OPPOSITION Nо B 3 023 317

 

Peter Reithmayer, Gebsattelstraße 13, 81541 München, Germany (opponent), represented by Schmitt-Nilson Schraud Waibel Wohlfrom Patentanwälte Partnerschaft mbB, Pelkovenstraße 143, 80992 München, Germany (professional representative) 

 

a g a i n s t

 

Greenden S.r.l.s, Via San Giovanni, 2, 33080 Prata di Pordenone (ON), Italy (applicant).

On 25/08/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 023 317 is upheld for all the contested services, namely, Class 44: Human hygiene and beauty care; human healthcare services; providing health information; provision of information relating to nutrition; providing nutritional information about food.
2.		European Union trade mark application No 17 281 304 is rejected for all the contested services. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 281 304  (figurative mark), namely against some of the services in Class 44. The opposition is based on EUTM registration No 16 183 881, ‘greendent’ (word 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.

 

 

a) The goods and services

 

The goods and services on which the opposition is based are, among others, the following services:

Class 44: Dentistry; dentistry; dentistry; dental services, in particular dental assistance, dental consultancy, cosmetic dental treatment; providing of information about dietetic and dietary supplements and dentistry.

The contested services are the following:

 

Class 44: Human hygiene and beauty care; human healthcare services; providing health information; provision of information relating to nutrition; providing nutritional information about food.

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

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested human hygiene and beauty care include, as a broader category, or overlaps with, the earlier dentistry. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services. For example, the contested beauty care includes all kinds of services for improving one’s beauty, which also includes the beauty care for one’s teeth.

The contested human healthcare services include, as a broader category, the earlier dental services. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested providing health information; provision of information relating to nutrition; providing nutritional information about food include, as broader categories, the earlier providing of information about dietetic and dietary supplements. Since the Office cannot dissect ex officio the broad categories of the contested services, they are considered identical to the earlier services.

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 services found to be identical are directed at the public at large and at a more professional public in, for example, the healthcare and dentistry fields. 

The degree of attention varies from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided services. For example, as some of these services may have an impact on one’s (dental) health and aesthetic image.

c) The signs

 

greendent
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 a word mark made of the word ’greendent’. The contested sign is composed of the verbal element ‘GREENDEN’, written in fairly standard upper-case green letters with a vertical line on the left side of each letter.

Normally, trade marks will be perceived as a whole without dissecting them, However, it cannot be ruled out that part of the public might break down the trade marks into the ‘Green +’ components. ‘Green’ is a basic English word which means ‘green’, and is used in the field of organic or sustainable goods or services (see 27/02/2015, T-106/14, GREENWORLD, EU: T: 2015: 123, § 24); as regards the elements ‘dent’ and ’den’, they have no meaning in, for instance, Spanish.

Both trade marks contain the word ‘Green’, which may be viewed by part of the public as an element that is devoid of distinctive character, since it is a reference to goods or services that are offered in a sustainable manner or that are environmentally friendly, for example. The green colour of the font in the contested sign would reinforce this word.

However, for a large part of consumers, the elements ’GREENDENT’ and ’GREENDEN’ have no meaning as a whole in Spanish. There have no relationship with the relevant services. They are, therefore, distinctive elements, as mentioned above.

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.

Visually, the trade marks are similar insofar as they both contain the letters ‘greenden*’, meaning that the whole verbal element of the contested sign is contained at the beginning of the earlier mark. They differ, however, in the last letter ‘t’ of the earlier mark with no correspondence in the contested sign and in the basic figurative aspects in the form of some vertical lines in the contested mark and in the green typeface.

However, it must be emphasized that the fact that the similarity between the trade marks concerns their beginning is relevant to the overall visual impression, since, as case-law has indicated in this context, the attention of the consumer is usually directed to the beginning of the word (17/03/2004, T-183/02 & T-184/02, Mundicor, EU: T: 2004: 79, § 83; and 15/03/2005, T-112/03, Flexi Air, EU: T: 2005: 102, § 69-71).

The marks also differ in the fairly standard green typeface in which the contested sign is written, however, since this typeface is not particularly significant, as it is quite common and is minimal in character, it will not lead the consumer’s attention away from the word it embellishes.

The signs are visually similar to an average degree.

In aural terms, owing to the rules of pronunciation in for example Spanish, the trade marks coincide in all the letters except the last one of the earlier mark. Therefore, the signs are aurally similar to at least a high degree.

Conceptually, for a part of the relevant public, neither of the signs has a meaning. As the trade marks cannot be compared conceptually, the conceptual aspect is irrelevant for the purposes of assessing the similarity between the signs for this part of the public.

However, for a part of the public, the trade marks are similar in so far as they contain the English word ‘Green’ which is not distinctive, and, therefore, they are only similar to a low degree, since the element ‘Green’ has a very limited impact for the above mentioned reasoning

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal , despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision for a part of the public.

 

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).

The services have been found to be identical. The degree of attention varies from average to above average and the public is the public at large and a more professional public. The earlier mark enjoys a normal degree of distinctiveness as a whole.

The signs are visually similar to an average degree and aurally at least highly similar. Conceptually they can share the “green” concept and are lowly similar or they are not comparable from a conceptual point of view.

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. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the Spanish-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 16 183 881. It follows that the contested trade mark must be rejected for the contested services.

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, 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

 

 

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.