OPPOSITION No B 3 073 025

Laboratoire International de Diffusion, SARL, 68 bd Carnot, 06400 Cannes, France (opponent), represented by Office Mediterraneen de Brevets D’invention et de Marques Cabinet Hautier, 20, rue de la Liberté, 06000 Nice, France (professional representative)

a g a i n s t

Georgios Bournas & Stavroula Bourna Co., 87 Chrisiidos Street, 13122 Ilion, Athens (Attica), Greece (applicant), represented by Eleni Kokkini, 15 Filikis Eterias square, 10673 Athens, Greece (professional representative).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 025 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 931 409 (figurative mark). However, on 22/05/2019 it limited the scope of the opposition and indicated that the opposition is directed against some of the goods, namely against some of the goods in Classes 5 and 10. The opposition is based on European Union trade mark registration No 2 305 944 (figurative mark) and French trade mark registration No 3 298 360 ‘SOFT’ (word mark). 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.

1. The goods

In the notice of opposition the opponent indicated that the opposition was based on all the goods for which the earlier marks are registered. However, on 22/05/2019 it limited the scope of the basis of the opposition. Following this limitation, the goods on which the opposition is based are the following:

European Union trade mark No 2 305 944

Class 5: Chemical contraceptives; pharmaceutical lubricants.

Class 10: Condoms, latex condoms and lubricants for the prevention of sexually transmitted diseases; contraceptives, non chemical.

French trade mark No 3 298 360

Class 5: Chemical contraceptives; pharmaceutical lubricants.

Class 10: Condoms, latex condoms and lubricants for the prevention of sexually transmitted diseases; contraceptives, non chemical.

Following the abovementioned limitation of the scope of the opposition, the contested goods are the following:

Class 5: Vaginal lubricants.

Class 10: Contraceptive devices; condoms; ultrasonic probe covers.

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 5

The contested vaginal lubricants are included in the broad category of, or overlap with, the opponent’s pharmaceutical lubricants. Therefore, they are identical.

Contested goods in Class 10

The contested contraceptive devices; condoms are identical to the opponent’s condoms, latex condoms and lubricants for the prevention of sexually transmitted diseases; contraceptives, non chemical, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested ultrasonic probe covers are used with ultrasound probes. The opponent’s condoms may also be used on, for example, vaginal ultrasound probes. These goods have the same purpose, which is to prevent the transmission of disease/infection. They can be manufactured by the same companies and may be in competition. Therefore, they are 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 both the public at large and at professionals with specific knowledge or expertise. The public’s degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

European Union trade mark No 2 305 944 French trade mark No 3 298 360 SOFT
Earlier trade mark	Contested sign

The relevant territory is the European Union for earlier mark 1) and France for earlier mark 2).

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).

Earlier mark 1) is a figurative mark composed of the verbal element ‘SOFT’ depicted in rather standard blue upper-case letters. Earlier mark 2) is the word mark ‘SOFT’.

The contested sign is a figurative mark containing the verbal element ‘Soft’, placed in a white oval, depicted in rather standard green title-case letters on a green rectangular background. On the right-hand side, the verbal elements ‘BOURNAS’ and ‘MEDICALS’ are depicted one above the other in standard white upper-case letters, placed against an orange rectangular background.

The word ‘SOFT’, present in all the signs, is an English word which means, inter alia, ‘easy to mold, cut, compress, or fold; not hard or firm to the touch’ or ‘having a pleasing quality involving a subtle effect or contrast rather than sharp definition’ (information extracted from Oxford Dictionaries on 09/03/2020 at https://www.lexico.com/en/definition/soft). The word ‘SOFT’ is a basic English word and it will be understood by the relevant public throughout the European Union (19/04/2016, R 1358/2015‑5, Silk Soft (fig.) / Fine & Soft (fig.) et al, § 30-31). Consequently the relevant public in France will also understand the word ‘SOFT’. This term will convey a meaning relating to characteristics of the relevant goods or to the effect that will be obtained after or while using them and it therefore has a low degree of distinctiveness.

