OPPOSITION No B 3 058 452

Hassnah Hariri, La Tour Odeon - 34, avenue de l'Annonciade, 98000 Monaco, Monaco (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Dechao Guo, 71-75 Shelton Street, WC2H 9JQ London, United Kingdom (applicant),

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 452 is upheld for all the contested goods.

2. European Union trade mark application No 17 884 910 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 17 884 910 for the word mark ‘APICI’. The opposition is based on international trade mark registration No 1 346 447, designating inter alia France, for the word mark ‘APINI’. 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 international trade mark, designating Italy, France and United Kingdom. The Opposition Division finds it appropriate to first examine the opposition on the basis of the international trade mark registration, designating France.

1. The goods

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

Class 3: Perfumes, toilet water and scented waters for babies and children; soaps, cakes of toilet soap; shower gels and shampoos for children and babies; cosmetic preparations for baths for babies and children; oils for toilet purposes; cleansing milk for toilet purposes; oils for cleaning purposes; essential oils; tissues impregnated with cosmetic cleansing preparations for infants and children.

Class 5: Balms and ointments for babies for medical use; lotions for pharmaceutical use; pharmaceutical products for babies; pharmaceutical products and preparations for skin care of babies and children; tissues impregnated with pharmaceutical preparations for infants and children; dietetic substances and foods for medical use; medical preparations for slimming; nutritional supplements; mineral food supplements; medicinal infusions; medicinal tea.

The contested goods are the following:

Class 3: Toiletries; Essential oils and aromatic extracts; Cleaning and fragrancing preparations

Class 5: Dietary supplements and dietetic preparations; Medicinal healthcare 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.

Contested goods in Class 3

The contested essential oils are identically contained in both lists of goods (including synonyms).

The contested toiletries and cleaning preparations include, as broader categories, the opponent’s soaps, which on one hand could be article for personal hygiene; on another hand could be article for household purposes used for washing and cleaning. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested fragrancing preparations include, as a broader category, the opponent’s perfumes. 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 aromatic extracts are similar to the opponent´s perfumes. On one hand perfumes are fragrances used predominately for enhancing the odour or aroma of the body by giving it pleasant scent, while on the other hand aromatic extracts are fragrant aroma compounds (synthetic or organic) that are used (among others) primarily as a perfume base in perfumery. Aromatic extracts are therefore a main ingredient in many perfumes. Additionally, the goods usually coincide in their purpose, relevant public, and producer.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations are included in the broad category of the opponent’s nutritional supplements. Therefore, they are identical.

The contested medicinal healthcare preparations include, as a broader category, the opponent’s pharmaceutical products for babies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 similar are directed at the public at large as well as professional public such as medical practitioners.

The goods in Class 3 are ordinary cosmetic goods for which the degree of attentiveness will be average. Contrary, the contested goods in Class 5 are medical preparations and nutritional supplements. For them the degree of attentiveness will be relatively high.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same reasoning applies to the nutritional supplements in this class. They all require a higher degree of care and attention when they are selected and used, for instance when they are part of the treatment of a disease or aimed at relieving the symptoms or the progression of a disease.

3. The signs

APINI	APICI
Earlier trade mark	Contested sign

The relevant territory is France.

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 words ‘APINI’ and ‘APICI’ constituting the two signs in question are meaningless for the public in the relevant territory; therefore, they have a normal degree of distinctiveness. Consequently, a conceptual comparison is not possible, and therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

The contested sign and the earlier mark are word marks consisting of five letters each. The signs coincide in the letters/sounds ‘API*I’. They differ only in one letter/sound, namely ‘N’ versus ‘S’, written in the middle of the signs. Therefore, the signs are visually and aurally 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 has no meaning for any of the goods in question from the perspective of the public referred to above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar. They are directed at the public at large as well as professionals. Therefore, the degree of attention will be either relatively high or average for the reasons explained in section b).

The signs are considered visually and aurally similar to an average degree, as explained in section c). The conceptual comparison is not possible and does not influence the outcome. Consequently, consumers will not be able to rely on any conceptual references in order to safely distinguish between the marks.

The earlier mark is of normal distinctiveness.

In its observations the applicant argues that it has been using another European Union trade mark registration ‘APICI’, which is earlier that the contested sign and that its brand has gained popularity.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Contrary to the applicant’s opinion, upon taking into account 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 Opposition Division finds that the difference in one letter only is not enough for the consumers to safely distinguish the marks, neither visually, nor aurally. This is because the different letter/sound is positioned in the middle of the signs between identical strings of letters.

This holds true also for the goods with respect to which the attention is high, since even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In view of the foregoing, the differences between the signs are clearly not enough to offset their overwhelming similarities and the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 346 447, designating France. It follows that the contested trade mark must be rejected for all the contested goods.

Since the above analysed earlier right 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

Maria Clara IBAÑEZ FIORILLO

Meglena BENOVA

Teodora TSENOVA-PETROVA

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.