OPPOSITION Nо B 3 118 440

 

Italfarmaco, S.A., Calle San Rafael, 3, Poligono Industrial Alcobendas, 28108 Alcobendas (Madrid), Spain (opponent), represented by Isern Patentes y Marcas, S.L., C/ Principe de Vergara 43, 6º Planta, 28001 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Blissed Media Inc., 199 Bay Street, Commcerce Court West, Suite #4000, M5l1a9 Toronto, Ontario, Canada (applicant), represented by Fieldfisher Plog Partnerschaft von Rechtsanwälten mbB, Am Sandtorkai 68, 20457 Hamburg, Germany (professional representative).

On 17/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 118 440 is partially upheld, namely for the following contested goods and services (i.e. part of the contested goods and services in Classes 3 and 35, and all the contested goods in Class 5):

 

	Class 3: Non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use; non-medicated skin care preparations. Class 5: Cannabis and marijuana; nutraceuticals and herbs for medicinal purposes containing cannabis; nutraceuticals and herbs for medicinal purposes containing resins derived from cannabis; nutraceuticals and herbs for medicinal purposes containing oils derived from cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing derivatives of cannabis, namely resins and oils; all the aforementioned products for the relief of pain and treatment in palliative care, for reducing stress and fatigue, for mood enhancement, for relief from nausea, vomiting, headaches, muscle spasms, seizures, wasting syndrome and loss of appetite in AIDS and cancer patients, for maintaining general health and well-being, for treating symptoms associated with anorexia nervosa, Crohn's disease, multiple sclerosis, amyotrophic lateral sclerosis, fibromyalgia, spinal cord injury, epilepsy, migraines, arthritides and musculoskeletal disorders, neuromuscular diseases and disorders, namely, cerebrovascular accident (stroke), Parkinson's disease, multiple sclerosis, rheumatism, myasthenia gravis, Huntington's disease, amyotrophic lateral sclerosis, epilepsy, convulsant and movement disorders, cervical dystonia, Meige's syndrome, glaucoma, asthma, hypertension, mental illness, namely anxiety, depression, sleep disorders, post-traumatic stress disorder, alcohol and opioid withdrawal symptoms, schizophrenia and psychosis, attention and hyperactivity disorders, Alzheimer's disease, and dementia, for the treatment of, and symptoms associated with, skin infections and irritations, namely bacterial skin infections, dermatitis, atrophie blanche, eczema, burns, rashes from skin allergies and reactions, psoriasis, pruritis and neuropathic pain, for the treatment of, and relief of symptoms associated with, inflammatory diseases, namely inflammatory skin diseases, gastrointestinal system disorders, irritable bowel syndrome, and inflammatory bowel diseases, diseases of the liver, Wilson's disease, metabolic syndrome, obesity, diabetes, diseases of the pancreas, anti-neoplastic properties, and atherosclerosis, osteoarthritis, and osteoporosis, and all the aforementioned products as anti-inflammatories, anti-viral enzyme activators, analgesics, sedatives, appetite stimulants and anti-emetics, anti-nauseants, intraocular pressure reducers, anti-tumors, antioxidants, antibacterials, antidepressants and antihypertensives; herb teas for medicinal purposes; medicinal tea Class 35: Distributorship services, retail and wholesale services relating to non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use, non-medicated skin care preparations; Distributorship services, retail and wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, teas, tea beverages , herb teas for medicinal purposes, medicinal tea; online retail and online wholesale services relating to non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use, non-medicated skin care preparations; online retail and online wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, teas, tea beverages, herb teas for medicinal purposes, medicinal tea.
2.	European Union trade mark application No 18 106 020 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely the non-contested services, and the following contested goods and services:
	Class 3: Non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives, beauty creams for body care. Class 35: Distributorship services, retail and wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives; Distributorship services, retail and wholesale services relating to edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars,, tea extracts; online retail and online wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives, beauty creams for body care; online retail and online wholesale services relating to edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars,, tea extracts.

