OPPOSITION No B 3 082 805

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft Von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)

a g a i n s t

The Procter & Gamble Company, One Procter & Gamble Plaza, 45202 Cincinnati, United States of America (applicant), represented by Bird & Bird LLP, Maximiliansplatz 22, 80333 München, Germany (professional representative).

On 09/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 805 is partially upheld, namely for the following contested goods:

Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

2. European Union trade mark application No 18 020 102 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 3: Dentifrices.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 020 102, , namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 9 336 851, for the word mark ‘BEOLOGY’. 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: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

Soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices are identically contained in both lists of goods.

The contested cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations are included in the broad category of the opponent’s cosmetics. 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 found to be identical are directed at the public at large.

The degree of attention is average, and not low as the opponent claims, since these goods are for treating the hair and skin, and are not inexpensive goods purchased on a daily basis.

c) The signs

BEOLOGY
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign is a figurative mark composed of the verbal elements ‘hair biology’ in calligraphic font in a color gradient from turquoise to violet, pink and purple. The element ‘hair’ is placed on top of the element ‘biology’. These graphical elements and their juxtaposition have a limited impact, since the calligraphic stylisation is rather common and not particularly eye-catching.

The element ‘hair’ of the contested sign is a quite basic English word which would be understood not only by the English-speaking part of the public, but also by a significant part of the rest of the consumers, as ‘any of the threadlike pigmented structures that grow from follicles beneath the skin of mammals’ and ‘a growth of such structures, as on the human head or animal body, which helps prevent heat loss from the body’ (source: Collins English Dictionary available at https://www.collinsdictionary.com). All the contested goods, except for dentifrices, can be used on the scalp or directly on the hair. For these goods the term is non distinctive as it designates their intended purpose. On the contrary the term is distinctive for dentifrices which can only be used on teeth or dentures. To the extent that for some part of the non-English-speaking part of the public that term is meaningless, it is normally distinctive in relation to all goods at issue.

The element ‘biology’ would be understood by the English-speaking part of the public, as ‘the science which is concerned with the study of living things’ (source: Collins English Dictionary available at https://www.collinsdictionary.com). This element would be perceived as weak, for all the contested goods, as it could be understood as referring to their biological origin or characteristics. This element would also be perceived with the same meaning by the non-English speaking part of the public as it is close equivalent to the relevant word in all European languages.

The contested mark as a whole is a standard and grammatically correct word combination which does not convey any conceptual meaning other than the mere sum of its parts. Even though biology of hair, as evidenced by the applicant, appears to be a field of scientific research, it is considered that only a very narrow group of experts field would have the knowledge to see such possible meaning in the mark. On the contrary, the average consumers of the products at stake would not be familiar with, and hence, able to see hair biology as a fixed phrase denoting a field dedicated on studies of hair.

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

The earlier mark is a word mark composed of the element ‘BEOLOGY’. Although the public would see the allusion to the same concept of ‘biology’, the distinctiveness of ‘BEOLOGY’ is normal as the word as such does not exist in dictionaries and the public will consider it as a word play with ‘biology’. The non-English speaking part of the public is also likely to perceive such allusion, for the reasons, explained above in relation to ‘biology’.

The earlier mark is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the sign is represented in upper- or lower-case characters.

Since the above elements are meaningful for the English-speaking public, the Opposition Division finds it appropriate to focus the comparison of the signs exclusively on the English-speaking part of the public, for whom there is a higher resemblance between the signs due to limited distinctiveness of the differing verbal element ‘hair’ present in the contested sign for part of the goods.

Visually, the signs coincide in the string of letters ‘b*ology’. However, they differ in the second letter of the second word of the contested and the only word for the earlier mark, which is ‘i’ and ‘Ε’ respectively. The contested mark also contains the additional word ‘hair’ which is not distinctive for the goods at issue albeit for dentifrices.

