OPPOSITION No B 2 994 062

Diramode, 1, rue John Hadley, 59654 Villeneuve d'Ascq, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Saleh Hamad Al Abdullatif Trading Group Company Joint Stock, Prince Sultan St., Al Mohammadiyah, District 1, 21445 Jeddah, Saudi Arabia (applicant) represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101BA Amsterdam, Netherlands (professional representative).

On 20/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 994 062 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all of the goods of the European Union trade mark application No 16 958 811 for the figurative mark . The opposition is based on the French trade mark registration No 1 643 294, and the European Union trademark registrations No 14 823 967 and No 188 995, all for the word mark ‘PIMKIE’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In its reply to the opposition on 18/07/2018 and as part of the observations submitted, the applicant requested that the opponent submit of proof of use of one of the trade marks on which the opposition is based, namely French trademark registration No 1 643 294 for the word mark ‘PIMKIE’. Following this request, on 01/08/2018 the Office gave the opponent until 01/10/2018 to submit evidence of use of the earlier trade mark. After a request of an extension of time for submitting proof of use by the opponent on 10/09/2018, the Office extended the limit on 21/09/2018 to 01/12/2018. On 10/10/2018, within this time limit, the opponent submitted evidence of use.

According to Article 10(1) EUTMDR, a request for proof of use is only 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. Moreover, the request has to be explicit and unambiguous and mere observations or remarks by the applicant in respect of the (lack of) use of the opponent’s mark are not sufficiently explicit and do not constitute a valid request for proof of genuine use.

In the present case, even if a request for proof of use of the opponent’s French trademark registration No 1 643 294 can be identified in the applicant’s observations submitted on 18/07/2018, within the period referred to above, it was not presented separately (on a separate sheet). Consequently, since the applicant did not submit the request for proof of use by way of a separate document as required, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

It follows that the applicant’s request for proof of use was in fact inadmissible and must therefore be rejected. As a result, the evidence of use of the earlier mark submitted by the opponent should not be taken into consideration in the present proceedings and will therefore be fully disregarded. As a consequence, French trademark registration No 1 643 294 will be considered to cover all the goods for which it has been registered and on which the opposition is based.

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 188 995.

a) 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, shampoos, lipsticks, bath salts, suntan cream for skin; toilet water, dentifrices, essential oils.

The contested goods 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.

Contested goods in Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices are identically contained in both lists of goods.

b) 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 and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

c) The signs

PIMKIE
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 earlier mark is the word mark ‘PIMKIE’, which has no meaning for the relevant public and is, therefore, distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore it is irrelevant whether the mark is depicted in upper or lower case letters.

The contested sign is a figurative mark in pink colour comprising the verbal element ‘PINK’ depicted in rather stylised lower case letters beside the verbal element ‘4ever’, placed vertically, in a much smaller size. On top of the verbal element ‘4ever’ there is a figurative element made up of two oval shapes in two shades of pink.

The opponent argues that the verbal element of the contested sign is ‘PINKI’, which may be understood as ‘PINKIE’ (American English for a little finger) by consumers, but that it may also be linked to the colour pink by some consumers. Either way, according to the opponent, the contested sign as a whole has no clear and obvious meaning in any of the relevant languages.

However, taking into account the uniform letter string ‘P-I-N-K’ in comparison to the vertical letter string ‘4ever’ (depicted in a completely different style) and the shape of the figurative element on top of this verbal element, the Opposition Division does not consider that the vertical verbal element together with the figurative element would be perceived as representing the letter ‘i’ but instead the relevant public will clearly perceive the contested sign as consisting of two different verbal elements, namely ‘PINK’ and ’4ever’ together with an abstract figurative element. Consequently, there is no reason why the relevant public would associate the contested sign with the word ‘PINKI’ or the meaning of ‘pinkie’ as argued by the opponent.

Furthermore, as regards the verbal element ‘PINK’ in the contested sign, the Opposition Division points out that it is the English term for the colour pink and is part of basic English vocabulary regularly used both in everyday life and in advertising, the meaning of which will be understood by the average consumer of the general public throughout the EU (15/10/2018, T-164/17 - Apple and Pear Australia and Star Fruits Diffusion v EUIPO - Pink Lady America (WILD PINK), EU:T:2018:678, § 58-59).

Even if the relevant public will not perceive the word ‘PINK’ as such as an indication of the commercial origin of the goods but rather as a description of their characteristics (namely their colour), the verbal element itself, due to the rather stylised letters, may still have some distinctive character and, therefore, this element of the contested sign has at least a weak distinctive character.

