OPPOSITION No B 2 931 783

Dr. Kurt Wolff GmbH & Co. KG, Johanneswerkstr. 34-36, 33611 Bielefeld, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Suning International Services, 23/25 avenue Mac-Mahon, 75017 Paris, France (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 02/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 931 783 is upheld for all the contested goods, namely:

Class 3: Bath preparations, not for medical purposes; perfumery; cosmetics.

2. European Union trade mark application No 16 547 317 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 547 317 , namely against some of the goods in Class 3. The opposition is based on European Union trade mark registration No 10 351 633 ‘Tuning’. The opponent invoked Article 8(1)(b) EUTMR.

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.

According to Article 10(1) EUTMDR (applicable to the present proceedings by virtue of Article 82(2)(d) EUTMDR, since the request for proof of use was filed on 11/02/2018), a request for proof of use of an earlier mark pursuant to Article 47(2) or (3) EUTMR is admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) EUTMDR.

The applicant has not submitted the request for proof of use 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.

1. The goods

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices; none of the aforesaid goods including bleaching preparations and other substances for laundry use, or cleaning, polishing, scouring and abrasive preparations; shampoo.

Class 5: Pharmaceuticals; sanitary preparations for medical purposes.

The contested goods are the following:

Class 3: Bath preparations, not for medical purposes; perfumery; cosmetics.

Perfumery; cosmetics are identical to the opponent’s perfumery, cosmetics; none of the aforesaid goods including bleaching preparations and other substances for laundry use, or cleaning, polishing, scouring and abrasive preparations.

The contested bath preparations, not for medical purposes are included in the broad category of the opponent’s cosmetics; none of the aforesaid goods including bleaching preparations and other substances for laundry use, or cleaning, polishing, scouring and abrasive preparations. 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.

In its observations, the opponent argues that ‘the goods are rather cheap, purchased on a daily basis and commonly offered and sold in supermarkets and drug stores so that the degree of attention of average consumers may vary from a normal to a lower than normal.’ However, the Opposition Division considers that, although some of the goods are sold in supermarkets and drug stores and some of them are relatively cheap, these are not goods generally purchased on a daily basis and many consumers in fact choose these products carefully and read about the properties of the products before purchasing them, as such products may have a significant consequences for their appearance. Moreover, some of the cosmetics and perfumes are not cheap. Therefore, the degree of attention of the average consumer is considered average.

3. The signs

Tuning
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 element ‘Tuning’ is not meaningful for at least the majority of the public in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Italian-, Lithuanian-, Polish- and Romanian-speaking parts of the public.

The earlier trade mark is a one-word mark. In the case of word marks, the use of lower or upper case letters is immaterial. In Czech, Italian, Lithuanian, Polish and Romanian, the word ‘Tuning’ has no meaning in relation to the relevant goods, and at least the majority of the relevant public will see it as meaningless. Therefore, it is not descriptive, allusive or otherwise weak and its distinctiveness is average.

The contested sign is a figurative trade mark containing the verbal element ‘SUNING’ depicted in rather standard upper case black letters.

In its observations, the applicant explained that the English suffix ‘-ing’ used in both signs is sometimes borrowed by other languages and then used for specific words such as ‘camping’, ‘parking’, ‘lifting’, ‘shopping’ or ‘footing’, and therefore the comparison of the signs should be limited to the first part, ‘SUN’, which, according to the applicant, is a widely used English word for products giving protection against the sun. The words given as examples by the applicant are not comparable to the contested sign, ‘SUNING’. The examples given by the applicant are words commonly used in English, some of them also internationally, unlike ‘SUNING’, which does not exist. While it may be true that the English suffix ‘-ing’ may be used in some languages as an add-on to local words, the applicant did not show that this is the case in the languages of the relevant public as defined above. This relevant public also cannot be expected to be aware of nuances of English grammar. Therefore, it is unlikely that the relevant public of the Czech Republic, Italy, Lithuania, Poland and Romania will split the contested sign and perceive the English word ‘SUN’ in it. This is also taking into account the fact that there is no graphical differentiation of the letters in the contested sign that might suggest to consumers that the word could be split. Therefore, the relevant part of the public will perceive the contested sign as one meaningless verbal element. It is not descriptive, allusive or otherwise weak in relation to the relevant goods and its distinctiveness is average.

Visually, the signs coincide in the letters ‘*UNING’. However, they differ in their first letters, ‘T’ and ‘S’, respectively.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, generally, is remembered more clearly than the rest of the sign. However, this is not a fixed rule and it depends on all the other circumstances of the case. In the present case, both signs contain six letters. They cannot be considered short signs and consumers will not perceive them immediately in their entirety as they would short signs. Moreover, the General Court has held that, while it is true that the initial part of the word marks may be liable to attract the consumer’s attention more than the following parts, the difference in the first letters of each sign is not enough to counteract the similarity between the signs in respect of all the other letters making up the majority of the signs in issue (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 67). In the present case, the only difference between the signs lies in their first letter, while the following five letters are identical.

Therefore, the signs are visually highly similar.

Aurally, both signs are two-syllable words. Their pronunciation coincides in the sound of the letters ‛*UNING’, present identically in both signs. The pronunciation differs in the sound of their first letters, ‛T’ and ‘S’, respectively. Although the first letters sound different, the remaining five letters sound identical in both signs. Moreover, the second syllable, ‘-NING’, contains the majority of the consonants and is at least clearly audibly identical in both signs, if not actually stronger than the first syllables, ‘TU’/‘SU’.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the majority of 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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 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 present case, the goods are identical. They target the general public, which displays an average degree of attention. The signs are visually and aurally highly similar, while the conceptual aspect does not influence the comparison of the signs, since the signs are meaningless in relation to the relevant goods for the majority of the relevant public.

The contested sign is a figurative mark containing one verbal element, which is depicted in rather standard letters. Therefore, consumers encountering the signs will see ‘Tuning’ and ‘SUNING’, both having the same length, the same structure and almost the same letters.

Account must be 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). In the present case, the difference between the signs lies in only one letter and the remaining letters are identical and will be perceived identically both aurally and visually. Therefore, it is not possible to exclude the possibility that consumers might confuse the signs, which differ in only one letter even when the differing letter is the first. As explained above in section c), the difference in the first letters of each sign is not enough to counteract the similarity between the signs in respect of all the other letters making up the majority of the signs at issue (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 67).

Taking into account the abovementioned principles of interdependence and imperfect recollection and that the goods are identical and the signs are visually and aurally highly similar, a likelihood of confusion exists.

Considering all the above, there is a likelihood of confusion on the part of the Czech-, Italian-, Lithuanian-, Polish- and Romanian-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 351 633. It follows that the contested trade mark must be rejected for all the contested goods.

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 (formerly 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

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.