OPPOSITION Nо B 3 086 421

Canoil B.V., Repel 47, 4926 DD Lage Zwaluwe, Netherlands (opponent), represented by Merk-Echt B.V., Postbus 1022, 4801 BA Breda, Netherlands (professional representative)

a g a i n s t

Steffen P Schmidt, Schloss Salem Unteres Tor 1, 88682 Salem, Germany (applicant).

On 24/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 421 is partially upheld, namely for the following contested goods:

Class 3: Laundry bleach; non-medicated dentifrices; perfumery, essential oils; non-medicated cosmetics and toiletry preparations; buffing compounds; laundry preparations; scouring substances; furbishing preparations.

Class 5: Dietetic foods adapted for medical purposes; vermin destroying preparations; sanitary preparations for medical purposes; dietetic food adapted for veterinary use; plasters, materials for dressings; teeth filling material; medical preparations; dietetic substances adapted for veterinary use; dietary supplements for human beings and animals; dietetic substances adapted for medical use; disinfectants; fungicides; veterinary preparations; food for babies; dental wax; pharmaceuticals.

2. European Union trade mark application No 18 033 422 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 033 422 ‘CANNIOL’ (word mark). The opposition is based on European Union trade mark registration No 17 926 373 (figurative mark). 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 and services

The goods and services 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; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, hair lotion; non-medicated dentifrices; non-medicated cosmetics, including creams, lotions, gels, oils, alms and serums; hair lotion.

Class 5: Pharmaceutical, homeopathic, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic foodstuffs and substances adapted for medical or veterinary use, and food supplements for human beings and animals; plasters, materials for dressings; disinfectants; food supplements based on oils or fats; tablets for pharmaceutical, homeopathic and medical purposes; analgesics; fats and oils for medical purposes; hemp oil for medical purposes; medicinal tea; medicated creams; balms for medical purposes.

Class 29: Meat, fish; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; edible blended oils; edible seeds, including hemp seeds.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; sweetmeats [candy]; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 34: Tobacco and tobacco products (including substitutes); smokers’ articles; matches; cigarettes, cigars and other smokers’ articles; electronic and electric cigarettes, cigars and other smokers’ articles; flavourings for tobacco; flavoured liquids and evaporating liquids for the operation of electronic and electric cigarettes, cigars and other smokers’ articles (e-liquids); liquid vials and capsules for electronic and electric cigarettes, cigars and other smokers’ articles; parts for electronic and electric cigarettes, cigars and other smokers’ articles, including filters and holders.

Class 35: Advertising; business management; business administration; office functions; electronic stock management services; stock management and office functions in the context of planning transport and logistics; publication of advertising texts; distribution of advertising material; promotional activities; advertising; business organization, business economics and business administration consultancy; marketing services; market canvassing, market research and market analysis; business mediation in the purchase and sale, import and export, and wholesaling and retailing of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices, non-medicated cosmetics, including creams, lotions, gels, oils, balms and serums, non-medicated hair lotions; business mediation in the purchase and sale, import and export, and wholesaling and retailing of pharmaceutical, homeopathic, medical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, dietary supplements for humans and animals; business mediation in the purchase and sale, import and export, and wholesaling and retailing of plasters, materials for dressings, disinfectants, dietary supplements based on oils or fats, tablets for pharmaceutical, homeopathic and medical purposes, analgesic preparations, oils and fats for medical purposes, hemp oil, medicinal tea, medicated creams, balms for medical purposes; business mediation in the purchase and sale, import and export, and wholesaling and retailing of meat, fish, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs. milk and milk products, edible oils and fats, blended oils, edible seeds, including hemp seeds; business mediation in the purchase and sale, import and export, and wholesaling and retailing of coffee, tea, cocoa, artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, sweetmeats (candy), edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice; business mediation in the purchase and sale, import and export, and wholesaling and retailing of tobacco and tobacco products, including tobacco substitutes, smokers’ articles, matches, cigarettes, cigars and other smokers’ articles, electronic and electric cigarettes, cigars and other smokers’ articles; business mediation in the purchase and sale, import and export, and wholesaling and retailing of tobacco flavourings, flavoured liquids and evaporating liquids for the operation of electronic and electric cigarettes, cigars and other smokers’ articles (e-liquids); business mediation in the purchase and sale, import and export, and wholesaling and retailing of liquid vials and capsules for electronic and electric cigarettes, cigars and other smokers’ articles, parts for electronic and electric cigarettes, cigars and other smokers’ articles, including filters and holders; provision of commercial information; organisation of events for commercial and advertising purposes; compilation and management of data files; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet.

