OPPOSITION Nо B 3 047 578

Dr. Grandel GmbH, Pfladergasse 7-13, 86150 Augsburg, Germany (opponent), represented by Patent- Und Rechtsanwälte Ullrich & Naumann Partnerschaftsgesellschaft mbB, Schneidmühlstraße 21, 69115 Heidelberg, Germany (professional representative)

a g a i n s t

Sara Vannucci, Via Covetta, 40 Bis, 54033 Carrara, Italy (applicant).

On 15/12/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 047 578 is upheld for all the contested goods.

2.	European Union trade mark application No 17 637 901 is rejected for all the contested goods. It may proceed for the remaining goods not challenged by the present opposition.
3.		The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 637 901 ‘ARABESCATO’ (word mark), namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 2 898 096, ‘ARABESQUE’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods

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

Class 3: Cosmetics, perfumery, essential oils, soaps, dentifrices.

The contested goods are the following:

Class 3: Toiletry preparations; perfumery and fragrances; body cleaning and beauty care preparations; cologne; perfumed lotions [toilet preparations]; oils for toilet purposes; scented oils; perfume; cosmetics; make-up preparations; face creams for cosmetic use; body cream; cosmetic body scrubs; soaps and gels; perfumed soaps; bath preparations; deodorants and antiperspirants; skin care preparations; hair preparations and treatments; hair removal and shaving preparations; essential oils and aromatic extracts; aromatherapy preparations; cleaning and fragrancing preparations; household fragrances; air fragrancing preparations; air fragrance reed diffusers; massage candles for cosmetic purposes; oral hygiene preparations; cosmetics for the use on the hair.

Perfumery; cosmetics; soaps are identically contained in both lists of goods.

The contested toiletry preparations are identical to the opponent’s cosmetics. Cosmetics include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while toiletries are preparations used for personal hygiene, for beautification purposes and for preventing the body from smelling unpleasant.

The contested fragrances; cologne; perfume are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested body cleaning and beauty care preparations; perfumed lotions [toilet preparations]; make-up preparations; face creams for cosmetic use; body cream; cosmetic body scrubs; gels; bath preparations; deodorants and antiperspirants; skin care preparations; hair preparations and treatments; hair removal and shaving preparations; massage candles for cosmetic purposes; cosmetics for the use on the hair are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested oils for toilet purposes; scented oils; essential oils and aromatic extracts aromatherapy preparations are included in the broad category of the opponent’s essential oils. They are identical.

The contested perfumed soaps are included in the broad category of the opponent’s soaps. They are identical.

The contested cleaning preparations are identical to the opponent’s soaps as they include soaps for household purposes. On the one hand soaps are substances used for washing and cleaning, and typically have perfume or fragrances added, while on the other hand cleaning preparations are substances used for household washing and cleaning.

The contested fragrancing preparations; household fragrances; air fragrancing preparations; air fragrance reed diffusers are identical to the opponent’s perfumery. On the one hand fragrancing preparations; household fragrances; air fragrancing preparations; air fragrance reed diffusers are pleasant-smelling liquids used to make homes and indoor spaces smell nice by proving fragrant, pleasant odours, while on the other hand perfumery covers all perfumes collectively, which are fragrances used for enhancing the odour or aroma of the body or of other items by giving them a pleasant smell.

The contested oral hygiene preparations include, as a broader category, the opponent’s dentifrices. Therefore, they are identical.

b) Relevant public — degree of attention

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

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

c) The distinctiveness of the earlier mark and the comparison of the signs

ARABESQUE	ARABESCATO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57).  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The verbal elements of both signs are meaningful in those countries where Italian is understood. Consequently, in order to take into account the semantic content of these verbal elements in the conceptual assessment, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

The contested sign is the verbal element ‘ARABESCATO’ which means, inter alia, ‘drawn with arabesques, decorated with arabesques’ which are ornamental designs original found in ancient Islamic art (information extracted from Treccani Dictionary on 07/12/2020 at https://www.treccani.it/vocabolario/arabescato). This verbal element has no relation to the goods in question and it is, therefore, distinctive.

The earlier mark is the verbal element ‘ARABESQUE’ which will be understood as, inter alia, ‘type of musical composition mostly for piano, whose rhythmic course recalls the sinuosity of the Moorish style’ (information extracted from Treccani Dictionary on 07/12/2020 at https://www.treccani.it/vocabolario/arabesque/). Taking into account that the earlier mark merely consists of one element, the Opposition Division finds it appropriate to examine its distinctive character within the comparison of signs, given that the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. It is relevant to note that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and, 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 has no meaning directly related to any of the goods in question from the perspective of the public under assessment and, therefore, the distinctiveness of the earlier mark must be seen as normal.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the string of letters ‘ARABES’ at the beginning. They differ in the letters ‘-QUE’ in the earlier mark and the letters ‘-CATO’ in the contested sign, placed at their endings. 

Therefore, taking into account that the coincidence of most of the letters of the signs are at the beginning and have more impact on consumers for the reasons explained above, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in /arabesk/ as the letters ‘QUE’ and ‘C’ have the same pronunciation in the signs. The pronunciation differs in the sound of the additional final letters ‘ATO’ of the contested sign.

Therefore, the signs are highly similar.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the fact that both signs have different meaning, both will be perceived by consumers as related to the Arab or Moorish culture. Therefore, the signs are conceptually similar to a low degree.

 

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

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical. The degree of attention of the relevant public, composed by the public at large, is average. The earlier mark is considered to have a normal degree of distinctiveness. The signs are visually and aurally highly similar and conceptually similar to a low degree.

Account is 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).

The marks are relatively long (nine letters in the earlier mark and ten in the contested sign) and coincide in their first six letters (aurally the earlier mark is totally contained in the contested sign as its initial part). Their differences are confined to the letters placed at their endings. When this is coupled with the imperfect recollection principle explained above, it is considered very likely that consumers will get confused between the signs.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 898 096. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Inés GARCIA LLEDO

Claudia SCHLIE

Helen Louise MOSBACK

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.