As regards the verbal elements ‘BOURNAS’ and ‘MEDICALS’, present in the contested sign, the opponent argued that the term ‘MEDICALS’ is non-distinctive as it designates the products related to the medical field and that it is preceded by the applicant’s name ‘BOURNAS’. The applicant stated that ‘BOURNAS MEDICALS’ refers to its company name and submitted a copy of a certificate from the Greek Commercial Registry. The word ‘MEDICALS’ refers to the medicinal nature and/or purpose of the goods and it is non-distinctive in relation to the relevant goods. However, the word ‘BOURNAS’, which is not related in any way to the relevant goods, has a normal degree of distinctiveness. Furthermore, part of the relevant public will perceive ‘BOURNAS MEDICALS’ in its entirety as a business name. When perceived as a company name or a business name, that is to say indicating a specific trade origin, the entire expression ‘BOURNAS MEDICALS’ is distinctive to a normal degree, despite the fact that it contains the non-distinctive word ‘MEDICALS’.

As the figurative elements of the contested sign serve a mostly decorative function they have a low degree of distinctiveness. Therefore, the figurative elements play only a secondary role in the comparison of the signs.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘SOFT’, which is distinctive to a low degree in relation to the relevant goods. They differ in ‘BOURNAS MEDICALS’ which, if perceived as a company name, has a normal degree of distinctiveness. If perceived as a combination of independent words, the word ‘BOURNAS’ has a normal degree of distinctiveness, while the word ‘MEDICALS’ is non-distinctive. The signs also differ in graphic depictions (stylisation and colours) and in the backgrounds on which the verbal elements are placed. However, the differences in figurative elements are of secondary importance, due to their low degree of distinctiveness.

The signs coincide in the word ‘SOFT’, which is distinctive to a low degree, while the differing ‘BOURNAS MEDICALS’ as a company name, or the word ‘BOURNAS’ alone have a normal degree of distinctiveness. Therefore, the signs are visually similar to a low degree.

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 of the word ‘SOFT’, present identically in all the signs. The pronunciation differs in the sound of the letters that constitute the verbal elements ‘BOURNAS’ and ‘MEDICALS’. Since the contested sign is clearly longer than the earlier marks, the signs differ in their length, rhythm, and intonation. Taking this into account, as well as the distinctiveness of the coinciding and differing words, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. All the signs will be associated with a meaning conveyed by the word ‘SOFT’ which is distinctive to a low degree, while the differing verbal elements of the contested sign will be perceived either as indicating the commercial origin of the goods, and therefore distinctive, or composed of the distinctive but meaningless word ‘BOURNAS’ and the non-distinctive word ‘MEDICALS’. Therefore, the signs are conceptually similar to a low 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 marks

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 claimed that its earlier marks have a high degree of distinctiveness. The Opposition Division notes, however, that any claim of enhanced distinctiveness must be supported by evidence, which was not submitted. Consequently, the assessment of the distinctiveness of the earlier marks will rest on their inherent distinctiveness.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all the goods in question.

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).

The goods are identical or similar. They target both the public at large and professionals with specific knowledge or expertise. The public’s degree of attentiveness varies from average to high.

The signs are visually, aurally and conceptually similar to a low degree. The earlier trade marks have a low degree of inherent distinctiveness.

Both earlier marks contain only one element, namely the word ‘SOFT’. The contested sign also contains the word ‘Soft’. However, as stated in section c) of this decision this word is weak in relation to the relevant goods. The clearly differing elements between the signs pertain to the contested sign. These differing elements, namely the verbal elements ‘BOURNAS’ and ‘MEDICALS’, when perceived as a business name, have a normal degree of distinctiveness or, if not perceived as a business name, at least the word ‘BOURNAS’ has a normal degree of distinctiveness. Furthermore, the presence of the words ‘BOURNAS’ and ‘MEDICALS’ plays an important role in the overall impression created by the contested sign, which is quite different from the earlier marks in all aspects.

Taking into account the differing verbal elements and the different overall impressions created by the signs, and also the low degree of distinctiveness of the earlier marks, it is considered that the presence of the word ‘Soft’ in the contested sign is not sufficient to find a likelihood of confusion between the signs, including a likelihood of association.

Considering all the above, there is no likelihood of confusion on the part of the public even for identical or similar goods. Therefore, the opposition must be rejected.

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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.