OPPOSITION No B 3 050 076

Persan, S.A., Carretera de Málaga km 1.5, 41016 Sevilla, Spain (opponent), represented by Rodolfo de La Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Shanghai Baifeng Investment Co. Ltd., Room 309D, No. 21, Lane 596, Yanan Central Road, Jingan District, Shanghai City, People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita 171, 33100 Udine (UD), Italy (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 076 is upheld for all the contested goods.

2. European Union trade mark application No 17 659 806 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 659 806 for the word mark ‘SAN SEN’. The opposition is based on, inter alia, European Union trade mark registration No 3 650 686 for the word mark ‘SAN’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 650 686 for the word mark ‘SAN’, since it has a broader territorial scope of protection, while covering all the relevant goods.

a) The goods

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

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

The contested goods are the following:

Class 3: Hair lotions; bath lotion; facial cleansers; cleaning preparations; polishing preparations; grinding preparations; essential oils; beauty masks; cosmetics; cosmetic creams; cosmetic preparations for skin care; lotions for cosmetic purposes; sunscreen preparations; cotton wool for cosmetic purposes; phytocosmetic preparations; herbal extracts for cosmetic purposes; dentifrices; incense; cosmetics for animals; air fragrancing preparations.

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.

Hair lotions; cleaning preparations; polishing preparations; grinding preparations; essential oils; cosmetics; dentifrices are identically contained in both lists of goods (including synonyms).

The contested bath lotion; facial cleansers; beauty masks; cosmetic creams; cosmetic preparations for skin care; lotions for cosmetic purposes; sunscreen preparations; phytocosmetic preparations; herbal extracts for cosmetic purposes; cosmetics for animals are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

Incense is a thin stick consisting of a substance that burns slowly with a fragrant smell and air fragrancing preparations are pleasant-smelling liquids, both used to make homes and indoor spaces smell nice by providing fragrant, pleasant odours. 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. Therefore, the contested incense; air fragrancing preparations are included in the broad category of the earlier perfumery. Therefore, they are identical.

The contested cotton wool for cosmetic purposes is similar to the earlier cosmetics. On the one hand cosmetics includes preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand cotton wool for cosmetic purposes is a soft mass of cotton used for applying or removing liquids or creams to the skin. Cotton wool for cosmetic purposes, therefore, is used to apply or remove cosmetics from the face or body and is, therefore, complementary to cosmetics. Additionally, they usually coincide in producer, relevant public and distribution channels.

b) Relevant public — degree of attention

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

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

c) The signs

SAN	SAN SEN
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 common element ‘SAN’ is meaningful in certain territories, for example in those countries where Spanish or Italian are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish and Italian-speaking parts of the public.

The element ‘SAN’ is likely to be understood by the relevant public as a short form for ‘Saint’ (‘Santo’ in Spanish and Italian) meaning ‘a person acknowledged as holy or virtuous and regarded in Christian faith as being in heaven after death’. As it has no meaning as regards the relevant goods, it is distinctive.

The additional word of the contested mark, ‘SEN’, will be perceived as a fanciful term without any meaning by most of the relevant public and is, therefore, distinctive. In conjunction with ‘SAN’, the contested mark may be perceived by part of the public as a reference to a given Saint.

Contrary to the opponent’s claims, neither sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements, since word marks have no dominant elements by definition.

However, as rightly pointed out by the opponent, 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 and aurally, the signs coincide in the distinctive element/syllable ‘SAN’ which constitute the entire earlier mark and the first element to be seen and pronounced in the contested sign, and differ in the additional word/syllable ‘SEN’ of the latter.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning and the additional element of the contested sign has no meaning or may be related to the name of a given saint, the signs are conceptually 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.

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

In the present case, the contested goods are identical and similar to the goods on which the opposition is based. The earlier mark has a normal degree of distinctiveness in relation to all the goods in question, and the relevant public will pay an average degree of attention when purchasing these goods.

The signs are visually and aurally similar to an average degree to the extent that they coincide in the element ‘SAN’, which constitutes the entire earlier mark and is wholly incorporated at the beginning of the contested sign, where it performs an independent and distinctive role. Therefore, the difference between the signs is confined to the word ‘SEN’ that is the second element of the contested sign, a place where it will have less impact on the consumer. In addition the signs are conceptually similar to an average degree on account of the coinciding concept of ‘SAN’.

It should also be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings. 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 and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs at stake distinguish different lines of goods provided by the same undertaking or from connected entities.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods. Therefore, the relevant public may believe that they come from the same undertaking or, at least, economically-linked undertakings, particularly in the belief that the contested mark is a mere variation of the earlier sign.

Considering all the above, there is a likelihood of confusion on the part of the Spanish and Italian-speaking parts 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 3 650 686. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 3 650 686 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Manuela RUSEVA

Eva Inés PÉREZ SANTONJA

Victoria DAFAUCE MENENDEZ

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.