preparations; nail lacquer removing preparations; depilatories; toilet soap; essential oils; articles for body and beauty care; dental care preparations; dentifrice; products for personal care; shampoo; hair spray for men; make-up remover; lipstick; household soaps; shaving soap; shaving foam; shaving lotion; laundry preparations; bleaching preparations; stain removing preparations; non-medicated toilet articles; sunscreen cream; aftersun creams and lotions; water spray for body care; preparations for treating sunburn; hair spray; showergels; conditioners; sun-tanning oils; sunscreen; sun creams; sun-tanning gels; sun tan milk; sun tan lotion; sunscreen preparations; tanning preparations; waterproof sunscreen; cosmetic sun-protecting preparations.

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

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

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 soaps for body care; perfumery; perfume; shampoo; showergels; conditioners are identically contained in both lists of goods (including synonyms).

The contested body cleaning and beauty care preparations; skin care preparations; cosmetics include, as broader categories, or overlap with, the opponent’s body soaps. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested soaps include, as a broader category, the opponent’s body soaps. 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 toilet soap; shaving soap are included in the broad category of, or overlap with, the opponent’s body soaps. Therefore, they are identical.

The contested essential oils include, as a broader category, the opponent’s essential oils for personal use. 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 hair care cosmetics; preparations for washing hair include, as broader categories the opponent’s shampoo. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested oils for hair conditioning are included in the broad category of, or overlap with, the opponent’s essential oils for personal use. Therefore, they are identical.

The contested scented water is included in the broad category of, or overlap with, the opponent’s perfume. Therefore, they are identical.

The Opposition Division considers that the remaining contested goods, namely bath and shower sets included in class 3; antiperspirants [toiletries]; antiperspirants [toiletries]; hair lotion; ointments included in class 3; make-up preparations; facecare products; lip pencils; eyebrow pencils; nail care preparations; nail lacquer removing preparations; depilatories; articles for body and beauty care; dental care preparations; dentifrice; products for personal care; hair spray for men; make-up remover; lipstick; household soaps; shaving foam; shaving lotion; laundry preparations; bleaching preparations; stain removing preparations; non-medicated toilet articles; sunscreen cream; aftersun creams and lotions; water spray for body care; preparations for treating sunburn; hair spray; sun-tanning oils; sunscreen; sun creams; sun-tanning gels; sun tan milk; sun tan lotion; sunscreen preparations; tanning preparations; waterproof sunscreen; cosmetic sun-protecting preparations are, at least, lowly similar to the opponent’s goods in Class 3. These goods can coincide in, at least, the producers, relevant public and distribution channels. For the sake of completeness, it should be pointed out that the applicant did not put forward any arguments to the contrary.

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 various degrees) are directed at the public at large. The degree of attention is considered average.

3. The signs

	MISTRAL
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).

As a preliminary remark, it is reasonable to assume that the verbal element of the earlier mark will be perceived by a vast majority of the relevant public as being the word ‘MISTRAL’. This finding was not discussed by the applicant.

The verbal element ‘MISTRAL’, common for both marks, might be associated by a part of the relevant public with a type of a wind, namely ‘a strong cold dry wind that blows through the Rhône valley and the South France to the Mediterranean coast, mainly in the winter’ (see Collins English Dictionary online). However, it cannot be excluded that another part of the relevant public will not link this term with any concept and it will be perceived as meaningless. In any case, bearing in mind the relevant goods, the distinctiveness of the term ‘MISTRAL’ should be seen as normal.

Visually, the signs coincide in the verbal element ‘MISTRAL’. They differ in the stylisation of this common element in the earlier mark. To this extent it should be pointed out that even though this stylisation is rather particular, it will not divert the consumer’s attention away from the element it seems to embellish.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word /MISTRAL/, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, although a part of the public in the relevant territory will perceive the meaning of the signs, as explained above, for another part of the relevant public the signs are meaningless. Consequently, the signs are either conceptually identical or the conceptual comparison is not possible and so 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.

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.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

As concluded above, the contested goods have been found either identical or similar (to various degrees) to the goods of the earlier mark. They are directed at the public at large whose level of attention is average.

The signs are visually highly similar and aurally identical, whereas from the semantic perspective, depending on the meaning (or its lack) associated with the common verbal element, the marks are either identical or the conceptual comparison remains neutral. The earlier mark has a normal degree of distinctiveness.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that 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 case at hand, the overall high similarity of the marks offsets the lower degree of similarity between some of the goods.

In light of the above, there is a likelihood of confusion for the public at large with an average level of attention. To this extent, 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).

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and, therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 3 085 339. It follows from the above that the contested trade mark must be rejected for all the goods.

As the earlier European Union trade mark registration No 3 085 339 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vít MAHELKA

Klaudia MISZTAL

Chantal VAN RIEL

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.