DECISION

of the Fifth Board of Appeal

of 21 July 2020

In case R 422/2020-5

Carmen Consuelo Ramon Ros,
Maria José Ramon Ros,

and Juan Enrique Ramon Ros

Ciudad de Sevilla, 5-7

46988 Paterna (Valencia)

Spain

Opponents / Appellants

represented by Sanz Bermell International, Calle Jativa, 4, 46002, Valencia, Spain

UAB ‘Alma littera’

Ulonų g. 2

LT-08245 Vilnius

Lithuania

Applicant / Defendant

represented by Vilija Viešūnaitė, Vilniaus str. 31, LT-01402 Vilnius, Lithuania

APPEAL relating to Opposition Proceedings No B 3 049 077 (European Union trade mark application No 17 572 314)

The Fifth Board of Appeal

composed of V. Melgar (Chairperson and Rapporteur), C. Govers (Member) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 6 December 2017, UAB ‘Alma littera’ (‘the applicant ’) sought to register the figurative mark

for the following list of goods in Class 3 listed below as well as the goods and services in Classes 16, 25, 28, 41 and 42 as limited on 17 May 2019:

Class 3 – Essential oils and aromatic extracts; oils for perfumes and scents; tea-tree oil; aromatherapy preparations; aromatic oils; aromatic essential oils; cake flavorings [essential oils]; food flavorings prepared from essential oils; aromatics; essential oils of lemon; essential oils of citron; distilled oils for beauty care; emulsified essential oils; essential oils; essential oils for aromatherapy use; essential oils for personal use; essential oils for household use; essential oils for industrial use; essential oils for use in manufacturing processes; essential oils for use in the manufacture of scented products; essential vegetable oils; blended essential oils; ethereal essences; ethereal essences and oils; fumigating incenses (kunko); gaultheria oil; geraniol; floral water; flavourings for beverages [essential oils]; jasmine oil; cedarwood (essential oils of -); scented oils; perfume oils for the manufacture of cosmetic preparations; scented oils used to produce aromas when heated; aromatherapy oil; lavender oil; food flavorings [essential oils]; flavour enhancers for food [essential oils]; almond oil; mint essence [essential oil]; natural oils for cosmetic purposes; natural essential oils; peppermint crude oil; non-medicated oils; essential oils for soothing the nerves; skin care oils [non-medicated]; pine oil; rose oil; safrol; essential oils of sandalwood; terpenes [essential oils]; badian essence; animal grooming preparations; deodorants for animals; cosmetics for animals; breath fresheners for animals; dental care preparations for animals; odour fresheners for animals; bath preparations for animals; skin care products for animals; shampoos for animals [non-medicated grooming preparations]; preparations and products for fur care; shampoos for pets [non-medicated grooming preparations]; deodorants for pets; non-medicated mouth washes for pets; conditioning sprays for animals; cleaning preparations for use in livestock farming; tailors' and cobblers' wax; shoemakers' wax; tailors' wax; cobblers' wax; toiletry preparations; oral hygiene preparations; disclosing tablets for personal use in indicating tartar on the teeth; mouth [breath] fresheners, not for medical use; breath fresheners; breath freshening preparations for personal hygiene; breath freshening strips; sets of cosmetic oral care products; mouth sprays, not for medical use; mouthwashes, not for medical purposes; mouthwash; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; dental bleaching gels; teeth whitening strips; tooth whitening creams; tooth whitening pastes; tooth whitening preparations; tooth gel; tooth powder; toothpaste; dentifrice; tooth polish; tooth care preparations; denture polishes; dentures (preparations for cleaning -); tooth cleaning preparations; dentifrices and mouthwashes; dentifrices in the form of chewing gum; throat sprays [non-medicated]; solid toothpaste tablets; cosmetic preparations for the care of mouth and teeth; chewable tooth cleaning preparations; chewable dentifrices; breath fresheners in the form of chew sticks made from birchwood extracts; toothpaste in soft cake form; non-medicated mouth sprays; non-medicated dentifrices; non-medicated toothpaste; breath freshening sprays; liquid dentifrice; moistened tooth powder; teeth cleaning lotions; body cleaning and beauty care preparations; deodorants and antiperspirants; personal deodorants; deodorants for personal use [perfumery]; anti-perspirant deodorants; deodorant soap; deodorants for body care; body sprays; deodorants, for personal use in the form of sticks; feminine deodorant sprays; non-medicated antiperspirants; antiperspirants for personal use; anti-perspirants in the form of sprays; deodorants for the feet; foot powder [non-medicated]; roll-on deodorants [toiletries]; antiperspirants [toiletries]; deodorants for human beings or for animals; deodorants for human beings; make-up preparations; eyeliner; eyeliner pencils; liners [cosmetics] for the eyes; eyes make-up; eye pencils; eyelid doubling makeup; eyelid pencils; eyelid shadow; cosmetics in the form of eye shadow; eyebrow colors; eyebrow gel; eyebrow cosmetics; cosmetic pencils; eyebrow powder; eyebrow mascara; transfers (decorative -) for cosmetic purposes; base cream; loose face powder; cosmetics for eye-lashes; glitter for cosmetic purposes; mascara; colour cosmetics; suntan creams; decorative cosmetics; artificial tanning preparations; fake blood; adhesives for false eyelashes, hair and nails; moist paper hand towels impregnated with a cosmetic lotion; cosmetics in the form of gels; make-up removing preparations; long lash mascaras; solid powder for compacts [cosmetics]; make-up for compacts; powder compact refills [cosmetics]; pressed face powder; powder compacts [cosmetics]; cosmetics in the form of rouge; cosmetic eye pencils; lip stains [cosmetics]; cosmetic creams; cosmetic pencils; cosmetic rouges; cosmetic pencils for cheeks; cosmetic paste for application to the face to counteract glare; cosmetic white face powder; facial concealer; powder for make-up; cosmetic face powders; cosmetic masks; tanning milks [cosmetics]; chalk for make-up; creamy rouges; creamy foundation; body paint (cosmetic); body art stickers; temporary tattoo's for cosmetic purposes; lip coatings [cosmetic]; lip gloss; lip gloss palettes; lipstick; lipstick cases; lip cosmetics; lip liners; make up foundations; skin foundation; make-up pencils; make-up kits; make-up removing gels; make-up removing lotions; make-up removing milks; concealers; cuticle oil; skin make-up; creams for tanning the skin; sun bronzers; fair complexion cream; under-eye enhancers; make-up bases in the form of pastes; eyebrow colors in the form of pencils and powders; face powder in the form of powder-coated paper; compacts containing make-up; mousses [cosmetics]; sun creams; self tanning creams [cosmetic]; self tanning lotions [cosmetic]; self-tanning preparations [cosmetics]; cosmetic rouges; blush pencils; cheek colors; liquid foundation; liquid foundation (mizu-oshiroi); liquid eyeliners; liquid rouge; colour cosmetics for the eyes; concealers for spots and blemishes; theatrical makeup; face glitter; face paint; face and body glitter; make-up for the face and body; make-up preparations for the face and body; make-up for the face; make-up powder; face powder (non-medicated -); facial wipes impregnated with cosmetics; soaps and gels; waterless soap; shower gels; refill packs for shower gel dispensers; shower creams; shower soap; exfoliating scrubs for the hands; cakes of soap for body washing; toilet soap; soaps in gel form; exfoliating scrubs for the feet; granulated soaps; carbolic soaps; sponges impregnated with soaps; gels for cosmetic use; cosmetic soaps; beauty soap; creams (soap -) for use in washing; cream soaps; body cream soap; scented soaps; perfumed soaps; soaps for body care; body shampoos; vaginal washes for personal sanitary or deodorant purposes; almond soap; soaps; soaps for personal use; soap for foot perspiration; antiperspirant soap; aloe soap; loofah soaps; paper soaps for personal uses; soap products; soap solutions; non-medicated toilet soaps; cleansers for intimate personal hygiene purposes, non medicated; non-medicated soaps; skin soap; industrial soap; hand soaps; refill packs for hand soap dispensers; cleaning agents for the hands; soaps in liquid form; liquid soap used in foot bath; liquid soaps for hands and face; liquid bath soaps; toilet soap; facial soaps; bath and shower gels, not for medical purposes; skin, eye and nail care preparations; abrasive boards for use on fingernails; cosmetic products in the form of aerosols for skincare; eye compresses for cosmetic purposes; creams (non-medicated -) for the eyes; eye make up remover; eye-washes, not for medical purposes; oils for cosmetic purposes; after-sun oils [cosmetics]; alum stones [astringents]; eyebrows [false]; sunscreen; barrier creams; sunscreen lotions; spf sun block sprays; cold cream; lip protectors (non-medicated -); sun protectors for lips; sun blocking oils [cosmetics]; sunscreen cream; sun blocking lipsticks [cosmetics]; sunscreen preparations; sun protecting creams [cosmetics]; aromatherapy creams; aromatherapy lotions; scented body lotions; whiting; balms, other than for medical purposes; eyelash dye; sparkling fluid for the body; dermatological creams [other than medicated]; day creams; day lotion; false toenails; false nails; artificial nails for cosmetic purposes; artificial fingernails of precious metal; adhesives for affixing false eyebrows; eyelashes (adhesives for affixing false -); adhesives for affixing artificial fingernails; eyelashes; moisturizers; after sun moisturisers; moisturising body lotion [cosmetic]; moisturizing milk; moisturising gels [cosmetic]; moisturising concentrates [cosmetic]; anti-aging moisturizers used as cosmetics; aftershave moisturising cream; moisturising creams, lotions and gels; body soufflé; moisturising skin creams [cosmetic]; moisturising skin lotions [cosmetic]; moisturising preparations; hydrating masks; skin moisturizer masks; anti-aging moisturizers; facial moisturisers [cosmetic]; shower salts not for medical purposes; double eyelid tapes; exfoliating scrubs for cosmetic purposes; exfoliating scrubs for the body; exfoliating scrubs for the face; emollients; essential oils for use in air fresheners; essential oils for the care of the skin; eucalyptus oil for cosmetic use; gel eye masks; topical skin sprays for cosmetic purposes; wrinkle-minimizing cosmetic preparations for topical facial use; sun-tanning oils; suntan lotion [cosmetics]; sun-tanning gels; sun tan lotion; sun tan milk; tanning preparations; cocoa butter for cosmetic purposes; glue for strengthening nails; cosmetics for protecting the skin from sunburn; cosmetics for use in the treatment of wrinkled skin; cosmetics for the treatment of dry skin; cosmetic eye gels; cosmetic sun-protecting preparations; cosmetic creams for firming skin around eyes; cosmetic moisturisers; cosmetic products for the shower; cosmetic oils for the epidermis; beauty tonics for application to the body; cosmetic body scrubs; cosmetic nourishing creams; cosmetic preparations for nail drying; cosmetic nail care preparations; cosmetic preparations for skin renewal; skin emollients; cosmetic preparations for skin firming; cosmetics in the form of milks; sun care preparations for cosmetic use; cosmetic suntan lotions; pores tightening mask packs used as cosmetics; cosmetic foams containing sunscreens; cosmetic preparations for dry skin during pregnancy; cosmetic hand creams; toners for cosmetic use; cosmetic facial lotions; facial serum for cosmetic use; beauty tonics for application to the face; exfoliants; creams for