Class 39: Logistics services; transport services; transport, packaging, distribution, transhipment and storage of freight, goods and containers; repackaging and bulking of goods; transportation of goods by boat; loading and unloading of cargo, goods and containers; freight [shipping of goods]; forwarding of goods; packaging of goods prior to dispatch; hire and rental of warehouses and stores; storage in warehouses and containers; container terminals; providing of container terminal facilities and provisions; planning relating to transport; consultancy and information regarding the aforesaid services, including via electronic networks, such as the Internet.

The contested goods are the following:

Class 3: Laundry bleach; non-medicated dentifrices; perfumery, essential oils; non-medicated cosmetics and toiletry preparations; buffing compounds; laundry preparations; scouring substances; furbishing preparations.

Class 5: Dietetic foods adapted for medical purposes; vermin destroying preparations; sanitary preparations for medical purposes; dietetic food adapted for veterinary use; plasters, materials for dressings; teeth filling material; medical preparations; dietetic substances adapted for veterinary use; dietary supplements for human beings and animals; herbicides; dietetic substances adapted for medical use; disinfectants; fungicides; veterinary preparations; food for babies; dental wax; pharmaceuticals.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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 contested non-medicated dentifrices; perfumery, essential oils; non-medicated cosmetics; polishing compounds; scouring substances are identically contained in the opponent’s list of goods in Class 3 (including synonyms).

The contested laundry bleach; laundry preparations are included in the broad category of the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are identical.

The contested non-medicated toiletry preparations are included in the broad category of the opponent’s non-medicated cosmetics. On the one hand, cosmetics include preparations for enhancing or protecting the body’s appearance, odour or fragrance while, on the other hand, toiletries are preparations used in personal hygiene, for beautification purposes and to prevent the body from smelling unpleasant. Therefore, these goods are identical.

The contested furbishing preparations are similar to the opponent’s scouring preparations as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 5

The contested dietetic foods adapted for medical purposes; sanitary preparations for medical purposes; dietetic food adapted for veterinary use; plasters, materials for dressings; medical preparations; dietetic substances adapted for veterinary use; dietary supplements for human beings and animals; dietetic substances adapted for medical use; disinfectants; veterinary preparations; pharmaceuticals are identically contained in the opponent’s list of goods in Class 5 (including synonyms).

The contested food for babies is included in the broad category of the opponent’s dietetic foodstuffs adapted for medical use. Therefore, they are identical.

The contested vermin destroying preparations; fungicides are similar to a high degree to the opponent’s disinfectants as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested teeth filling material; dental wax are similar to a low degree to the opponent’s pharmaceutical preparations as they usually coincide in relevant public and distribution channels.

Contrary to the opponent’s opinion, the contested herbicides are dissimilar to all the opponent’s goods and services. A herbicide is ‘a substance that is toxic to plants, used to destroy unwanted vegetation’ (information extracted from Oxford English Dictionary on 16/02/2021 at https://www.lexico.com/definition/herbicide). Herbicides, in contrast to the opponent’s goods and services, are primarily used in agriculture. Therefore, these goods have an entirely different nature and purpose from the opponent’s goods and services, which are designed to protect or restore human and animal health, serve as foodstuffs and tobacco products, provide advertising, business services, import and export services, retail and wholesale of the aforementioned kinds of goods and transport and storage services. The active substances contained in the contested goods are not generally the same as, or even related to, those used in the opponent’s goods or in the goods subject to the opponent’s services. The goods and services do not share the same distribution channels and are usually produced by different companies. Finally, they are neither in competition nor complementary.

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 or similar target the public at large and business customers with specific professional knowledge or expertise.

In terms of the goods in Class 5, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (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.

Dietetic/dietary preparations and nutritional supplements are products which also have a preventive or healing impact on a person’s health. Consequently, consumers are expected to pay a higher-than-average degree of attention when purchasing these goods. This is confirmed by the Court that held that the degree of attention is higher-than-average for all goods in Class 5, including nutritional supplements (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46).

