OPPOSITION No B 3 093 126

Dr. Or Ltd., 6 Hashiloach St., 4951439 Petach Tikva, Israel (opponent), represented by Uexküll & Stolberg Partnerschaft Von Patent- Und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

MOR S.r.l., Via Floriano Ferramola 3, 25121 Brescia, Italy (applicant), represented by Hoffmann Eitle S.R.L., Piazza Sigmund Freud 1 - Torre 2 - Piano 22°, 20154 Milan, Italy (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 126 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 039 623 namely against all the goods in Class 3. The opposition is based both on international trade mark registration No 1 405 994 designating the European Union and on international trade mark registration No 1 409 133 designating the European Union . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

At the time the opposition was filed on 28/08/2019 the applicant was My Over Rose S.r.l.s.. However, during the opposition proceedings, the contested sign was subject to a total transfer to the company MOR S.r.l. the recordal of which was requested on 23/10/2019 and such change having been recorded by the Office on that same date.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 405 994 designating the European Union .

1. The goods

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

Class 3: Soaps; perfumery, essential oils; cosmetics; hair and body lotions; bath foams; shampoos; hair conditioners; creams, gels, moisturizers; bath salts for cosmetic purposes; powders for cosmetic purposes; toiletries; aftershaves; make-up preparations; deodorants for personal use; preparations for the treatment and care of the face and the body; dentifrices.

The contested goods are the following:

Class 3: Cosmetics and toiletries, including perfumes, eau de toilette, soap, detergents, bubble baths, shampoos, balms, essential oils, oils, creams and cosmetic preparations for the skin, body, face, hands, feet and hair, cosmetic sun protection preparations, deodorants for personal care, talcum powder, salts, gels, mousses, sprays, lotions and creams for the body, skin, face, hands, feet and hair, face and body masks, moisturising preparations (cosmetics); Make-up, including pencils, concealers, lipsticks, lip gloss, lip liners, blushers, foundation, eyeliner, eye pencils, eye shadow, mascara, nail varnish and nail varnish remover; Dentifrices; Wipes for cosmetic purposes impregnated with cleaning preparations for removing make-up; Air fragrance reed diffusers; Air fragrance reed diffusers; Air fragrance reed diffusers; Room fragrancing preparations; Room scenting sprays; Air fragrancing preparations; Scented sachets.

Some of the contested goods are identical 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 mark which, for the opponent, is the best light in which the opposition can be examined.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large for which the degree of attention is average.

3. The signs

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 earlier mark consists of the stylised verbal element ‘OR’ in which the letters ‘O’ and ‘R’ are joined, while remaining clearly legible. The verbal element ‘OR’ is meaningful for part of the relevant public in the European Union: for example, ‘OR’ is a conjunction in English used to join alternatives. For the rest of the relevant public, this verbal element is meaningless. In any event, as it bears no reference to the goods in question, it is distinctive of them.

The contested figurative sign comprises an abstract highly stylised circular shape of a decorative nature, inside of which appears a smaller circular shape in black, the sides of which are thicker than the upper and lower ends. Inside the said circular shapes, is depicted, in the upper part, the verbal element MY’ in black upper case letters, while in its centre appears a figurative element in black. At least part of the relevant public may perceive this shape as being a highly stylised upper case letter ‘R’ in which, however, the vertical line of that upper case letter is missing. For the remaining part of the public, this shape will be perceived as merely abstract, without having any meaning.

The Opposition Division shall focus on the part of the public that perceives the highly stylised letter ‘R’ as such (i.e. the letter ‘R’) as this is the scenario that is more favourable to the opponent.

In its submissions, the opponent argues that the contested sign features the verbal elements ‘MY’ and ‘OR’. The Opposition Division does not agree, however, with this submission. Although the elements of the contested sign can be perceived in more than one way, in light of the high degree of stylisation and positioning of such elements the Office considers it implausible to say that a substantial part of the relevant public would proceed through the mental steps required to perceive the said circular shape in black as being a letter ‘O’ and that, together with the highly stylised letter ‘R’, they will somehow be perceived as combining to form the verbal element ‘OR’.

The Office considers that the relevant consumer will not perceive the contested sign as comprising the verbal elements ‘MY OR’ but, instead, as comprising the verbal element ‘MY’ and the highly stylised letter ‘R’. In that regard, the fact that the applicant has described the verbal elements of its contested sign in the EUTM application form dated 22/03/2019 as ‘MY OR’ is irrelevant because the Opposition Division must consider and decide on the way in which a contested sign is perceived by the relevant public regardless of the views of, or the verbal description given by, the applicant.

The verbal element ‘MY’ is meaningful for part of the European Union: for example, it is a possessive pronoun in the English language, while it means ‘WE’ in Polish, Czech, and Slovak. For the rest of the public, it is meaningless. In any event, as this words bears no direct reference to the relevant goods, it is distinctive of them, contrary to the argument of the opponent, submitting that the verbal element ‘MY’ is non distinctive or weak.

