Franmax UAB, Savanorių pr. 247, 02300 Vilnius, Lithuania (opponent), represented by METIDA Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)

a g a i n s t

Essebidue S.A.S. di Scantamburlo Ado & C, Via dell'Industria 1, 35010 Camposampiero, Italy (applicant), represented by Studio Tecnico Brevettuale, Via Carlo Dolci 17, 35133 Padova, Italy (professional representative).

On 17/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 477 is partially upheld, namely for the following contested goods:

Class 21: Cups of paper or plastic; Toilet paper dispensers; Toilet paper holders; Toilet roll stands; Toilet paper racks; Waste paper baskets; Dish covers; Kitchen containers; Containers for household or kitchen use; Bread bins; Metal boxes for dispensing paper towels; Trays of paper, for household purposes; Bread baskets for household purposes; Paper plates; Disposable table plates; Saucers; Picnic boxes; Picnic crockery; Fitted picnic baskets; Fitted picnic baskets, including dishes; Table napkin holders; Leathers for cleaning purposes; Cleaning tow; Cleaning articles; Buckets made of woven fabrics; Cleaning mitts of fabric; Coasters, not of paper or textile; Drinking vessels; Lunch boxes; Bowls [basins]; Trivets [table utensils]; Rags [cloth] for cleaning; Dusting cloths [rags]; Boxes for dispensing paper towels; Boxes for dispensing paper serviettes; Hand towel dispensers, other than fixed; Dispensers for facial tissues; Dispensers for cellulose wipes, for household use; Dispensers for paper wipes [other than fixed].

2. European Union trade mark application No 17 586 711 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 586 711 for the figurative mark , namely against all of the goods in Class 21. The opposition is based on Lithuanian trade mark registration No 54 090 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); material for brush-making; cleaning articles; steel wool for cleaning; glass, unworked or semi-worked, except building glass; glassware, porcelain and earthenware not included in other classes.

The contested goods are the following:

Class 21: Cups of paper or plastic; Toilet paper dispensers; Toilet paper holders; Toilet roll stands; Toilet paper racks; Waste paper baskets; Dish covers; Kitchen containers; Containers for household or kitchen use; Bread bins; Metal boxes for dispensing paper towels; Trays of paper, for household purposes; Bread baskets for household purposes; Paper plates; Disposable table plates; Saucers; Picnic boxes; Picnic crockery; Fitted picnic baskets; Fitted picnic baskets, including dishes; Table napkin holders; Leathers for cleaning purposes; Cleaning tow; Cleaning articles; Buckets made of woven fabrics; Cleaning mitts of fabric; Coasters, not of paper or textile; Drinking vessels; Lunch boxes; Containers for bird food; Bowls [basins]; Trivets [table utensils]; Rags [cloth] for cleaning; Dusting cloths [rags]; Boxes for dispensing paper towels; Boxes for dispensing paper serviettes; Hand towel dispensers, other than fixed; Dispensers for facial tissues; Dispensers for cellulose wipes, for household use; Dispensers for paper wipes [other than fixed].

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 21

The contested cleaning articles; kitchen containers; are identically contained in both lists of goods (including synonyms). These goods are identical.

the contested leathers for cleaning purposes; cleaning tow; cleaning mitts of fabric; rags [cloth] for cleaning; dusting cloths [rags] are included in the broad category of the opponent’s cleaning articles. Therefore, they are identical.

The opponent’s goods household or kitchen utensils and containers (not of precious metal or coated therewith) include a very broad range of products for household and kitchen purposes (such as dinnerware, cookware, kitchen and bathroom containers, receptacles, cases and dispensers, buckets and brushes etc.).

The contested containers for household or kitchen use include, as a broader category, the opponent’s household or kitchen containers (not of precious metal or coated therewith). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cups of paper or plastic; toilet paper dispensers; toilet paper holders; toilet roll stands; toilet paper racks; waste paper baskets; dish covers; bread bins; metal boxes for dispensing paper towels; trays of paper, for household purposes; bread baskets for household purposes; paper plates; disposable table plates; saucers; picnic boxes; picnic crockery; fitted picnic baskets; fitted picnic baskets, including dishes; table napkin holders; buckets made of woven fabrics; coasters, not of paper or textile; drinking vessels; lunch boxes; bowls [basins]; trivets [table utensils]; boxes for dispensing paper towels; boxes for dispensing paper serviettes; hand towel dispensers, other than fixed; dispensers for facial tissues; dispensers for cellulose wipes, for household use; dispensers for paper wipes [other than fixed] are either identical to, because the contested goods are included in, or overlap with, the opponent´s household or kitchen utensils and containers (not of precious metal or coated therewith), or at least similar because the goods under comparison are directed at the same public and are commonly provided by the same undertakings through the same distribution channels.