cellulite reduction; blemish balm creams; anti-aging creams; anti-freckle creams; anti-wrinkle cream; aftershave creams; baby oils; babies' creams [non-medicated]; baby body milks; baby lotions; baby powder; baby wipes; talcum powder (non-medicated -) for babies; body oils [for cosmetic use]; body moisturisers; body emulsions; body mask lotion; body masks; perfumed oils for skin care; perfumed creams; scented body creams; perfumed powder [for cosmetic use]; citronella oil for cosmetic use; body mask powder; body cream; creams (non-medicated -) for the body; body mask cream; body lotions; body milks; refill packs for body cleansing product dispensers; body powder; body powder (non-medicated -); body butter; body talcum powder; body scrub; lotions for cosmetic purposes; lotions for cellulite reduction; after-sun lotions; cosmetics in the form of lotions; lip coatings (non-medicated -); lip protectors [cosmetic]; lip conditioners; lip balms [non-medicated]; lip cream; nutritional creams (non-medicated -); make-up removing creams; almond milk for cosmetic purposes; microdermabrasion polish; nail polishing powder; powder for forming sculpted finger nail tips; clay skin masks; nail repair preparations; nail whiteners; nail polish; nail glitter; nail art stickers; nail tips [cosmetics]; nail gel; nail primer [cosmetics]; nail hardeners [cosmetics]; nail conditioners; nail cosmetics; nail cream; nail varnish for cosmetic purposes; nail polish base coat; nail base coat [cosmetics]; nail polish pens; nail polish remover pens; nail varnish removers; nail varnish remover [cosmetics]; nail polish top coat; nail care preparations; nail strengtheners; lotions for strengthening the nails; preparations for reinforcing the nails; night creams [cosmetics]; night cream; non-medicated diaper rash cream; non-medicated moisturisers; non-medicated scalp treatment cream; non-medicated creams; non-medicated lip care preparations; non-medicated skin creams; non-medicated skin serums; non-medicated skin clarifying lotions; non-medicated foot cream; non-medicated foot lotions; non-medicated stimulating lotions for the skin; non-medicated cleansing creams; non-medicated face care preparations; cuticle softeners; skin whitening creams; skin whitening preparations; skin whitening preparations [cosmetic]; skin balms (non-medicated -); skin conditioners; skin moisturisers; skin fresheners; skin masks [cosmetics]; skin conditioning creams for cosmetic purposes; skin cream; skin lotion; skin emollients [non-medicated]; skin care oils [cosmetic]; essences for skin care; skincare cosmetics; skin care creams [cosmetic]; skin care creams, other than for medical use; refill packs for skin care cream dispensers; skin care lotions [cosmetic]; milky lotions for skin care; compounds for skin care after exposure to the suns rays; wrinkle removing skin care preparations; anti-aging skincare preparations; skin care mousse; creams for firming the skin; skin texturizers; skin toners; non medicated skin toners; skin cleansers; skin cleansers [cosmetic]; skin cleansers [non-medicated]; skin cleansing cream; skin cleansing cream [non-medicated]; skin cleansing lotion; skin lightening creams; skin lighteners; skin lightening compositions [cosmetic]; eye gels; eye cream; eye lotions; eye wrinkle lotions; after sun creams; aftershave milk; patches containing sun screen and sun block for use on the skin; cleansing mousse; gel nail removers; foot balms (non-medicated -); foot masks for skin care; foot care preparations (non-medicated -); sun care preparations; after-sun preparations for cosmetic use; suncare lotions; self-adhesive false eyebrows; toilet powders; body oil spray; skin cleaning and freshening sprays; hand oils (non-medicated -); hand and body butter; hand creams; hand lotions; hand lotion (non-medicated -); fingernail overlay material; fingernail tips; fingernail sculpturing overlays; hand masks for skin care; hand milks; retinol cream for cosmetic purposes; rosemary oil for cosmetic use; skin polishing rice bran (arai-nuka); suntan oils for cosmetic purposes; sun-tanning creams and lotions; age spot reducing creams; age retardant gel; age retardant lotion; anti-ageing serum; wipes impregnated with a skin cleanser; shaving stones [astringents]; shaving lotion; astringents for cosmetic purposes; talcum powder, for toilet use; salves [non-medicated]; tonics [cosmetic]; toning spritz; toning lotion, for the face, body and hands; toning creams [cosmetic]; cleansing milk for toilet purposes; facial cleansing milk; cleansing oil; cleansing balm; cleansing gels; cleansing creams; cleansing lotions; cleansing milks for skin care; exfoliants for the care of the skin; exfoliants for the cleansing of the skin; exfoliant creams; fair complexion creams; abrasive paper for use on the fingernails; abrasive emery paper for use on fingernails; cleansing masks; cleansing foam; waterproof sunscreen; petroleum jelly for cosmetic purposes; facial emulsions; face gels; lotions for face and body care; facial masks; face packs; face cream (non-medicated -); face creams for cosmetic use; facial washes [cosmetic]; facial care preparations; face-powder on paper; facial toners [cosmetic]; facial cleansers [cosmetic]; face scrubs (non-medicated -); facial scrubs [cosmetic]; bath salts; bath lotion; nappy cream [non-medicated]; hair preparations and treatments; hair protection lotions; hair protection mousse; shampoos for personal use; bleaching preparations [decolorants] for cosmetic purposes; conditioning balsam; beard oil; beard balm; beard dyes; lotions for beards; brilliantine; colouring lotions for the hair; preparations for protecting coloured hair; products for protecting coloured hair; hair conditioner bars; wave-set lotions; hair permanent wave kit; hair permanent treatments; permanent waving and curling preparations; permanent waving lotions; neutralizers for permanent waving; japanese hair fixing oil (bintsuke-abura); shampoo bars; cosmetics for the use on the hair; cosmetic preparations for the hair and scalp; cosmetic hair lotions; cosmetic hair dressing preparations; baby hair conditioner; hair conditioners for babies; baby shampoo; conditioning creams; styling gels; styling mousse; non-medicated hair shampoos; non-medicated preparations for the relief of sunburn; non-medicated shampoos; neutralizing hair preparations; preparations for protecting the hair from the sun; hair balm; hair balsam; hair glaze; hair dye; tints for the hair; hair frosts; hair tinting preparations; hair bleaching preparations; hair moisturisers; hair desiccating treatments for cosmetic use; gels for fixing hair; creams for fixing hair; hair fixers; refill packs for hair fixer dispensers; hair-waving preparations; hair gel; hair preservation treatments for cosmetic use; hair masks; oils for hair conditioning; conditioning preparations for the hair; hair creams; hair spray; hair lotion; hair nourishers; hair emollients; styling lotions; styling paste for hair; preparations for setting hair; mousses [toiletries] for use in styling the hair; hair styling waxes; hair pomades; hair care masks; hair care creams; hair care lotions; hair care preparations, not for medical purposes; wax treatments for the hair; hair care serums; hair powder; hair protection gels; hair protection creams; hair moisturising conditioners; hair mousse; hair serums; hair rinses [shampoo-conditioners]; hair rinses [for cosmetic use]; hair texturizers; hair dressings for men; hair straightening preparations; hair tonic; hair tonic [non-medicated]; hair-washing powder; hair mascara; hair wax; combing oil; hair lighteners; pomades for cosmetic purposes; stick pomade; detanglers; conditioners in the form of sprays for the scalp; gel sprays being styling aids; mousses being hair styling aids; cold waving solutions; shampoo; dry shampoos; hair liquids; hair strengthening treatment lotions; hydrogen peroxide for cosmetic purposes; hydrogen peroxide for use on the hair; oil baths for hair care; dandruff shampoo; dandruff shampoos, not for medical purposes; shampoo-conditioners; baby shampoo mousse; refill packs for shampoo dispensers; hairstyling masks; hairstyling serums; hair fixing oil; moustache wax; shampoos for human hair; hair removal and shaving preparations; aftershave balms; after-shave emulsions; after-shave gel; pre-shave creams; after-shave preparations; pre-shaving lotions; depilatory creams; depilatory lotions; depilatory preparations; wax (depilatory -); pre-shaving preparations; shaving sprays; pastes for razor strops; shaving stones; shaving oils; shaving balm; shaving gel; shaving cream; shaving soap; shaving sticks [preparations]; shaving preparations; shaving sets, comprised of shaving cream and aftershave; shaving foam; shaving preparations in liquid form; wax strips for removing body hair; bath preparations; shower and bath foam; aromatic oils for the bath; scented bathing salts; baby bath mousse; bath concentrates (non-medicated -); non-medicated bath oils; non-medicated body soaks; non-medicated bath salts; foaming bath gels; foaming bath liquids; bath soak for cosmetic use; bath oil; bath oils for cosmetic purposes; bath bombs; bath flakes; bath gel; bath soap; bath milk; bath foam; bath foams (non-medicated -); baby bubble bath; bath herbs; bath salts, not for medical purposes; baths (cosmetic preparations for -); bath creams (non-medicated -); bath lotions (non-medicated -); bath pearls; bath pearls (non-medicated -); bath preparations, not for medical purposes; bath powders (non-medicated -); bubble bath; oil removing papers for cosmetic purposes; pumice stones for personal use; cleaning preparations for personal use; washing preparations for personal use; henna for cosmetic purposes; colouring preparations for cosmetic purposes; artificial pumice stone; pre-moistened cosmetic wipes; moist wipes for sanitary and cosmetic purposes; shower and bath gel; shower preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; foams for use in the shower; tissues impregnated with essential oils, for cosmetic use; phytocosmetic preparations; functional cosmetics; beauty care cosmetics; beauty milk; sponges impregnated with toiletries; collagen preparations for cosmetic purposes; refill packs for cosmetics dispensers; beauty balm creams; dyes (cosmetic -); collagen preparations for cosmetic application; cosmetic creams and lotions; cosmetic breast firming preparations; beauty lotions; cosmetic hair regrowth inhibiting preparations; serums for cosmetic purposes; cosmetic preparations for bath and shower; washing creams; creamy face powder; cosmetics in the form of creams; baby suncreams; body glitters; body mist; body gels; body and facial oils; body and facial gels [cosmetics]; body and facial creams [cosmetics]; body massage oils; impregnated tissues for cleaning [non-medicated, for use on the person]; body washes; soap free washing emulsions for the body; body cleansing foams; lip neutralizers; cosmetics in the form of powders; non-medicated shower oils; non-medicated beauty preparations; non-medicated body care preparations; bath and shower oils [non-medicated]; non-medicated douches; non-medicated foot soaks; cosmetics for use on the skin; skin care preparations; skin cleansing foams; hair and body wash; glitter in spray form for use as a cosmetics; makeup setting sprays; foot scrubs; hand gels; hand washes; hand cleansers; hand powders; tissues impregnated with make-up removing preparations; fluid creams [cosmetics]; colour cosmetics for the skin; paper hand towels impregnated with cleaning agents; feminine hygiene cleansing towelettes; cleaning masks for the face; face oils; body and facial butters; facial massage oils; facial butters; facial peel preparations