OPPOSITION Nо B 3 102 189

 

Franprix Leader Price Holding, 123 Quai Jules Guesde, 94400 Vitry Sur Seine, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative) 

 

a g a i n s t

 

John Lee, (gwanghui Bldg., Gwanghui-dong 1-ga) 8th Floor, 307, Toegye-ro, Jung-gu, 04560 Seoul, Republic of Korea (applicant), represented by Mayr Kotsch Patentanwalt Rechtsanwältin Partnerschaftsgesellschaft mbB, Design Offices Luise-ullrich Strasse 14, 80636 München, Germany (professional representative).

On 11/05/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 102 189 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 059 822 is rejected in its entirety.

 

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

 

REASONS

 

On 04/11/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 059 822 (figurative mark). The opposition is based on, inter alia, EUTM trade mark registration No 17 765 074 ‘SOOA’ (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.

 

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 EUTM registration  No 17 765 074.

 

a) The goods

 

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

 

Class 3: Toiletries; Cosmetics; Essential oils; Dentifrices; Cleaning solutions for dental apparatus; Oral hygiene preparations; Oral and dental care cosmetics; Personal deodorants; Toilet water; Perfumery; depilatory creams and lotions; Bath and shower gels and creams; Shower and bath foam; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Soaps; Shampoo; Shampoo-conditioners; Hair lotion; Hair-colouring preparations; Hair dye; Creams or gels for setting hair; Hair spray; Brilliantine; False nails; Eyelashes (False -); Adhesives and decorative transfers for cosmetic purposes, Xcv make-up; Make-up removing preparations; Shaving preparations; After-shave preparations; Tissues impregnated with cosmetic lotions; Wipes impregnated with make-up removing lotions; Baby wipes; Lip balms [non-medicated]; Cleaning solutions for dental apparatus; Oral and dental care cosmetics; depilatory creams and lotions; Bath and shower gels and creams; Shower and bath foam; Shampoo-conditioners; Hair-colouring preparations; Creams or gels for setting hair; Adhesives and decorative transfers for cosmetic purposes (make-up); Wipes impregnated with make-up removing lotions.

Class 5: Disinfectants.

The contested goods are the following:

 

Class 3: Cosmetics; Cleaning preparations; Perfumes; Aromatics for household purposes; False nails; False eyelashes; Soap; Shampoos; Hair rinses; Dentifrices; Toiletry preparations; Laundry preparations; Facial lotions; Eye cream; Cosmetics for use on the skin; Skin conditioners; Bath powder [cosmetics]; Body masks; Facial packs.

Contested goods in Class 3

 

Cosmetics; False nails; False eyelashes; Soap; Shampoos; Dentifrices; Toiletry preparations are identically contained in both lists of goods (including synonyms).

The contested Perfumes are included in the broad category of the opponent’s Perfumery. Therefore, they are identical.

The contested Hair rinses; Facial lotions; Eye cream; Cosmetics for use on the skin; Skin conditioners; Bath powder [cosmetics]; Body masks; Facial packs are included in the broad category of, or overlap with, the opponent’s Cosmetics. Therefore, they are identical.

The contested Cleaning preparations; Laundry preparations include, as broader categories, or at least overlap with, the opponent’s Soaps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods. Contrary to the applicant’s allegation, soaps are not limited to goods for personal use only, but also include soaps that are used in the household, including for washing and cleaning surfaces and clothes. Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Therefore, as soap is used for cleaning purposes, it is considered identical to the mentioned contested cleaning and laundry substances.

The contested Aromatics for household purposes include goods such as household fragrances. Contrary to the applicant’s assertion, the opponent’s broad category Perfumery includes not only perfumes for personal use, but also perfumes and fragrances for rooms and other air fragrancing preparations. Therefore, the mentioned contested goods are included in, or at least overlap with, the broad category of the opponent’s Perfumery. Therefore, they are identical.

 

b) Relevant public — degree of attention

 

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

 

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

According to the applicant, the degree of attention is higher than average since consumers tend to be attentive in the acquisition of body and face care products in view of aesthetic considerations or personal preferences, sensitivity, allergies, type of skin and hair, etc. The Opposition Division, however, does not consider that the degree of attention is more than average. All the goods involved are ordinary consumption goods, subject to frequent purchasing and are not highly specialized or sophisticated goods. The fact that there might be sensitivity or other similar considerations or personal preferences when selecting and purchasing the goods does not imply that the degree of attention is more than average. As confirmed by case-law, even if some of the goods in Class 3 are intended to be applied to the human body, these goods are not used for the treatment of diseases and thus constitute everyday products addressed to the average consumer, who is reasonably well informed and reasonably observant and circumspect (13/05/2016, T-62/15, MITOCHRON / mito (fig.) et al., EU:T:2016:304, § 22).