The remaining verbal element of the contested sign, ‘4ever’, is commonly used as a misspelling for the English word/expression ‘forever’ meaning i.e. ‘for always, for a very long time’ or as a slogan of support of someone/something (information extracted from Oxford English Dictionary on 05/06/2019 at https://en.oxforddictionaries.com/ definition/forever). However, in contrast with ‘PINK’ it is not likely to be understood by the public in the parts of the European Union where English is not commonly spoken. Accordingly, while these verbal elements will be understood by the English-speaking public as a meaningful expression, with no distinctiveness, referring to long-lasting goods in pink colour, the non-English-speaking public will perceive them as a combination of the element ‘PINK’ understood as a specific colour and weakly distinctive in relation to some of the relevant goods and the meaningless component, ‘4ever’, which has an average degree of distinctiveness.

As regards the figurative element of the contested sign, since it is of a rather abstract shape and has no connection to the relevant goods, it is distinctive to a normal degree.

The verbal element ‘PINK’ and the figurative element are, due to their bigger size than the other element ('4ever'), and their position in the sign, the co-dominant (visually more eye-caching) elements of the contested sign.

Visually, the signs only coincide in the string of the letters ‘PI-’ and the letter ‘K’. However, they differ in the letters ‘M’, ‘I’ and ‘E’ in the earlier mark and in the letter ‘N’ in the contested sign as well as in its additional expression ‘4ever’, the figurative element and the colour. Moreover, the rather significant stylisation of the verbal element ‘PINK’ in the contested sign has an impact on the visual impression produced by the sign, in particular since the verbal element ‘PINK’ is weak as such throughout the European Union.

Therefore, the signs are visually similar to a very low degree.

Aurally, the earlier mark may be pronounced in two or three syllables, as 'PIM-KI' or 'PIM-KI-E', by the relevant public whereas the first verbal element of the contested sign will be pronounced as one syllable, 'PINK'. Therefore, even if the signs share the sound of some of their letters, the length and rhythm is different and the pronunciation of the signs also differ in the sound of the additional verbal element ‘4ever’ regardless of how it is pronounced by consumers in different parts of the relevant territory.

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

Conceptually, although the public in the relevant territory will perceive the meaning(s) of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

d) 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.

e) Global assessment, other arguments and conclusion

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 and the degree of attention of the relevant public is average.

The earlier mark enjoys a normal degree of distinctiveness but the signs in dispute are very different in length and sound; they are not conceptually similar, visually similar to a very low degree and aurally similar to a low degree.

Taking into account the significant visual and aural differences, which lead to a major different overall impression given by the signs, and that the contested sign will also be associated with the concept of the colour pink which, even if it is weak as such, is not present in the earlier mark, the similarities between the signs on account of the coincidence in some of their letters are not sufficient to lead to a likelihood of confusion on the part of the public, even if the goods at issue are identical.

In its observations, the opponent argued that a finding of a likelihood of confusion between the signs in dispute would be consistent with the previous decision of 23/09/2010 B 130 293 regarding the marks ‘PINKIE JONES’/’PIMKIE’ in which it was found that those signs were confusingly similar (which was also confirmed by the Board of Appeal in Case R 2313/2010-4). However, it should first be noted that in that earlier case, unlike in the present proceedings, the signs under comparison were word marks and the initial element of the contested sign in that case, ‘PINKIE’, shared the same ending (-IE) with the sole element of the earlier mark ‘PIMKIE’. For the reasons already set out above in section c) of this decision, the first verbal element of the contested sign in the case at hand will clearly be perceived as ‘PINK’ by the relevant public and not as ‘PINKI’ (or ‘PINKIE’). Therefore, the circumstances of the previous decision referred to are not comparable to present proceedings and the decision cited by the opponent is therefore not of such a nature as to alter the findings reached above.

The opponent has also based its opposition on European Union trade mark registration No 14 823 967 and French trade mark registration No 1 643 294, both for the word mark ‘PIMKIE’. However, European Union registration No 14 823 967 is identical to the one that has been compared and covers goods in Classes 4, 8, 11, 20, 21, 24 and 27 (but not goods in Class 3). Since the goods covered by that mark are not identical, even if some were to be similar, there would still be even less likelihood of confusion.

As regards the French trade mark registration No 1 643 294, which is identical to the earlier right already examined and covers goods in Class 3, since the French territory has already been taken in consideration when comparing the opponent’s European trademark registration above and taking into account the identity of goods, the outcome cannot be different with respect to this earlier right.

Therefore, no likelihood of confusion exists with respect to these earlier marks.

Considering all the above, there is no likelihood of confusion on the part of the public in the relevant territories based on any of the earlier rights invoked by the opponent. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Martin INGESSON

Anna ZIOŁKOWSKA

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.