for cosmetic use; disposable wipes impregnated with cleansing compounds for use on the face; herbal extracts for cosmetic purposes; perfumery and fragrances; amber [perfume]; fragrances; perfume water; flower perfumes (bases for -); extracts of flowers [perfumes]; heliotropine; ionone [perfumery]; solid perfumes; lavender oil for cosmetic use; scented body lotions and creams; scented body spray; fragrance preparations; aromatics for fragrances; perfumed toilet waters; eau de parfum; perfume; fragrances for personal use; perfumes for industrial purposes; extracts of perfumes; aromatics for perfumes; body deodorants [perfumery]; body sprays [non-medicated]; perfumed tissues; lavender water; musk [natural]; musk [perfumery]; mint for perfumery; natural perfumery; natural oils for perfumes; toilet water; perfumery; cedarwood perfumery; vanilla perfumery; peppermint oil [perfumery]; pomanders [aromatic substances]; bay rums; body splash; rose oil for cosmetic purposes; synthetic musk; synthetic vanillin [perfumery]; synthetic perfumery; liquid perfumes; fumigation preparations [perfumes]; toilet water; toilet water containing snake oil; cologne impregnated disposable wipes; abrasive preparations for use on the body; foot smoothing stones; aloe vera preparations for cosmetic purposes; oils for toilet purposes; cosmetics in the form of oils; cosmetics for personal use; bergamot oil; henna [cosmetic dye]; henna powders; adhesives for affixing false hair; moist wipes impregnated with a cosmetic lotion; scalp treatments (non-medicated -); aloe vera gel for cosmetic purposes; spirit gum for cosmetic use; sanitary preparations being toiletries; seaweed for cosmetology; adhesives for cosmetic purposes; cosmetics; cosmetics and cosmetic preparations; impregnated cloths for cosmetic use; cosmetics containing hyaluronic acid; cosmetics containing keratin; cosmetics containing panthenol; cosmetic kits; cosmetic preparations for body care; cosmetic preparations for use as aids to slimming; paper hand towels impregnated with cosmetics; tissues impregnated with cosmetics; cleaner for cosmetic brushes; pumice stones for use on the body; impregnated cleaning pads impregnated with cosmetics; chalk for cosmetic use; perfumed body lotions [toilet preparations]; perfumed lotions [toilet preparations]; baby care products (non-medicated -); lacquer for cosmetic purposes; slimming aids [cosmetic], other than for medical use; cosmetic preparations for slimming purposes; lint for cosmetic purposes; massage waxes; massage oils; massage oils, not medicated; massage oils and lotions; massage gels, other than for medical purposes; massage creams, not medicated; massage candles for cosmetic purposes; make-up pads of cotton wool; mineral oils [cosmetic]; mineral water sprays for cosmetic purposes; cuticle cream; cuticle conditioners; non-medicated massage preparations; non-medicated toiletries; non-medicated cosmetics; nasal cleaning preparations for personal sanitary purposes; cuticle removers; pedicure preparations; pumice stone; tissues impregnated with cosmetic lotions; hair piece bonding glue; greases for cosmetic purposes; ointments for cosmetic use; impregnated cleaning pads impregnated with toilet preparations; cosmetics for children; cotton wool for cosmetic purposes; cotton balls for cosmetic purposes; cotton sticks for cosmetic purposes; cleaning and fragrancing preparations; household fragrances; fragrance sachets for eye pillows; aromatics for household purposes; scented wood; fragrance emitting wicks for room fragrance; refills for electric room fragrance dispensers; extracts of flowers; room fragrancing preparations; carpet freshening preparations; scented linen sprays; scented ceramic stones; scented sachets; potpourris [fragrances]; room scenting sprays; cushions filled with fragrant substances; cushions impregnated with fragrant substances; potpourri sachets for incorporating in aromatherapy pillows; aromatherapy pillows comprising potpourri in fabric containers; scented pine cones; cushions filled with perfumed substances; cushions impregnated with perfumed substances; incense cones; pet odor removers; fragrance refills for non-electric room fragrance dispensers; air fragrancing preparations; room perfumes in spray form; incense spray; sachets for perfuming linen; incense; joss sticks; leather and shoe cleaning and polishing preparations; preservative creams for leather; pastes for cleaning shoes; shoe polish; shoe polish and creams; boot cream; shoe sprays; shoe polish applicators containing shoe polish; shoe cleaners [preparations]; detergent compositions for cleaning shoes; shoe wax; shoe black [shoe polish]; leather dressings; preservatives for leather [polishes]; leather bleaching preparations; leather polishes; creams for leather; cleaning preparations for leather; vehicle cleaning preparations; detergents for automobiles; automobile polishes; windshield cleaning liquids; automobile cleaners; automobile wax; car shampoos; carnauba wax for automotive use; shampoos for vehicles; vehicle tyre polish; eyeglass lens cleaning solutions; cleaning agents for stone; oils for cleaning purposes; alcoholic solvents being cleaning preparations; ammonia for cleaning purposes; ammonia [volatile alkali] [detergent]; antistatic preparations for household purposes; upholstery cleaners; plants (preparations to make shiny the leaves of -); cleaning and shining preparations for plant leaves; cleaning preparations for plant leaves; fragrances for automobiles; furniture polish; polish for furniture and flooring; furniture cleaner; bleaching preparations; bleaching preparations [decolorants] for household purposes; bleaching preparations for household use; whitewall cleaners; stain removing benzine; shining preparations [polish]; cloths impregnated with polishing preparations for cleaning; spray polish; polishing wax; household bleach; stain removing preparations for use on household goods; household detergents; chemical cleaning preparations for household purposes; chrome polish; chrome cleaners; colorants for toilet purposes; paint removers; paint removing compositions; paint removers; solvents for removing paints; salt crystal removers; pre-moistened towelettes impregnated with dishwashing detergent; pre-moistened towelettes impregnated with a detergent for cleaning; destainers; stain removing preparations; cleaning compositions for spot removal; stain removing agents; anti-smear agents for cleaning purposes; emulsifying solvent cleaners; cleaning fluids for camera lenses; cakes of soap for household cleaning purposes; graffiti removing substances; spirit gum remover; floor shining compositions; floor buffing compound; liquid floor polishes; floor stripping preparations; floor polish; floor treatment compositions; floor cleaning preparations; floor wax; floor wax removers [scouring preparations]; cleaning preparations for animal cages; drying agents for dishwashing machines; dishwasher detergents in gel form; dishwasher powder; dishwasher tablets; dishwasher detergents; washing-up detergent; dishwashing detergents; dishwashing liquid; lime removers; perfumes for cardboard; caustic cleaning agents; perfumes for ceramics; impregnated cloths for polishing; impregnated paper tissues for cleaning dishware; carpet cleaning preparations; carpet shampoo; toilet bowl detergents; cleaners for litter trays; litter tray cleaners incorporating a deodorizer; starch for cleaning purposes; scented fabric refresher sprays; scented linen water; lacquer-removing preparations; solvents for removing varnishes; window cleaners [polish]; window cleaning compositions; wood treatment preparations for polishing; cleaning agents for metal; soaps for household use; soap powder; polish for musical instruments; cleaning preparations for use on masonry; pet stain removers; natural floor waxes; natural oils for cleaning purposes; natural floor polishes; air fragrance reed diffusers; non-slipping wax for floors; non-slipping liquids for floors; drain cleaning preparations; descaling preparations for household purposes; drain and sink unblocking preparations; unblocking drain pipes (preparations for -); cleaning solutions for dental ultrasonic sterilization apparatus; saddle soap; oven cleaning preparations; time-release solid drain detergent; polishing wax; prepared wax for polishing; mould removing preparations; preparations for unblocking sinks; detergents; detergents, other than for use in manufacturing operations and for medical purposes; detergents prepared from petroleum; detergents for household use; detergent strengtheners; laundry preparations; washing liquids; cleaning preparations for use on tiles; polishing powders; jewellers' rouge; buffing compounds; furbishing preparations; polishing creams; varnish-removing preparations; windscreen cleaning preparations; spray cleaners for household use; window cleaners in spray form; spray cleaners for use on textiles; spray cleaners for freshening athletic mouth guards; foam detergents; cleaning preparations in the form of foams; pine oils for cleaning floors; cleaning fluid for typewriter type; grease-removing preparations; degreasing solvents, other than for use in manufacturing processes; degreasing sprays; de-greasing preparations for household purposes; degreasing preparations with a solvent base; degreasers, other than for use in manufacturing processes; rust removers; wipes incorporating cleaning preparations; wallpaper cleaning preparations; synthetic detergents for clothes; rinse aids; dishwasher rinsing agents; liquid soap for dish washing; cleaning agents for deep freezers; sugar soap; liquid dishwasher detergents; soda lye; glass cleaning preparations; canned pressurized air for cleaning and dusting purposes; turpentine, for degreasing; oil of turpentine for degreasing; toilet cleaners; lavatory cleaning compositions; all-purpose cotton buds for personal use; shining preparations for fruit; fruit and vegetable wash; cleansers for household purposes; cloths impregnated with a detergent for cleaning; detergent compositions for cleaning golf clubs; cleaning chalk; cleaning agents for household purposes; furbishing preparations; cleaning preparations impregnated into pads; wiping cloth impregnated with a cleaning preparation for cleaning eye glasses; soap pads; scouring substances; furbishing preparations; scouring solutions; scouring liquids; eyeglass wipes impregnated with a detergent; cloths impregnated with a detergent for cleaning camera lenses; cleaning sprays; cleaning fluids; cleaning preparations for cleansing drains; degreasing preparations for engines; wax stripping preparations; agents for removing wax; preparations for stripping wax from floors; dewaxing preparations; kettle cleaner; volcanic ash for cleaning; javelle water; grinding preparations; abrasive preparations for vehicle care; abrasive paste; abrasive granules; diamantine [abrasive]; granular corundum; floor finish removers; adhesive removers; corundum [abrasive]; starch for abrasive purposes; flexible abrasives; carbides of metal [abrasives]; polishing stones; polishing paper; industrial abrasives; grinding preparations for semiconductors; silicon carbide [abrasive]; glass cloth [abrasive cloth]; tripoli stone for polishing; general purpose scouring powder; grinding foils; sanding gloves; abrasive sand; smoothing stones; scouring powders; emery; abrasive rolls; abrasive sheets; abrasive preparations for polishing; sandpaper pads for sharpening drawing pencils; abrasive cloth; emery cloth; abrasive paper; sandpaper; emery paper; sandpaper for sharpening drawing pencils; abrasive strips; abrasive sanding sponges; all above-mentioned goods being for babies and children use.