The contested containers for bird food are dissimilar to all of the opponent’s goods in Class 21. They are unlikely to be found in the same distribution channels as those of the opponent’s household and kitchen containers or any other of the opponent’s goods in class 21. Even if these containers may all be used for storage, they target different end users. Furthermore, these contested goods are not in competition or complementary to any of the opponent’s goods. Moreover, the Opposition Division does not find it likely that the contested goods and any of the opponent’s goods would usually be produced by the same undertakings.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or at least similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Lithuania.

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 contested sign is a figurative mark consisting of the verbal elements ‘igienintima’ and ‘aurora’ depicted over two lines in blue, lower case letters with some figurative elements consisting in light blue circles and a half-moon, and stylised representations of leaves in dark blue. The earlier mark is a figurative mark consisting of the verbal element ‘Aurora’ depicted in italic black sentence case letters. The earlier mark also features a figurative element of an oval frame surrounding the verbal element. Since the figurative elements of the contested sign are merely of a decorative nature they have less trade mark significance.

The leaves in the contested sign are likely to be perceived as a reference to nature or as an indication that the goods are environmentally friendly and therefore they have limited distinctive character. In any event, it must be borne in mind that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, SeleniumAce, EU:T:2005:289, § 37).

For at least a part of the relevant public, the verbal element ‘Aurora’ in both signs, will be understood as a female name, the goddess of dawn in Roman mythology or as dawn, daybreak (information extracted from Tarptautinių žodžių žodynas on 11/01/2019 at http://www.zodziai.lt/paieska?word=aurora). Either way, the element ‘AURORA’ in both signs will not have any particular meaning in relation to the relevant goods and is, therefore, considered distinctive to an average degree.

The verbal element ‘igienintima’ in the contested sign has no meaning. Therefore it is distinctive.

Even if the size of the verbal element ‘Aurora’ in the contested sign is slightly bigger than the other elements therein, neither the contested sign nor the earlier mark has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Since a non-negligible part of consumers is likely to associate both signs either with a female name, or the goddess of dawn in Roman mythology or as dawn, daybreak’ and for the reasons outlined above, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually, the signs coincide in the verbal element ‘Aurora’, which is distinctive, as described above. They differ in the first verbal element ‘igienintima’ (distinctive) of the contested sign and in the stylisation, including the colours, of the marks.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛Aurora’, present identically in both signs. The pronunciation differs in the sound of the initial word ‛igienintima’ of the contested sign, which is also distinctive and has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public under analysis. Since the word element ‘Aurora’, included in both signs will be associated with a female name and/or of a goddess, or dawn/daybreak and the element ‘igienintima’ of the contested sign is meaningless as explained above, the signs are considered similar to an average degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent 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.

5. Global assessment, other arguments and conclusion

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).

In the present case, the goods have been found partially identical, partially at least similar and partially dissimilar. The goods are directed at the public at large whose degree of attention is average.

For the part of the public under analysis, the signs under comparison are visually similar to a below average degree, and aurally and conceptually similar to an average degree on account of their common, distinctive element 'AURORA', which constitutes the only verbal element of the earlier mark and is fully included, and clearly perceptible as an independent element, in the contested sign. The signs differ essentially in the additional word 'igienintima’ of the contested sign, as well as in their stylisation and figurative components.

As mentioned above in section c), where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In this respect, it should also be borne in mind that the additional verbal element 'igienintima’ of the contested sign has no meaning for the relevant public that could help consumers to more easily differentiate between them. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).  

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs, in particular taking into account the fact that the only verbal element of the earlier mark is fully included, and clearly perceptible as an independent element, in the contested sign.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including a likelihood of association) on the part of the public under analysis and therefore the opposition is partly well founded on the basis of the opponent’s Lithuanian trade mark registration No 54 090. As stated above in section c) of this decision, a likelihood of confusion for only a non-negligible part of the relevant public of the relevant territory is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Martin INGESSON

Sam GYLLING

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.