OPPOSITION Nо B 3 103 364

OPPOSITION DIVISION

OPPOSITION Nо B 3 103 364

Ficosota OOD, Madara Blvd. 48, 9700 Shumen, Bulgaria (opponent), represented by Maciej Bugalski, ul. Kierbedzia 6/20, 00-728 Warszawa, Poland (professional representative)

a g a i n s t

Artsana S.P.A, Via Saldarini Catelli, 1, 22070 Grandate (Como), Italy (applicant), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative).

On 17/05/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 103 364 is partially upheld, namely for the following contested goods:

Class 3: Bleaching preparations and other substances for laundry use; soaps; ammonia [volatile alkali] [detergent]; starch glaze for laundry purposes; fabric softeners; javelle water; laundry wax; laundry blue; washing soda, for cleaning; detergents, other than for use in manufacturing operations and for medical purposes; oil of turpentine for degreasing; cleaning chalk; oils for cleaning purposes; potpourris [fragrances]; laundry glaze; color- [colour-] brightening chemicals for household purposes [laundry]; laundry preparations; laundry bleach; cleaning preparations; smoothing preparations [starching]; laundry soaking preparations; sachets for perfuming linen; degreasers, other than for use in manufacturing processes; paint removers; air fragrancing preparations; starch for laundry purposes; bleaching salts; cloths impregnated with a detergent for cleaning; almond soap; bar soap; disinfectant soap; soaps in liquid form; destainers; bleaching soda; detergents for washing machines; scented sachets.

Class 5: Sanitary preparations for medical purposes; disinfectants; antiseptics; absorbent articles for personal hygiene; antiseptic cotton; aseptic cotton; cotton for medical use; deodorants, other than for personal use; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; disinfectants impregnated into tissues; air purifying preparations; sulfur sticks [disinfectants]; sterilising solutions; medicated soaps, anti-bacterial detergents.

European Union trade mark application No 18 036 822 is rejected for all the above goods. It may proceed for the remaining goods.

3.	Each party bears its own costs.

REASONS

On 18/11/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 036 822 (figurative mark), namely against all the goods in Class 3 and some of the goods in Class 5. The opposition is based on Bulgarian trade mark registration No 92 517 and international trade mark registration No 1 241 878 designating Greece, Cyprus and Romania (figurative marks). The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights and in addition Article 8(5) EUTMR in relation to the Bulgarian earlier right.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Bulgarian trade mark registration No 92 517, for which the opponent claimed repute in Bulgaria.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Bulgaria.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 15/03/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Baby wipes; baby bath mousse; baby shampoo mousse; baby oils; babies’ creams [non-medicated]; baby lotions; baby body milks; non-medicated baby care products; baby shampoo; fabric softeners for laundry use; laundry soaking preparations; laundry preparations; soaps.

The opposition is directed against the following goods:

Class 3: Bleaching preparations and other substances for laundry use; polishing preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cologne; lavender water; toilet water; perfume water; ammonia [volatile alkali] [detergent]; aloe vera preparations for cosmetic purposes; amber [perfume]; starch glaze for laundry purposes; fabric softeners; aromatics; flavourings for beverages [essential oils]; cake flavorings [essential oils]; astringents for cosmetic purposes; balms, other than for medical purposes; bath foam; flower perfumes (bases for -); cotton sticks for cosmetic purposes; Javelle water; laundry wax; polishing wax; laundry blue; colorants for toilet purposes; cosmetics; cotton wool for cosmetic purposes; cosmetic creams; barrier creams; polishing creams; skin whitening creams; washing soda, for cleaning; deodorants for human use (perfumery); detergents, other than for use in manufacturing operations and for medical purposes; heliotropine; badian essence; mint essence [essential oil]; oil of turpentine for degreasing; bergamot oil; ethereal essences; extracts of flowers [perfumes]; massage gels, other than for medical purposes; dental bleaching gels; geraniol; cleaning chalk; greases for cosmetic purposes; incense; ionone [perfumery]; almond milk for cosmetic purposes; cleansing milk for toilet purposes; scented wood; hair care lotions; lotions for cosmetic purposes; lip gloss; shoe wax; cosmetic masks; mint for perfumery; transfers (decorative -) for cosmetic purposes; musk [perfumery]; cosmetic kits; oils for toilet purposes; message oils; essential oils; cedarwood (essential oils of -); essential oils of lemon; oils for perfumes and scents; oils for cleaning purposes; oils for cosmetic purposes; gaultheria oil; jasmine oil; lavender oil; almond oil; rose oil; cotton wool for cosmetic purposes; smoothing stones; polishing stones; pumice stone; alum stones [astringents]; pomades for cosmetic purposes; potpourris [fragrances]; tanning preparations; baths (cosmetic preparations for -); douching preparations for personal sanitary or deodorant purposes [toiletries]; laundry glaze; polishing preparations; sunscreen preparations; color- [colour-] brightening chemicals for household purposes [laundry]; skincare cosmetics; perfumery; laundry preparations; antiperspirants [toiletries]; fumigation preparations [perfumes]; laundry bleach; mouth washes, not for medical purposes; nail care preparations; cleaning preparations; toiletries; smoothing preparations [starching]; laundry soaking preparations; sachets for perfuming linen; degreasers, other than for use in manufacturing processes; make-up removing preparations; paint removers; perfume; air fragrancing preparations; starch for laundry purposes; bath salts, not for medical purposes; bleaching salts; cloths impregnated with a detergent for cleaning; almond soap; bar soap; antiperspirant soap; deodorant soap; disinfectant soap; soaps in liquid form; shampoo; dry shampoos; destainers; emery; bleaching soda; furbishing preparations; breath freshening sprays; cloths impregnated with a detergent for cleaning; talcum powder, for toilet use; abrasive cloth; emery cloth; glass cloth [abrasive cloth]; terpenes [essential oils]; dyes (cosmetic -); beard dyes; tissues impregnated with cosmetic lotions; cotton stick for cleaning ears; body cream; non-medicated creams, in particular cream for nappy changing; sun creams (cosmetics); detergents for washing machines; cleansing milk for toilet purposes; cold creams, other than for medical use; scented sachets.