Therefore, the degree of attention may vary from average (for goods such as non-medicated dentifrices; scouring substances in Class 3) to higher-than-average (for goods such as dietetic foods adapted for medical purposes; pharmaceuticals in Class 5).

c) The signs

	CANNIOL
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 Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a verbal sign, the consumer will break it down into elements that suggest a specific meaning for them or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In the present case, part of the relevant public such as the English-speaking part of the public will split the earlier mark’s verbal element ‘CANOIL’ into two parts and perceive the meaningful elements ‘CAN’ and ‘OIL’. The latter will be perceived as a liquid preparation used as a cosmetic on the hair or skin. Moreover, other parts of the public, such as the Italian-speaking and Spanish-speaking parts, will perceive the meaningful element ‘CAN’ to mean dog. In terms of the Italian-speaking part of the public, this is due to its resemblance to the Italian word ‘cane’. This is even more likely as different colours are used to depict the elements ‘CAN’ and ‘OIL’. For these parts of the public, these elements are non-distinctive since the element ‘OIL’ refers to some of the relevant goods or to one of their ingredients and the element ‘CAN’ indicates that part of the relevant goods is intended for dogs.

However, these elements have no meaning in relation to the relevant goods in certain territories, for example in territories where French and Slovak are spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking and Slovak-speaking parts of the relevant territory.

Since the earlier mark’s verbal element ‘CANOIL’ has no meaning in relation to the relevant goods, it is distinctive.

The earlier mark’s verbal element ‘QUALITY’ is an English word which refers to the ‘standard of something as measured against other things of a similar kind; the degree of excellence of something’ (definition extracted from Oxford English Dictionary on 16/02/2021 at https://www.lexico.com/definition/quality). It will be understood by the relevant public due to its resemblance to the French word ‘qualité’ and the Slovak word ‘Kvalita’. This element is non-distinctive for the relevant goods due to its laudatory character.

The earlier mark’s elements ‘DOES MATTER’ have no meaning for the relevant public and are, therefore, distinctive.

However, whether they are understood or not, they will hardly be noticed by the relevant consumers due to their significantly smaller size. For this reason, they will play a very limited role in the sign’s overall perception, if any. Therefore, in the earlier mark, the verbal element ‘CANOIL’ as a whole is the dominant element as it is the most eye-catching.

The stylisation of the earlier mark’s verbal elements will merely be perceived as a graphical way of bringing the verbal elements to the public’s attention and its impact on the comparison of the sign will, therefore, be limited.

The contested sign’s element ‘CANNIOL’ has no meaning for the relevant goods either and is, therefore, 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.

Visually, the signs coincide in their strings of letters ‘CAN*L’. Moreover, the signs coincide in the letters ‘I’ and ‘O’ which are, however, placed in a different order in the middle of the signs. The marks differ in the additional letter ‘N’ placed in the fourth position of the contested sign and in the earlier mark’s typeface, colours and verbal elements ‘QUALITY DOES MATTER’.

Therefore, and taking into account the above assertions concerning the degree of distinctiveness and dominance of the sign’s elements, these are visually similar to an average degree.

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 ‛CANOIL’ v ‘CAN*IOL’, although the sound of the letters ‘O’ and ‘I’ in the middle of the signs will be inverted in their pronunciation. The pronunciation differs slightly in the sound of the additional letter ‘N’ in the fourth position of the contested sign, which has no counterpart in the earlier mark. Furthermore, the pronunciation differs in the sound of the verbal elements ‘QUALITY DOES MATTER’. However, due to their reduced size and the weak character of some of the words, they are not likely to be pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342). Moreover, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and tend to shorten marks containing several words.

Therefore, if the elements ‘QUALITY DOES MATTER’ are pronounced, the signs are aurally similar to a below-average degree.

In the most likely scenario that the additional expression ‘QUALITY DOES MATTER’ is not be pronounced, the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark’s element ‘QUALITY’ despite its non-distinctive character as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier marks on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and professionals whose degrees of attention will vary from average to higher-than-average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally similar to a below-average degree if the elements ‘QUALITY DOES MATTER’ are pronounced and aurally similar to a high degree if they are not pronounced. However, they are not conceptually similar.

The signs coincide in their first letters, which is the part of the signs on which the public focus its attention. The differences between the earlier mark’s dominant element and the contested sign’s only verbal element are reduced to the same vowels ‘O’ and ‘I’, which are inverted, and to a mere repetition of the consonant ‘N’. These slight differences are in the middle of the signs where they may easily go unnoticed. The remaining differences between the signs are confined to elements that are non-distinctive, non-dominant or of a reduced impact.

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). § 54). 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking and Slovak-speaking parts of the public. 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. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 926 373.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods and services of the earlier mark.

The opposition is also successful for the goods that are similar to a low degree, since the marks’ significant coincidences are enough to outweigh the goods’ low similarity.

The other contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

Andrea VALISA

Victoria DAFAUCE MENÉNDEZ

Sylvie ALBRECHT

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.