OPPOSITION No B 3 057 514

Laboratorios Cinfa, S.A., Travesía de Roncesvalles, 1 Polígono Industrial de Olloki, 31699, Olloki (Navarra), Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020, Madrid, Spain (professional representative)

a g a i n s t

Artsana S.p.A, Via Saldarini Catelli, 1, 22070, Grandate (CO), Italy (applicant), represented by Perani & Partners S.p.A., Piazza Armando Diaz, 7, 20123, Milan, Italy (professional representative).

On 22/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 514 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 755 621 for the word mark ‘GOOVI’, namely against all the goods in Classes 3, 5 and 10. The opposition is based on, inter alia, European Union trade mark registration No 4 965 761 for the word mark ‘GOIBI’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

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 4 965 761.

PROOF OF USE

Proof of use of the earlier marks were requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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: Pomades for cosmetic purposes; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and hygienic products; dietetic substances and food adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; insecticides.

Class 10: Surgical, medical and dental apparatus and instruments; orthopaedic footwear; orthopaedic articles; suture materials; elastic stockings (surgery); stockings for varicose veins; thermometers for medical use; dummy (teats); elastic bandages; receptacles for applying medicines.

The contested goods are the following:

Class 3: Scented sachets; Perfume; Fragrances; Air fragrancing preparations; Essential oils; room and air fragrancing preparations; Air fragrance reed diffusers; Potpourris [fragrances]; Incense; Incense cones; Joss sticks; Incense sachets; Incense spray; Room scenting sprays; preparations for perfuming or fragrancing the atmosphere; Body and skin care and beauty preparations (not for medical purposes); Milks, tonics, lotions, creams, emulsions, gels for the face and body; Non-medicated cleansing preparations for the face and body; Skin astringents not for medical purposes; Body mist; Non-medicated foot soaks; Depilatory creams; Pumice stones for personal use; Soaps; Bubble bath; Shower creams and gels; skin scrub preparations; Make-up removing preparations for the face; Talcum powder, for toilet use; Shampoo; Lotions, Fluids, hair repair conditioners; Tints for the hair; Hair spray; Hair mousses and gels; Hair brighteners; Hair mascara; Shaving creams and gels; After-shave gels and lotions; perfumary; Deodorants for personal use; Bath beads; Bath oils and salts; Cosmetics; Masques; Make up foundations; Rouges; Bronzing powder; powder for make-up; Facial shimmer preparations; Mascara; Eyeliner; Cosmetic eye and lip pencils; Eyelid shadow; Lip conditioners; Lip gloss; Lipstick; Make-up removing preparations; Nail polish; nail stencils; False nails; Nail varnish removers; Cuticle creams; Preparations for strengthening nails; Non-medicated concealer sticks; Body glitters; Sun-tanning lotions and creams for the face and body; Fake tan lotions and creams for the face and body; Cosmetic sun-protecting preparations; Aftersun lotions and creams for the face and body; Detergents; Preparations and substances, all for laundry use; Fabric softeners; Bleaching preparations; Cleaning, polishing, scouring and abrasive preparations; Washing-up preparations; Hand washes; Tissues impregnated with preparations and substances for cleaning and polishing; Impregnated cloths for cleaning.

Class 5: Air deodorising preparations; Air purifying preparations; Air freshening preparations; Deodorants, other than for personal use; Odour neutralisers; odour neutralising preparations for use on carpets, textiles and in the air; Nutritional supplement; Dietary and nutritional supplements; Food supplements; Powdered nutritional supplement drink mix; Vitamins and vitamin preparations; Linctus; Syrups for pharmaceutical purposes; Medicated candy; Medicated candy; Herbal teas for medicinal purposes; Disposable diapers made of paper and/or cellulose.

Class 10: Medical apparatus and instruments; Teething rings; Aerosol dispensers for medical purposes; Obstetric apparatus; Fumigation apparatus for medical purposes; Massage apparatus; Nursing appliances; Diagnostic apparatus for medical purposes; Esthetic massage apparatus; Hot air therapeutic apparatus; Ice bag pillows for medical purposes; Water bags for medical purposes; Feeding bottle receptacles; Babies' bottles of polypropylene; Elastic stockings for surgical purposes; Feeding bottle valves; Umbilical belts; Belts for orthopaedic purposes; Maternity belts; Droppers for medical purposes; Abdominal corsets; Spoons for administering medicine; Thermal packs for first aid purposes; Air cushions for medical purposes; Cushions for medical purposes; Pads (Heating -), electric, for medical purposes; Covers for baby feeding bottles; Aerosol dispensers for medical purposes; Bandages, elastic; Slings [supporting bandages]; Corsets for medical purposes; Gloves for massage; Incontinence sheets; Mouth guards for medical purposes; Feeding bottle receptacles; Feeding bottles (babies' bottles); Nipple shields for personal use; Ear picks; Feeding bottle receptacles; Containers for use with breast pumps; Dummies for babies; Orthopedic soles; Thermometers for medical purposes; Cases for thermometer probes for medical use; Feeding bottle teats; Feeding bottle teats; Breast pumps; Breast pumps for use by nursing mothers; Draw-sheets for sick beds; Humidifying apparatus for medical use; Sprayers for medical purposes; Nasal aspirators; Neonatal pacifiers.