 

3.	Each party bears its own costs.

 

REASONS

 

On 05/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 106 020 ‘BLISSED’ (word mark), namely against all the goods and services in Classes 3, 5, 29, 35.

The opposition is based on the following earlier rights:

- International trade mark registration designating the European Union No 1 057 307 ‘BLISSEL’ (word mark).

- Spanish trade mark registration No M2 931 557 ‘BLISSEL’ (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 International trade mark registration designating the European Union No 1 057 307 ‘BLISSEL’ (word mark).

 

a) The goods and services

 

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

 

Class 5: Gynecological pharmaceutical products.

The contested goods and services are the following:

Class 3: Non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, skin creams, skin lotions, lip care preparations, face and body lotions, bath additives, soaps for personal use, beauty creams for body care; non-medicated skin care preparations.

Class 5: Cannabis and marijuana; nutraceuticals and herbs for medicinal purposes containing cannabis; nutraceuticals and herbs for medicinal purposes containing resins derived from cannabis; nutraceuticals and herbs for medicinal purposes containing oils derived from cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing derivatives of cannabis, namely resins and oils; all the aforementioned products for the relief of pain and treatment in palliative care, for reducing stress and fatigue, for mood enhancement, for relief from nausea, vomiting, headaches, muscle spasms, seizures, wasting syndrome and loss of appetite in AIDS and cancer patients, for maintaining general health and well-being, for treating symptoms associated with anorexia nervosa, Crohn's disease, multiple sclerosis, amyotrophic lateral sclerosis, fibromyalgia, spinal cord injury, epilepsy, migraines, arthritides and musculoskeletal disorders, neuromuscular diseases and disorders, namely, cerebrovascular accident (stroke), Parkinson's disease, multiple sclerosis, rheumatism, myasthenia gravis, Huntington's disease, amyotrophic lateral sclerosis, epilepsy, convulsant and movement disorders, cervical dystonia, Meige's syndrome, glaucoma, asthma, hypertension, mental illness, namely anxiety, depression, sleep disorders, post-traumatic stress disorder, alcohol and opioid withdrawal symptoms, schizophrenia and psychosis, attention and hyperactivity disorders, Alzheimer's disease, and dementia, for the treatment of, and symptoms associated with, skin infections and irritations, namely bacterial skin infections, dermatitis, atrophie blanche, eczema, burns, rashes from skin allergies and reactions, psoriasis, pruritis and neuropathic pain, for the treatment of, and relief of symptoms associated with, inflammatory diseases, namely inflammatory skin diseases, gastrointestinal system disorders, irritable bowel syndrome, and inflammatory bowel diseases, diseases of the liver, Wilson's disease, metabolic syndrome, obesity, diabetes, diseases of the pancreas, anti-neoplastic properties, and atherosclerosis, osteoarthritis, and osteoporosis, and all the aforementioned products as anti-inflammatories, anti-viral enzyme activators, analgesics, sedatives, appetite stimulants and anti-emetics, anti-nauseants, intraocular pressure reducers, anti-tumors, antioxidants, antibacterials, antidepressants and antihypertensives; herb teas for medicinal purposes; medicinal tea.

Class 29: Edible oils and oils for food; butter.

Class 35: Distributorship services, retail and wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, skin creams, skin lotions, lip care preparations, face and body lotions, bath additives, soaps for personal use, beauty creams for body care, non-medicated skin care preparations; Distributorship services, retail and wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars, teas, tea extracts, tea beverages, herb teas for medicinal purposes, medicinal tea; online retail and online wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, skin creams, skin lotions, lip care preparations, face and body lotions, bath additives, soaps for personal use, beauty creams for body care, non-medicated skin care preparations; online retail and online wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars, teas, tea extracts, tea beverages, herb teas for medicinal purposes, medicinal tea.

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

The term ‘namely’, used in the applicant’s list of goods and services 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 and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

  

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.

 

Contested goods in Class 3

The contested Non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use; non-medicated skin care preparations include the creams, lotions, soaps and other preparations that are specifically intended to be used for intimate care purposes, despite not being medical products. It is considered that these contested goods are similar to at least a low degree to the opponent´s Gynecological pharmaceutical products in Class 5, since they can coincide in purpose, distribution channels/points of sale (since the contested goods are frequently also sold in pharmacies) and can be directed at the same consumers.

