OPPOSITION No B 3 068 165

Damian, Gabriel, C, E. Paseo Caballo, 6510 Anaheim, United States (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Bora Creations S.L., 11 Calle Velázquez (Pto. de Andratx), 07157 Andratx Balearen, Spain (applicant), represented by Squire Patton Boggs (US) LLP Neue Mainzer Strasse 66-68, 60311 Frankfurt am Main, Germany (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 165 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 17 938 507, for the word mark ‘ANCIENT BLOOM’. The opposition is based on international registration No 1 210 846 designating the European Union, for the word mark ‘BLÜM’. 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 5: Adhesive bandages; adhesive bandages for skin wounds; adult diapers; babies' napkins; baby diapers; bandages for skin wounds; burn dressings; diapers for incontinence; disposable adult diapers; disposable diapers for incontinence; dressings for medical and surgical; gauze for dressings; incontinence diapers; inserts made of bamboo specially adapted for reusable babies' diapers; inserts made of microfiber specially adapted for reusable babies' diapers; inserts made of cloth specially adapted for reusable babies' diapers; medical and surgical dressings; medical dressings; menstruation bandages; menstruation pads; moleskin for use as a medical bandage; sanitary napkins; shoe deodorizers; surgical bandages; surgical dressings; wound dressings; wound dressings, namely, pledgets.

The contested goods are are the following:

Class 3: Cosmetics; decorative cosmetics; eyelid shadow.

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.

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.

Even if it is true that, as the opponent claims, pharmaceuticals and cosmetics are

considered similar, pharmaceuticals are not included in the opponent’s list of goods

and services.

However, the contested goods cosmetics; decorative cosmetics; eyelid shadow, are all cosmetics and include a list of personal care preparations intended to be applied to the human body for cleansing, beautifying, promoting attractiveness, altering the appearance or giving it a pleasant smell or odour, without affecting the body’s structure or functions. These goods are similar to a low degree to the opponent’s sanitary napkins since they all may be found in pharmacies or other specialized shops, coincide in producer and target the same end-user.

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 similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

BLÜM	ANCIENT BLOOM
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 word ‘ANCIENT’ of the contested mark will be associated by the English-speaking part of the public with ‘something very old, aged’. This meaning will also be perceived by other parts of the public, such as the French- or the Spanish-speaking parts, due to the close versions of the said word in these languages (‘ancien’, ‘anciano’, respectively). However, this meaning is sufficiently distant and imaginative  in relation to the goods at stake, such that it would not affect its distinctiveness in a material way. Consequently, this element is considered distinctive to a normal degree. For the remaining part of the public, this element is meaningless, and also distinctive.

The second verbal element of the contested sign, ‘BLOOM’, means, e.g. a youthful or healthy rosiness in the cheeks and face; glow and used as, for instance if someone's skin has a bloom, it has a fresh and healthy appearance (information from Collins Dictionary on 20/01/2020 at https://www.collinsdictionary.com/dictionary/english/bloom). For the part of the public that perceives this meaning, it may evoke the desired effect of the goods, and therefore, the word possesses a limited distinctive character with regard to all the relevant goods. For the public that will not perceive this meaning, this element is normally distinctive.

The earlier mark consists of the word 'BLÜM' which will be perceived as a family name by part of the public, either because it exists as such (in Germany) or is close to its equivalents in the relevant European languages (e.g. 'BLUM' in French, ‘BLOM’ in Swedish). Since it has no meaning in relation to the relevant goods, it is distinctive. For the remainder of the relevant public, for which the verbal element ‘BLÜM’ is meaningless, it is also distinctive.

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. Therefore, the difference in the beginnings of the marks, which is clearly detectable by the relevant public, is of material importance when assessing the likelihood of confusion between the signs.

Visually, the signs only coincide in the string of letters ‘BL*/*M’, however, they differ in their third letter, (Ü/O) which is visually rather different. They also differ in the additional letter ‘O’ in the contested sign and in the initial verbal element of the contested sign, ‘ANCIENT’, which has no counterpart in the earlier mark. As the contested sign differs in its first verbal element, which makes up more than half of the sign, this difference, along with the difference between the ‘Ü’ and the double letters ‘O’ create a significantly different visual impression of the signs (one word/two words with rather significant differences in the words and letters that contain coinciding letters). Therefore, the signs are visually similar to very low degree at most.

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 ‘BLÜ/O*M’ since the differing third letters, ‘Ü’ and ‘O’, are likely to be pronounced in a relatively closely similar way in at least part of the relevant territory, or even identically. However, the pronunciation differs in the first verbal element of the contested sign, ‘ANCIENT’, which has no counterpart in the earlier sign, and also in the pronunciation of the double ‘O’ of the contested sign, for part of the public. It follows that the signs have different structures (one word/two words). Therefore, the signs are aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public that perceives a meaning in both signs, such as German speakers with a grasp of English, they are dissimilar, since they refer to different concepts.

For the part of the public that perceives a meaning in only one of the signs, such as part of the French- or the Spanish-speakers, the other sign will not be associated with any meaning, and the signs are not conceptually similar.

For the remainder, for which the signs have no meaning, 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) 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.

e) 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).

An examination of the similarity of the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

As stated above, the distinctiveness of the earlier mark must be viewed as normal. The goods are similar only to a low degree and are directed at the public at large with an average degree of attention. The signs have been found visually similar to a very low degree, aurally similar to a below average degree and, at best, the conceptual aspect does not influence the assessment of the similarity of the signs. However, the commonalities between the signs lie in the final word element of the contested sign, which shares some letters with the earlier mark, and the signs contain clearly perceptible visual and aural differences.

Therefore, it can be concluded that the differences between the signs are sufficiently striking and that they outweigh commonalities between the signs so that a likelihood of confusion, including a likelihood of association, can be safely excluded for the relevant public with an average degree of attention, in particular taken into consideration that the goods are similar only to a low degree.

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

Begoña VALIENTE URIARTE

Martin INGESSON

Kieran HENEGHAN

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.