The application was published on 9 January 2018.
On 3 April 2018, Carmen Consuelo Ramon Ros, Maria José Ramon Ros and Juan Enrique Ramon Ros (‘the opponents’) filed an opposition against the registration of the published trade mark application for part of the goods and services, namely against all the goods in Class 3.
The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
The opposition was based on the following twelve earlier rights:

Spanish trade mark registration No M2079592
(Earlier Right No 1) filed on 11 March 1997 and registered on 22 September 1997 for the following goods:

Class 3 – Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and scraping preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Spanish trade mark registration No M2416591 AQUA NELLY (fig.) (Earlier Right No 2) filed on 23 July 2001 and registered on 5 February 2002 for the following goods:

Spanish trade mark registration No M2427879 (Earlier Right No 3) filed on 2 October 2001 and registered on 20 May 2002 for the following goods:

Spanish trade mark registration No M2607652 Nelly Coloractive
(Earlier Right No 4) filed on 21 July 2004 and registered on 17 January 2005 for the following goods:

Spanish trade mark registration No M2645994 N DE NELLY
(Earlier Right No 5) filed on 12 April 2005 and registered on 16 February 2006 for the following goods:

European Union trade mark registration No 5 704 481 Nelly
(Earlier Right No 6) filed on 21 February 2007 and registered on 16 September 2009 for the following goods:

Class 3 – Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

European Union trade mark registration No 6 408 355 AQUANELLY (Earlier Right No 7) filed on 7 November 2007 and registered on 17 October 2008 for the following goods and services:

Class 5 – Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides;

Class 44 - Health and beauty salons.