The rest of the contested goods in this class, namely Non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives, beauty creams for body care are dissimilar to the opponent´s Gynecological pharmaceutical products since they differ in nature, purpose, method of use, distribution channels/points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to originate from the same kind of undertakings.

Contested goods in Class 5

The contested Cannabis and marijuana; nutraceuticals and herbs for medicinal purposes containing cannabis; nutraceuticals and herbs for medicinal purposes containing resins derived from cannabis; nutraceuticals and herbs for medicinal purposes containing oils derived from cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing derivatives of cannabis, namely resins and oils; all the aforementioned products for the relief of pain and treatment in palliative care, for reducing stress and fatigue, for mood enhancement, for relief from nausea, vomiting, headaches, muscle spasms, seizures, wasting syndrome and loss of appetite in AIDS and cancer patients, for maintaining general health and well-being, for treating symptoms associated with anorexia nervosa, Crohn's disease, multiple sclerosis, amyotrophic lateral sclerosis, fibromyalgia, spinal cord injury, epilepsy, migraines, arthritides and musculoskeletal disorders, neuromuscular diseases and disorders, namely, cerebrovascular accident (stroke), Parkinson's disease, multiple sclerosis, rheumatism, myasthenia gravis, Huntington's disease, amyotrophic lateral sclerosis, epilepsy, convulsant and movement disorders, cervical dystonia, Meige's syndrome, glaucoma, asthma, hypertension, mental illness, namely anxiety, depression, sleep disorders, post-traumatic stress disorder, alcohol and opioid withdrawal symptoms, schizophrenia and psychosis, attention and hyperactivity disorders, Alzheimer's disease, and dementia, for the treatment of, and symptoms associated with, skin infections and irritations, namely bacterial skin infections, dermatitis, atrophie blanche, eczema, burns, rashes from skin allergies and reactions, psoriasis, pruritis and neuropathic pain, for the treatment of, and relief of symptoms associated with, inflammatory diseases, namely inflammatory skin diseases, gastrointestinal system disorders, irritable bowel syndrome, and inflammatory bowel diseases, diseases of the liver, Wilson's disease, metabolic syndrome, obesity, diabetes, diseases of the pancreas, anti-neoplastic properties, and atherosclerosis, osteoarthritis, and osteoporosis, and all the aforementioned products as anti-inflammatories, anti-viral enzyme activators, analgesics, sedatives, appetite stimulants and anti-emetics, anti-nauseants, intraocular pressure reducers, anti-tumors, antioxidants, antibacterials, antidepressants and antihypertensives; herb teas for medicinal purposes; medicinal tea consist of natural remedies and of dietary supplements made only from whole foods, both for medical purposes, and some of them for the treatment of specific diseases or health problems. These goods are similar to at least a low degree to the opponent´s Gynecological pharmaceutical products, since they can coincide in purpose, can be complementary, can coincide in distribution channels/points of sale, can be directed at the same consumers and can originate from the same kind of undertakings.

Contested goods in Class 29

The opponent argues that the contested Edible oils and oils for food; butter are related to the opponent´s goods, and that “the products protected by the prior rights under class 5 and the

contested products under class 29 are, at least, similar to a medium degree as these products could be used to develop the products covered by the prior rights of the opponent. Therefore, we can conclude that they are similar to a medium degree”. The opponent bases this claim on several explanations and in the evidence submitted as Annexes 1 to 4, which consist mainly of the following:

