OPPOSITION Nо B 3 083 706

Jafer Enterprises R&D, S.L.U., Av. Sant Julia 260-266, Polígono Industrial Congost, 08403 Granollers (Barcelona), Spain (opponent)

a g a i n s t

Maluwa Health B.V., Westerdoksdijk 213, 1013 AD Amsterdam, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 Hl Breda, Netherlands (professional representative).

On 08/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 706 is upheld for all the contested goods.

2. European Union trade mark application No 18 004 911 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 17/05/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 004 911 for the word mark ‘YAMBA’. The opposition is based on, inter alia, European Union trade mark registrations No 15 363 484 and No 15 490 014, for the word mark ‘YANBAL’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 15 363 484 and No 15 490 014 which are not subject to the proof of use request submitted by the applicant on 27/11/2019.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

EUTM registration No 15 363 484 (earlier mark 1)

Class 5: Sanitary towels; panty liners; tampons and other menstrual protection articles; personal hygiene products for women, other than toiletries; breast-nursing pads and protectors; incontinence protectors and towels; absorbent sanitary products for incontinence; sanitary trousers; disposable baby diapers; incontinence use diaper; wet wipes impregnated with disinfectant substances; fungicides; herbicides; preparations for destroying vermin; veterinary preparations.

Class 29: Meat, fish, poultry and game; meat extracts, preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

EUTM registration No 15 490 014 (earlier mark 2)

Class 35: The bringing together, for the benefit of others, of cosmetics, make-up, perfumery, toiletries, sanitary preparations, clothing, playthings, and jewellery (excluding the transport thereof), enabling customers to conveniently view and purchase those goods by physical or electronic media.

The contested goods are the following:

Class 3: Non-medicated cosmetics and toiletry preparations; body cleaning and beauty care preparations; make-up preparations; cosmetic creams; skin, eye and nail care preparations; soaps and gels; non-medicated dentifrices; perfumes, essential oils.

Class 5: Pharmaceutical and medical preparations; dietetic food and substances adapted for medical use, food supplements for humans; multi-vitamin preparations; vitamin and mineral supplements; food supplements consisting of amino acids; food supplement preparations in powdered form.

Class 29: Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

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.

Contested goods in Class 3

The opponent’s the bringing together, for the benefit of others, of cosmetics, make-up, perfumery, toiletries (excluding the transport thereof), enabling customers to conveniently view and purchase those goods by physical or electronic media (earlier mark 2) is to be interpreted as referring to the retail of such goods.

As the sale of goods is not a service within the meaning of the Nice Classification, the activity of retail in goods as a service for which protection of an EUTM can be obtained does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note of Class 35 of the Nice Classification by ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.

In relation to retail services of specific goods, the similarity, or the lack thereof, between the goods to which the retail services relate and the goods themselves constitutes an essential factor that must be taken into account. Retail services of specific goods can be similar to varying degrees, or dissimilar to specific goods depending on the degree of similarity between the goods themselves while also taking into account other relevant factors.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T‑390/16, DONTORO dog friendship (fig.) /TORO et al., EU:T:2018:156, § 33; 07/10/2015, T‑365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from the consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Bearing in mind the above, the contested non-medicated cosmetics and toiletry preparations; body cleaning and beauty care preparations; make-up preparations; cosmetic creams; skin, eye and nail care preparations; soaps and gels; non-medicated dentifrices; perfumes, essential oils are similar at least to a low degree to the opponent’s goods in the bringing together, for the benefit of others, of cosmetics, perfumery, toiletries (excluding the transport thereof), enabling customers to conveniently view and purchase those goods by physical or electronic (earlier mark 2) in Class 35. This is because some contested goods (i.e. the contested non-medicated cosmetics and toiletry preparations; body cleaning and beauty care preparations; make-up preparations; cosmetic creams; skin, eye and nail care preparations; soaps and gels; non-medicated dentifrices; perfumes) are identical to the goods sold at retail, as they are included in, or overlap with, these goods, and others (i.e. essential oils) are similar to cosmetics, sold at retail, as they usually coincide in producers, relevant public and distribution channels.

Contested goods in Class 5

The contested pharmaceutical and medical preparations include, or overlap with, the opponent’s veterinary preparations (earlier mark 1). Therefore, they are identical.

