OPPOSITION No B 3 031 278

Saleh Hamad Al Abdullatif Trading Group Company, Joint Stock, Prince Sultan St. Al Mohammadiyah District 1, 21445, Jeddah, Saudi Arabia (opponent), represented by Elisa Arsuaga Santos, Paseo Sauces 14, nº 22 Urb. Montepríncipe, 28660, Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Winnie Technology Co. Limited, RM 1103 Hang Seng Mongkok Bldg 677 Nathan Rd Mongkok, 999777, KLN, People’s Republic of China (applicant), represented by Arcade & Asociados, c/ Isabel Colbrand, 6 - 5ª planta, 28050, Madrid, Spain (professional representative).

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 278 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 376 203 for the word mark ‘FUNME’. The opposition is based on European Union trade mark registration No 14 319 991 for the figurative mark . The opponent invoked Article 8(1)(a) and (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

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; dentifrices.

Class 14: Precious metals and their alloys, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

The contested goods are the following:

Class 3: Non-medicated foot lotions; laundry preparations; eyebrow cosmetics; false eyelashes; cotton wool for cosmetic purposes; cosmetic pencils; potpourris [fragrances]; nail care preparations; cotton sticks for cosmetic purposes; nail polish; cleaning preparations; pre-moistened cosmetic tissues; nail polish base coat; eye make-up; impregnated paper tissues for cleaning dishware; nail art stickers; nail varnish removers; soaps for personal use; detergents for automobiles.

Class 11: Humidifiers; electric heaters; electric candles; electric holiday lights; lamps; portable electric fans; fans [airconditioning]; electric fans; miniature light bulbs; electric night lights; fairy lights for festive decoration; fluorescent lamps; electric fans for personal use; electric lights for Christmas trees.

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.

Contested goods in Class 3

Laundry preparations; cleaning preparations are identically contained in both lists of goods (including synonyms).

The contested non-medicated foot lotions; eyebrow cosmetics; cosmetic pencils; nail care preparations; nail polish; pre-moistened cosmetic tissues; nail polish base coat; eye make-up; nail art stickers; nail varnish removers are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested potpourris [fragrances] are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested soaps for personal use are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested detergents for automobiles; impregnated paper tissues for cleaning dishware are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.

The contested false eyelashes are highly similar to the opponent’s cosmetics as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes are similar to the opponent’s cosmetics as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Class 11

The contested goods are apparatus and installations for lighting, heating and cooling purposes and have nothing relevant in common to the opponent’s goods in Class 3, which cover essentially cosmetics, personal hygiene and general cleaning or polishing items in Class3; precious metals; jewellery and chronometric instruments in Class 14, and leather (or imitations), travel goods and saddlery in Class 18. The goods at issue differ in nature and purpose and do not coincide in their commercial origin or distribution channels. Furthermore, the goods under comparison have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

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 or similar to different degrees are directed at the public at large. The degree of attention is considered to be averaged.

c) The signs

	FUNME
Earlier trade mark	Contested sign

The relevant territory is 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 figurative mark composed of the verbal element ‘FUMÉ’ or ‘UMÉ’, depending on whether or not consumers will perceive an ‘F’ in the depiction of two leaves, although such perception is not obvious. Placed above, there is a logo resembling a grey and purple leaf surrounded by a purple curved line positioned on grey waves. If perceived as starting with a letter ‘F’, the element ‘(F)UMÉ’ will be understood by the French-speaking part of the public as a French term that refers to a food processed by smoking or by the Spanish-speaking part of the public as a past form of the verb ‘fumar (‘to smoke’). For another part of the relevant public, the word is meaningless. In any case, neither the word nor the additional figurative elements have any relation with the goods at issue. Therefore, they are considered to be distinctive to an average degree.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Although the contested sign is composed of one sole verbal element, it is expected that part of the relevant public will perceive the two components in the mark, ‘FUN’ and ‘ME’. In this regard, it is recalled that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T 256/04, RESPICUR, EU:T:2007:46, § 57).

Accordingly, the English-speaking part of the public is likely to perceive the elements ‘FUN’ and ‘ME’ in the sign, the former being understood as something that is pleasant and enjoyable whereas the latter being understood as the pronoun that is used by a speaker or writer when referring himself. For the rest of the public the contested sign has no meaning and cannot be divided into different elements. In any event, as the sign has no meaning that could be related to the goods at issue it is considered to have a normal degree of distinctiveness for all the relevant public.

Visually, the signs coincide in the letters ‘(F)U(*)ME’. However they differ in the additional letter ‘N’ of the contested mark and in the figurative elements of the earlier mark, the colours and the overall stylisation of the earlier sign, especially in the stylisation of the letter ‘F’ if perceived.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘(F)U(*)M*’. However, they differ in the sound of the letter ‘N’. The fact that the letter ‘N’ is placed before the consonant ‘M’ contributes to creating a clearly different sound since it complicates the pronunciation. Moreover, at least, for a significant part of the public, such as the Spanish-, French-speaking part of the public the accent will put the stress on the last syllable ‘-MÉ’ of the earlier mark whereas the stress in the contested sign will be on the first syllable ‘FUN’. Although the differences may not seem to be many, their impact is significant given that the earlier sign is rather short.

Therefore, the signs are aurally similar to low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of the public will perceive the signs with the different meanings of the terms ‘FUMÉ’ and/or ‘FUN’ and ‘ME’, and the additional meanings of the leaf and the waves of the figurative elements of the earlier sign. The remaining part of the public will only associate the figurative elements of the earlier sign with the meaning of a leaf and a wave since the verbal elements are meaningless. Therefore, the signs are conceptually not similar.

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 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, part of the goods are identical or similar to various degrees and part are dissimilar. The signs are visually and aurally similar to a low degree, and conceptually not similar.

The earlier mark is rather short, composed of 3 or 4 letters depending on whether the first element is perceived as an ‘F’. The additional letter of the contested mark, together with the differences in the figurative aspects, the stylisation and colours of the earlier mark, and the different concept this mark conveys are sufficient to create different overall impressions despite the similarities.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the opponent are not relevant to the present proceedings as they refer to situations where the marks in dispute fully coincided in a term (ULTIMATE FOREX vs. FOREX; PRINCESS DIANA vs. DIANA). Furthermore, opposition No B 2 518 465 concerned only word marks, unlike the present case.

Given all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Martina GALLE

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