OPPOSITION No B 3 098 172

Amaranta Securities, SL, C/ Constitució 1 PB L2 CP, San Just Desvern (Barcelona), Spain and Pere Torrents Valles, C/ Bartomeu Bermejo 3, 08950, Esplugues de Llobregat, Spain (opponents), both represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Eugene Perma France, 1-7 Rue du 19 Mars 1962, 92230 Gennevilliers, France (applicant), represented by Cabinet Beau de Lomenie, 158, Rue de L’Université, 75340 Paris Cédex 07, France (professional representative).

On 14/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 172 is rejected in its entirety.

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

REASONS

On 14/10/2019, the opponents filed an opposition against all the goods of European Union trade mark application No 18 095 720 ‘KERANOVE NATURANOVE’ (word mark). The opposition is based on international trade mark registration designating the European Union No 1 166 381 and Spanish trade mark registration No 3 049 880, both for the word mark ‘NATURALIUM’. The opponents invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponents submit proof of use of Spanish trade mark registration No 3 049 880.

However, the opposition is also based on another earlier trade mark and the Opposition Division finds it appropriate to first examine the opposition in relation to the opponents’ international trade mark registration designating the European Union No 1 166 381, which is not subject to proof of use requirement.

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 and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for dental fillings and for dental impressions; disinfectants.

Class 35: Advertising; business management; business administration; office functions.

The contested goods are the following:

Class 3: Cosmetics; hair lotion; hair creams; hair gels; hair spray; hair mousse; shampoo; shampoo-conditioners; hair glazes; hair fixers; cosmetic hair preparations; hair-colouring preparations; bleaching and lightening preparations for the hair; tints for the hair; hair dye; hair balm; hair care masks; cosmetic products for hairdressing and the modelling of hair; cosmetic preparations for maintaining and caring for the hair.

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 opponents, is the best light in which the opposition can be examined.

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 deemed to be identical are directed at the public at large.

The degree of attention for goods in Class 3 is generally average (02/02/2011, T‑437/09, Oyster cosmetics, EU:T:2011:23, § 23; 13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394, § 51; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 38). As regards, in particular, goods applied to the skin, the degree of attention is sometimes higher in view of, inter alia, possible sensitivity or allergies (18/10/2011, T‑304/10, CALDEA, EU:T:2011:602, § 58).

c) The signs

NATURALIUM	KERANOVE NATURANOVE
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).

Although the average consumer normally perceives a mark as whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30).

The common verbal component ‘NATURA*’ exists as such, or as equivalents, in many languages of the European Union and will be understood by the vast majority of the EU public as an indication of the natural origin of the goods (24/03/2011, T‑54/09, Linea Natura Natur hat immer Stil, EU:T:2011:118, § 55; 29/09/2011, T‑107/10, Naturaviva, EU:T:2011:551, § 35).

The term is, therefore, allusive and distinctive to a low degree in relation to the goods in Class 3, that is to say, it alludes to the natural composition of the goods in question. However, the term is not directly descriptive for these goods (28/06/2012, C‑306/11 P, Linea Natura Natur hat immer Stil, EU:C:2012:401, § 79).

Part of the public may perceive the verbal component ‘*LIUM’ of the earlier mark, in some languages, as a common suffix borrowed from Latin. The verbal component ‘*NOVE’ of the contested sign will be understood, for example, by Italian- and Portuguese-speaking consumers, as ‘nine’. For other parts of the public, these verbal components will not be associated with any meaning. The verbal component ‘KERA*’ of the contested will also not be associated with any meaning. These verbal components have a normal degree of distinctiveness, because even for the parts of the public that will associate the components ‘*LIUM’ and/or ‘*NOVE’ with the above meanings, they neither describe essential characteristics of the goods in question, nor allude to them.

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.

Visually and aurally, the signs coincide in the sequence and pronunciation of the letters ‘NATURA*’. However, they differ in the sequence and pronunciation of the letters ‘*LIUM’ of the earlier mark, and ‘KERANOVE ******NOVE’ of the contested sign.

