OPPOSITION No B 2 952 748

Bábolna Környezetbiológiai Központ Kft., Szállás utca 6, 1107, Budapest, Hungary (opponent), represented by Patender Nemzetközi Iparjogvédelmi Képviseleti Kft., Badacsonyi u. 2/B, 1113, Budapest, Hungary (professional representative)

a g a i n s t

Peel Off Plastics, Lieu-dit du Colombier - BP 413, 97133, Saint Barthelemy, France (applicant), represented by Martin Grasset, 86, Boulevard Carnot, 59800, Lille, France (professional representative).

On 26/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 952 748 is upheld for all the contested goods.

2. European Union trade mark application No 16 810 021 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 810 021 for the word mark ‘MOSQUIBOX’. The opposition is based on European Union trade mark registration No 11 833 829 for the word mark ‘MOSQUITOX’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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.

1. The goods

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

Class 5: Preparations for destroying vermin; Anti-mosquito preparations.

The contested goods are the following:

Class 5: Preparations for killing and destroying pests; Insecticides; Mothproofing preparations; Insect repellents.

Class 21: Insect traps; Electric and non-electric devices for attracting and killing insects.

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.

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.

Contested goods in Class 5

Preparations for killing and destroying pests are identically contained in both lists of goods (including synonyms).

The contested Insecticides; Mothproofing preparations are included in the broad category of, or overlap with, the opponent’s Preparations for destroying vermin (which are used to get rid of or control small harmful or annoying insects or animals). Therefore, they are identical.

The contested Insect repellents overlap with the opponent’s Anti-mosquito preparations as the latter also include mosquito repellents. Therefore, they are identical.

Contested goods in Class 21

The contested Insect traps; Electric and non-electric devices for attracting and killing insects and the opponent’s Preparations for destroying vermin are similar. The contested goods and the earlier goods are in competition with each other and can also be complementary. They are usually produced by the same companies. Also, the distribution channels and the relevant consumers are the same.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

MOSQUITOX	MOSQUIBOX
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. In the present case, the Opposition Division will focus on the Polish-speaking part of the public because the signs are meaningless in Polish and the Opposition Division considers that this increases the likelihood of confusion between the signs.

Both signs are word marks; the earlier mark consists of the verbal element ‘MOSQUITOX’ and the contested mark of the verbal element ‘MOSQUIBOX’. These elements do not have any meanings for the relevant part of the public in question and, therefore, their distinctiveness is average.

Visually, the signs coincide in their letter sequence ‘MOSQUI*OX’. The coinciding component is distinctive. They differ only in one letter, in the final part of both signs, namely ‘T’ in the earlier mark and ‘B’ in the contested sign. It must be pointed out that 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. Consequently, the identical beginning of the signs is of particular importance. Also, the identical length of the signs and the fact that the different letters are positioned towards the end of the signs means these will not be clearly identified. As such this difference loses weight.

It is concluded that the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MOSQUI*OX’, present identically in both signs. The pronunciation differs in the sound of the consonants, ‘T’ in the earlier mark and ‘B’ in the contested sign position in the final parts of both signs. The signs have the same rhythm and intonation because they share the same number of syllables and an identical vowel sequence. Bearing in mind all the above, the signs are considered to be similar to a high degree from a phonetic point of view.

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 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 are partially identical and partially similar.

The marks are visually and aurally similar to a high degree, while a conceptual comparison is not possible, thus, it does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attentiveness is considered to be average.

The signs at issue are identical in most of their letters, namely they have in common eight out of nine letters placed in the same order, ‘MOSQUI*OX’. The signs have identical lengths and differ only in one letter in their final parts, resulting overall in a highly similar visual and aural perception of the signs.

In consequence, the differences between the signs, as stated above, are insufficient to counteract the similarities arising from the identical distinctive coinciding sequence of letters ‘MOSQUI*OX’. In particular, as it must be borne in mind 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). Therefore, the consumers are not likely to remember the difference limited to one letter between the signs, in particular as it is placed in the final part of the signs.

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking part 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 11 833 829. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.

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

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.