Some of the contested goods are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the healthcare or medical sector.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price and taking into account that some of the relevant goods are related to personal care and can generate sensitivity in skin or any type of allergy (18/10/2011, T-304/10, Caldea, EU: T: 2011: 602, § 58) or are products linked to health (11/07/2017, T-144/16, Multipharma, EU: T: 2017: 783, § 26-27; (10/12/2014, T-605/11, Biocert, EU: T: 2014: 1050, § 20-21 and (26/09/2014, T-445/12, KW Surgical Instruments, § 45; 10/09/2008, T-325/06, Capio, EU:T:2008:338, § 75; 20/07/2004, T-311/02, Limo, EU:T:2004:245, § 28). It is true that some of the goods at issue are articles which are used by the relevant public on a daily basis. Nevertheless, given the characteristics of some of the goods at issue, it can be stated that the level of attention paid by the relevant public is higher than average since consumers tend to be attentive in the acquisition of body and face care products, on grounds of aesthetic considerations or personal preferences, sensitivity, allergies, type of skin and hair and so forth, as well as the expected effect of the products (18/10/2011, T- 304/10, Caldea, EU:T:2011:602, § 58; 29/09/2011, T-107/10, Naturaviva, EU:T:2011:551, § 24). Furthermore, as regards pharmaceutical goods and goods for medicinal use, it is settled case-law that professionals display a high level of attention (21/10/2008, T-95/07, Prazol, EU:T:2008:455, § 29; 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 11/06/2014, T-281/13, Metabiomax, EU:T:2014:440, § 30). As regards end-consumers, their level of attention will also be high in respect of medicines, whether or not issued on prescription, since they affect a consumer’s state of health (07/06/2012, T-492/09 & T-147/10, Allernil, EU:T:2012:281, § 29; 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).

c) The signs

GOIBI	GOOVI
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 signs have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘G-O-*-*-I’. However, they differ in the letters ‘-I-B’ of the earlier mark and ‘O-V’ of the contested sign.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T 402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C 193/09 P, ARCOL / CAPOL, EU:C:2010:121).

As regards the fact that the conflicting signs share the same first two letters, it is true that the consumer normally attaches more importance to the first part of words (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81). However, that consideration cannot apply in every case (06/06/2013, T-580/11, Nicorono, EU:T:2013:301, § 60). However, in the present case, the signs are relatively short as they are made up by five letters. The length of the signs may influence the effect of the differences between them. In short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark is made up by three syllables ‘GO-I-BI’ whereas the contested sign is made up by two syllables ‘GOO-VI’ that would lead to a different rhythm, and intonation. Although, it is true that for example in Spanish the sound of the letter ‘B’ and ‘V’ have a similar sound will not alter that the two words have a different phonetic structure.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier mark

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

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

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

e) Global assessment, other arguments and conclusion

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 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are assumed to be identical. They are targeted at the general public and at business customers whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The marks are visually similar to very low degree and aurally similar to a low degree. The conceptual aspect is neutral.

Since the average consumer normally perceives a mark as a whole, the present dissimilarities are clearly perceivable and will not be overlooked by the consumer, especially taking into account that the conflicting signs are rather short, and outweigh the signs’ similarities and, consequently, cause a rather different overall impression.

Furthermore, the conflicting goods are generally purchased with a certain care and attention. Nowadays, the public is particularly attentive as regards the ingredients of cosmetics, deodorants and beauty products and their possible impact on the consumer’s health and well-being. This is even more true for the goods in Class 5 and 10 which also have an impact on health and for which the degree of attention of the relevant public is relatively high. Moreover, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market. If the goods are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will as a general rule be more important (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 61). The goods concerned in Class 3, essentially beauty care products and cleaning preparations, are often displayed on the shelves allowing consumers to take a closer look of the particular containers before they make their choice. Thus, the clearly visual differences of the conflicting signs will not go unnoticed, as the public will perceive the marks above all in visual terms (18/10/2011, T-304/10, Caldea, EU:T:2011:602, § 57). It follows that these significant visual differences causing a rather diverse overall impression is of the utmost importance when making the global assessment leading to a fact that the relevant consumers will not be confused about the respective goods’ origin.

Taking into account that, first, the similarities of the conflicting signs are outweigh by their dissimilarities, second that the relevant public normally pick with care the goods at issue and, third, the choice of the goods concerned will be most likely made ‘on sight’ allowing the relevant consumers to notice the prevailing differences between the marks, there is no likelihood of confusion for the relevant public, even in relation to identical goods.

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

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

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. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 677 809 for the word mark ‘GOIBI’ for goods in Class 3.

 Spanish trade mark registration No 3 037 602 for the figurative mark for goods in Class 5.

 Spanish trade mark registration No 3 037 607 for the figurative mark for goods in Class 5.

 Spanish trade mark registration No 3 579 951 for the figurative mark for goods in Class 5.

The other earlier rights invoked by the opponent are identical or less similar to the contested mark. This is because they contain further figurative elements (such as stylisation, background and colours) and additional words) such as ‘antimosquitos’, ‘antipiojos’ etc.), which are not present in the contested trade mark. Moreover, they cover a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.