OPPOSITION No B 3 105 951

Eko’s Comércio de Colchöes Ltda Me, Rua Marechal deodoro da Fonseca, 400E, Sala 603/01 - centro, 89802-140 Chapecó, Brazil (opponent), represented by A2 Estudio Legal, Calle Javier Ferrero, 10, 28002 Madrid, Spain (professional representative)

a g a i n s t

Eco Group Worldwide Limited, 247 Cameron Road, 3110 Tauranga, New Zealand (applicant), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 24/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 951 is rejected in its entirety.

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

REASONS

On 12/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 110 107 ‘1eco’ (word mark). The opposition is based on European Union trade mark registration No 16 884 074 (figurative 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: Scented water; aromatic oils; potpourris [fragrances]; cosmetics; antiperspirants [toiletries]; scented wood; ethereal oils; perfumes; perfumery; soap; bath salts; joss sticks.

The contested goods are the following:

Class 3: Cleaning and washing fluids; cleaning, polishing, and/or scouring preparations with or without leaving a protective film; floor polish; fluid and/or powder for laundry use; soap; skin friendly soap; environmentally friendly cleaning and washing fluids based on natural ingredients; cleaning and washing fluids with non-chemical ingredients, without harsh synthetic chemicals and/or with no added dyes; cleaning and washing fluids based on non-toxic plants and/or mineral based biodegradable ingredients; cleaning and washing fluids based on palm oil; natural fragrance cleaning and washing fluids; cleaning and washing fluids for general house hold areas including, but not limited to, kitchen, bathroom, floor and/or outdoor (partly) made of wood, metal, chrome, aluminum, glass, ceramic and/or stone; preparations for the care, treatment, conditioning and/or beautification of the general house hold including, but not limited to, the outdoor area; cleaning and washing fluids for household and/or outdoor utensils.

Class 5: Disinfectants; environmentally friendly disinfectant fluids based on natural ingredients; disinfectant fluids without harsh synthetic chemicals; disinfectant fluids based on palm oil; natural fragrance disinfectants.

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

Soap is identically included in both lists of goods. The contested skin friendly soap is included in the broad category of the opponent’s soap. Therefore, they are identical.

The contested cleaning and washing fluids; cleaning and washing fluids with non-chemical ingredients, without harsh synthetic chemicals and/or with no added dyes; preparations for the care, treatment, conditioning and/or beautification of the general house hold including, but not limited to, the outdoor area cleaning preparations with or without leaving a protective film; fluid and/or powder for laundry use; environmentally friendly cleaning and washing fluids based on natural ingredients; cleaning and washing fluids based on non-toxic plants and/or mineral based biodegradable ingredients; cleaning and washing fluids based on palm oil; natural fragrance cleaning and washing fluids; cleaning and washing fluids for general house hold areas including, but not limited to, kitchen, bathroom, floor and/or outdoor (partly) made of wood, metal, chrome, aluminum, glass, ceramic and/or stone; cleaning and washing fluids for household and/or outdoor utensils are at least similar to the opponent’s soaps, since they coincide at least in their purpose, relevant public and distribution channels. Some of the goods may even be in competition.

The rest of the contested goods (i.e. polishing, and/or scouring preparations with or without leaving a protective film; floor polish) are similar to the opponent’s soaps, which are used in connection with cleaning. Therefore, they coincide in their nature and purpose. Furthermore, they are likely to coincide in distribution channels, producers and consumers.

Contested goods in Class 5

The contested disinfectants; environmentally friendly disinfectant fluids based on natural ingredients; disinfectant fluids without harsh synthetic chemicals; disinfectant fluids based on palm oil; natural fragrance disinfectants are similar to the opponent’s soaps in Class 3. The contested goods are all preparations with disinfectant properties, which destroy harmful microorganisms thereby contributing to the prevention of disease. As the opponent’s soaps are used in connection with cleaning, the goods at issue have a similar purpose and they usually coincide in producer, relevant public and distribution channels.

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 and similar are directed at the public at large. The degree of attention will be average.

c) The signs

	1eco
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 figurative mark consisting of the letters ‘eko’ written in lower case followed by the number ‘7’, all in stylised bold black characters, with an apostrophe joining the two elements. The mark has no dominant elements.

The word ‘eko’ could be perceived by the relevant public as a misspelling of the abbreviation or just a reference to ‘ECO’ which refers to ‘environmentally friendly’ or ‘ecological’ products. For example it is a common prefix used to refer to ‘ecological’ in the Czech Republic or Poland (ekologia). Bearing in mind that the relevant goods relate to preparations for cleaning, which could be manufactured through ecological or environmentally-friendly processes or could be ecological or environmentally-friendly goods, this verbal element has a limited degree of distinctiveness, if it has any at all. The number ‘7’ has no link to the goods in question and is distinctive to a normal degree.

The contested sign is a word mark containing the number ‘1’ conjoined to the word ‘eco’. As explained above, the word ‘eco’ will be understood as referring to ‘environmentally friendly’ or ‘ecological’ goods. Since a link can be made with the goods in question, ‘eco’ has a limited degree of distinctiveness, if it has any at all. The number ‘1’ has no link to the goods in question and is distinctive to a normal degree.

Visually, the signs coincide in the verbal elements ‘eko’/‘eco’ although these differ in their respective second letters (‘k’ versus ‘c’). The signs also differ in their respective additional numbers ‘7’ and ‘1’, which are the most distinctive elements of the signs and are placed in different positions within the signs. Moreover, they differ in the figurative aspects and colours of the earlier mark. Although the earlier mark has an apostrophe between the word and number ‘eko’7’, this will have a very minor visual impact on the consumers because it is merely a punctuation mark, which is devoid of any trade mark significance.

Considering all the above, and the degree of distinctiveness of the different elements in the signs as well as their impact on consumers, the signs are visually similar to a low degree.

Aurally, the word ‘eko’ of the earlier mark and ‘eco’ of the contested sign are identically pronounced in at least some languages of the European Union, for example in English, French, German and Spanish. Therefore, irrespective of the different pronunciation rules in these languages, the pronunciation of the signs coincides in ‘eko’/‘eco’ and differs in the pronunciation of the respective numbers placed at the end of the earlier mark and at the beginning of the contested sign. Therefore, and taking into account the degree of distinctiveness of the different elements, the signs are aurally similar to a low degree, at least in some parts of the relevant territory (whereas they would be even less similar in other territories where the pronunciation of the words ‘eko’ and ‘eco’ might differ).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to ‘environmentally friendly’ or ‘ecological’, and the numbers ‘7’ and ‘1’ do not have a clear meaning in relation to the relevant goods, the signs are conceptually similar to a low 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. 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element that is at best weak in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

The goods are partly identical and partly similar. The earlier mark has a normal degree of inherent distinctiveness. The similarity of the signs was assessed from the perspective of the general public whose degree of attention is average. The signs are similar to a low degree in all aspects.

The opponent argued that consumers rarely have the chance to make a direct comparison between different marks and must rely on their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2018, T‑339/17, SEVENOAK (fig.) / 7seven (fig.), EU:T:2018:815, § 76). However, the similarities between the signs are in elements with low or no distinctive character. When marks coincide in an element with 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, as previously assessed in the comparison of the signs. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components. A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion.

However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical. This is not the case here given that the respective numbers contained in the signs are not only different and placed in different positions in each sign but are also distinctive to a normal degree.

Moreover, the overall impression of the marks is not highly similar, let alone identical,as argued by the opponent, since the signs are similar to a low degree in all aspects.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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

Martina GALLE

Gonzalo BILBAO TEJADA

Erkki MÜNTER

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.