The opponent argues that “It is well-known the oils (as olive oil) have medicinal properties and is commonly used for developing medical products” and includes a press article
(Annex 1) from www.ncbi.nlm.nih.gov in which the properties of “olive and its constituents” are described. The press article reads “Therapeutics role of olive fruits/oil in the prevention of diseases via modulation of anti-oxidant, anti-tumor and genetic activity” and the foot note of the figure in it reads “olive and their constituents show a significant effect in regulation of inflammatory process via modulation of genes”. The article also explains that “regular consumption of fruits and vegetables is strongly related with reduced risk of developing various diseases” and that “the constituents from olive (…) modulate the genes functions and other activities”. The article explains the benefits that olive and its constituents, inter alia, have on health. For instance, under the title “antioxidant activity” it is explained that “olive oil phenolic have shown to have shown to have antioxidant properties, higher than that of vitamin E, onlipids and DNA oxidation” and under the title “anti-microbial activity” various benefits of olive and its extracts are described, for instance “Virgin olive oil as protective effect against foodborne pathogens and olive oil also reduced the count of inoculated salmonella enteritidis and Listeria monocytogenes (…)”. Lastly, under “anti-inflamatory activity” it is explained that “olive is a safe, inexpensive substitute in the reduction of inflammation and maintaining or regulate the genes involve in this process” (emphasis added)

In Annex 2, an online publication from www.abc.es is included , in which it is explained that “Cordoba´s olive oil is very useful for the development of medicines”. Annex 3 consists of another online publication from www.onlinelibrary.wiley.com in which the medical properties of olive oil are analyzed. Lastly, Annex 4 consists of an online publication from www.pubmed.ncbi.nlm.nih.gov in which the medical properties of olive oil are again analyzed in relation to its effect for treating a gynecological disease.

The opponent has not submitted any arguments as regards the contested butter.

Indeed, all foodstuffs have an impact on human health, but it cannot be considered that Edible oils and oils for food; butter are purchased for this as the main purpose, but for that of nutrition. The Opposition Division notes that Edible oils and oils for food; butter (in Class 29) consist of foodstuffs that are prepared or preserved for consumption, fulfilling nutritional purposes. They are used as ingredients for cooking, or consumed directly (e.g. olive oil, included in Edible oils and oils for food is frequently used as salad dressing). They are sold in grocery stores and within specific areas of department stores. These goods are directed at the public at large, and originate from companies in the food sector.

The opponent´s Gynecological pharmaceutical products fulfill medical purposes, namely to prevent, alleviate or cure a specific type of health problems. They are directed at the public at large and also at professionals in the medical field, and originate from specialized pharmaceutical companies.

Therefore, these goods are considered to be dissimilar since they differ in nature, purpose, method of use, distribution channels/points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to originate from the same kind of undertakings.

Contested  services in Class 35

The contested services in this class consist mainly of distributorship services (understood as wholesale services), retail and wholesale services, including online, offered in relation to non-medical topical products (included in the comparison carried out in Class 3 above), in relation to goods for medical purposes (included in the comparison carried out in Class 5 above) and in relation to foodstuffs (included in the comparison carried out in Class 29 above). The opponent´s goods consist of pharmaceutical products for very specific purposes which originate from specialized pharmaceutical companies, are directed at the public at large and medical professionals and are distributed at/sold to pharmacies or hospitals.

Reference is made to the previous explanations as regards the similarity (to at least a low degree) or dissimilarity between the opponent´s goods and the specific goods in relation to which the contested services are offered.

The Opposition Division notes that a low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail/wholesale services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers. This same reasoning applies to retail, wholesale and distributorship (understood as wholesale).

In the case at hand, part of the contested goods in Class 3 and all the contested goods in Class 5 were found to be similar to at least a low degree to the goods of the opponent ,for the various reasons explained above. It is considered that such reasons are sufficient to consider that a low degree of similarity exists between the contested services offered in relation to such goods (i.e. those found to be similar to at least a low degree to the opponent´s goods) and the opponent’s goods in Class 5. Therefore, it is considered that the following contested services are similar to a low degree to the opponent´s goods in Class 5:

Class 35: Distributorship services, retail and wholesale services relating to non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use, non-medicated skin care preparations; Distributorship services, retail and wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, teas, tea beverages, herb teas for medicinal purposes, medicinal tea; online retail and online wholesale services relating to non-medicinal topical products, namely skin creams, skin lotions, body lotions, soaps for personal use, non-medicated skin care preparations; online retail and online wholesale services relating to cannabis and marijuana, cannabis related products, derivatives of cannabis, natural health products, nutraceuticals and herbs for medicinal purposes, oils, salves, concentrated pastes, tinctures, tablets and capsules, teas, tea beverages, herb teas for medicinal purposes, medicinal tea.

