OPPOSITION Nо B 3 100 060

 

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative) 

 

a g a i n s t

 

Ana Rute Gonçalves Pereira Novo, Navarra Street 24, 2c, 07800 Ibiza, Spain (applicant), represented by José Luis Requero Fernández, Camino de los Vinateros 169, 6b, 28030 Madrid, Spain (professional representative).

On 26/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 100 060 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 105 021, ‘MORNA IBIZA’ (word mark). The opposition is based on European Union trade mark registration No 13 534 854, ‘NORMA’ (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.

 

a) The goods

 

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

 

Class 3: Bleaching preparations and other substances for laundry use, rinsing and soaking preparations, brightening preparations and dye additives for laundry, washing starch, laundry starch, stain removing preparations, stain removal salt, fabric conditioners for laundry, scented laundry preparations, hygiene rinses for laundry; cleaning, polishing, scouring and abrasive preparations, including rinsing and cleaning preparations for household purposes, cleaning preparations for wood, metals, glass, wall hangings, plastic, porcelain, earthenware, enamel, textiles, windows, floor care and cleaning preparations, cleaning pastes for carpets and textiles; soaps, skin soaps, bath gels, bath oils, salts for bath use, not for medical purposes, bath pearls and cosmetic bath preparations; perfumery, essential oils, cosmetics; sun screen preparations (cosmetic preparations for tanning); hair care and hair styling preparations, including shampoos, conditioner, hair lotions, hair sprays and hair gels; shaving preparations; dentifrices, tooth care preparations, oral hygiene preparations, not for medical purposes; deodorants for humans or animals; products of paper and/or cellulose, included in class 3, namely cosmetic tissues, powdered cosmetic tissues, tissues impregnated with lotions, cottonwool, cotton-sticks, cotton wool pads; incense sticks, potpourri (fragrances) and scented sachets (fragrances); kits and gift sets consisting of cosmetics, skin and/or hair care preparations; room sprays as fragrance sprays, scented room fragrances; none of the aforesaid goods being syndet soaps.

The contested goods are the following:

 

Class 3: Non-medicated cosmetics and toiletry preparations; essential oils and aromatic extracts; cleaning and fragrancing preparations.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Taking into account that cosmetics in Class 3 are in any event non-medicated goods, the contested non-medicated cosmetics include, as a broader category, the opponent’s cosmetics; none of the aforesaid goods being syndet soaps. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested toiletry preparations include, as a broader category, the opponent’s bath gels; none of the aforesaid goods being syndet soaps. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

Essential oils do not, per definition, include syndet soaps. Therefore, the limitation at the end of the list of the opponent’s goods which reads: none of the aforesaid goods being syndet soaps, bears no influence on the comparison between these earlier goods and the contested essential oils. The goods at hand are thus identically contained in both lists of goods.

The contested cleaning preparations include, as a broader category, the opponent’s cleaning preparations; none of the aforesaid goods being syndet soaps. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

Incense sticks, potpourri (fragrances) and scented sachets (fragrances) do not, per definition, include syndet soaps. Therefore, the limitation at the end of the list of the opponent’s goods which reads: none of the aforesaid goods being syndet soaps, bears no influence on the comparison between these earlier goods and the contested fragrancing preparations which actually include, as a broader category, the aforementioned earlier goods. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

As already indicated above, essential oils do not, per definition, include syndet soaps. Therefore, the limitation at the end of the list of the opponent’s goods which reads: none of the aforesaid goods being syndet soaps bears no influence on the comparison between these earlier goods and the contested aromatic extracts. The goods at hand are highly similar given that they have the same purpose and method of use, and they can have the same producers, distribution channels and end users. Moreover, they are in competition.

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 or highly similar are directed at the public at large (e.g. non-medicated cosmetics) and/or business customers (e.g. cleaning preparations and aromatic extracts).

The degree of attention is average.

c) The signs

 

NORMA	MORNA IBIZA
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The earlier mark, ‘NORMA’, has a meaning in some of the languages spoken in the relevant territory and can be understood for example as a required standard, a level to be complied with or reached (e.g. in Spanish, Portuguese, Italian or Polish) or as a female first name (e.g. in English and Italian). For another part of the relevant public, this word has no meaning whatsoever. In any case, this verbal element is distinctive to a normal degree for the relevant public, as the possible meanings do not relate to the relevant goods.