Spanish trade mark registration No M2872193 Nelly
(Earlier Right No 8) filed on 17 April 2009 and registered on 1 September 2009 for the following goods:

Class 3 – Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and scraping preparations (abrasive preparations); soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Spanish trade mark registration No M2939269
(Earlier Right No 9) filed on 13 July 2010 and registered on 10 November 2010 for the following goods:

Spanish trade mark application No M3022778 N E L L Y (fig.)
(Earlier Right No 10) registered on 11 June 1992 for the following goods and services:

Class 1 – Chemical products for industrial, scientific, photographic, agricultural, horticultural and forestry purposes; crude man-made resins, crude plastic materials; soil fertilisers; fire-extinguishing compositions; preparations for quenching and brazing of metals; chemical products for preserving foodstuffs, tanning materials; adhesives (glue) for industrial use;

Class 2 – Colours, varnishes, lacquers; preservatives against rust (antioxidants) and deterioration of wood; dyestuffs, mordants; crude natural resins; metals in sheets and powder for painters; decorators; printers and artists;

Class 5 – Disinfectants, insecticides and hygiene products;

Class 21 – Small utensils and portable house- and kitchen containers, included in this class;

Class 35 – Publishing and business;

Class 42 – Beauty salon and hairdressing services.

Spanish trade mark registration No M3071279 NELLY SENSES
(Earlier Right No 11) filed on 12 April 2013 and registered on 18 July 2013 for the following goods:

Class 3 – Bleaching preparations and other laundry preparations; cleaning, polishing, scouring and scraping preparations; soaps; perfumery products, essential oils, cosmetics, hair lotions; hair lacquers; cosmetic foams; capillary gel; hair styling gel; hair styling oil; hair care creams; hair waxes; shampoos; hair conditioners; hair conditioners; hair softeners; cosmetic masks; hair dyes; bath gel; hand soaps and other body soaps; moisturizing[cosmetic] body lotions; nail polish remover; hand cream; skin cleansing gel; skin exfoliators; skin moisturizers[cosmetic]. Dentifrices.

By decision of 19 December 2019 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

Proof of use

The opponents were required to prove that the trade marks (1-10) on which the opposition is based were put to genuine use in the European Union or Spain, where appropriate, from 6 December 2012 to 5 December 2017 inclusive. On 15 March 2019, within the time limit, the opponents submitted evidence of use.
The Opposition decided that there were no relevant indications about the use of trade marks for goods in Classes 1, 2, 5, 21 or services in Classes 35, 42 or 44 which are protected by the EUTMR No 6 408 355 ‘AQUANELLY’ (trade mark No 7) and Spanish trade mark registration No 3 022 778 NELLY (trade mark No 10). Consequently, the opposition was rejected insofar as it is based on these two earlier rights in its entirety.
As to the remaining earlier rights which are protected for goods in Class 3, it is considered not appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition proceeded as if genuine use of the earlier marks had been proven for all the goods in Class 3 invoked, which is the best light in which the opponent’s case can be considered.

The contested goods

The contested goods belong to Class 3. On 17 May 2019 the Office received a request for limitation of the list of goods, with the following wording added: ‘all above-mentioned goods being for babies and children use’.
All the earlier rights are protected goods of Class 3.
The contested goods encompass a very long list of goods which essentially can be divided in categories of, on the one hand, bleaching preparations and other laundry preparations; cleaning, polishing, scouring and scraping preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices, which are in line with the general indications of the class heading and on the other hand wax, tailor’s wax as well as shoemakers’ wax.
The contested cobbler’s wax, tailor’s wax as well as shoemakers’ wax are very specific goods which are meant for professional public like tailors and shoemakers and they are used in the manufacturing and repair process of footwear as well as clothing. Therefore, these contested goods are dissimilar to those covered by the earlier rights.
The remaining contested goods are identical to the earlier goods either because they are identically contained in both lists (including synonyms) or because the opponents’ goods include, are included in, or overlap with the contested ones. This finding is not affected by the limitation applied in the contested sign since the limitation does not relate to their nature which allows for the conclusion of identity. Additionally, for some of the contested goods, like diverse abrasive, cleaning and scouring preparations etc. this limitation is clearly inapplicable because due to their nature, these goods cannot be meant for babies’ or children.

Relevant public — degree of attention

The goods found to be identical are directed mostly at the public at large. The degree of attention is average.

The comparison of the signs

The element ‘Nelly’ which is present in all the earlier signs may be perceived as a female name by part of the public while it may have no meaning for the other part. In any case this word does not have any meaning for the relevant goods; thus, its distinctiveness is average.

The contested sign is figurative and consists of an image of an imaginative cartoon character, most likely a girl in a colourful overall. There is a label or a name tag on the chest of the character which contains, in rather small letters, the elements ‘Nelly Jelly’. Considering the manner in which these letters are depicted, regardless of whether ‘Nelly’ as such is perceived as a name, the expression ‘Nelly Jelly’ is most likely to be perceived as denoting the name or nickname of the character represented. The element ‘Jelly’ alone may be perceived by part of the public, especially the English-speaking part as denoting anything which consists of a jelly. Thus this element may refer to the form of many of the contested goods, since chemical preparations such as cosmetics, cleaning preparations etc. may have a jelly like form. In such a case the distinctiveness of this element would be limited. However, due to the manner in which the entire expression is depicted in the name tag or label on the chest of the character the most likely scenario is that the public will perceive this expression as a whole as the name or nickname of the character and will not think of the typical meaning of the word ‘Jelly’; thus, the distinctness of this expression will be normal.

The applicant argues that Nelly Jelly is a fictitious character from the children’s books published by the applicant and that it will be perceived as such. Previously the name of the character was KAKE MAKE and later it was changed to Nelly Jelly. The applicant submits some evidence regarding the character called ‘KAKE MAKE’. The evidence is found, however, very scarce and concerns the persona of KAKE MAKE and not Nelly Jelly, so they are irrelevant to show the perception of the public with regard to this concept. However, as mentioned above, considering the representation of contested sign and especially its striking figurative element, the Opposition Division is of the opinion that the contested sign as a whole is most likely to be perceived as a cartoon character.

The contested sign is clearly dominated by the figurative element because it is much larger and overshadows the verbal elements, which might even go unnoticed, due to their minimal size. Thus, the verbal elements, if at all perceived, play a secondary role within the sign. Furthermore, the figurative element is distinctive of the goods. This is true even considering that they are meant for children or babies, since the figurative element is a rather original and playful representation of a cartoon character and will be perceived as such.
Visually, the signs coincide in the distinctive element ‘Nelly’ present in all signs, albeit in the earlier signs it is placed in various positions, sometimes it is alone, or accompanied by a word or phrase, or placed within a label. In the contested sign, however, even if it will be read/seen, the element ‘Nelly’ is secondary and is overshadowed by the figurative element dominating the contested sign. Therefore, the existence of this common element has limited impact, even if in a given earlier mark ‘Nelly’ is the only verbal element or the main verbal element. The signs differ in all the other aspects and, mainly, in the dominant figurative element of the contested sign as well as in the additional verbal element ‘JELLY’, as well as the additional elements of the earlier signs including both verbal and figurative elements. The signs also differ in their structure and composition, since neither of the earlier signs has a similar figurative element as the contested sign and in neither of the earlier signs the verbal elements are positioned in a similar manner as in the contested sign. Thus, the visual similarity will be rather low, if any.
Aurally, the pronunciation of the signs coincides only in the element ‘Nelly’, but differs in the word ‘Jelly’ of the contested sign and in the additional verbal elements of some of the earlier signs. The Opposition Division notes that the words ‘NELLY JELLY’ with their repeated endings result in a certain rhythm which is not present in any of the earlier signs. Consequently, the aural similarity is below the average.
Conceptually, as regards the earlier marks, the element ‘Nelly’ may be perceived as a female name, whereas in the contested sign this element will be perceived in conjunction with Jelly and the character depicted by the figurative element and thus will be understood as a name or a nickname of this character. An association will not be evoked by the word, Nelly’ in any of the earlier signs, because of the lack of a similar figurative element to the contested sign’s. Consequently, despite the presence of the same name in all signs the Opposition Division is of the view that their perception will be different, thus there is no conceptual similarity. This is the more so, in case the element ‘Nelly’ in the earlier signs will not be recognised as a name.