Class 5: Sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; infant formula; food supplements for humans; disinfectants; preparations for destroying vermin; acaricides; sea water for medicinal bathing; Melissa water for pharmaceutical purposes; goulard water; mineral waters for medical purposes; thermal water; nutritional supplements; dietetic foods adapted for medical use; starch for dietetic or pharmaceutical purposes; amino acids for medical purposes; antiseptics; dressings, medical; sanitary towels; absorbent articles for personal hygiene; menstruation bandages; post-partum pads; styptic preparations; oxygen baths; bath preparations for medical purposes; balms for medical purposes; stick liquorice for pharmaceutical purposes; sanitary wear; bandages for dressings; medicated dressings; dietetic beverages adapted for medical purposes; bicarbonate of soda for pharmaceutical purposes; medicine cases, portable, filled; medicated candy; rubber for dental purposes; quinquina for medical purposes; quinine for medical purposes; chinoline for medical purposes; belts for sanitary napkins [towels]; collyrium; compresses; cachets for pharmaceutical purposes; sterile gauze pads; antiseptic cotton; aseptic cotton; cotton for medical use; breast-nursing pads; decoctions for pharmaceutical purposes; deodorants, other than for personal use; air deodorising preparations; deodorants for clothing and textiles; depuratives; detergents for medical purposes; digestives for pharmaceutical purposes; disinfectants for hygiene purposes; disinfectants impregnated into tissues; balsamic preparations for medical purposes; eucalyptus for pharmaceutical purposes; eucalyptol for pharmaceutical purposes; evacuants; lacteal flour for babies; flour for pharmaceutical purposes; filled; milk ferments for pharmaceutical purposes; ferments for pharmaceutical purposes; fibre (dietary -); fennel for medical purposes; gauze for dressings; glycerine for medical purposes; adhesive bands for medical purposes; insect repellent incense; insecticides; insect repellents; alginate dietary supplements; casein dietary supplements; enzyme dietary supplements; wheat germ dietary supplements; glucose dietary supplements; lecithin dietary supplements; yeast dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; protein supplements for animals; mineral food supplements; iodine for pharmaceutical purposes; almond milk for pharmaceutical purposes; malted milk beverages for medical purposes; milk sugar for pharmaceutical purposes; cedar wood for use as an insect repellent; liquorice for pharmaceutical purposes; eyepatches for medical purposes; bandaging material; haemostatic pencils; medicines for dental purposes; mint for pharmaceutical purposes; menthol; moleskin for medical purposes; fly destroying preparations; pants, absorbent, for incontinents; sanitary pants; adhesive bands for medical purposes; medicinal oils; camphor oil for medical purposes; cod liver oil; castor oil for medical purposes; flaxseed oil dietary supplements; absorbent cotton; wadding for medical purposes; babies' diaper-pants; disposable maternity underwear; incontinence diapers; babies' diapers; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; parasiticides; jujube, medicated; pomades for medical purposes; aloe vera preparations for pharmaceutical purposes; preparations for topical treatment of insect bites; preparations of trace elements for human use; teething (preparations to facilitate -); bath (therapeutic preparations for the -); sunburn ointments; biological preparations for medical purposes; chemico-pharmaceutical preparations; sunburn preparations for pharmaceutical purposes; burns (preparations for the treatment of -); pharmaceutical preparations for skin care; organotherapy preparations; fumigation preparations for medical purposes; diagnostic preparations for medical purposes; air purifying preparations; mouthwashes for medical purposes; insect repellents; propolis for pharmaceutical purposes; panty liners; chemical reagents for medical use; tonics [medicines]; constipation (medicines for alleviating -); remedies for perspiration; mineral water salts; potassium salts for medical purposes; sodium salts for medical purposes; smelling salts; salts for mineral water baths; bath salts for medical purposes; salts for medical purposes; solvents for removing adhesive plasters; dietetic substances adapted for medical use; cooling sprays for medical purposes; vulnerary sponges; surgical dressings; sulfur sticks [disinfectants]; tampons; breast-nursing pads; medicinal tea; tincture of iodine; tinctures for medical purposes; herbal teas for medicinal purposes; tissues impregnated with pharmaceutical lotions; cachou for pharmaceutical purposes; mercurial ointments; ointments for pharmaceutical purposes; medicated creams; anti-bacterial preparations; antibacterial gels; anti-inflammatory gel for the gums; cold cream for medical use; sterile solutions for medical purposes; sterilising solutions; medicated soaps, anti-bacterial detergents.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support its claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Exhibit 1: extracts from the opponent’s website, www.teobebe.eu, illustrating various personal care products (shampoos, soaps, wet wipes), as well as washing detergents in various packaging forms, all the goods bearing the trade mark, as follows:

 Exhibit 2: certificate for broadcasting, issued by the Bulgarian Media Agency (BMA) to the opponent in relation to the brand ‘Teo Bebe’ and regarding the period between January 2014 and October 2018. The certificate illustrates the number of airings of the ads related to the brand’s goods, provided along with the budget spent for the advertising campaigns, as well as the number of TV stations used and the total number of people reached. For example, in 2018 the brand had approximately 7100 airings via 28 TV channels with a budget over 1,5 million Bulgarian leva (approx. EUR 677.000) and approximately 6,2 million people reached.

 Exhibit 3 and 4: Brand & Advertising National Representative Surveys, entitled ‘Laundry detergents’ or ‘Fabric softeners’ (dated September 2017, June 2018, August 2018 and September 2019), carried out by Kantar TNS, a leading market research agency. The surveys were performed by means of face-to-face interviews with more than 800 participants in total (different background, age, gender, region, etc.) of which 417 respondents were considered from the target group in the relevant sector – namely consumers who actively perform laundry activities (once every two weeks and more often). Following the survey of 2017 (808 participants), 25 % of the interviewees showed spontaneous awareness of the opponent’s brand ‘Teo bebe’ (in relation to laundry preparations) and 67 % aided recognition. A further result demonstrates that upon purchase 30 % of the decision makers consider selecting the brand amongst other competitors of the market, such as Savex, Persil and Ariel. Finally, according to the study, 77 % of the respondents who have seen the TV ad (124 in total) recall the brand when shown random screenshots of it. In the survey of 2019, performed among 817 participants, 26% of the interviewees showed spontaneous awareness of the opponent’s brand ‘Teo bebe’ (in relation to laundry preparations) and 71 % aided recognition. In the survey of August 2018, out of 822 interviewed, 17% showed spontaneous awareness of the brand in relation to fabric softeners, whereas 55% showed aided recognition.

 Exhibit 5: image search, carried out by Focus agency and containing a list of promotion leaflets images illustrating ‘Teo bebe’ goods, in particular laundry detergents, baby and personal care products.

and .