 

c) The signs

 

SOOA
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 is a word mark consisting of the four-letter verbal element ‘SOOA’. This word has no meaning for the relevant public and goods and is inherently distinctive. Therefore, the inherent degree of distinctiveness of the earlier mark is normal.

The contested sign is figurative and consists of the five-letter single word ‘SOOAE’. The word is represented in a fairly standard uppercase font (like ‘Arial’ or ‘Times New Roman’), which does not have any particularly fanciful or striking features. Therefore, the font does not attribute any added distinctiveness. The word ‘SOOAE’ contained in the contested sign is fanciful for the relevant public and has no meaning in relation to the relevant goods. Therefore, its distinctiveness is normal.

The marks have no element(s) that could be considered clearly more dominant than other elements.

According to the applicant the letters ‘SOA’ present identically in the marks are often found as an abbreviation (e.g. in English language, for terms such as ‘State of the Art’, ‘Service Order Administration’, ‘State of Affair’ or ‘Secondary Organic Aerosol’) and the applicant is of the opinion that such short words like ‘SOOA’ and ‘SOOAE’ should be considered to represent at least parts of an abbreviation and that the signs will be pronounced letter by letter. The Opposition Division notes that these assertions are entirely unfounded. The applicant has dissected the marks artificially, rearranged their letters and claimed they correspond to parts of abbreviations. However, words should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements. Furthermore, none of the marks contains the exact sequence ‘SOA’ of the possible existing abbreviations quoted by the applicant. The applicant did not provide any proof either that these abbreviations are commonly used/known by the relevant public to such an extent that they will immediately recognize the meanings cited by the applicant, especially in the context of the relevant goods. Finally, as to the length of the marks, it should be noted that although the Courts have not defined exactly what a short sign is, the Office practice is to consider, as short signs, signs with three or less than three letters/numbers, which is not the case here.

Visually, the signs coincide in the sequence of letters ‘SOOA-’, which is the only and inherently distinctive element of the earlier mark. It is totally reproduced in the contested sign, albeit with a small difference in the last additional letter, ‘SOOAE’. As mentioned above, the font of the letters used in the representation of the verbal element of the contested sign will not be attributed any distinctiveness. Therefore, taking into account the aforementioned, it is considered that the signs are visually similar to a higher than average degree.

Aurally, according to the opponent the final letter ‘E’ of the contested sign is silent in many languages and will not be pronounced, whereas the applicant does not agree and argues that it will be pronounced. The Opposition Division hereby notes that even if the last letter ‘E’ of the contested sign is pronounced in at least some of the relevant territories, the pronunciation of the signs coincides in at least the sound of the letters ‘SOO’, positioned identically in the beginning of the signs. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In addition, in many of the relevant territories the signs also coincide in the sound of the further coinciding letter ‘A’ and differs only in the sound of the last letter ‘E’. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

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

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

According to the opponent, since the earlier mark has no meaning in relation to the goods, its distinctiveness should be seen as normal to relatively high. In this regard it is specified here that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive or weak), to consider it as having no more than a normal degree of inherent distinctiveness. A mark or, by analogy, its components will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Therefore, in the present case, and as mentioned above, since 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, its distinctiveness must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

The contested goods are identical to the opponent’s goods and they are directed at the public at large with an average degree of attention. The earlier mark has a normal degree of inherent distinctiveness.

The earlier trade mark and the contested sign are visually similar to a higher than average degree, aurally similar to at least an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

Although the signs differ in the last letter of the contested sign, this difference appears in the end of the sign where consumers normally do not pay that much attention as compared to the beginning of the signs. In relation to the font of the letters of the contested sign, as mentioned above, it is rather commonplace and will not be attributed any distinctiveness. Furthermore, none of the sings conveys a meaning that would assist the consumers in distinguishing between the marks.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence and the imperfect recollection principles, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical goods.

 

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 EUTM registration No 17 765 074. It follows that the contested trade mark must be rejected for all the contested goods.

  

As the earlier EUTM No 17 765 074 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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

 

 

Justyna GBYL

Liliya YORDANOVA

Anna PĘKAŁA

 

 

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.