OPPOSITION No B 3 061 663

Coty Germany GmbH, Rheinstrasse 4E, 55116 Mainz, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Jonathan Beltrán Wiergo, C/ Lepanto 32, Po 7., 46138 Rafelbunyol/Valencia, Spain (applicant), represented by Tebas & Coiduras Estudio Legal y Tributario, calle Macarena 27, 28016 Madrid, Spain (professional representative).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 663 is upheld for all the contested goods, namely

Class 3: Perfumery and fragrances; eau de cologne; eau de parfum; toilet water; perfumed toilet waters; scented water; extracts of perfumes; perfumery; synthetic perfumery; perfumes; fragrances.

2. European Union trade mark application No 17 898 421 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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 17 898 421 for the word mark ‘JONAN’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 2 950 764 for the word mark ‘JOVAN’. 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: Soaps; perfumery; cosmetics.

The contested goods are the following:

Class 3: Perfumery and fragrances; eau de cologne; eau de parfum; toilet water; perfumed toilet waters; scented water; extracts of perfumes; perfumery; synthetic perfumery; perfumes; fragrances.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

All the contested goods are identical to the opponent’s perfumery, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

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 average.

c) The signs

JOVAN	JONAN
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 earlier mark is a word mark, ‘JOVAN’. Part of the relevant public will perceive this element as meaningless, another part of the public might understand it as a male given name. This element has no meaning in relation to the goods in question, and is therefore distinctive, per se. As the opponent did not claim enhanced distinctiveness due to intensive use or reputation, the distinctiveness of the earlier mark, on the whole, is average.

The contested sign is a word mark, ‘JONAN’, which might be perceived by the relevant public in the same way as the earlier mark, either as a meaningless word or as a male given name. However, the sign has no meaning in relation to the goods in question and is therefore distinctive.

In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are presented in upper- or lower-case letters, or in a combination thereof.

Visually, the signs are similar to the extent that they coincide in the letter sequence ‘JO*AN’. However, they differ in the third letter of the words, ‘V’ in the earlier mark and ‘N’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘JO*AN’. The pronunciation differs in the sound of the third letter ‘V’ in the earlier mark and ‘N’ in the contested sign. The pronunciations have the same length and rhythm.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, where both signs have meaning for a part of the public. Therefore, for the part of the public for which one or both signs has meaning, the marks are not conceptually similar.

For the remaining part of the public for which the signs do not have any meaning, 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) 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 that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). 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 at issue are identical. The signs are visually and aurally similar to a high degree, and are not conceptually similar for a part of the relevant public, while for the remaining part of the public the conceptual aspect remains neutral.

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large, whose degree of attention is average. 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).

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 covered are from the same undertaking or economically linked undertakings. Therefore, considering that the goods are identical, and the signs coincide in all the letters except one in the centre (third letter) of the signs, there is a likelihood of confusion on the part of the public.

The opposition is well founded on the basis of European Union trade mark registration No 2 950 764. 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, hemust 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

Valeria ANCHINI

Maria SLAVOVA

Michele M. BENEDETTI - ALOISI

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.