As may be seen in the promotion overview, dated in the relevant period between 2016 and 2018, the leaflets have been issued and distributed by various pharmacy and cosmetics stores in Bulgaria, such as Galen, Medeya, Pharmastore, Remedium, Sopharmacy, Ivis, as well as by wholesale or retail distributors, such as Metro Cash & Carry, Kaufland, CBA, DM, Lilly, Supermarkets Burov, Absolut Supermarkets, Bodinor, Fines, Fresh market, Leksi, Life, Merkanto, and Triumph. Having regard to the above information, the opponent claimed that the ‘Teo Bebe’ goods are widely available across the country, however, this statement has not been supported by additional evidence of the distribution network of the above retailers. Even if a translation has not been attached, the Opposition Division acknowledges that some of the references within the leaflets, appear in the form of addresses of stores located in various parts of the country.

 Exhibit 6: a copy of a contract between the opponent and a third party, for the creation of a video-spot (TV clip advertising), entitled ‘Teo bebe recommended by the paediatrician’, together with a handover protocol for completion of the work, dated 18/04/2017. The documents are accompanied by a translation from Bulgarian. In its observations, the opponent also refers to several hyperlinks on which the commercials can be found on YouTube. However, the Opposition Division notes on that point that, in accordance with Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by EUIPO, that is, the facts and evidence on which those decisions may be validly based. It is not for the EUIPO decision-taking bodies to search the website for the relevant data to prove the alleged use the trade mark registrations (04/10/2018, T‑820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63). Consequently, references to URL addresses on their own, without providing the content available under those links, cannot be regarded as relevant evidence. The materials, even if available online, should be provided to the Office in a physical form (as printouts, screenshots or recorded on a digital carrier or in another appropriate form).

 Exhibit 7: a document prepared by the opponent containing turnovers generated by sales of ‘Teo bebe’ goods in the period 2013-2018 for the territories of Bulgaria, Romania, Greece and Cyprus, together with exemplary invoices thereof.

 Exhibit 8: printouts from a popular Bulgarian internet forum (BG-mama), where the opponent’s brand has been commented in relation to preferable laundry detergents for baby care (dated 2018).

 Exhibit 9: copies of advertisement materials, containing publications of the trade mark in relation to hygiene and laundry products such as:

o a copy of an informational brochure, entitled ‘The diary of mom and dad’, which according to the opponent is freely distributed amongst pregnant women (in courses and in health institutions). The brochure is dated September 2018 and 10 000 copies were printed;

o ads from the magazines: Здраво дете (‘Zdravo dete’), Кенгуру (‘Kenguru’) and Майчинство (‘Motherhood’), dated 2018.

 Exhibit 10: copies of invoices issued by various external agencies to the opponent in relation to advertisement materials for the brand ‘Teo bebe’, dated in 2018.

 Exhibit 11: copies of a brochure, images and other promotional material on which the mark is featured, undated.

 Exhibit 12: an invoice issued to the opponent by Inter Expo Centre (a fair and exhibition organiser) in relation to an area and stand purchase for the exhibition Babymania that took place between 19/10/2018 and 21/10/2018, in Sofia. The opponent further provided pictures made upon its participation that clearly demonstrate the mark featured on the stand, on displayed products (e.g. detergents), as well as on promotional materials (picture frames, posters, balloons, etc.).

 Exhibit 13: a set of images demonstrating posters, billboards, stands or other materials promoting the opponent’s mark in front of various stores and trade venues. According to the witness statement, the pictures were taken in 2018 in various towns in Bulgaria, including Sofia.

Belated evidence

Furthermore, on 14/01/2021 (after the expiry of the time limit for submitting evidence), along with its second observations, the opponent provided an additional piece of evidence, namely a witness statement produced by Nielsen, dated 09/01/2021, together with excerpts from reports in which some market data in the segment of baby soaps and shampoos for the years 2015-2016 were presented (entitled Exhibit 1). The opponent claims that this evidence is only supplementary to evidence that was already presented within the relevant time limit.

Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

According to Article 8(5) EUTMDR, where after the expiry of the period referred to in Article 7(1) EUTMDR, the opponent submits facts and evidence that supplement relevant facts or evidence submitted within that period and that relate to the same requirement laid down in Article 7(2) EUTMDR, the Office has to exercise the discretion conferred on it by Article 95(2) EUTMR in deciding whether to accept these supplementing facts or evidence. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

In exercising its discretion, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional. The fact that the applicant disputed the initial evidence submitted by the opponent with respect to these particular categories of products justifies the submission of additional evidence in reply to the objection. Indeed, the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 14/01/2021.

Assessment of the evidence and conclusion

Having examined the material listed above, the Opposition Division concludes that the earlier Bulgarian trade mark has acquired some reputation on the market in relation to laundry preparations and fabric softeners, especially as concerns baby care.

The opponent’s brand has been the subject of significant promotional activities and investment, and the opponent submitted a variety of evidence to support this claim. A direct indication of this fact is, in particular, the frequent and consistent presence of the brand in various external sources such as TV ads, publications and participation at fairs. Consequently, some conclusions about the degree of exposure of the public to the opponent’s advertised goods and the campaigns concerning the brand’s values may be drawn from the reach and circulation of the TV ads concerned and the printed publications. As a result, the opponent’s long-standing, intense and extensive promotions are considered an important factor leading to public awareness and recognition of the brand in that particular area (Exhibits 1, 2, 5, 6, 8, 9, 12 and 13). These marketing strategies of the opponent, in addition to recalling the brand by the public (survey in Exhibits 3 and 4), are shown to further effect in significant sales and turnovers generated by the brand, as witnessed in Exhibit 7.

Moreover, the above exposure of the brand has been strongly supported by the results from market surveys provided by the opponent. The probative value of opinion polls and market surveys is usually determined by the status and degree of independence of the entity conducting them, by the relevance and the accuracy of the information they provide, and by the reliability of the method used. As listed above (Exhibits 3 and 4), the opponent submitted surveys on its mark’s recognition, carried out by an independent fieldwork agency, namely Kantar TNS. The circumstances under which the survey was conducted are explained above and they are considered acceptable for the purposes of the ongoing proceedings, namely the method used and the number of interviewees (minimum 800, of which over 400 were defined as the target public) and their profiles. The reports clearly wrapped up the results of the surveys, with references to particular questions thereof, and provide the Opposition Division with sufficient information to conclude on the market share of the opponent’s brand in relation to laundry detergents and fabric softeners: approx. 25 % and 17%, respectively, spontaneous awareness, that is to say, quoting the brand in relation to a particular category of products without any further assistance.

