OPPOSITION Nо B 3 086 045

 

WCP.ME Limited, The Distribution Centre Victoria Road Fenton, ST4 2HX Stoke on Trent, United Kingdom (opponent), represented by Wynne-Jones IP Limited, 2nd Floor, 5210 Valiant Court Gloucester Business Park, GL3 4FE Gloucester, United Kingdom (professional representative) 

 

a g a i n s t

 

Daniel Röck, Lahntal 6, 5751 Maishofen, Austria (applicant), represented by Zumtobel Kronberger Rechtsanwälte OG, Rainbergstr. 3C, 5020 Salzburg, Austria (professional representative).

On 11/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 086 045 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 030 500 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of the European Union trade mark application No 18 030 500 ‘RÖCK’ (word mark), namely against all the goods in Class 3. The opposition is based on, inter alia, the European Union trade mark registration No 8 266 959 ‘ROCKFACE’. 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 registration No 8 266 959.

 

a) The goods

 

The goods on which the opposition is based are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shaving foams; shaving cream; shaving gel; pre-shave and after-shave preparations; shaving soaps; deodorants; anti-perspirants; colognes; skin lotions; skin cleaners; shampoos; facial wash; hand wash; body wash; skin toner preparations; skin masks; skin scrubs; moisturisers for face, body and hands; creams for face, body and hands; hair lotions, sprays, mousses, gels and balms; lip balms and salves; epilatory wax; toiletries; sun-tanning preparations; sun care preparations; nail care preparations; cleaning, polishing, scouring and abrasive preparations.

The contested goods are the following:

Class 3: Non-medicated cosmetics and toiletry preparations; Salves [non-medicated].

The contested non-medicated cosmetics and salves [non-medicated] are included in the opponent’s broader category of cosmetics and therefore identical.

The contested toiletry preparations are synonymous with toiletries from the earlier right leading to identity.

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 opponent claimed in accordance with the judgment of 18/10/2011, T-304/10, Caldea, EU:T:2011:602, § 58 that consumers tend to be attentive when buying body care products, because of aesthetic considerations and personal preferences, sensitivity, allergies, types of skin and hair and so forth, as well as the expected effect of the products.

Taking the above into the consideration, the degree of attention is considered to be average to high.

 

c) The signs

 

ROCKFACE	RÖCK
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.

Both signs are composed of words which will be understood by English speakers which has an impact on the similarity of the signs, as will be seen below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The relevant public may perceive the earlier mark as meaning ‘an exposure of rock in a steep slope or cliff’ (information extracted from Collins English Dictionary on 09/11/2020 at https://www.collinsdictionary.com/dictionary/english/rockface). In this scenario, the expression ‘ROCKFACE’ is distinctive for the goods.

Nevertheless, although the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, can also break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The relevant public may therefore also dissect the mark into two words, i.e. the word ‘ROCK’, meaning ‘the hard substance which the Earth is made of’; or ‘a piece of rock or stone’; or ‘moving slowly and regularly backwards and forwards or from side to side’; or ‘loud music with a strong beat that is usually played and sung by a small group of people using instruments such as electric guitars and drums’ (information extracted from Collins English Dictionary on 09/11/2020 at https://www.collinsdictionary.com/dictionary/english/rock) and the word ‘FACE’ meaning ‘the front part of the head, from the forehead to the chin’ (information extracted from Collins English Dictionary on 09/11/2020 at https://www.collinsdictionary.com/dictionary/english/face).

In view of the goods at issue, it is more probable that the English-speaking consumer will see the earlier mark as a play on words and in this scenario, the word ‘FACE’ would be taken as a reference to the fact that the goods can be used on the face thus it is descriptive for the goods. In view of the meanings given above, the word ‘ROCK’ is distinctive. On this note, the Opposition Division is not convinced of the applicant’s arguments that the word ‘ROCK’ is descriptive for the goods. In particular, it cannot be held true that, as ‘ROCK’ is associated with roughness and ruggedness, that it is easily associated with men and therefore descriptive for the relevant goods offered to men. Although ‘rock’ has several definitions, as given, the fact it refers to the ‘hard substance that the Earth if made of’ or as ‘a large stone’ cannot be taken as a clear reference that would render the element less distinctive. Further, the opponent has not adduced any evidence to support this claim. Consequently, this argument must be set aside.

As to the contested mark, it has to be considered that the umlaut is not used in the English language and therefore its relevance is diminished. The applicant’s argument that umlauts have a strong visual impression in the Member States are not used, does not hold true due to the size and positioning of the two small dots they will not be pondered on. Further, in this case the word ‘RÖCK’ can be considered by the relevant public to be nearly identical to the English word ‘ROCK’, meaning that it will be attributed the same meaning and distinctiveness as the same element in the earlier mark.

Visually, the signs coincide in the elements ‘ROCK’ and ‘RÖCK’. The element ‘ROCK’ forms the beginning of the earlier mark which is particularly significant as 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.

For the relevant public, who ignores the umlaut, the contested mark may seem to be incorporated into the earlier mark. Additionally, in the scenario where the relevant public dissects the earlier mark into two words (‘ROCK’ and ‘FACE’), the element ‘ROCK’ is additionally a distinctive element of the earlier mark, thus in this scenario the signs coincide in the distinctive element.

The signs differ in the element ‘FACE’, which constitutes the ending of the earlier mark and in the scenario when the relevant public dissects the earlier mark into two words (‘ROCK’ and ‘FACE’) is non-distinctive. In view of the foregoing, the signs are visually highly similar.

Aurally, the umlaut will not mark an aural divergence for English speakers thus the signs coincide in ROCK and differ in FACE. Given the distinctiveness issues already mentioned, they are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, as well as the distinctive character of the elements. Consequently, the signs are considered to be conceptually similar to an average degree.

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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe 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.

The earlier mark has a normal degree of inherent distinctiveness. The goods of the contested signs are identical to the goods of the earlier sign. As explained above, the goods target the public at large. The public’s degree of attentiveness is considered to be 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).

The signs are visually and aurally similar to a high degree. The conceptual findings have been outlined above and lead to an average similarity.

Additionally, it has to be noted that in word signs the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). Therefore, even the average consumer who is reasonably observant and circumspect, can confuse the signs due to the clear resemblance in the beginning of the signs and due to the fact that for the relevant public the contested sign may seem to be incorporated in the earlier mark.

What is more, especially important to be taken into consideration in the case in question is that with regard to the majority of the contested goods the visual similarity can play a greater role in the global assessment of the likelihood of confusion, as these goods are normally purchased upon the basis of information that appears at the point of sale.

Additionally, the differences between the signs are confined to non-distinctive elements and the umlaut symbol which relevance, as explained above, is diminished.

The applicant’s claims regarding the right to use its own name (Röck) and fact that it has a family run business containing the same name right, i.e. a right to a business name ‘RÖCK’, must be disregarded as irrelevant to these proceedings given that the right to a name can only be invoked in Cancellation proceedings (Article 60 (2) EUTMR) in the context of an earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

As the earlier right, i.e. the European Union trade mark registration No 8 266 959 ‘ROCKFACE’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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.

 

 

 

 

The Opposition Division

 

 

Inés GARCIA LLEDO

Vanessa PAGE HOLLAND

Claudia SCHLIE

 

 

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.