OPPOSITION Nо B 3 105 539

Laboratoires M&l, Zone Industrielle Saint-Maurice, 04100 Manosque, France (opponent), represented by Amanda Trincat, 22 Chemin des Esserts, 74200 Thonon les Bains, France (professional representative)

a g a i n s t

JMP Service KG, Colonnaden 45, 20354 Hamburg, Germany (applicant), represented by Stephan Schenk, Buchstr. 13, 28195 Bremen, Germany (professional representative).

On 30/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 539 is upheld for all the contested goods, namely:

Class 3: All the goods in this class.

2. European Union trade mark application No 18 114 903 is rejected for all the contested goods. It may proceed for the non-contested goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 114 903 for the figurative mark , namely against all the goods in Class 3. The opposition is based on international trade mark registration designating the European Union No 881 365 for the word mark ‘MELVITA’. 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; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3: Ethereal essences; ethereal oils; essential oils of cedarwood; essential oils of lemon; bergamot oil; greases for cosmetic purposes; jasmine oil; lavender oil; lavender water; food flavourings [essential oils]; almond oil; body oils [for cosmetic use]; oils for cosmetic purposes; oils for perfumes and scents; mint essence [essential oil]; potpourris [fragrances]; fumigation preparations [perfumes]; joss sticks; rose oil; incense; aromatics [essential oils].

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.

The contested ethereal oils are identical to the opponent’s essential oils, because they are both fragrant liquid aroma compounds (synthetic or organic) that are used primarily in perfumery (as a perfume base), in food or drink flavouring, or for scenting cosmetic products.

The contested ethereal essences; oils for perfumes and scents are included in, or at least overlap with, the earlier essential oils. The contested goods, which are fragrant aroma compounds, are usually one of the main ingredients in essential oils. Therefore, they are identical.

The contested essential oils of cedarwood; essential oils of lemon; bergamot oil; jasmine oil; lavender oil; food flavourings [essential oils]; almond oil; mint essence [essential oil]; rose oil, aromatics [essential oils] are included in the broad category of the earlier essential oils. Therefore, they are identical.

The contested greases for cosmetic purposes, body oils [for cosmetic use], oils for cosmetic purposes are included in the broad category of the earlier cosmetics. Therefore, they are identical.

The contested potpourris [fragrances] are included in, or at least overlap with, the earlier perfumery. This is due to their common characteristics – potpourri is a perfumed pleasant-smelling mixture of dried petals and leaves used to make homes smell nice by providing fragrant, and perfumes are fragrances used to give the body, or of other items, a pleasant smell. Therefore, they are identical.

The contested incense; joss sticks at least overlap with the earlier perfumery. Joss sticks and incenses are thin sticks consisting of a substance that burns slowly producing a fragrant smell, which makes indoor spaces smell nice, while perfumery includes fragrances used, inter alia, to give the body a pleasant smell. Therefore, they are identical.

The contested fumigation preparations [perfumes] at least overlap with the earlier perfumery, as both of these share the identical substances that create a pleasant scent even though, in the case of the contested goods, this scent also repels insects, etc. Consequently, they are identical.

The contested lavender water is included in the broad category of the opponent’s perfumery. Therefore, they are considered identical.

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

MELVITA
Earlier trade mark	Contested sign

The relevant territory is the European Union (EU).

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 verbal elements of the contested sign, ‘love your mind & body’, will be understood in those territories, where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the EU, as these elements will be seen as laudatory by this part of the public and, thus, their impact will be limited, as explained below.

The earlier mark is the word mark ‘MELVITA’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they appear in upper- or lower-case letters or in a combination thereof.

The contested sign consists of a figurative element reminiscent of a woman’s face in profile with a hairstyle that resembles rising ethereal scent or a leaf, and the verbal elements ‘MeaVita’, in a large non-distinctive bold typeface, and ‘love your mind & body’, in a significantly smaller lower-case typeface. These verbal elements are placed on two lines below the figurative element.

A part of the English-speaking public will recognise that the verbal element ‘VITA’ is a word of Latin origin meaning ‘life’ (25/10/2012, T‑552/10, Vital & Fit, EU:T:2012:576, § 59). However, the relevant public is the public at large, not professionals with at least a basic knowledge of Latin. Therefore, a significant part of the relevant public may not be aware of this meaning and will not link the meaning of ‘VITA’ to ‘life, life-related’ or ‘lively’. Furthermore, even for the public that is aware of this meaning and for whom it may create positive associations, this verbal element has an average degree of distinctive character for the goods at issue (27/05/2013, R 569/2012‑4, HERZVITAL / VITA, § 20).

In their entirety, the verbal elements ‘MELVITA’, in the earlier mark, and ‘MeaVita’, in the contested sign, when considered altogether, are meaningless for a significant part of the relevant public. The Opposition Division will focus the examination on this part of the public. As these elements do not convey information of, or allude to, the relevant goods or their characteristics, their inherent distinctiveness is average.