Therefore, the abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time and is generally known in the Bulgarian market. The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market among other leading brands, which has been confirmed by several sources. The turnover figures, market expenditure and leading position amongst competitor brands shown by the evidence, as well as the various references to the brand, including those with positive evaluation, by independent third parties, all unequivocally demonstrate that the mark enjoys a certain degree of recognition amongst the relevant public.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in relation to laundry detergents and fabric softeners, in particular for baby care.

However, the evidence does not succeed in establishing that the trade mark has a reputation for the remaining goods in Class 3 for which reputation has been claimed. The surveys indicating direct brand recognition relate to laundry detergents and fabric softeners, whereas there is only little reference to the rest of the products marketed under the same mark. Indeed, even though the evidence also makes references to various types of personal and baby care products, such as shampoos, shower gel, soaps and cream, there are insufficient indications (concrete market share, particular advertising ads, etc.) about the recognition of the mark with respect to these goods for which reputation was also claimed.

While the Opposition Division acknowledges the fact that the opponent submitted a report from Nielsen containing references to market shares of soaps and shampoos marketed under the brand, the report, on its own or in combination with the remaining insufficient evidence commented above, does not suffice as to prove the opponent’s claim regarding these goods. This is due to the fact that the document provided is not particularly elaborated and does not contain all the necessary requisites that the Office would in principle need to consider an opinion poll or market survey reliable or credible.

Indeed, the probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and accuracy of the information it provides, and by the reliability of the method applied. In the present case, the credibility of the document is put into question insofar as it lacks the methodology used to reach or bring to summary the presented data and how this data can be interpreted in the context of the marketing environment. The report lacks essential requisites such as the number of consumers on which the calculations are based, profiles of these consumers, total sales data, connection of the percentage reflected in the report and the total number of consumers or sales, seen as opposed to other competitors of the same market. By contrast, all these data were provided in the surveys commented above with respect to the reputed laundry preparations and fabric softeners. The Opposition Division is unable thus to reach any definite conclusions with respect to the market share of these goods.

Following the above, the analysis will only proceed with respect to the reputed laundry detergents and fabric softeners. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

b) The signs

Earlier trade mark

Contested sign

The relevant territory is Bulgaria.

In this section, the earlier mark will be analysed from the point of view of the Bulgarian consumers and in relation to the reputed goods, whereas the contested sign will be analysed with respect of the Bulgarian consumer for all the goods applied for.

The earlier mark consists of the verbal elements ‘Teo’, as a male given name, derivative or short form of the popular name ‘Teodor’, and of the word ‘bebe’ that will be understood by the Bulgarian consumer as the transliteration of the Bulgarian word ‘бебе’ (denoting ‘baby’). Given that the name bears no relation to the goods in question, it is deemed to enjoy a normal degree of distinctiveness per se. By contrast, since the reputed goods are laundry preparations and fabric softeners that may be specifically designed for baby care, the verbal element ‘bebe’ is descriptive for these goods, thus, non-distinctive.

As regards the figurative element of the earlier mark, namely the pink, heart-shaped background (allusive to ‘caring’ goods), account is taken of the fact 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). However, given the rather decorative nature and/or laudatory character of the earlier mark’s heart, as mentioned above, the verbal element ‘Teo’ will be the element of most distinctive character within the sign.

The contested sign is composed of the verbal elements ‘neo’ and ‘BaBy’ written altogether. It is evident that consumers will perceive this one element as two separate words, due to the visual separation caused by the upper case letters in ‘BaBy’ and due to the meanings of the elements, as will be touched upon below.

The word ‘neo’ at the beginning of the contested sign (from Ancient Greek, prefix νεο- (neo)) is in general to be understood as a reference to ‘new; young’. This meaning will be known also to the average Bulgarian consumer who will immediately associate the word ‘neo’ with its transliterated version in Cyrillic, ‘нео-‘ (see a reference at https://rechnik.chitanka.info/w/%D0%BD%D0%B5%D0%BE-, available online on 06/05/2021). This finding is also supported by the fact that ‘neo’, not as a common standalone word, but as a prefix, is often used in conjoined terms referring to something new or revived, e.g. neologism (неологизъм), neoliberalism (неолиберализъм), neoclassicism (неокласицизъм). Therefore, the element ‘neo’ in the present context will bear the laudatory reference that the contested products are newly elaborated, modern, innovative or revived, and to that extent its inherent distinctiveness is somewhat diminished. In addition, as suggested by the opponent, it cannot be completely ruled out that the word ‘Neo’ may be seen as a first male name by some of the consumers and, in that case, it will remain of a normal distinctiveness.

The second verbal element ‘Baby’ will be understood as a basic English word that has entered common parlance and is generally known to consumers from their market experience (05/07/2012, T‑466/09, Mc.Baby, EU:T:2012:346, § 40). Bearing in mind that the relevant goods are various goods for hygiene and beauty care, including for babies, as well as cleaning and laundry preparations, pharmaceuticals, medical and nutritional preparations, this verbal element is of very limited distinctiveness, if any, for all these goods, as it directly informs consumers that these goods are meant, recommended, or adapted (especially as concerns their chemical components) for use on infants and/or in relation to infants care and hygiene. Alternatively, it may also suggest that some of the goods (various cosmetics e.g. creams, lotions, oils, milks) produce a rejuvenating effect on aging skin or may be used for more sensitive skins. Finally, it cannot be completely ruled out that the presence of this word featured on some of the goods may suggest that they are intended for female consumers in prenatal or postnatal conditions that may need a special line of products developed with the baby health in mind. Given the above conclusions that this element merely denotes the purpose and/or designation of the goods, the word ‘Baby’ of the contested sign will likewise have a low to no degree of distinctiveness in connection with all the contested goods in Classes 3 and 5.

Finally, it is noted that the stylisation of the contested sign is only minor and with very limited effect, if any, on the overall perception of the sign.

The signs are considered globally similar from a visual and aural perspective to the extent that they share the same structure of similar two words, the first ones composed of three letters and the second ones of four. The first elements are short words that differ in their initial consonants (‘Teo’ versus ‘Neo’). These elements are followed by the words ‘bebe’, in the earlier mark, and ‘BaBy’ in the contested sign, coinciding in their two consonants ‘B’. The latter will be perceived by the public with the exact same meaning of an indicative or descriptive character, as addressed above. However, the coincidence in an element of no or weak distinctiveness cannot lead to establishing a strong conceptual similarity between the signs and its impact is minor. Moreover, contrary to what the opponent argues, the fact that both initial elements will or may be perceived as personal names is not on itself sufficient to bring any similarity as these two names remain completely different.

