OPPOSITION No B 3 090 385

Fundación Gala-Salvador Dalí, Torre Galatea, Pujada del Castell, 28, 17600, Figueres (Girona), Spain (opponent), represented by Javier Vázquez Salleras, Aribau 198, 08036, Barcelona, Spain (professional representative)

a g a i n s t

Sinopharm Zhijun (Shenzhen) Pharmaceutical Co.,Ltd, No 16 LanqingYilu, High-tech Zone, Guanlan, Longhua New District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 28/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 385 is upheld for all the contested goods.

2. European Union trade mark application No 18 055 508 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 055 508 , namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 2 606 303 , for which the opponent invoked Article 8(1)(b) EUTMR. In relation to other earlier rights, the opponent also invoked Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 606 303 for which the Opposition Division has verified its scope of protection on the basis of the evidence submitted and in the Spanish trade mark database available online, since the opponent relied on online substantiation.

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; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3: Cleansing milk for toilet purposes; bath lotion; perfumery; beauty masks; whitening the skin (cream for -); cosmetics; lotions for cosmetic purposes; massage gels other than for medical purposes; mouth washes, not for medical purposes; teeth whitening strips.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Perfumery; cosmetics are identically contained in both lists of goods.

The contested cleansing milk for toilet purposes; bath lotion; beauty masks; whitening the skin (cream for -); lotions for cosmetic purposes; massage gels other than for medical purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested mouth washes, not for medical purposes; teeth whitening strips are similar to the opponent’s dentifrices because they have the same purpose, they coincide in producer, distribution channels and end user, and they are complementary.

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 or similar are directed at the public at large.

The degree of attention is average.

3. The signs

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 figurative, comprised of the verbal element, ‘DALÍ’, followed by a figurative element portraying a stylised depiction of an eye.

The contested sign, albeit seeking protection as a figurative mark, is composed of the verbal element ‘DALI’ in standard upper-case letters.

The common verbal element, ‘DALÍ / DALI’, will be associated with the reputed Spanish artist Salvador Dalí, regardless of the fact that the contested sign does not bear the accent. Neither of the written forms has a meaning in relation to the goods and therefore, they are distinctive.

The earlier mark’s figurative element will be associated with an eye. Bearing in mind that some of the relevant goods are cosmetics, this element is weak for these goods, as it suggests their intended purpose, whilst it is fanciful and thus distinctive for the rest of the goods.

The earlier mark has no element that could be considered clearly more dominant than other elements, although 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, the signs coincide in their verbal element ‘DALÍ / DALI’, although in the earlier mark it bears an accent. This verbal element is distinctive and the sole element in the contested sign. However, the signs differ in the earlier mark’s figurative element which is weak and has less impact in relation to some of the goods.

Therefore, and depending on the degree of distinctiveness of the figurative element in the earlier mark in relation to different goods, the degree of visual similarity between the signs varies from average to high, the latter being the case where the figurative element is weak.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DALI’, present identically in both signs. Although the earlier mark bears the accent, the stress will be put on the second syllable in each sign.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the elements in the marks. As the distinctive verbal element in both signs will be perceived as referring to the reputed Spanish artist Salvador Dalí, the degree of conceptual similarity between the signs varies from average to high, the latter being the case where the figurative element of the earlier mark is weak.

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 Spanish trade mark registration No 2 606 303 is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark in relation to some of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical or similar and target the public at large. The degree of attention is average and the earlier mark has a normal degree of distinctiveness. The signs are aurally identical. Visually and conceptually, their degree of similarity varies from average to high.

Both signs contain the same single distinctive word, with a minor difference confined to the accent present in the earlier mark. For the reasons given in section c), the differences identified between the signs have a limited impact on the average consumer.

Considering all the above, 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 2 606 303. It follows that the contested trade mark must be rejected for all the contested goods.

As the Spanish earlier right No 2 606 303 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

COSTS

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

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

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

The Opposition Division

Solveiga BIEZA

Loreto URRACA LUQUE

Biruté SATAITE-GONZALEZ

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.