Distinctiveness of the earlier marks

The assessment of the distinctiveness of the earlier marks rests on their distinctiveness per se. None of the earlier trade marks as a whole has any meaning for any of the goods in question from the perspective of the relevant public, despite the presence of some weak or non-distinctive elements in them. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment

The goods are partially identical and partially dissimilar. The level of attention of the public is average. The signs are visually similar to a low degree, aurally similar to a below the average degree and conceptually not similar.
It must be considered that the dominant figurative element will be of major importance in the overall impression of the contested sign. When the average consumer seeks to select a product covered by the mark applied for, this element outstanding in the visual memory will be decisive. Moreover, the goods in question which are diverse kinds of cosmetics, cleaning preparations, essential oils, perfumery are not very large. The reproduction of the sign on their packaging, even if it were to take a large part of the space could not be very big. It must also be considered that trade marks normally do not occupy the majority of the space on a product or its packaging, but rather a relatively small part of it since more information need to be placed onto the product packaging. In addition, most of these goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the trade mark. Therefore, if the mark is taken as a whole, it is the representation of the figurative character in the contested sign which dominates the impression retained by the average consumer in his mind. Such a figurative element is not present in any of the earlier signs.
Even if the consumers perceive the words ‘Nelly Jelly’ in the contested sign, they will notice the figurative element first and as a result this expression will be perceived in the context of this figurative element. Consequently, this will be understood as the name/nickname of the character represented. Neither of the earlier signs has both of these verbal elements of the contested sign. They also do not feature any figurative element which would even remotely resemble the striking figurative element of the contested sign.
Even considering the identity of goods and the average level of attention of the public, the Opposition Division is of the view that considering the strikingly different structures of the signs under comparison and the overlap only in part of the secondary verbal element of the contested sign, there will be neither association between them nor likelihood of confusion.
As to the opponents’ argument that all the earlier trade marks have the same word component ‘Nelly’, thus being a ‘family of marks’ or ‘marks in a series’, it must be noted that such a circumstance is likely to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also origin from the opponents .
In such a circumstance, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’, Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.
According to the opponents, their family of marks is characterised by the presence of the word ‘Nelly’ combined with other terms. The Opposition Division notes that this element in some cases is the sole element or in other cases occupies different positions, like in ‘NELLY SENSES’ where it is the first element and in ‘N DE NELLY’ where it is even a third element. However, the element ‘Nelly’ in the earlier marks is clearly visible and plays an independent distinctive role and is not overshadowed by any figurative elements. This is not the case with the contested sign, which is clearly dominated by the figurative element. Merely the fact that it includes the word ‘Nelly’, in a secondary position, is not sufficient to establish that it could be perceived as belonging to the family of marks of the opponents.
Considering the above, the Opposition Division finds that there is no likelihood of confusion for identical goods for the average public paying a normal degree of attention. This is the more so, for the professional public which is more attentive and will pay a higher level of attention, as for such public the differences between the signs are even more apparent.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.
Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to further examine the evidence of use filed by the opponents.

On 19 February 2020, the opponents filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was also received on 19 February 2020.
In its response received on 1 April 2020, the applicant requested that the appeal be dismissed.

Submissions and arguments of the parties

The arguments raised in the statement of grounds may be summarised as follows:

The essential reason for this appeal is the comparison with the decision in the parallel case (18/12/2019, B 3048977 NELLY JELLY vs. NELLY et al,) in which the likelihood of confusion was found and refers to the reasons in that decision.
The mark applied for consists of a little doll, called NELLY JELLY, which has been used on the Internet as follows:

The mark as used clearly displays the name ‘NELLY JELLY’, which was found confusing in opposition B 3048977 with the earlier marks.
Given that the facts are the same (the goods are identical) different outcome is in contradiction with the previous one (B 3048977).
It is inconceivable that a denomination such as ADIDAS JELLY, CHRISTIAN DIOR JELLY, VODAFONE JELLY or SCHLECKER JELLY could be added to that graphic, in its corresponding class, solely on the basis that a doll bearing the denomination allows the use of another’s mark.
Aurally, the marks are identical, as found in the previous decision. Thus, pronunciation in this way prevents differentiation in the verbal communication which makes the marks equivalent, given that the graphic part is independent of the denomination.
The opponents reproduce the integral part dealing with the proof of use, relevant public, similarity of the goods, similarity of the signs, distinctiveness of the earlier mark and global assessment, other arguments and conclusion of opposition decision B 3048977.

The arguments raised in response may be summarised as follows:

The EUIPO is not bound by its previous decisions, since each case has to be dealt with separately and with regard to its particularities. For this reason, the applicant will not make detailed analysis/comparison of the mentioned opposition decision (18/12/2019, B 3 048 977) and the relevant contested decision as the opponents did.
It seems that the opponent by claiming that ‘the mark at issue consists of a little doll (1) and ‘That doll bears the name NELLY JELLY’ (2), actually, explicitly agree with the view of Opposition Division, i.e. that the contested sign is clearly dominated by the figurative element. Additionally, it seems that the opponent agrees that the public will not think of the typical meaning of the word ‘Jelly’ and that the public will perceive expression ‘NELLY JELLY’ of the contested sign as a whole referring to the name or nickname of the character.
According to case-law, the specific marketing strategies are not relevant as regards the assessment of the likelihood of confusion. (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58 and 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Accordingly, the particular circumstances in which the mark is used (e. g. on the Internet) have no impact on the assessment of the likelihood of confusion because the marketing strategies may vary in time depending on the wishes of the holder of the mark applied for (i.e. contested mark).
As regards the proof of use, the opponent’s arguments are not understandable since the Opposition Division proceeded the opposition as if genuine use of the earlier marks had been proven for all the goods in Class 3 invoked, which was the best light in which the opponent’s case can be considered.
Furthermore, the opponent’s arguments as regards marks with reputation must be found as irrelevant in the current case.
The contested sign is dominated by the figurative element of a doll, which is also distinctive since it has no relation to the contested goods. In addition, it is original, colourful, fictitious, playful, funny, happy and vivid character bearing the name ‘NELLY JELLY’, and it is so large that it overshadows the verbal elements.
The marks are visually dissimilar. Therefore, the Opposition Division rightly concluded that even for identical goods, average consumers with an average level of attention, taking into account contested sign which is clearly overshadowed by the figurative element, the signs will not be confused.

Reasons

All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.
The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Confidentiality request

The submissions by the applicant before the Opposition Division were marked as confidential. Following Article 114(4) EUTMR and Article 6 Rules of Procedure before the Boards of Appeal the party requesting confidentiality of a document has to show and explain the special interest in keeping the file confidential. Such a special interest must exist because of the confidential nature of the document or its status as a trade or business secret. The request also must be explicit, defined to its scope and justified.
In the present case, the applicant provided no arguments why it considered that the observations in reply filed should be considered confidential. In addition, the documents do not contain any data or information having prima facie a confidential nature. (31/01/2008, R 966/2007-2, MAKO (FIG. MARK) / MALO, MALO (FIG. MARK), § 11-13; 03/03/2008, R 429/2007-2, KINDERMEDIA (FIG. MARK) / KINDER et al. § 22-24).
Consequently, the request is hereby rejected.

Scope of the appeal-preliminary remarks

The opponent appealed the contested decision in its entirety. As correctly observed by the applicant, the opponents’ arguments set forth in the statement of grounds of the present appeal focus on the comparison between the opposition decision subject to the present appeal and the opposition decision in the parallel case (18/12/2019, B 3 048 977, NELLY JELLY vs. NELLY), between the same parties and the earlier rights invoked, but different EUTMs applied for. In contrast to the contested decision, in the parallel decision the Opposition Division found likelihood of confusion with the earlier marks.
In this regard, the Board reminds that while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions (10/12/2019, R1493/2019-5, FAI INDOOR SKYDIVING CHAMPIONSHIPS / WORLD CHAMPIONSHIPS INDOOR SKYDIVING (fig.), § 52). Therefore, even if the previous decisions are to some extent factually similar to the present case, the outcome may not necessarily be the same.
The Board further recalls that 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, § 35, 13/02/2008, C-212/07 P, Hairtransfer, EU:C:2008:83, § 43-44; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; 16/05/2013, T-356/11, Equipment, EU:T:2013:253, § 74; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 47).
It is a fact that 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 (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73-75). Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Board must consider whether it should be followed.
In the present case however, as rightly observed by the applicant, the opponents wrongly consider that the outcome should be the same in both cases. Instead, despite the points in common, namely the identical goods, the same earlier rights invoked; it is highlighted that the signs at stake, even applied for by the same entity and having verbal elements in common, i.e. ‘NELLY JELLY’, they are considerably different.
Significantly, whereas in the parallel opposition (B 3048977) the contested sign was a word mark ‘NELLY JELLY’, the contested sign in the present case is a figurative mark , which includes a dominant visually striking figurative element. Accordingly, given that the signs under attack are substantially different, the approach followed in each of the cases will be specific to particularities of the case and follow different principles. This can potentially lead to different conclusions as to the existence of likelihood of confusion.
Although in the notice of appeal, the opponent challenged the decision in its entirety, its arguments are limited to claims on inconsistency with the decision in the parallel case (B 3048977). The Board will, however, for the sake of clarity and completeness evaluate the legality of the Opposition Division’s decision under Article 8(1)(b) EUTMR invoked.
For reasons of procedural economy, the Board will follow the same approach as the Opposition Division and will proceed as if the use of the earlier rights had been proved for all the goods of Class 3 which is the best scenario for the opponents.

Article 8(1)(b) EUTMR

Under Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
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 from economically linked undertakings constitutes a likelihood of confusion. In accordance with that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30-33). Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (01/07/2009, T-16/08, Center Shock, EU:T:2009:240, § 28).
For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 42).