The marks also visually differ in the contested sign’s calligraphic stylisation of its letters and the use of gradient colours. The applicant maintains that the stylisation of its mark would lead to ruling out likelihood of confusion from the visual point of view. However, it is to be recalled 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). Moreover, the stylisation of the contested mark is not particularly striking and will be perceived as the graphical means of bringing the verbal element to the attention of the public. This stylisation and colour-representation of the letters are not sufficient to obscure or camouflage the common letters in the marks, where the represented words are immediately perceived without any difficulty.

Furthermore, although it is true that the beginning of a sign is the one that first catches the attention of the reader, as correctly pointed out by the applicant, the first and additional element of the contested mark is not distinctive for all goods relating to hair and therefore of minimal impact to the relevant public which will focus its attention on the second element of the contested mark. For dentifrices, the element ‘hair’ has a greater impact as it is distinctive and placed at the beginning of the sign.

Therefore, the signs are visually similar to lower than average degree for the goods that are not related to hair, namely for dentifrices, and similar to an average degree for the remaining goods.

Aurally, the signs coincide in the sound of the letters /b*ology/, present identically in both signs. The pronunciation differs in the sound of the second vowel of the second or only verbal element of the signs, which is /i/ and /e/ respectively. The signs also differ in the sound of the letters /hair/ of the contested mark, which has no counterpart in the earlier sign but which is non distinctive for goods related to hair. For these goods, the signs are aurally highly similar. For the remaining goods, namely for ‘dentifrices’, for which the element ‘hair’ is distinctive, the signs are similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the lack of distinctive character of the verbal element ‘hair’ for all of the goods except ‘dentifrices’, the signs are conceptually similar to a high degree for these goods and conceptually similar to a lower than average degree for ‘dentifrices’.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison '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, Sabel, EU:C:1997:528, § 23).

In the present case, the goods are identical. The degree of attention of the relevant public is average. The earlier mark is inherently distinctive to an average degree, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

The signs differ in the first vowel of the words ‘BEOLOGY’ of the earlier mark and ‘biology’, of the contested mark, as well as in the additional element ‘hair’ of the contested sign which is non-distinctive for all the goods except ‘dentifrices’. Moreover, the contested mark is depicted in calligraphic font of gradient colors. Such differences between the signs, for these goods, is not sufficient to prevent a likelihood of confusion. As noted above, despite the difference in the second letter of ‘biology’ and ‘BEOLOGY’, the public would clearly see both elements as referring to the same concept of biology. Moreover, it must be recalled that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (12/03/2014, T-592/10, BTS, EU:T:2014:117, § 46). Therefore, on account of the coincidences in the only distinctive element of the contested sign (even though weakly distinctive) and the earlier mark, for all contested goods, except ‘dentifrices’, the aural and conceptual similarity is high and the visual similarity is average.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

However, the additional element ‘hair’ present in the contested sign is distinctive for dentifrices, while the verbal element ‘biology’ is weak, as explained above. This element is clearly perceivable and contributes to an overall impression of the contested sign which is distant enough from the earlier mark so as to not lead the relevant public into believing that the goods 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. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public for ‘dentifrices’. The same conclusion applies for the non-English-speaking part of the public. Even for the part of the public that does not understand the differing element ‘hair’, the fact remains that it will be normally distinctive. Therefore, any likelihood of confusion is excluded also for the non-English-speaking part of the public.

The applicant refers to previous decisions of the Opposition Division to support its arguments. Even though previous decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken is relevant to the proceedings.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In terms of the opposition No 2 491 242, both signs are short signs, contrary to the present case. In the remaining cases, the signs have different combination of words containing the common element ‘BIO’ which is not analogous to the present case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public for all of the goods except ‘dentifrices’ and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the following goods: soaps; perfumery; essential oils; cosmetics; hair lotions; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

The opposition is not successful insofar as dentifrices are concerned for the reasons analysed above.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Aliki SPANDAGOU

Martin EBERL

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.