OPPOSITION No B 3 070 850

We Brand S.à.r.l., 31-33 Avenue Pasteur, 2311 Luxembourg (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)

a g a i n s t

Giuseppina Ambrosio, via Pettoloni, 26, 80047 S. Giuseppe V., Italy, (applicant), represented by Michele Boccia, via Lavinaio 2 tratto, 4, 80047 S. Giuseppe V. (NA), Italy (professional representative).

On 16/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 850 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 17 938 301 for the word mark ‘You&Me’, namely against all the goods in Classes 3 and 25. The opposition is based only on Benelux trade mark registration No 968 809 for the word mark ‘ME’, after the restriction made by the opponent on 14/05/2019. 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, essential oils, cosmetics, hair lotions, hair care products, tanning oils and sunscreen creams.

Class 25: Clothing, namely, pants, shorts, skirts, dresses, sweaters, pullovers, jackets, coats, jackets, vests, blouses, shirts, t-shirts, scarves, scarves, mittens, socks, stockings, tights, swimsuits, belts; footwear, namely, sandals, boots, shoes, slippers, shoes; headgear, namely hats, hats and caps.

The contested goods are the following:

Class 3: Abrasives; essential oils and aromatic extracts; tailors' and cobblers' wax; cleaning and fragrancing preparations; animal grooming preparations; toiletries.

Class 25: Clothing; footwear; headgear.

Some of the contested goods are identical to goods on which the opposition is based (as for example, essential oils in Class 3 and clothing in Class 25 which are contained in both lists of goods). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods 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. The degree of attention is considered to be average.

c) The signs

ME	You&Me
Earlier trade mark	Contested sign

The relevant territory is Benelux: Belgium, Luxembourg and the Netherlands. The official languages are Dutch, French, German and Luxembourgish.

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 common element ‘ME’ and the additional elements ‘&’ (used to refer to the word ‘and’, and to express addition) and ‘You’ of the contested sign will be understood by the relevant public, either because they are very basic English words that will be understood in all the relevant Member States, as the personal pronouns meaning ‘myself’ and ‘yourself’, respectively (Collins Dictionary https://www.collinsdictionary.com/dictionary/english) or because they exist as such (in French and Dutch), as the first and second personal pronouns for referring to the speaker or writer’ and to more than one person including the person or persons addressed but not including the speaker, respectively. The expression ‘You&Me’ will be perceived as a logical semantic unit of two people.

Taking into account that the majority of the relevant goods are items of personal choice suitable for expressing the personality of the user, it is considered that they have a very high allusive connotation to the relevant goods (30/05/2018, R 1935/2017-4, me & lou MUNICH (fig.) / ME). Therefore the distinctiveness of these elements taken into account separately is lower than average. For the rest of the goods, such as animal grooming preparations these elements are distinctive.

The opponent argued that ‘ME’ is the dominant element in the combination ‘You&Me’, since it is the first element in the contested sign which has an independent distinctive role in the combination ‘You&Me’, amongst others because it consists of half of the sign. In this respect, we refer to the LIFE/THOMSON LIFE case (ECJ, 6 October 2005, C-120/04 Medion AG/Thomson Multimedia). Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical (23 October 2002, T-6/01, Matratzen) which is the case here.

The Opposition Division disagrees with this claim. It has to be recalled that, according to the case-law, the fact that one of the components of a composite sign is identical to another sign does not mean that those two signs are similar, unless that component constitutes the dominant element within the overall impression created by the composite sign. That could be the case, in particular, where that component is capable on its own of dominating the image of that sign which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that sign (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 43; 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 33; 10/12/2008, T-290/07, Metronia, EU:T:2008:562, § 42). In the present case, the contested sign is a word mark and consequently, has no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Furthermore, the ‘Thomson Life’ judgement referred to by the opponent was intended to prevent the usurpation of word marks consisting of a single term through the addition of a company name. However, the fact that an earlier mark is contained within a mark applied for cannot be considered as a misappropriation of an earlier mark. Only the finding of a likelihood of confusion between them, which presupposes the prior finding of an identity or similarity between the signs, could lead to such conclusion (13/05/2015, T-102/14, TPG POST / DP et al., EU:T:2015:279, § 52).