In any event, when seen overall and despite the limited, if any, distinctiveness of the coinciding elements, the signs, display sufficient similarities for the assessment to continue under the premises of 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53). Indeed, even a faint or remote degree of similarity between the signs (which might not be sufficient for a finding of likelihood of confusion under Article 8(1)(b) EUTMR) still justifies assessing all the relevant factors to determine if it is likely that a link between the signs will be established in the mind of the relevant public.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As concluded above, in the present case, the signs have some commonalities, in particular due to the fact that they share a similar structure in which they both begin with a short word – ‘Teo’ or ‘Neo’, being a male name in one or both cases, and having in second position the words ‘bebe’ and ‘baby’, that will be perceived with an identical concept and will indicate or describe the same purpose/designation/characteristics of the products as baby-related.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods covered by the trade marks in dispute are the same or overlap to some extent.

In the present case, while the earlier mark is reputed for laundry detergents and fabric softeners, in particular for baby care, some of the contested goods in Class 3 cover themselves a variety of products used in the laundry process or treatments of clothes such as bleaching preparations, soaps, fabric softeners and smoothing preparations, laundry wax, laundry glaze, washing or bleaching soda. These goods may share the same purpose and naturally belong to the same or very close commercial field, target the same consumers and use the same distribution channels, whereas some of them can even be in competition with each other. These are in particular the following: bleaching preparations and other substances for laundry use; starch glaze for laundry purposes; fabric softeners; laundry blue; washing soda, for cleaning; laundry glaze; color- [colour-] brightening chemicals for household purposes [laundry]; laundry bleach; smoothing preparations [starching]; laundry soaking preparations; starch for laundry purposes; bleaching salts; bleaching soda; laundry wax; laundry preparations; soaps; detergents, other than for use in manufacturing operations and for medical purposes; detergents for washing machines; ammonia [volatile alkali] [detergent]; soaps in liquid form.

Moreover, the Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51-52.)

In the context of the latter, the contested sign also covers various cleaning and abrasive preparations and articles that can be sold at the same places as the opponent’s reputed goods and target consumers with interest in maintaining the household, including by using baby-friendly products (e.g. for cleaning toys, surfaces, articles for feeding), namely the following: cleaning preparations; disinfectant soap; Javelle water; oil of turpentine for degreasing; cleaning chalk; oils for cleaning purposes; degreasers, other than for use in manufacturing processes; paint removers; cloths impregnated with a detergent for cleaning; destainers; almond soap; bar soap. Furthermore, a ‘link’ between the signs may be justified also in relation to some of the applicant’s goods in Class 5, namely: disinfectants; antiseptics; antiseptic cotton; cotton for medical use; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; disinfectants impregnated into tissues; air purifying preparations; sulfur sticks [disinfectants]; sterilising solutions; deodorants, other than for personal use; medicated soaps, anti-bacterial detergents; sanitary preparations for medical purposes; absorbent articles for personal hygiene, that are in their nature and purpose sanitary preparations or disinfectants and articles thereof. Indeed, these goods could also be designed with the baby care in mind and may use ingredients or substances that are accordingly adapted to sensitive baby skin, yet, required for maintaining the necessary level of hygiene within the household. Consequently, these products, albeit remotely connected, may be seen as complementary to the daily baby care as their global purpose coincides with keeping environment around new-borns and infants sanitized.

Finally, there is some link between the reputed fabric softeners and the contested goods being in their nature and purpose household fragrances, namely potpourris [fragrances]; sachets for perfuming linen; air fragrancing preparations; scented sachets. While the opponent’s goods are, inter alia, meant to soften and aromatize fabrics by washing, these contested goods are fragrances that may be used to give or add a pleasant odour onto a particular room or space, where clothes are hanging, or by simply re-using the same elaborated scents as in the fabric softeners. It cannot be excluded that, apart from offering softeners companies may also offer the same fragrances for the purposes of aromatising the household and offering to their consumers a wide range of similar products covering a particular scent.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs in relation to the abovementioned goods. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

Nevertheless, no link can be established in relation to the remaining contested goods in Classes 3 and 5. The contested Class 3 encompasses a large list of goods that are in their nature cosmetics and make up – cosmetic creams, lip gloss, masks, nail care, make-up remover, hair preparations such as hair lotions, pomades, shampoo, oral hygiene preparations, perfumery, toiletries and essential oils and aromatic extracts. These goods belong to the market of personal care and hygiene goods applied on human/animal body rather than the overall maintenance of the household or its sanitization. They will be products of entirely different industry that works with a different range of skin-sparing substances and other type of organic or natural ingredients, they will be found in different sort of stores or shelves. It is reminded that even though the evidence for reputation also makes references to various types of personal and baby care products sold by the opponent, such as shampoos, shower gel, soaps and cream, reputation was not proven for these goods and consumers do not expect these goods to originate from the same company as the preparations for cleaning, laundry or fragrance the household, being products of the household chemicals industry. The mere fact that the opponent’s reputed goods may be elaborated with the baby care in mind will not lead consumers to automatically preclude that the opponent will be the producer of any type of baby-care products, including the range of personal cosmetics that belongs to the cosmetics and personal care industry.

The lack of connection is even more obvious in relation to the remaining goods in Class 5 that are in their nature nutritional supplements or goods of a medical or sanitary character (different from the specialised baby care-related products), in particular various products for feminine hygiene, medical and veterinary preparations, medical dressing, coverings and applicators, dental preparations, as well as pest control preparations and articles. Most of these goods are of a specialised character and applied only in the respective areas of the medicine, dental care, veterinary field, nutrition. In addition, some of the goods contain very high degree of toxics (e.g. pest control preparations) that are regulated on a local or national level. They will generally differ in their common origin from the product of the opponent and will be elaborated and manufactured by companies active in the healthcare sector.

As evident from the above, most of the remaining goods belong to completely distinct market fields that target consumers with different underlying interests, experience, and needs. While the reputed goods are aimed at consumers purchasing washing preparations with focus on baby care, i.e. parents, the contested goods that belong to the pharmaceutical, dietary, dental or aromatherapy industries would target specialists in these areas – dental or medical practitioners, beauty care centers, nutritionist, who are not necessarily parents and thus familiar with the reputed goods.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

Moreover, even if the relevant section of the public for some of the goods covered by the conflicting marks may overlap to some extent, for instance whenever parents form the target group of the goods (be it cosmetics or dietary products for babies), these goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. This is based partly on the fact that the coinciding elements ‘bebe’ and ‘BaBy’ of the marks are completely void of distinctiveness for these consumers and in relation to the relevant products with baby care focus and the signs bear less similarities in that sense.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute in relation to these goods discussed above, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as these goods are concerned.

