OPPOSITION No B 3 079 906

Henkel Iberica, S.A., Calle Córcega, 480-492, 08025 Barcelona, Spain (opponent), represented by Diana Baer, Henkel AG & Co. KGaA, Henkelstrasse 67, 40589 Düsseldorf, Germany (employee representative)

a g a i n s t

Boying Zhou, 7/F., No.290, Middle Xizang Road, Shanghai, People’s Republic of China (applicant), represented by Siu Hong Lee, 66 Corporation Road, Grangetown, Cardiff CF11 7AW, United Kingdom (professional representative).

On 17/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 906 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 of European Union trade mark application No 17 930 606 , namely against some of the goods in Class 3. The opposition is based on European Union trade mark registration No 799 155 ‘ESTRELLA’. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 3: Cleaning, polishing, scouring and washing preparations; soaps; liquid soaps.

The contested goods are the following:

Class 3: Cleaning, polishing, scouring and abrasive preparations; soaps.

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.

The contested cleaning, polishing, scouring preparations and soaps are identically contained in the list of the earlier mark.

The contested abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. The opponent’s polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Consequently, these goods under comparison have the same purpose. They usually coincide in their producers, relevant public and distribution channels. Therefore, these goods are considered similar.

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. The degree of attention is considered to be average.

3. The signs

ESTRELLA
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 the word mark, ‘ESTRELLA’. It will be understood as ‘star’ – ‘any of a vast number of celestial objects that are visible in the clear night sky as points of light’ – by a part of the public, such as the Spanish and Portuguese-speaking public as this word exists in Spanish and is very similar to its Portuguese equivalent ‘ESTRELA’. It has no meaning for the remaining consumers in the relevant territory.

The contested sign is a figurative mark composed of the verbal element ‘RELLA’ depicted in fairly standard black upper case letters and a figurative element above it that will be perceived as an abstract geometric figure. The verbal element ‘RELLA’ is not likely to be associated with any meaning by the public in the relevant territory.

The Opposition Division notes that a conceptual difference between the signs, such as that existing for the Spanish- and Portuguese-speaking parts of the public as referred to above, could help consumers to more easily distinguish between them. Indeed, it must be taken into account that the existence of conceptual differences between signs can counteract the similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately, as in the case at issue.

However, for a significant part of the consumers in the European Union the verbal elements in both signs will be perceived as having no meanings. The Opposition Division will first examine the opposition in relation to the part of the public in the relevant territory that will not perceive any meaning in either of the signs, as this is the most advantageous scenario for the opponent. As neither of the verbal elements ‘ESTRELLA’ or ‘RELLA’ has any meaning for that part of the relevant public, they are normally distinctive.

The figurative element of the contested sign is an abstract device and is also of normal distinctiveness. Nevertheless, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘*RELLA’ which is included at the end of the earlier mark, ‘ESTRELLA’, and constitutes the only verbal element of the contested mark.

However, these letters are not present as a separate and identifiable element in the earlier mark, where they are preceded by the letters ‘EST’. There is no reason to assume that the relevant public would dissect the earlier mark, ‘ESTRELLA’, into the elements ‘EST’ and ‘RELLA’; consumers would perceive the mark as a whole as a meaningless and fanciful term.

These visual differences between the verbal elements of the marks are particularly relevant, since 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.

The signs also differ visually in the abstract figurative element of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory taken into consideration, the pronunciation of the signs coincides in the sound of the letters ‘RELLA’, present identically in both signs.

However, the presence of the additional sounds, ‘EST’, at the beginning of the earlier mark introduces a change in the number of syllables in the signs (three syllables in the earlier mark and two in the contested sign). Moreover, the additional sounds at the beginning of the earlier mark affect the division of the syllables, ‘E-STRE-LLA’ vs ‘RE-LLA’, so that only the last syllable of the marks coincides. The differing syllables of the marks are at their beginnings, where consumers generally tend to focus their attention.

Taking into account the abovementioned differences, the marks are aurally similar to a below average degree.

Conceptually, neither of the signs has a meaning for the part of the public under analysis. 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.

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 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.

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. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods under comparison are partly identical and partly similar. The relevant public for the goods concerned is the public at large whose degree of attention will be average.

The signs are visually similar to a low degree and aurally similar to a below average degree on account of the letter sequence ‘RELLA’, which they have in common. However, the signs have different structures and beginnings. Visually the contested signs also contains a figurative element which has no counterpart in the earlier mark. The aural similarity is limited also due to the differing lengths and different numbers of syllables of the marks. Therefore, the signs differ noticeably in their overall rhythms and aural structures.

The differences between the signs have a sufficiently significant impact on the overall impressions of the signs to outweigh the commonalities arising from the common letters ‘RELLA’ so they will not lead consumers to associate the goods at issue with the same or economically linked undertakings or to confuse the signs.

Furthermore, it should be noted that those consumers who will perceive a meaning in the earlier mark, ‘ESTRELLA’, (e.g. the Spanish- and Portuguese-speaking consumers) will perceive that mark as referring to a specific concept which is not present in the contested sign, which will further help them to differentiate between the marks. The existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 56).

Considering all of the above, in the overall impressions conveyed by the signs, the differences between the marks are clearly perceptible and sufficient to allow the relevant public to distinguish between the marks even in relation to identical goods and even considering that the public’s degree of attention in relation to the goods will be not higher than average.

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). Moreover, the signs considered in the current opposition and those involved in these previous decisions differ. Each case must be judged on its own merits, having regard to all the relevant factors. 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.

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

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

Sam GYLLING

Boyana NAYDENOVA

Angela DI BLASIO

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.