The rest of the contested services consist of the retail, wholesale and distributorship of goods that are dissimilar to the goods on which the opposition is based. Therefore, it is considered that said services are dissimilar to the opponent´s goods because, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the opponent´s goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and/or are of interest to the same consumers. Here these conditions are not fulfilled. This same reasoning applies to retail, wholesale and distributorship (understood as wholesale).

The contested services found to be dissimilar to the goods of the opponent are the following:

Class 35: Distributorship services, retail and wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives; Distributorship services, retail and wholesale services relating to edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars, tea extracts; online retail and online wholesale services relating to non-medicinal topical products, namely massage creams, massage oils, bath oil, body oils, cosmetic oils, oils for toiletry purposes, lip care preparations, face lotions, bath additives, beauty creams for body care; online retail and online wholesale services relating to edible oils, oils for food, butter, chocolates, cookies, brownies, candy, candy and food energy bars, tea extracts.

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 and services found to be similar to at least a low degree are directed at both, the public at large and professionals. 

 

The degree of attention will vary from average to high. An average degree of attention is likely to be paid in relation to goods that, for instance, are frequently purchased and/or are not expensive and/or do not have any significant impact on human health (e.g. body lotions, in Class 3). However, as regards the opponent´s goods and the contested goods in Class 5, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

 

c)  The signs

 

BLISSEL	BLISSED
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The words forming the marks, or at least one of them, could be attributed a concept by part of the relevant public. For instance, the contested sign ‘BLISSED’ would bring to the mind of English-speaking consumers the word ‘bliss’ (i.e. total happiness). However, the signs are not attributed any concept for a significant part of the relevant public, such as the Spanish, Italian, German, Portuguese, French or Bulgarian-speaking consumers. Therefore, from this perspective the marks will not present conceptual differences, and the words forming the marks are of average distinctive character. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom both marks are meaningless, for being considered the scenario in which likelihood of confusion is more likely to arise.

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. It is relevant to note that the marks differ only in their final letter, which is of reduced impact due to its position.

 

Visually and aurally, the signs coincide in ‘BLISSE’ (and its sound) and differ in their final letter, namely ‘L’ in the earlier mark and ‘D’ in the contested sign (and their sound).

Considering that the signs are not short marks (in which differences can be more easily perceived), and that the only differing letter is of reduced impact due to its position at the end of the mark, it is considered that the signs are visually and aurally similar to a high degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory referred to above. 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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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, other arguments and conclusion

The goods and services compared are partly similar to at least a low degree and partly dissimilar. They are directed at both the public at large and professionals, and the degree of attention paid during their purchase will vary from average to high, depending on the characteristics of those goods and services.

The signs are visually and aurally highly similar, and cannot be compared conceptually. They coincide in all of their letters, in the same order, except for their respective last letter which, as explained, are of reduced impact.

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).

In spite of the difference in the last letter of the marks, there is a likelihood of confusion (in relation to the goods and services found to be similar to at least a low degree) because the visual coincidences are overwhelming.

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 this case, the significant coincidences between the marks are clearly sufficient to compensate for the ‘at least low’ similarity of part of the goods and services.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the part of the public for which both marks are meaningless, such as the Spanish, Italian, German, Portuguese, French or Bulgarian-speaking consumers, and therefore the opposition is partly well founded on the basis of the opponent’s International trade mark registration designating the European Union. 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.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to at least a low degree to the goods of the earlier trade mark.

 

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

 

The opponent has also based its opposition on Spanish trade mark registration No M2 931 557 ‘BLISSEL’. Since this mark covers the same scope of goods as the mark in relation to which the analysis and comparison has been carried out above, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Kieran HENEGHAN

María del Carmen SUCH SANCHEZ

Vít MAHELKA

 

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.