OPPOSITION Nо B 3 117 516

 

Kinga-Gabriela Jancsek, Laaer-Berg-Straße 39/2/30, 1100 Vienna, Austria (opponent), represented by Kocsis És Szénássy Ügyvédi Iroda, Fráter György utca 31, 1149 Budapest, Hungary (professional representative) 

 

a g a i n s t

 

Natural Science Co., Ltd., 1-22-11 Shinkawa, Chuo-Ku, Tokyo, Japan (applicant), represented by Isarpatent - Patent- Und Rechtsanwälte Barth · Charles · Hassa ·Peckmann & Partner MbB, Friedrichstrasse 31, 80801 Munich, Germany (professional representative).

 

On 28/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 117 516 is partially upheld, namely for the following contested goods:

 

		Class 3: Body firming creams; cosmetic preparations for slimming purposes; skin whitening creams
2.		European Union trade mark application No 18 117 906 is rejected for all the above goods. It may proceed for the remaining goods.
3.	Each party bears its own costs.

 

REASONS

 

On 30/04/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 117 906 (figurative mark). The opposition is based on European Union trade mark registration No 17 958 125, (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: Moist wipes for sanitary and cosmetic purposes; soap; bath lotion; shampoo; talcum powder, for toilet use; laundry detergents for household cleaning use; cotton sticks for cosmetic purposes; washing liquid.

The contested goods are the following:

Class 3: Body firming creams; cosmetic preparations for slimming purposes; skin whitening creams.

Class 5: Food for babies.

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 body firming creams; cosmetic preparations for slimming purposes; skin whitening creams are similar to the opponent's soap as they usually coincide in producer, relevant public and distribution channels.

Contested goods in class 5

The contested food for babies are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 similar 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 earlier mark is a figurative mark containing the verbal element ‘MAMA’ in purple inside a stylised figurative device that resembles the shape of a heart, which is made of smaller figurative elements, such as stars, hearts and circles being in shades of purple, lilac, pink and orange. Under the verbal element, a figurative element of a ribbon in lilac or light purple is depicted in the sign. The verbal element ‘MAMA’ would be understood throughout the European Union, being a basic English term which is the informal word of ‘mother’. Besides, this word is very similar to its equivalent in many languages of the relevant territory, such as the Spanish ‘mama’, the Italian ‘mamma’ or the French ