OPPOSITION Nо B 3 091 405

La Superquímica, S.A., Avenida del Carrilet, 293, 08907 L’Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

Ma Huanhuan, No. 808, Building A, The Pacific Mansion No. 176, Heishui Road, Kuancheng District, Changchun, People’s Republic of China (applicant), represented by Paula Adriana Acsinte, 17, Decebal, BL S16 Entrance 2 Floor AP 30 Sector 3, 030964 Bucharest, Romania (professional representative).

On 12/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 405 is upheld for all the contested goods, namely:

Class 3: Household cleansers; air fragrance preparations; potpourris [fragrances]; shoe polish.

2. European Union trade mark application No 18 055 021 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 055 021 (figurative mark), namely against some of the goods in Class 3. The opposition is based on Spanish trade mark registration No 3 594 632 ‘NORIT DIARIO Y EL EFECTO WOW’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery products; essential oils; cosmetics; hair lotions; dentifrices; detergents for clothing; products for the laundry.

The contested goods are the following:

Class 3: Household cleansers; air fragrance preparations; potpourris [fragrances]; shoe polish.

The contested household cleansers are included in the broad category of the opponent’s cleaning preparations, which are substances used for household washing and cleaning (e.g. for cleaning floors, bathrooms, domestic items and laundry). Therefore, they are identical.

The contested air fragrance preparations; potpourris [fragrances] are included in the broad category of the opponent’s perfumery products. Room fragrances are pleasant-smelling liquids used to make homes and indoor spaces smell nice by providing fragrant, pleasant odours, and potpourris are perfumed pleasant-smelling mixture of dried petals and leaves used to make homes and indoor spaces smell nice by providing fragrant, pleasant odours, while perfumery covers all perfumes collectively, which are fragrances used for enhancing the odour or aroma of the body or of other items by giving them a pleasant smell. Therefore, they are identical.

The contested shoe polish is included in the broad category of the opponent’s polishing preparations. Therefore, they are identical.

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.

The degree of attention is considered average.

3. The signs

NORIT DIARIO Y EL EFECTO WOW
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 is a six-word mark. There are two parts connected by the conjunction ‘y’ meaning ‘and’. Therefore, the first part, ‘NORIT DIARIO’, and the second part, ‘EL EFECTO WOW’, should be considered as independent phrases of equal gravity, contrary to the applicant’s argument that the first part of the sign (i.e. ‘NORIT DIARIO’) is the distinctive part and that the second part (i.e. ‘Y EL EFECTO WOW’) is weak. The applicant’s argument is unfounded.

The verbal element ‘NORIT’ of the earlier mark is meaningless and, therefore, distinctive.

The verbal element ‘DIARIO’ of the earlier sign means ‘daily’. Bearing in mind that the relevant goods are cleaning and polishing preparations, and perfumery products, this element will be associated with a quality of the products, namely that they are for daily use. Therefore, this element is weak for the goods in question.

The conjunction ‘y’ (meaning ‘and’) is used to link two or more words, phrases, or clauses. Since it only has a grammatical function within the earlier mark, it has a very limited distinctive character.

The verbal elements ‘EL EFECTO’ in the second part of the sign mean ‘the effect’ for the relevant public and the verbal element ‘WOW’ is not a Spanish word. However, the English exclamation ‘WOW, due to its similar pronunciation, is likely to be associated with its equivalent Spanish word ‘guau’, used to express admiration or enthusiasm. Accordingly, the phrase ‘EL EFECTO WOW’ will be perceived by the relevant public as the surprising or amazing effect resulting from the use of the goods in question. However, since this phrase does not describe in a clear manner any of the characteristics of the goods in question, it is distinctive.

From all the foregoing, the verbal elements ‘NORIT’ and ‘EL EFECTO WOW’ are the elements that will attract more the attention of the consumers within the earlier mark. Indeed, consumers will pay attention to the last element ‘EL EFECTO WOW’ in order to get which type of effect the sign refers to. Therefore, this element has only a limited impact because this element is placed at the end of the sign and consumers will perceive the sign as a whole.

The contested sign is a figurative sign consisting of two verbal elements, placed one under the other in a circle. The first element ‘OH’ is used to manifest many and very diverse movements of the mind, and more ordinarily amazement, sorrow or joy (information extracted from Diccionario de la lengua española on 17/12/2020 at https://dle.rae.es/oh?m=form), and the second element ‘WoW’ will be associated with its equivalent Spanish word ‘guau’ with the meaning outlined above. Therefore, the expression ‘OH WoW’ all together conveys a meaning of joy and enthusiasm. Since this expression does not describe, in a clear manner, any of the characteristics of the goods in question, it is distinctive.

The circle of the contested sign is just a background, which is a banal, commonplace element that renders it non-distinctive. Indeed, it is commonplace in trade and merely serves to highlight the information contained therein. The stylisation of the letters in the contested sign is fairly standard and non-distinctive. Furthermore, 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).

Visually and aurally, the signs coincide in the element/sound of the letters ‘WOW’, placed at the end of both signs. They differ in their first elements, ‘NORIT DIARIO Y EL EFECTO’ of the earlier mark and ‘OH’ of the contested sign, and their pronunciation. Furthermore, from a visual perspective, the signs also differ in the figurative elements of the contested sign, which are, however, non-distinctive.

Therefore, the signs are visually and aurally similar to a below-average degree.

The applicant refers to the reasoning of the Court (23/01/2008, T‑106/06, Bau How, EU:T:2008:14) in the conflict between the figurative signs and to argue that the signs are dissimilar. However, the case referred to by the applicant is not relevant to the present proceedings, as it concerns other word and figurative components, and, therefore, the circumstances therein cannot be extrapolated to the present case.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the coinciding element ‘WOW, the signs are conceptually similar to an average degree.

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 clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. 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).

In the present case, the goods were found to be identical. They target the public at large with an average degree of attention.

The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a below-average degree, as the coinciding element ‘WOW’ is distinctive and identically placed at the end of both signs, whereas the differing verbal elements are placed at the beginning of the signs. Although the earlier mark is a long sign formed by two phrases, the verbal elements ‘NORIT’ and ‘EL EFECTO WOW’ will attract more of the attention of the consumers, for the reasons already outlined in section c) of the present decision. The signs are conceptually similar to an average degree.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant points out, in general terms, two marks are similar when, from the relevant public’s point of view, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30; 12/07/2006, T‑97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T‑34/04, Turkish Power, EU:T:2005:248, § 43). As stated above, the signs coincide in the verbal element ‘WOW’, present identically in both signs with an independent and distinctive character.

Considering all the above, as well as the interdependence principle already mentioned, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 594 632. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Claudia SCHLIE

Alicia BLAYA ALGARRA

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.