Relevant public

In the present case, the goods at stake are directed mostly at the public at large. However, some of the goods potentially target both the general and the professional public. It follows that for some of the goods, professional public could be the overlapping and thus the relevant one, but since all the goods clearly target public at large and this public is more prone to confusion, the Board will focus on this public, as the Opposition Division correctly did, since this is the best option for the opponents’ interests.
Because of the nature of the relevant goods which belong to Class 3, the degree of attention is found to be average (16/12/2015, T-356/14, Kerashot, EU:T:2015:978, § 23). The relevant territory, as correctly found by the Opposition Division, is the EU since some of the earlier marks are Spanish, while some are EUTMs.

Comparison of the goods

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

For the earlier right Nos 1-9:
Class 3 – Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and scraping preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices,
For the earlier right No 11:
Class 3 – Bleaching preparations and other laundry preparations; cleaning, polishing, scouring and scraping preparations; soaps; perfumery products, essential oils, cosmetics, hair lotions; hair lacquers; cosmetic foams; capillary gel; hair styling gel; hair styling oil; hair care creams; hair waxes; shampoos; hair conditioners; hair conditioners; hair softeners; cosmetic masks; hair dyes; bath gel; hand soaps and other body soaps; moisturizing[cosmetic] body lotions; nail polish remover; hand cream; skin cleansing gel; skin exfoliators; skin moisturizers[cosmetic], dentifrics.

The contested goods encompass a very long list of goods which essentially can be divided in categories of bleaching preparations and other laundry preparations; cleaning, polishing, scouring and scraping preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices, which are in line with the general indications of the class heading as well as cobbler’s wax, tailor’s wax and shoemakers’ wax.
The contested decision correctly, in the Board’s view, noted that while the contested ‘cobbler’s wax, tailor’s wax as well as shoemakers’ wax’ were found dissimilar with the goods of the earlier rights’ invoked, the remaining contested goods were found identical with the goods of the earlier rights. Since the parties have not contested those findings, the Board concurs with the assessment of the similarity of the goods which is correct and complete.

Comparison of the marks

With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 42).
According to the aforementioned case law, it follows that it is necessary to assess the distinctive and dominant elements of the signs under comparison before assessing their visual, aural and conceptual similarities.

The signs to be compared are:

(Earlier Right No 1);

AQUA NELLY (fig.)

(Earlier Right No 2);

(Earlier Right No 3);

Nelly ‘Coloractive’

(Earlier Right No 4);

N D NELLY

(Earlier Right No 5);

Nelly

(Earlier Right Nos 6 and 8);

(Earlier Right No 9);

NELLY SENSES

(Earlier Right No 11).

Earlier marks

Contested sign

The contested sign is a complex figurative mark consisting of a graphical and words elements. The figurative component consists of the representation of an imaginative cartoon hero (a doll), most likely a girl, with a colourful clothing. In the central position of that doll, namely on the chest, there is a label or a name tag which contains the wording ‘NELLY JELLY’, in rather small upper-case black standard typeface, where ‘JELLY’ is placed one under the ‘NELLY’.
Firstly, the element ‘NELLY’ of the contested application as such may be perceived as a female first name.
The element ‘JELLY’ alone, as correctly the Opposition Division noted and the parties did not contest, may be perceived by part of the public, especially the English-speaking part, as denoting anything which consists of a jelly. Thus, the element ‘JELLY’ may refer to the form of many of the contested goods, since chemical preparations such as cosmetics, cleaning preparations etc. may have a jelly like form. As rightly noted in the contested decision, in such a case the distinctiveness of this element would be limited.
However, the Board highlights that, considering the manner in which the two elements are depicted in the name tag or a label on the chest of the character, it is most likely that the public will perceive this expression as a whole, namely ‘NELLY JELLY’. It follows that the verbal element ‘NELLY JELLY’ in the contested application will be perceived as denoting the name or nickname of the doll. Thus, consumers will not think of the typical meaning of the word ‘Jelly’. For this reason, the Board concurs with the Opposition Division that the distinctiveness of the verbal element perceived as a whole is normal.
With respect to the dominant elements of the contested application, it is true that where a trade mark is composed both of verbal and figurative elements, the former are, in principle, more distinctive and have usually a stronger impact than the latter (12/07/2019, T-54/18, 1st American, EU:T:2019:518, § 82; 23/05/2019, T-837/17, SkyPrivate, EU:T:2019:351, § 39). Nevertheless, on that regard, it should be noted that it does not follow from the aforementioned case-law that the word elements of a trade mark must always be held to be more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, owing to — inter alia — its shape, size, colour or position within the sign, rank equally with the word element (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 61; 23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37 and 39).
It is reminded that although the distinctiveness of an element of a sign must be taken into account in order to determine whether that element is dominant, the fact remains that size and colour are also intrinsic parts of the element at issue which must be taken into account for the purposes of that analysis and, as an ancillary point, the relative position of the various components within the arrangement of the mark (29/04/2020, T-106/19, Abarca Seguros, EU:T:2020:158, § 47).
The contested decision held that the mark applied for is clearly dominated by the figurative element because it is much larger and overshadows the verbal elements, which might even go unnoticed, due to their minimal size. Furthermore, the figurative element was found distinctive of the goods at stake. This is true even considering that the goods are meant for children or babies, and the figurative element is a rather original and playful representation of a cartoon character (a doll) for babies and children.
Thus, the remaining verbal element ‘NELLY JELLY’, if, due to its size perceived at all, plays only a secondary role within the sign. However, considering the inherent distinctiveness of the verbal element ‘NELLY JELLY’ as normal and considering that it is a full name of a doll, it could be perceived as co-dominant element together with the figurative representation of the doll.
Nevertheless, the Board considers that even if it can be accepted that the average consumer would more likely refer to the goods in question by quoting their name ‘NELLY JELLY’ rather than by describing the figurative element of the mark, in this case ‘a doll’ (31/012012, T-205/10, La Victoria de Mexico, EU:T:2012:36, § 38), the Board notes that due to the small size of that verbal element ‘NELLY JELLY’ within the whole mark, as it is almost invisible, it plays only a secondary role to the dominant figurative representation of a doll at stake:

It cannot be left un-noted that even the parties to the case in their submissions before the Board provided the representations the contested sign, where the verbal element ‘NELLY JELLY’ was enlarged, so that it would be more visible to the Board:

However, the distinctive and dominant elements of the contested application are to be assessed in the applied form: . Furthermore, as the applicant correctly noted, specific marketing strategies are not relevant as regards the assessment of the likelihood of confusion. (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58 and 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Accordingly, the particular circumstances in which the mark is used (e.g. on the Internet) have no impact on the assessment of the likelihood of confusion because the marketing strategies may vary in time depending on the wishes of the holder of the mark applied for (i.e. contested mark).
Consequently, the figurative element, by virtue of its large size, its elaborate drawing and colourful depiction, is visually striking and dominates the visual impression of the mark in question since it overshadows the verbal element ‘NELLY JELLY’, which, although positioned in the central part of the figurative element of the sign, due to its very small proportions, it is almost invisible and only plays a secondary role in the perception of the contested sign. The doll-shaped figurative element instead is much larger and has a distinctive stylization and layout, which are striking and to be remembered as an indication of the commercial origin. It follows that the figurative element is undoubtedly the dominant element of the contested sign.
As regards the earlier marks, it must be noted that all include the verbal element ‘Nelly’, which will be perceived in all cases and languages as a female first name. Its distinctiveness is therefore normal, sine the female first name has nothing to do with the cosmetics goods at stake. The position of the element ‘NELLY’, however, is different in each of the earlier marks invoked. It might be either the sole element of the mark ( Earlier rights No 6, 8), the first element (Earlier rights No 3, 4, 9, 11) the second (Earlier right No 2), or even the third one (Earlier right 5), or one of the many verbal elements but the visually dominant one (Earlier right 1 and 12). Most of the earlier signs are word marks whereas some are figurative marks (Earlier rights No 1, 2, 9). However, neither of the figurative marks has any significant high stylisation beyond a simple label and a regular typeface. The other verbal elements of the earlier marks, such as ‘Senses’, or ‘Professional’ refer to the nature, substance or purpose of the relevant goods, thus being weak for at least the English-speaking part of the public. Therefore, in all the earlier signs, the element ‘NELLY’ is the most distinctive and dominant element.
For the above reasons, the Board endorses the contested decision’s findings about the distinctive and dominant elements of the signs at issue and will reject the opponents’ argument that the figurative image of the contested sign is not relevant for the current comparison of the signs which should lead to the same result as in the opposition decision B 3 048 977.
In view of the above assessment, the Board will proceed to the assessment of visual, aural and conceptual similarity between the marks at issue.