In particular, for the English-speaking part of the public, the verbal element ‘MY’ does not refer to any subject in the contested sign such as might operate to impair its distinctive character. On this basis the Office distinguishes the decision of 25/10/2012 of the Second Board of Appeal in Case R 2210/2011-2 (set/myset) cited by the opponent in support of its opposition.

The General Court has stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).

In its judgment of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the argument that single letters are generally per se devoid of distinctive character and that, therefore, only their graphic representation would be protected (paras 38-49).

The above considerations apply both to single-letter/numeral trade marks depicted in

standard characters (i.e. word marks) and to stylised single-letter/numeral trade marks. Furthermore, in accordance with the α judgment, as regards these components, unless the letter combination itself is descriptive or otherwise related to the goods and services (e.g. ‘S’, ‘M’, ‘XL’ for goods in Class 25), these components are not necessarily limited in their distinctiveness.

As a consequence of the foregoing, the Opposition Division considers that the highly stylised letter ‘R’ of the contested sign enjoys normal distinctive character in relation to the relevant goods given that it bears no reference to such goods.

None of the elements of either mark is dominant (i.e. visually eye-catching).

Visually, there are significant differences between the signs at issue. The earlier mark is defined visually by the conjoined letters ‘OR’ in which, as stated above, the letters ‘O’ and ‘R’ nevertheless remain clearly legible. In contrast, the contested sign is a complex mark comprising a number of distinct figurative and verbal elements, as described above.

In particular, it must be noted here that whereas the letters ‘O’ and ‘R’ are conjoined in the earlier mark, the stylisation of the letter ‘R’ in the contested sign creates a significantly different visual impression.

In that regard, the Opposition Division does not agree with the opponent’s argument that the letter ‘R’ is represented in a similar manner in both signs, namely without its vertical line. The vertical line of the letter ‘R’ in the earlier sign is present and visible even if it is perceived as being shared with the letter ‘O’ thereof. In contrast, the highly stylised letter ‘R’ in the contested sign has no such vertical counterpart, which makes an immediate and striking visual impression on the relevant consumer. Accordingly, this submission of the opponent must be rejected.

On the basis of the above, the Office considers that for the public under analysis, the signs at issue are visually similar only to a very low degree.

Aurally, for the public under analysis, the earlier mark will be pronounced ‘OR’ whereas the contested sign will be pronounced ‘MY-R’.

The coincidence in the sound of the letter ‘R’ is counteracted by the fact that the ‘R’ sound comes at the end of the contested sign, separated from the sound of its first syllable by the sound of the letters ‘MY’, having no counterpart in the earlier mark. On this basis, the Office considers that the signs are aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the English speaking part of the relevant public, for which the verbal elements ‘OR’ and ‘MY’ of the earlier mark and contested sign respectively are meaningful, the signs are conceptually dissimilar taking into account that the letter ‘R’ of the contested sign does not convey any coinciding meaning.

For another part of the public (such as the Czech, Polish and Slovak parts thereof), for which the word ‘MY’ is meaningful, as has been explained above, the signs at issue are not conceptually similar given that the earlier mark has no meaning, the letter ‘R’ of the contested sign do not convey any meaning other than that of being a letter, such that there is no coinciding meaning with the verbal element ‘OR’ of the earlier mark.

Finally, for the rest of the public under analysis, for which neither the verbal element ‘OR’ of the earlier mark nor ‘MY’ of the contested sign has any meaning, to the extent that the contested sign has the meaning conveyed by the highly stylised letter ‘R 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.

4. 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.

5. Global assessment, other arguments and conclusion

For the public under analysis, the signs at issue are both visually similar to a very low degree, aurally similar to a low degree, and either conceptually dissimilar or not conceptually similar. The goods have been deemed at section a) above to be identical, being the best case scenario for the opponent, the earlier mark enjoys normal distinctive character, and the degree of attention is average.

It must be noted that the earlier mark comprises just two letters while the contested sign will be perceived by the public under analysis as comprising three letters; both are, consequently, short and fairly short marks respectively and it is considered that the fact that they differ in two letters - ‘MY’ - is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs:

The goods themselves are 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). In this case, the fact that the signs are visually similar to a very low degree is another relevant factor.

Although the opponent argues in its submissions that the signs coincide in the verbal element ‘OR’ this is not correct for the reasons explained at section c) of this decision.

Taking all the relevant factors into consideration, the Opposition Division considers that the differences between the signs clearly outweigh the similarities, which are only to a very low degree at a visual level and low degree at the aural level respectively. It follows, therefore, that the similarities are not sufficient to lead to a likelihood of confusion on the part of the public, even in relation to identical goods. This conclusion also applies with respect to the part of the public that does not perceive the highly stylised letter ‘R’ as such within the contested sign, as the signs would be even less similar aurally and visually given the absence of the coinciding letter ‘R’ or even dissimilar. This part of the public would, therefore, neither be likely to confuse the signs nor believe that the goods originated from the same or economically linked undertakings.

Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark: international trade mark registration No 1 409 133 designating the European Union . This earlier right invoked by the opponent is less similar to the contested mark as it contains the additional word 'DOCTOR’. Therefore, the outcome cannot be different with respect to this earlier right which is even less similar than the earlier right considered above for which the opposition has already been rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Angela DI BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.