OPPOSITION No B 3 107 552

The Cookie Company Brands B.V., Stadionlaan 155, 5246 JT 's-Hertogenbosch, the Netherlands (opponent), represented by RISE, Jan Huijgenstraat 3, 2012 VC Haarlem, the Netherlands (professional representative)

a g a i n s t

Magdalena Pacak, ul. Jowisza 36, 44-117 Gliwice, Poland (applicant), represented by Michał Piwoński MPTR, ul. Pomorska 96 lok. 14, 91-402 Łódź, Poland (professional representative).

On 30/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 552 is partially upheld, namely for the following contested goods:

Class 3: All the goods in this Class.

Class 18: All the goods in this Class.

Class 25: All the goods in this Class.

2. European Union trade mark application No 18 111 015 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 111 015 for the figurative mark . The opposition is based on European Union trade mark registrations No 16 681 017 and 16 982 274, both for the same 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 and services

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

European Union trade mark registration 16 982 274 (earlier mark 1)

Class 3: Essential oils and aromatic extracts; tailors' and cobblers' wax; animal grooming preparations; toiletries; cleaning and fragrancing preparations; abrasives.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewellery; jewellery boxes and watch boxes; key rings and key chains, and charms therefor; time instruments.

Class 16: Decoration and art materials and media; printed matter; filtering materials of paper; stationery and educational supplies; gums [adhesives] for stationery or household purposes; works of art and figurines of paper and cardboard, and architects' models; paper and cardboard; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

European Union trade mark registration 16 681 017 (earlier mark 2)

Class 18: Luggage, bags, wallets and other carriers.

Class 25: Clothing; hats; footwear.

The contested goods are the following:

Class 3: Cosmetics.

Class 18: Bags; cosmetic purses; wash bags for carrying toiletries.

Class 24: Towels of textile.

Class 25: Clothing.

Class 35: Sales promotion; sales promotion for others.

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 cosmetics overlap with the opponent’s toiletries (earlier mark 1). Therefore, they are identical.

Contested goods in Class 18

The contested bags; cosmetic purses; wash bags for carrying toiletries are included in the broad category of, or overlap with, the opponent’s bags (earlier mark 2). Therefore, they are identical.

Contested goods in Class 24

The contested towels of textile are dissimilar to the opponent’s goods in Classes 3, 14, 16, 18 and 25 contained in the lists of both earlier mark as the goods in conflict have no points in common. They differ not only in their nature and purpose, but also distribution channels, sales outlets, producers and method of use. Furthermore, they are neither in competition with each other nor necessarily complementary to each other and are not directed at the same consumers.

Contested goods in Class 25

Clothing is identically contained in both lists of goods (earlier mark 2).

Contested services in Class 35

The contested sales promotion; sales promotion for others are dissimilar to the opponent’s goods in Classes 3, 14, 16, 18 and 25 contained in the lists of both earlier mark as they have no points of contact. They differ not only in their nature and purpose, but also distribution channels, sales outlets, producers and method of use. Furthermore, they are neither in competition with each other nor necessarily complementary to each other and are not directed at the same consumers.

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. The degree of attention is considered to be average.

c) The signs

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 verbal elements ‘ojo’ and ‘ohjo’ are meaningless in certain territories, for example in the English-speaking territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

As it was explained above, the verbal elements of the signs in conflict have no meaning for the relevant public and are, therefore, distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

The figurative elements contained in the contested sign will not trigger any specific semantic association in the perception of the relevant public, and its degree of distinctiveness must be seen as average. The same concerns the stylisation of the letters in the earlier mark. However, 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, the verbal elements will have a stronger impact in both signs in question.

Visually, the signs coincide in the letters ‘ojo’ of the earlier mark and ‘O*JO’ of the contested sign. However, they differ in the second letter in the contested sign, namely ‘H’. Furthermore, they differ in the stylisation of the earlier mark’s letters and the figurative element of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ojo’ of the earlier mark and ‘o*jo’ of the contested sign. The contested sign contains the additional the letter ‘h’, ‘OHJO’. The pronunciation will not differ however due to its presence as the letter ‘h’ followed by the letter ‘j’ will be pronounced identically to the letter ‘j’ on its own, at least by the majority of the relevant public under consideration.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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 Court has stated that likelihood of confusion must be appreciated globally, taking

into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical and partly dissimilar, and they target the public at large whose degree of attention is average.

The signs are visually similar to a low degree and aurally they are identical. Conceptually, the comparison remains neutral. Furthermore, the earlier mark has a normal degree of distinctiveness.

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).

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).

The signs coincide in three out of three and four letters respectively (‘o-j-o’ of the earlier mark and ‘O*JO’ of the contested sign). They differ in the middle letter of the contested sign, namely ‘h’, which, at the aural level, will not be noticeable for the relevant public as explained above. In addition, the verbal elements are more memorable by the public than the signs’ figurative elements or the stylisation of their letters. Consequently, these aspects have a lesser impact on the comparison. Therefore, the aforesaid differences are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 found to be identical to those 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Michal KRUK

María del Carmen SUCH SÁNCHEZ

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.