The coinciding verbal component ‘NATURA*’ is weak for the reasons mentioned above, and all the other components of the signs, each of which has no counterpart in the other sign, have a normal degree of distinctiveness. In addition, the coinciding verbal component ‘NATURA*’ is depicted in the contested sign after the verbal component ‘KERANOVE’, where it attracts the consumer’s attention less. Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, neither of the signs has a clear meaning as a whole. Although the coinciding verbal component ‘NATURA*’ will evoke a concept, it is weak and has a limited capacity to indicate the commercial origin of the goods in question. The attention of the relevant public will be attracted by the additional components ‘*LIUM’, ‘KERA*’ and ‘*NOVE’, which for a part of the public will be associated with the meanings mentioned above (in the case of ‘*LIUM’ and ‘*NOVE’), and for another part of the public, they will not be associated with any meaning.

In any case, even if the differing verbal elements are not associated with any meaning, the signs are still conceptually similar to a low degree, since ‘NATURA*’ has a rather limited distinctiveness in relation to the relevant goods.

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 opponents did not explicitly claim that their 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 a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are deemed to be identical and the signs are visually, aurally and conceptually similar to a low degree. The distinctiveness of the earlier mark is normal and the degree of attention of the relevant public varies from average to high.

The signs coincide in the verbal component ‘NATURA*’, which is weak in both signs for the reasons mentioned above in part c) of this decision. All the other components of the signs, ‘*LIUM’, ‘KERA*’ and ‘*NOVE’, have a normal degree of distinctiveness. Furthermore, ‘NATURA*’ in the contested sign is depicted after the verbal component ‘KERANOVE’, where it will catch the consumer’s attention less.

The considerable length of the contested sign compared to the earlier mark, the repetition of its verbal component ‘*NOVE’, and the position of the coinciding verbal component ‘NATURA*’(placed after the distinctive verbal component ‘KERANOVE’) create a sufficiently different impression to that of the earlier mark, so as to safely exclude any chance of confusion or association between them as regards the origin of the goods bearing the signs.

In their submissions, the opponents pointed out the findings of opposition decision No B 2 984 444, which was upheld by decision of the Boards of Appeal (01/07/2019, R 2161/2018‑4, Naturanove / Naturalium et al.), in which a degree of similarity between the signs ‘NATURALIUM’ and ‘NATURANOVE’ and a likelihood of confusion were found. However, account should be taken of the fact that the latter was annulled by the General Court (05/10/2020, T‑602/19, Naturanove / Naturalium et al., EU:T:2020:470), which found that there was no likelihood of confusion between those signs. This judgment has become final. Therefore, the opponents’ references to opposition No B 2 984 444 and decision R 2161/2018‑4 cannot lead to a different outcome and should be set aside. Furthermore, the contested sign contains the additional verbal component ‘KERANOVE’, which is distinctive and placed before the verbal component ‘NATURANOVE’, which creates a greater difference between the signs in the current case than the signs in the previous proceedings demonstrated.

The opponents invoked another Court judgment (23/10/2017, T‑441/16, SeboCalm / Sebotherm, EU:T:2017:747) and decision of the Boards (04/04/2018, R 1354/2017‑4, air naturel (fig.) / Air Natur (fig.) et al.), in which a degree of similarity and a likelihood of confusion was found between the following marks:

 ‘Sebotherm’ and ‘SeboCalm’,

 and .

As a general note, the outcome of each case of comparison of signs and their global assessment on the basis of all relevant factors, depend on the circumstances specific to the particular case. The circumstances of the decision and judgment mentioned by the opponents reveal only a remote similarity, if any, with the current case. The marks in the previous proceedings have different structures and semantic content from the signs in the present case. It is also worth noting that, in the cases invoked by the opponents, the signs coincide in their beginnings, which is the place where consumers focus most. However, in the present case, the coinciding verbal component ‘NATURA*’ is preceded by the distinctive verbal component ‘KERANOVE’ in the contested sign, which has no counterpart in the earlier sign. For all these reasons, the findings and outcomes of the previous cases referred to by the opponents are not applicable to the present case.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponents have also based their opposition on earlier Spanish trade mark registration No 3 049 880, ‘NATURALIUM’ (word mark).

Since this mark is identical to the one that has been compared, and covers the same scope of goods and services, and bearing in mind that the perception of the public in Spain has already been considered in the comparison conducted above, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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 opponents are the losing party, they 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, 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

Gueorgui IVANOV

Ivo TSENKOV

Justyna GBYL

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.