The examination under Article 8(5) EUTMR continues for the contested goods for which a link was found.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark (p. 19 of the opponent’s observations).

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The proprietor of the earlier mark bases its claim on the following:

The Bulgarian consumers associate the earlier mark with constant high quality, reliability, responsibility and correctness. Due to the high degree of similarity between the signs there is a high probability that the relevant public will transfer the image of the Earlier mark with reputation to the Contested EUTM and will project the characteristics of the reputed goods to the Contested ones. Hence, the Contested EUTM would take unfair advantage of the good image and strong reputation of the Earlier mark and the considerable investments of the Opponent to achieve that reputation. This would give the Applicant a competitive advantage by facilitating the marketing of the Contested goods which would benefit from the extra attractiveness gained from the association with the Opponent’s Earlier mark.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the present case, as seen in the previous sections, the opponent has successfully demonstrated that the earlier mark has a certain degree of reputation and is widely known among the general public in the relevant territory in relation to laundry preparations and fabric softeners, especially as concerns the baby care. Moreover, the high degree of awareness of the trade mark on the part of the public is the result of regular and significant investments in promotion and social engagements among the Bulgarian consumers. It is clear from some of the abovementioned surveys that, in addition to the trade mark being known by the public, the public has a positive image of the brand and products, for which it has some affection.

As seen above, the marks are similar to a sufficient degree, as they have a similar structure; furthermore, they have similar connotation conveyed by their second verbal elements. In those circumstances, there is a high probability that the use of the contested trade mark may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark and the considerable investments undertaken by the opponent to achieve that reputation. Indeed, the fact that consumers may be reminded of the opponent’s brand could facilitate the marketing of the goods covered by the contested trade mark, especially taking into account that they may be found in the same or neighbouring commercial fields.

On the basis of the above, it is concluded that the use of the contested trade mark is unlikely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

f) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

The opposition is not successful under the premises of Article 8(5) EUTMR, insofar as the remaining goods are concerned, for which link was not established. Consequently, it will proceed with the analysis under 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 (identically covered by both earlier rights) are the following:

Class 3: Laundry glaze; almond oil; almond milk for cosmetic purposes; balms other than for medical purposes; petroleum jelly for cosmetic purposes; dental rinses, non-medicated; massage gels other than for medical purposes; lip gloss; skincare cosmetics; disinfectant soap; deodorant soap; detergents other than for use in manufacturing operations and for medical purposes; extracts of flowers [perfumes]; ethereal essences; essential oils; dental bleaching gels; cosmetic kits; cosmetics; cosmetic creams; cloths impregnated with a detergent for cleaning; tissues impregnated with cosmetic lotions; baby wipes; baby bath mousse; baby shampoo mousse; baby oils; babies' creams [non-medicated]; baby lotions; baby body milks; non-medicated baby care products, namely, creams and lotions, bath preparations, and shampoos and conditioners for the hair; non-medicated talcum powder for babies; baby shampoo; lavender water; lavender oil; lotions for cosmetic purposes; greases for cosmetic purposes; oils for cosmetic purposes; bath preparations, not for medical purposes; degreasers other than for use in manufacturing processes; fabric softeners for laundry use; laundry bleach; cleaning preparations; floor cleaning preparations; dishwashing preparations; washing soda, for cleaning; dentifrices; laundry soaking preparations; laundry preparations; scale removing preparations for household purposes; stain removing preparations; sun-tanning preparations [cosmetics]; aloe vera preparations for cosmetic purposes; antiperspirants [toiletries]; soaps; sun tan lotion; bath salts, not for medical purposes; talcum powder, for toilet use; non-slipping liquids for floors; Eau de cologne; toiletries; colour-brightening chemicals for household purposes [laundry]; shampoo.

The remaining contested goods, after the examination of the opposition under Article 8(5) EUTMR, are the following:

Class 3: Polishing preparations; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cologne; lavender water; toilet water; perfume water; aloe vera preparations for cosmetic purposes; amber [perfume]; aromatics; flavourings for beverages [essential oils]; cake flavorings [essential oils]; astringents for cosmetic purposes; balms, other than for medical purposes; bath foam; flower perfumes (bases for -); cotton sticks for cosmetic purposes; polishing wax; colorants for toilet purposes; cosmetics; cotton wool for cosmetic purposes; cosmetic creams; barrier creams; polishing creams; skin whitening creams; deodorants for human use (perfumery); heliotropine; badian essence; mint essence [essential oil]; bergamot oil; ethereal essences; extracts of flowers [perfumes]; massage gels, other than for medical purposes; dental bleaching gels; geraniol; greases for cosmetic purposes; incense; ionone [perfumery]; almond milk for cosmetic purposes; cleansing milk for toilet purposes; scented wood; hair care lotions; lotions for cosmetic purposes; lip gloss; shoe wax; cosmetic masks; mint for perfumery; transfers (decorative -) for cosmetic purposes; musk [perfumery]; cosmetic kits; oils for toilet purposes; message oils; essential oils; cedarwood (essential oils of -); essential oils of lemon; oils for perfumes and scents; oils for cosmetic purposes; gaultheria oil; jasmine oil; lavender oil; almond oil; rose oil; cotton wool for cosmetic purposes; smoothing stones; polishing stones; pumice stone; alum stones [astringents]; pomades for cosmetic purposes; tanning preparations; baths (cosmetic preparations for -); douching preparations for personal sanitary or deodorant purposes [toiletries]; polishing preparations; sunscreen preparations; skincare cosmetics; perfumery; antiperspirants [toiletries]; fumigation preparations [perfumes]; mouth washes, not for medical purposes; nail care preparations; toiletries; make-up removing preparations; perfume; bath salts, not for medical purposes; antiperspirant soap; deodorant soap; shampoo; dry shampoos; emery; furbishing preparations; breath freshening sprays; cloths impregnated with a detergent for cleaning; talcum powder, for toilet use; abrasive cloth; emery cloth; glass cloth [abrasive cloth]; terpenes [essential oils]; dyes (cosmetic -); beard dyes; tissues impregnated with cosmetic lotions; cotton stick for cleaning ears; body cream; non-medicated creams, in particular cream for nappy changing; sun creams (cosmetics); cleansing milk for toilet purposes; cold creams, other than for medical use.