 

The contested sign is composed of the elements ‘MORNA’ and ‘IBIZA’. The verbal element ‘MORNA’ has a meaning in some of the languages spoken in the relevant territory and can be understood for example as warmish, lukewarm in Portuguese, tired in Bulgarian, or as to change location, to move in Maltese or to get oneself awaken in Swedish. For other parts of the relevant public, it may also be understood as describing a music or a dance genre originating from Cape Verde. Yet, for another part of the relevant public, this word has no meaning at all. In any case, the element ‘MORNA’ is distinctive to a normal degree, as the possible meanings do not relate to the relevant goods. The Spanish verbal element ‘IBIZA’ in the contested sign will be associated by the relevant public with one of the Balearic Islands either because the name of the island is identical in some of the languages of the relevant territory (e.g. in French, Dutch or English), or because it is very close to the equivalent word in other languages spoken in the relevant territory. This element will be perceived as an indication of the geographical origin of the relevant goods and hence it is non-distinctive.

Being word marks, the signs have no elements that can be considered dominant, i.e. visually more eye-catching than other elements.

 

Visually and aurally, the opponent considers that the same number of letters in the distinctive elements of the signs, as well as the fact that the coinciding elements are anagrams and that the element ‘IBIZA’ is less distinctive, shall result in finding the signs to be highly similar. Yet, in this respect, it should be noted, that the General Court has held that the since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121). In view of the foregoing, and while it is true that the earlier mark and the initial element of the contested sign coincide in the (sound of the) letters *OR*A, located in their middles and ends, the fact that they also have the letters ‘N’ and ‘M’ in common, is hardly relevant taking further into account that these letters occupy a different position within the signs.

It should further be noted that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In contrast, the public is less aware of differences between long signs. In the present case, the contested sign contains two elements whereas the earlier mark consists of a single word only, and while neither ‘NORMA’ and ‘MORNA’ can be considered to be short words since they both contain five letters, they are certainly not long either and the fact that these words differ in their respective first and penultimate letters carries weight in the overall assessment. Contrary to the opponent’s views, although non-distinctive, the additional component ‘IBIZA’ of the contested sign also carries weight in the overall assessment of the signs at issue. Indeed, it is established case-law that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details and consequently, it is wrong to discard comparing elements of signs just because they are non-distinctive (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41-42; 13/12/2011, T-61/09, Schinken King, EU:T:2011:733, § 46). This additional element with an independent role in the contested sign clearly has an impact on the visual and aural perception of the contested sign.

In view of all the foregoing, the signs are visually and aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the meaning of the signs and their elements. Whereas the relevant public will in any event understand the verbal element ‘IBIZA’ of the contested sign, the remaining words may or may not be associated with a meaning. Consequently, part of the public will only attribute a meaning to the contested sign and for this part of the public, the signs are not similar, whereas for the part of the public that also associates the earlier mark with a meaning, the signs are conceptually different.

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. 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.

e) Global assessment 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).

The goods are identical or highly similar. They are directed at the public at large and/or at business customers. The level of attention is average. The signs are visually and aurally similar to a low degree. The signs are conceptually either dissimilar or not similar. The distinctiveness of the earlier mark is normal.

The Opposition Division considers the differences between the signs in question to be sufficient to exclude likelihood of confusion between the signs, even in relation to identical or highly similar goods.

Indeed, as seen above, the earlier mark and the initial element of the contested sign differ visually and aurally in their beginnings and in their middle parts. The signs are conceptually either dissimilar or not similar. As explained above, the entirety of the signs has to be considered rather than simply parts of the signs and therefore it would be wrong to discard the element ‘IBIZA’ just because it is non-distinctive since this element also contributes to the overall perception of the signs. The signs have clearly different structures, as the earlier sign consists of a single word, whereas the contested sign consists of two words.

The overall different lengths of the signs, as well as the aforementioned differences, are determinant in the overall impression of the signs. Such differences justify the finding that the signs can be easily distinguished by consumers even in relation to goods that are identical or similar to a high degree.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

 

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the relevant public and the opposition must be rejected.

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 opponent is the losing party, it 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

 

 

Angela DI BLASIO

Claudia SCHLIE

Martina GALLE

 

 

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.