OPPOSITION No B 2 926 601

Tahe Productos Cosmeticos, S.L., Pol. Ind. Oeste, C/ Paraguay, Parc 8/3, 30169 San Gines (Murcia), Spain (opponent), represented by Legismark, Avda. Libertad, 10, 2ºB, 30009 Murcia, Spain (professional representative)

a g a i n s t

Tade Pays du Levant, SARL, Avenue de Paris, 83870 Signes, France (applicant), represented by Myriam Angelier, 3 Place Félix Baret, 13006 Marseille, France (professional representative).

On 29/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 601 is upheld for all the contested goods, namely:

Class 3: Essential oils and aromatic extracts; Toiletry preparations; Cleaning and fragrancing preparations; Cosmetics; Salts for cosmetic purposes; Soaps; Scented linen water.

2. European Union trade mark application No 16 516 007 is rejected for all the contested goods. It may proceed for the remaining goods.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 516 007 ‘Tadé’, namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 2 564 159 . 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 Spanish trade mark registration No 2 564 159.

1. The goods

The goods on which the opposition is based are the following:

Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions and shavers for shavers, colony waters, personal use deodorants and hair conditioners.

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; Toiletry preparations; Cleaning and fragrancing preparations; Cosmetics; Salts for cosmetic purposes; Soaps; Scented linen water.

Essential oils; cosmetics; soaps are identically contained in both lists of goods.

The contested aromatic extracts overlap with the opponent’s essential oils. Therefore, they are identical.

The contested toiletry preparations overlap with the opponent’s cosmetics. Therefore, they are identical.

The contested cleaning preparations include, as a broader category the opponent’s 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 fragrancing preparations include, as a broader category, or overlap with the opponent’s colony waters. 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 salts for cosmetic purposes are included in the opponent’s broad category cosmetics. Therefore, they are identical.

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

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 degree of attention is average due to the nature of the goods.

3. The signs

	Tadé
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 a word element ‘TAHE’ in a stylised typeface. It does not have any meaning as a whole and has no identifiable component and is therefore distinctive in relation to the goods in question. It has no element that could be considered clearly more dominant than other elements.

The contested sign is a word mark, consisting of ‘Tadé’. It does not have any meaning as a whole and has no identifiable component and is therefore distinctive in relation to the goods in question

Visually, the signs coincide in the letters ‘TA_E’, considering also that in the case of word marks, it is the word that is protected, and not its written form. The signs have a similar length. However, they differ in their respective third letters ‘H’/‘D’, in the stylisation of the earlier mark and in the tilde on the letter ‘e‘ of the contested mark.

The signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TA_E’, present identically in both signs and differs in the sound of their respective third letters ‘H’/‘D’. Although without tilde the letter ‘e’ in the earlier mark will be pronounced the same ‘é’ as in the contested mark.

The signs coincide in length and rhythm when pronounced.

Therefore, the signs are aurally similar to a high degree.

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.

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

The goods have been found identical. The visual, aural and conceptual aspects have been examined.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letters ‘TA_E’ in common. The signs have is the same length. The difference lies in the letters H/D in the middle of the signs, in addition to the stylization of the letters in the earlier mark and the tilde on the letter E of the contested mark. However, these differences can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods - which are identical - come from the same or economically linked undertakings. Furthermore, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 564 159. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 2 564 159, 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 rights 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

José Antonio GARRIDO OTAOLA

Erkki Münter

Marine DARTEYRE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.