The second verbal element of the contested sign, ‘love your mind & body’, will be recognised by the English-speaking public as a banal slogan, especially as the goods in questions are health, cosmetic and beauty products that are used to care for the face and body and to stimulate the senses. Therefore, this verbal element is laudatory and distinctive to at most a low degree for the relevant goods.

The same is valid for the figurative element, as women are predominantly targeted as consumers of health, cosmetic and beauty products, and the goods in question can be applied to the face and/or hair, have ethereal scents and/or can be of organic origin (a common symbol for organic/ecological products is a leaf). These features can be linked to some characteristics of the relevant goods. Consequently, the figurative element has a rather limited capacity to indicate commercial origin for the goods in question.

The verbal element ‘MeaVita’, due to its size, bold typeface and position in the centre of the sign, together with the fact that it is the first verbal element of the contested sign, will attract the attention of the relevant public together with the figurative element. This verbal element, ‘MeaVita’, is not overshadowed by the figurative element; it is at least co-dominant with the figurative element.

Visually, the signs coincide in the strings of letters ‘ME*VITA’ of the sole verbal element of the earlier sign and of the co-dominant verbal element of the contested sign, and differ in the third letters (‘L’ versus ‘A’). Therefore, the earlier mark is almost entirely present in the co-dominant and most distinctive verbal element of the contested sign. These verbal elements are of identical length (seven letters) and have identical initial letters and endings. The differing single letter in the middle of the elements is likely to be overlooked by the relevant public. Moreover, although the contested sign also contains the figurative element and the second verbal element, ‘love your mind & body’, which do not have any counterparts in the earlier mark, these are not particularly distinctive.

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). This principle applies to the present case, as the relevant public will not attribute any major significance to the figurative element used in the contested sign due to its limited distinctiveness.

As explained above, the second verbal element of the contested sign, ‘love your mind & body’, is clearly secondary within the contested sign for the English-speaking relevant public and is distinctive to at most a low degree. Therefore, this part of public will not attribute much commercial relevance to it.

Considering all the above, the signs are considered visually similar to a higher-than-average degree.

Aurally, reference is made to the previous assertions concerning the visual comparison of the signs as these apply to the aural comparison mutatis mutandis. The signs coincide almost entirely in the sound of letters ‘ME*VITA’, while they differ in their third letters, ‘L’ and ‘A’, respectively. The figurative element of the contested sign is not relevant for the aural assessment.

As regards the second verbal element of the contested sign, ‘love your mind & body’, consumers tend not to pronounce all elements of signs, simply to economise on words and time, especially when they are easily separable from the dominant element of the mark (18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). Given that this second verbal element is of, at most, a weak distinctive character and is clearly secondary within the contested sign, it is plausible that it will not be pronounced at all by the relevant public.

The difference of the third letter in the verbal elements ‘MELVITA’ (earlier mark) and ‘MeaVita’ (contested mark) will not counterbalance the impact that the identical sounds, the same number of syllables and the same rhythm of these elements will have on the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the second verbal element of the contested sign, ‘love your mind & body’, and may perceived some meanings in its figurative element, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 that can be made with the registered mark, and 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).

In the present case, the contested goods are identical to the opponent’s goods. The earlier mark has an average degree of inherent distinctiveness.

The signs are visually similar to a higher-than-average degree and aurally highly similar. In addition, 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).

Almost all of the earlier mark is reproduced in the co-dominant, independent and most distinctive verbal element of the contested sign. As explained above, the beginning and endings of these elements are identical (i.e. six out of seven letters). The difference between the signs, namely the third letter ‘L’ in the earlier mark and the contested sign’s third letter ‘A’ of the first verbal element, the laudatory and secondary slogan ‘love your mind & body’ and its figurative element, are not sufficient to create a significant difference between the conflicting signs in relation to identical goods. Moreover, some of those differing elements (the slogan and the figurative element) have at most a weak or limited distinctiveness and/or are of secondary significance and, consequently, the consumers will pay less attention to them.

Although the signs are conceptually not similar, this difference should not be overestimated, because it stems from the elements that are not particularly distinctive and/or are clearly secondary.

Overall, the differences are not sufficient to counteract the similarities that result from the almost complete reproduction of the earlier mark in the prominent position of the contested sign.

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 the present case, it is considered that the identity between some of the goods offsets and outweighs the differences between the signs.

In cases, like the present one, where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them (13/11/2012, T-555/11, tesa TACK, EU:T:2012:594, § 53). In the Opposition Division’s view, the contested sign does not maintain a sufficient distance from the earlier mark.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 881 365. It follows that the contested trade mark must be rejected for all the contested 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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Jakub MROZOWSKI

Jiří JIRSA

Dorothée SCHLIEPHAKE

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.