Visually and aurally, the signs only coincide in the letters/sounds of ‘ME’. However, they differ the additional verbal elements/sounds of ‘&You’. The length of the signs influences the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, 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. Furthermore, aurally, due to the additional verbal elements ‘&You’ the signs have a completely different rhythm, sequence and sound, despite the fact that the contested sign shares the two letters of which the earlier mark is composed.

Therefore, taking into account all of the above, it is considered that for the public who perceives the earlier mark as the English personal pronoun, the marks are visually and aurally similar to, at most, a low degree.

For the Dutch and French-speaking part of the public, the earlier mark will be pronounced in accordance with the rules of Dutch and French as /moe/ and ‘Me’ in the contested sign will be pronounced in accordance with the rules of English as /mi/ (30/05/218, R 1935/2017-4, me & lou MUNICH (fig.)/ME), on account of the subsequent foreign components of the sign ‘&YOU’. Therefore, for this part of the public, the signs are aurally even dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘ME’ will be perceived in the earlier mark as one person only in the contested sign as a logical unit that consists of two people, as a consequence (due to the coincidence in the element ‘ME’), the signs are considered only conceptually similar to a low degree, taking into account that the impact of the coinciding element is secondary at least in relation to the majority of the products. In relation to the rest of the products, for which ‘ME’ is distinctive, the signs are similar to an average degree.

For the German-speaking part of the public, due to the additional concept of the additional elements ‘&YOU’ in the contested sign, the signs are considered conceptually dissimilar. The expression ‘You&Me’ forms a logical semantic unit, ‘Du und Ich’ understood by this part of the public. The compared signs may not be similar if the sign applied for forms a logical unit on its own in which the earlier mark cannot be viewed independently (Deutsche Post v EUIPO, T-13/15, ECLI:EU:T:2017:434, § 40–52 and 68 (PostModern / Deutsche Post).

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average (at least for the majority of the goods). The earlier mark as a whole should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012 C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

For the rest of the goods, the distinctiveness of the earlier mark must be considered normal.

e) Global assessment, other arguments and conclusion

The contested goods were assumed to be identical to the opponent’s goods, and they target the public at large, whose degree of attention is average. The degree of distinctiveness of the earlier mark is lower than average at least for the majority of the goods. For the rest of the goods it is considered normal.

The earlier mark and the contested sign are similar insofar as they have the word ‘ME’ in common. Nevertheless, although the opponent’s mark is fully included in the applicant’s mark, the structure of the marks is noticeably different, i.e. the earlier mark is a short mark composed of only two letters, whereas the contested sign is composed of two verbal elements and the ampersand. As explained in detail in section c), these differences between the signs clearly lead to quite distant overall impressions from the visual, aural and conceptual point of view.

In relation to the goods in question, it is worth mentioning that generally, customers can themselves either choose the item they wish to buy or be assisted by the sales staff and the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 - T 119/03 & T 171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable differences between the signs caused by the additional different verbal elements are particularly relevant when assessing the likelihood of confusion between them.

In the light of all the above and taking into account all the other relevant circumstances of the case, the Opposition Division considers that the fact that the signs at issue coincide in two letters does not itself lead to a finding of likelihood of confusion. It is unlikely that the relevant public would dissect the element ‘ME’ from the contested sign, but would rather perceive this mark as a whole without analysing its various details. In the present case the marks differ sufficiently, from the aural and visual perspectives, to exclude any likelihood of confusion within the meaning of Article 8(1)(b) CTMR.

For the sake of completeness, it has to be mentioned that 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

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, even assuming that the goods are identical. 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Sylvie ALBRECHT

Maria Clara IBÁÑEZ FIORILLO

Sofia SACRISTAN MARTINEZ

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.