Class 5: Pharmaceuticals; dietetic food and substances adapted for medical use; infant formula; food supplements for humans; plasters, materials for dressings; preparations for destroying vermin; acaricides; fly catching paper; sea water for medicinal bathing; Melissa water for pharmaceutical purposes; goulard water; mineral waters for medical purposes; thermal water; nutritional supplements; dietetic foods adapted for medical use; starch for dietetic or pharmaceutical purposes; amino acids for medical purposes; anaesthetics; dressings, medical; sanitary towels; menstruation bandages; post-partum pads; styptic preparations; oxygen baths; bath preparations for medical purposes; balms for medical purposes; stick liquorice for pharmaceutical purposes; sanitary wear; bandages for dressings; medicated dressings; dietetic beverages adapted for medical purposes; bicarbonate of soda for pharmaceutical purposes; medicine cases, portable, filled; medicated candy; rubber for dental purposes; quinquina for medical purposes; quinine for medical purposes; chinoline for medical purposes; belts for sanitary napkins [towels]; collyrium; compresses; cachets for pharmaceutical purposes; sterile gauze pads; breast-nursing pads; decoctions for pharmaceutical purposes; depuratives; detergents for medical purposes; digestives for pharmaceutical purposes; balsamic preparations for medical purposes; eucalyptus for pharmaceutical purposes; eucalyptol for pharmaceutical purposes; evacuants; lacteal flour for babies; flour for pharmaceutical purposes; first-aid boxes, filled; milk ferments for pharmaceutical purposes; ferments for pharmaceutical purposes; fibre (dietary -); fennel for medical purposes; gauze for dressings; glycerine for medical purposes; adhesive bands for medical purposes; insect repellent incense; medicinal infusions; insecticides; insect repellents; alginate dietary supplements; casein dietary supplements; enzyme dietary supplements; wheat germ dietary supplements; glucose dietary supplements; lecithin dietary supplements; yeast dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; protein supplements for animals; mineral food supplements; iodine for pharmaceutical purposes; almond milk for pharmaceutical purposes; malted milk beverages for medical purposes; milk sugar for pharmaceutical purposes; cedar wood for use as an insect repellent; liquorice for pharmaceutical purposes; lotions for pharmaceutical purposes; eyepatches for medical purposes; bandaging material; haemostatic pencils; medicines for human purposes; medicines for dental purposes; mint for pharmaceutical purposes; menthol; moleskin for medical purposes; fly destroying preparations; pants, absorbent, for incontinents; sanitary pants; adhesive bands for medical purposes; medicinal oils; camphor oil for medical purposes; cod liver oil; castor oil for medical purposes; flaxseed oil dietary supplements; absorbent cotton; wadding for medical purposes; babies' diaper-pants; disposable maternity underwear; incontinence diapers; babies' diapers; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; parasiticides; jujube, medicated; pomades for medical purposes; aloe vera preparations for pharmaceutical purposes; preparations for topical treatment of insect bites; preparations of trace elements for human use; teething (preparations to facilitate -); bath (therapeutic preparations for the -); sunburn ointments; biological preparations for medical purposes; chemico-pharmaceutical preparations; sunburn preparations for pharmaceutical purposes; burns (preparations for the treatment of -); pharmaceutical preparations for skin care; organotherapy preparations; fumigation preparations for medical purposes; diagnostic preparations for medical purposes; mouthwashes for medical purposes; insect repellents; propolis for pharmaceutical purposes; panty liners; chemical reagents for medical use; tonics [medicines]; constipation (medicines for alleviating -); remedies for perspiration; mineral water salts; potassium salts for medical purposes; sodium salts for medical purposes; smelling salts; salts for mineral water baths; bath salts for medical purposes; salts for medical purposes; syrups for pharmaceutical purposes; solvents for removing adhesive plasters; dietetic substances adapted for medical use; cooling sprays for medical purposes; vulnerary sponges; surgical dressings; tampons; breast-nursing pads; medicinal tea; tincture of iodine; tinctures for medical purposes; herbal teas for medicinal purposes; tissues impregnated with pharmaceutical lotions; cachou for pharmaceutical purposes; mercurial ointments; ointments for pharmaceutical purposes; medicated creams; anti-bacterial preparations; antibacterial gels; anti-inflammatory gel for the gums; cold cream for medical use; sterile solutions for medical purposes.

Some of the contested goods are identical (e.g. essential oils, toiletries, etc.) or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are partly directed at the public at large and partly at professional consumers to the extent that these are various practitioners in the beauty and health care sector, including medical persons, dental specialists and sanitary personnel. Contrary to the opponent’s allegation that the degree of attention will vary between average and low, the Opposition Division considers that the degree of attention will in fact vary between average and high - depending on the price category, nature and characteristics of the products, their exclusively and/or their impact on human/animal health, both - in positive terms as preparations for treatment of diseases or as hazardous products (e.g. preparations containing toxic substances for killing vermin).

By way of example, 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). 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 same findings would be valid in relation to the dietetic products related to effective nutrition regimes, and any other medicinal articles or preparations in Class 5.

c) The signs

Earlier trade mark

Contested sign

The relevant territories are Bulgaria, Cyprus, Greece and Romania.

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).

Given that the analysis was already made in respect of the Bulgarian public for both, the contested sign for all the goods in question and in relation to the earlier mark for some of the goods, reference is made to the findings above that will be now completed in relation to the remaining goods and territories, where applicable.

The verbal element ‘Teo’ of the earlier marks will be understood again as ‘a male given name’, most likely derivative or short form of the popular name ‘Teodor’ in Romanian or ‘Theodoros’ in Greek. Given that the name bears no relation to the goods in question, it is deemed to enjoy a normal degree of distinctiveness per se. The verbal element ‘bebe’ will be associated by the relevant public with ‘an infant, a baby’, either because it is an existing word (in Romanian) or sufficiently close to the national equivalent (‘bebis, beba’ in Greek). It is considered non-distinctive, or at most of a limited distinctiveness, in relation to any of the goods, for reasons already addressed in the previous section. The findings regarding the figurative element of the earlier mark apply equally in this case.

