OPPOSITION Nо B 3 093 030

Sylphar, Naamloze Vennootschap, Xavier De Cocklaan 24, 9831 Deurle, Belgium (opponent), represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830 Sint-Martens-Latem, Belgium (professional representative)

a g a i n s t

Montecristo International Investments, S.A.R.L., 11a, Boulevard Joseph II, 1840 Luxembourg, Luxembourg (applicant), represented by Fernando Antas Da Cunha, Av. Fontes Pereira De Melo, nº 6, 2º andar, 1050-121 Lisboa, Portugal (professional representative).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 030 is upheld for all the contested goods, namely

Class 3: Oral hygiene preparations.

Class 5: Dental preparations and articles, and medicated dentifrices.

2. European Union trade mark application No 18 082 501 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 18 082 501 (figurative mark), namely against all the goods in Classes 3 and 5. The opposition is based on EUTM registration No 4 381 091 for the word mark ‘iwhite’. 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.

a) The goods

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

Class 3: Toothpastes; products for cleaning teeth, for tooth braces and for dentures comprised in this class; products for bleaching teeth comprised in this class; non-medicinal products for mouth hygienic use.

Class 5: Disinfectants; sterilising products; medicinal products for mouth hygienic use; tooth cement; casting material for teeth; lacquer and filler material for teeth; medicinal and dental products for cleaning and bleaching of teeth, tooth braces and dentures.

Class 10: Dental apparatus and instruments; electrical dental apparatus; manual or electrical apparatus for cleaning and bleaching of teeth and tongues; tongue scrapers.

The contested goods are the following:

Class 3: Oral hygiene preparations.

Class 5: Dental preparations and articles, and medicated dentifrices.

Contested goods in Class 3

The contested oral hygiene preparations are included in the broad category of, or overlap with, the opponent’s non-medicinal products for mouth hygienic use. Therefore, they are identical.

Contested goods in Class 5

The contested dental preparations and articles include, as a broader category, or overlap with, the opponent’s tooth cement; casting material for teeth; lacquer and filler material for teeth. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested medicated dentifrices are included in the broad category of, or overlap with, the opponent’s medicinal and dental products for cleaning and bleaching of teeth. 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 and business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

iwhite
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as consumers in Ireland and Malta, for the reasons set out below.

The verbal element ‘iwhite’ of the earlier mark does not exist as such in the language of the relevant territory. However, the relevant consumers, when perceiving a sign, will break it down into elements that suggest a concrete meaning, or that resemble words that are already known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the public will break down the earlier mark into the letter ‘i’ and the word ‘white’.

The contested trade mark is a figurative mark composed of the verbal element ‘White’, depicted in a slightly stylised font, where the letter ‘i’ is integrated into the letter ‘h’. However, the relevant public will easily recognise the word ‘white’.

The common word ‘white’ indicates a colour: ‘of snow or milk’ (information extracted from Collins English Dictionary on 13/10/2020 at https://www.collinsdictionary.com/dictionary/english/white). Therefore, it provides information about the purpose of the relevant goods: oral hygiene and dental preparations, which can make the teeth white. The General Court has already confirmed that ‘white’ is descriptive for certain goods concerning personal hygiene. According to the Court, it is ‘generally acknowledged that consumers seek to have a smile with teeth which are white, or as close as possible to white. Not only toothpaste but also mouthwash, especially when it contains whiteners, may serve to whiten teeth, when used in oral hygiene’ (09/12/2008, T‑136/07, Visible white, EU:T:2008:553, § 42). In addition, the word ‘white’ may also denote other characteristics of the relevant goods, such as their colour, or may be perceived as a reference to cleanliness. However, the element ‘WHITE’ is on an equal footing in both signs regarding its distinctiveness.

The letter ‘i’ of the earlier mark will be associated with the universal word ‘internet’. Bearing in mind that the relevant goods can be sold on the internet, the letter ‘i’ is weak in relation to them.

The contested sign contains a black rectangle, which is a basic geometrical shape and is, therefore, non-distinctive.

Furthermore, at the top right-hand side of the verbal element ‘White’ of the contested sign, there is a verbal element ‘TM’, depicted in green and red and written in very small, almost illegible letters. This element is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the element ‘white’, which is the sole verbal element in the contested sign and the second and longest component of the earlier mark. However, the signs differ in the weak letter ‘i’, positioned at the beginning of the earlier mark. While, generally, the beginning of a sign has a greater impact on the consumer, this does not make the signs as a whole dissimilar and does not counteract the clearly perceivable similarities. Despite the difference in their initial parts (consisting only of the weak letter ‘i’), the signs coincide completely in their endings (consisting of five letters).

Furthermore, the signs differ visually in the contested sign’s slightly stylised font and non-distinctive figurative element. 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).

Therefore, contrary to the applicant’s arguments, the signs are visually and aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the concept of their common element, ‘white’, and their additional verbal and figurative elements are weak or non-distinctive, the signs are conceptually similar at least 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

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).

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.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods found to be identical target the general and professional public, whose degree of attention varies from average to high.

The Opposition Division recalls that the Office and a number of trade mark offices of the European Union have agreed on a Common Practice under the European Trade Mark and Designs Network with regard to the impact on likelihood of confusion of components that are non-distinctive or distinctive only to a low degree. According to the Common Practice, when marks share an element with no or a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks.

In the present case, the signs are visually, aurally and conceptually similar at least to an average degree as they share the verbal element ‘White’, which has the strongest impact in the overall impression created by the signs. The differences, resulting from the non-distinctive or weak elements of the signs are not sufficient to outweigh the abovementioned similarity.

Therefore, it is highly conceivable that the relevant public, who, even if paying a high degree of attention, will have to rely on their imperfect recollection of the signs, could confuse the signs or believe that the identical goods originate from the same or economically linked undertakings.

This finding is not called into question by the weak distinctive character of the earlier trade mark. Indeed, according to established case-law, a finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in this case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only, one of the factors involved in that assessment. In the present case, despite the weak distinctive character of the earlier mark, there is a likelihood of confusion on account, in particular, of the similarity between the signs, as well as the identity of the goods.

The applicant argues that the contested sign has been registered since 2008 but expired as it had not been renewed due to a ‘human error’. Therefore, the applicant considers that the contested sign is ‘a brand with notoriety and known to its target audience, not being an imitation or subject to confusion with the brand ‘iwhite’ [sic]. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM application has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM application are irrelevant because the opponent’s rights, insofar as they predate the EUTM application, are earlier than that application. Consequently, this argument of the applicant must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 4 381 091. 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, 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

Beatrix STELTER

Lidiya NIKOLOVA

Karin KLÜPFEL

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.