The contested dietetic food and substances adapted for medical use, food supplements for humans; multi-vitamin preparations; vitamin and mineral supplements; food supplements consisting of amino acids; food supplement preparations in powdered form are substances prepared for special dietary requirements, with the purpose of treating or preventing disease.

The opponent’s veterinary preparations are any kind of medicine, that is to say, a substance or combination of substances for treating or preventing disease in humans or animals. Therefore, the contested goods are similar to the opponent’s veterinary preparations (earlier mark 1) as they have similar purposes insofar as they are used to improve patients’ medical conditions (human or animal). Moreover, they have the same relevant public and distribution channels (e.g. pharmacies). It is rather common that pharmacies deal with pharmaceutical and veterinary preparations as well as nutritional supplements, vitamins and other dietetic preparations intended for humans or animals.

Contested goods in Class 29

The contested meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products are identically contained in the opponent’s goods (earlier mark 1).

The contested oils and fats for food are included in the broad category of the opponent’s edible oils and fats (earlier mark 1). Therefore, they are identical.

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 and services found to be identical or at least similar to a low degree are directed at the public at large and some of them also at business customers with specific professional knowledge or expertise, such as medical practitioners.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The public’s degree of attentiveness may vary from average (e.g. non-medicated cosmetics and toiletry preparation in Class 3) to high (e.g. pharmaceutical and medical preparations in Class 5).

c) The signs

YANBAL	YAMBA
Earlier trade marks	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 marks and contested sign are the word marks ‘YANBAL’ and ‘YAMBA’, which are meaningless for the vast majority of the relevant public (even if it cannot be completely ruled out that some members of the relevant public with a sound grasp of the geography of the Antipodes may know that ‘YAMBA’ is the name of a small town in New South Wales, in Australia) and, therefore, distinctive to a normal degree.

None of the signs – being word marks – by definition, have any dominant (eye catching) elements.

Visually and aurally irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the letters ‘YA*BA*’ and their sounds. They differ in the third letters/sounds ‘N’/‘M’ and the final letter/sound ‘L’ of the earlier marks. These differing letters/sounds are placed in the middle and at the end of the signs where the public generally pay less attention.

Moreover, the differing letters ‘N’ and ‘M’ are visually similar and even their sounds are similar in most of the relevant languages.

Taking into account all the above and that phonetically the signs have the same number of syllables as well as the same rhythm and intonation, the Opposition Division considers that they are visually and aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning for the vast majority of the public in the relevant territory. 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) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation. However, according to the opponent, the earlier marks are made of a highly distinctive term, as the verbal element ‘YANBAL’ does not correspond to any existing word in any of the relevant languages.

When an earlier mark is not descriptive (or is not otherwise non-distinctive), it is Office practice to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich EU:C:2013:317, § 71).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 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).

The signs are visually and aurally similar at least to an average degree, with no conceptual comparison possible for the vast majority of the relevant public. The goods and services are identical or at least similar to a low degree, the earlier marks enjoy a normal degree of inherent distinctiveness, and the degree of attention varies from average to high.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Taking all relevant factors into consideration, the Opposition Division considers that as the visual and phonetic similarities between the signs outweigh the differences, and given that there is no conceptual difference between the signs for the vast majority of the relevant public that could otherwise help consumers to more easily distinguish between them, there is a likelihood of confusion on the part of the relevant public, even if consumers pay a high degree of attention in relation to some of the goods.

It remains necessary to address the opponent’s argument that the earlier trade marks, all characterised by the presence of the same verbal component, ‘YANBAL’, constitute a ‘family of marks’ or ‘marks in a series’. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, in the present case, the factors analysed above unambiguously lead to a conclusion for a likelihood of confusion on the part of the relevant public. Therefore, it is not necessary to examine the family of marks claim of the opponent in the context of these proceedings.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 363 484 and No 15 490 014. It follows that the contested trade mark must be rejected for all the contested goods and services included those found to be similar to a low degree. Bearing in mind above mentioned interdependence principle, in the present case, the assessed degree of similarities between the signs is considered sufficient to offset the (at least) low degree of similarity between some of the goods and services, notwithstanding the high degree of attention paid by the relevant public in relation to some of them.

As the above mentioned earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) and the proof of use requested and submitted in relation to them, as well as the substantiation issues raised by the applicant in relation to some of them.

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, it must 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, 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR.

The Opposition Division

Aldo BLASI

Angela DI BLASIO

Chiara BORACE

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.