Likewise, the word ‘neo’ at the beginning of the contested will be understood also by the Greek-speaking part of the relevant public since the term originates from Greek, as well as by the Romanian consumers (see a reference at https://dexonline.ro/definitie/neo, available online on 06/05/2021), with the meanings outlined in the previous section (reference is also made to (08/09/2016, R 2203/2015‑1, Nyoderm / NEODERM, § 31; 03/07/2013, T-236/12, Neo, EU:T:2013:343, § 37). The same findings apply in relation to the word ‘BaBy’, as previously indicated.

Visually, the signs coincide in the string of letters ‘EO’ forming the marks’ first elements and in ‘b*b*’ of their second verbal elements. However, they differ in the first letters of these elements, ‘N/T’, respectively, as well as in the second and fourth letters of their second verbal elements, ‘*e*e’ versus ‘*a*y’. Additionally, the signs differ in the stylisation of the earlier marks and the figurative element thereof, namely the pink, heart-shaped background, and in the minor stylisation of the contested sign. Therefore, taking note of the weaker (at best) distinctiveness of the verbal elements ‘bebe’ and ‘Baby’, and given the above considerations about the distinctiveness of the remaining components, the signs are regarded as being visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sounds: of the letters ‘eo b*b*’. Consequently, the signs may have an overall similar rhythm and intonation. Nevertheless, consumers of the contested sign will follow the linguistic rules in English upon pronouncing the element ‘baby’ of the contested sign, which produces an additional sound. Moreover, the signs differ in their first sounds – ‘T’ versus ‘N’ that is a factor to be especially taken into account. As a result, the signs are aurally similar to below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the conceptual similarity resides in elements of lesser or no distinctiveness (‘bebe’ versus ‘Baby’), whereas the differing elements of the marks additionally convey different and distinctive meaning for the consumers, the signs are conceptually dissimilar or at most similar to a low degree to the extent that the coinciding concepts would be only of a weaker distinctiveness. As previously noted, the mere fact that both marks may contain personal (short) names cannot lead to any conceptual similarity on this basis only. The names are still very different or not derivative from the same name.

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 mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

In the present case, the opponent claims reputation in relation to one of its earlier rights, namely in relation to the Bulgarian trade mark. The evidence submitted by the opponent to prove the reputation and highly distinctive character of that earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to these findings. As established above, the earlier Bulgarian mark enjoys a certain degree of reputation in relation to laundry detergents and fabric softeners, and a normal degree of distinctiveness in relation to the remaining goods in Class 3, as this mark as a whole has no meaning for any of the goods in question from the perspective of the Bulgarian public, despite the presence of a weak/non-distinctive element.

As regards the international registration designating the territories of Greece, Cyprus and Romania, no enhanced distinctiveness was claimed in relation to these territories. Consequently, the assessment of the distinctiveness of this earlier right will rest on its distinctiveness per se. In the present case, this mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of this earlier mark must be seen as normal, despite the presence of some non-distinctive or weak elements in the marks, as stated above in section c) of this decision.

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 goods were assumed to be identical. They target the public at large, as well as professionals in their respective areas, as established in the previous section, who pay an average to high degree of attention upon purchase of the goods. As established above, the earlier rights enjoy a normal degree of distinctiveness as a whole, whereas the Bulgarian trade mark enjoys a reputation in relation to laundry detergents and fabric softeners, as has been established in section Reputation of this decision.

The signs coincide in a total of four letters, namely the letter strings ‘EO’, as well as the two letters ‘b’ of their ‘baby/bebe’ elements. As has been discussed above, these coincidences lead to some visual, aural and, to some extent, conceptual similarities between the signs.

As established above in section c), the signs share the common concept of the words ‘bebe’/‘Baby’ and some letters thereof. However, these commonalities are not sufficient in order for the consumers to confuse the signs or to consider that the goods stem from the same commercial origin, since they reside in a weaker or even non-distinctive element (especially as it concerns laundry detergents and fabric softeners), as already commented above. In principle, a coincidence in a weak element does not prevent by itself finding a likelihood of confusion if the remaining elements of the signs lead to a similar impression. However, this is not the case here as the signs produce convey sufficient differences also on conceptual level due to their additional elements ‘Teo’ and ‘Neo’, producing particular meanings for the consumers. In the present case, the coinciding letter strings form short verbal elements, ‘Teo’ and ‘Neo’, that will be easy to perceive as a whole, especially by regarding their different initial letters ‘T’ and ‘N’, that are present at the beginnings of these elements.

Indeed, in addition to the fact that the concept of the word ‘baby’ would not suffice to trigger a conceptual similarity of a particular significance, both signs have other verbal elements ‘Teo’ and ‘Neo’, that will convey different meanings. Consequently, the mere coincidence in a letter string (‘EO’) cannot itself serve to conclude on similarity between these elements as these strings form meaningful word that will convey different perception for the public. The opponent believes that the public may see the contested sign as a new version of the earlier mark. The Opposition Division considers that this is highly unlikely since the first element ‘Teo’ represents in fact the badge of origin of the earlier mark. Consequently, any possible omission of this element will prevent consumers from confusing the brand, including by association, with a third party that has a different element serving as badge of origin.

In addition, the goods themselves are partly fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Consequently, in addition to differentiating between their verbal elements, consumers will be able to visually consult and examine the marks upon purchase. They may be additionally guided by the impression conveyed by the figurative elements of the earlier signs, that, even though they are not the elements with more trade mark significance, will not go completely disregarded.Additionally, part of the goods are products used in relation to healthcare and consumers will be more attentive in relation to these goods, as noted in section b) of this decision.

Finally, for the reasons already explained above, the fact that the earlier Bulgarian mark has an enhanced distinctiveness in relation to some of the products (laundry detergents and fabric softeners) cannot prevail either. Following the results from the previous Reputation assessment, the Opposition Division notes that none of the remaining contested goods can be considered somewhat similar to any degree to the opponent’s reputed goods, as they were already considered sufficiently distinct.

In light of all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, insofar as it is based on Article 8(1)(b) EUTMR for the contested goods listed under section a) of this ground.

FINAL REMARK

For the sake of completeness, it is noted that since the supplementary evidence (accepted in the Reputation section) does not serve for the above conclusion of reputation of the earlier mark and the opposition was not upheld on its bases, whether or not the applicant had the chance to comment on it - pursuant Article 94 EUTMR – is irrelevant for the present proceedings. Consequently, the Opposition Division did not find it necessary to grant another round of observations for the parties.

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

Irena

LYUDMILOVA LECHEVA

Manuela RUSEVA

Meglena BENOVA

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.

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