Visual comparison

Visually, the Board agrees with the contested decision that the only visual similarity exhibited is the existence of the element ‘Nelly’ which is present in all signs. However, the Board points out that although this component is the dominant element in all the earlier signs, in the contested sign, the element ‘Nelly’ is only secondary and is overshadowed by the figurative element of a doll dominating the contested sign. Therefore, the existence of this common element has limited impact.
On the other hand, as rightly the Opposition Division noted, the signs at issue differ in all the other aspects and, mainly, in the dominant figurative element of the contested sign. This element, which, contrary to the opponents’ argument, cannot be ignored, is outstanding in the visual impression created by the contested sign, whereas none of the earlier signs has an equivalent feature.
In addition, the signs differ in the additional verbal element ‘JELLY’, which is not included in any of the earlier signs, as well as the additional elements of the earlier signs including both verbal and figurative elements. The signs also differ in their structure and composition, since neither of the earlier signs has a similar figurative element as the contested sign and in neither of the earlier signs the verbal elements are positioned in a similar manner as in the contested sign. Thus, the visual similarity will be rather low, if any (16/05/2019, R 1722/2018-1, Potato Joe (fig.) / Trader Joe's, § 26; 14/05/2020, R 1754/2019-4, Sensenmann (fig.) / Sandeman, § 28).

Aural comparison

The pronunciation coincides in the element ‘NELLY’ or else the sequence of letters ‘N-E-L-L-Y’. However, the signs differ in the word ‘Jelly’ of the contested sign and in the additional verbal elements of some of the earlier signs. Furthermore, as correctly noted in the contested decision, the words ‘NELLY JELLY’ with their repeated endings result in a certain rhythm which is not present in any of the earlier signs. In addition, it is reminded that the figurative elements of the contested sign have no bearing on the comparison since the relevant public has no reason to refer to them in addition to the word element (11/09/2014, T-536/132, Aroa, EU:T:2014:770, § 45). For all the above reasons, the Board endorses the Opposition Division’s finding that the aural similarity is below the average (14/05/2020, R 1754/2019-4, Sensenmann (fig.) / Sandeman, § 29).

Conceptual comparison

With regard to the meaning of the signs at issue reference is made to the paragraphs 36-49 above.
As regards the earlier marks, the element ‘Nelly’ will most likely be perceived as nothing more than a female first name.
On the other hand, in the contested sign the element ‘NELLY’ will be perceived in conjunction with the elements ‘JELLY’ and the character depicted by the figurative element and thus will be understood as a name of this character, which is ‘NELLY JELLY’. Although the element ‘JELLY’ evokes a concept related to the form of the goods at issue, the Board concurs with the Opposition Division that the way the two elements are depicted on the chest of the character leads to reading these two elements as a whole.
It is clear that the ‘NELLY JELLY’ doll is not the same as ‘NELLY’ (16/05/2019, R 1722/2018-1, Potato Joe (fig.) / Trader Joe's, § 29).
It cannot be held that consumers will establish a conceptual link between the marks since the verbal element ‘NELLY JELLY’ will be remembered in connection to the depiction of the doll and as the whole name of the character. The signs are therefore conceptually dissimilar because they obviously refer to different concepts.

Distinctiveness of the earlier mark

The degree of distinctiveness of the earlier sign is one of the factors to be taken into account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The opponents 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 marks will be based on their distinctiveness per se. In the present case, despite the presence of some weak or non-distinctive elements in them (such as ‘Senses’, ‘Aqua’, ‘Coloractive’, ‘Professional’) none of the earlier trade marks as a whole has any meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier marks must be seen as normal.
It is recalled that account must be taken of the fact that the (potential) enhanced distinctiveness of the contested sign is irrelevant because likelihood of confusion requires a consideration of the scope of protection of the earlier mark rather than that of the mark applied for (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 84).

Overall assessment of the likelihood of confusion

A likelihood of confusion arises from the risk that the relevant 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. Its existence must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular a similarity between the trade marks and between the goods or services covered, the distinctive character of the earlier trade mark (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19 to 20) and the likelihood of association between the signs (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22). Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).
The assessment of the likelihood of confusion depends on numerous factors, including the recognition of the trade mark by the public on the market concerned. Since the more distinctive an earlier trade mark is, the greater the likelihood of confusion, marks with a highly distinctive character, either per se or because of the public’s recognition of them, enjoy broader protection than marks with a less distinctive character (11/11/1997, C‑251/95, SABEL, EU:C:1997:528, § 24).
In the present case, the goods covered by the trade marks at issue are considered to be partially identical and partially dissimilar.
The relevant public to be considered in the overall assessment is the general public, since it is more prone to confusion, which demonstrates an average level of attention. Furthermore, the inherent distinctiveness of the earlier marks is normal.
The Board points out that the visual, aural, and conceptual aspects of the trade marks in dispute do not all have the same weight in the global assessment of the likelihood of confusion. It is, in that respect, appropriate to examine the objective conditions under which the trade marks are presented on the market. The extent of the similarity or difference between the marks may depend, in particular, on their inherent qualities or the conditions under which the goods or services covered by them are offered for sale. In the present case, the goods found identical could be in general classified as bleaching preparations and other laundry preparations; cleaning, polishing, scouring and scraping preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.
According to settled case-law, cleaning preparations are sold in self-service stores, with the result that visual similarity plays a very important role in the global assessment of the likelihood of confusion. Concerning cosmetic preparations, hair lotions and perfumery, these are generally sold in either self-service stores or perfumeries. In perfumeries, consumers normally have the opportunity either to select for themselves the products they desire, or to seek assistance from a salesperson. In any event, even if a consumer seeks assistance from a salesperson, he will have the opportunity to see the goods at issue before purchasing them.
The presence of the striking colourful design of a doll in the mark applied for will not therefore escape his attention (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 129, 130) It is noted that in such cases, where consumers therefore rely primarily on the image of the trade mark affixed to the product, the visual similarities between the signs will, as a general rule, be more important (16/05/2019, R1722/2018-1, Potato Joe (fig.) / Trader Joe, § 48 ; 23/10/2019, R 138/2019-1, MiAL (fig.) / BIAL, § 48, 21/07/2020, R 422/2020-5, NELLY JELLY (fig.) / AQUANELLY et al., § 49)
In the case at hand, if the contested sign is perceived as a whole, it is the representation of the character (a doll) in the contested sign which dominates the impression retained by the average consumer in his/her mind. Such a figurative element is not present in any of the earlier signs. What is more, even if the consumers perceive the words ‘NELLY JELLY’ in the contested sign, they will notice the figurative element first and as a result this expression will be perceived in the context of this figurative element. The existence of the figurative element in the contested sign gives rise to significant visual differences which cannot outweigh the visual similarities as a result of the common element ‘NELLY’, which is only one of the three elements in the contested sign, without being the dominant one (03/06/2015, T‑559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 131) .
Therefore, bearing in mind the great visual differences between the signs at issue and, furthermore, taking into account the below average level of aural similarity and the lack of conceptual similarity, as well as the normal degree of inherent distinctiveness of the earlier marks, it must be held that, even for the identical goods, the differences between the signs are sufficient to safely distinguish between them and to exclude any likelihood of confusion within the meaning of Article 8(1)(b)EUTMR for all the relevant public in across the European Union and in Spain.
Overall, the Board finds that there is no likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for the contested goods found identical.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.
It follows that there is no need to examine the proof of use filed by the opponent, since this cannot change the outcome.
In view of the above considerations, the contested decision is confirmed, and the appeal is dismissed.

Costs

Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the appeal proceedings.
These consist of the applicant’s costs of professional representation of EUR 550.
As to the opposition proceedings, the Opposition Division ordered the opponent to bear applicant’s costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal;
Orders the opponent to pay EUR 850 for the applicant’s costs in the opposition and appeal proceedings.

Signed

V. Melgar

Signed

C. Govers

Signed

A. Pohlmann

Registrar:

Signed

H.Dijkema

21/07/2020, R 422/2020-5, NELLY JELLY (fig.) / AQUANELLY et al.

Latest News

FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
May 28, 2021
For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).
THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
May 27, 2021
Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
UNO & UNA | DECISION 2661950
May 22, 2021
Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)

Summary of the facts

Proof of use

The contested goods

Relevant public — degree of attention

The comparison of the signs

Distinctiveness of the earlier marks

Global assessment

Submissions and arguments of the parties

Reasons

Confidentiality request

Scope of the appeal-preliminary remarks

Article 8(1)(b) EUTMR

Relevant public

Comparison of the goods

Comparison of the marks

Visual comparison

Aural comparison

Conceptual comparison

Distinctiveness of the earlier mark

Overall assessment of the likelihood of confusion

Costs

Order

Dismisses the appeal;

Orders the opponent to pay EUR 850 for the applicant’s costs in the opposition and appeal proceedings.

Latest News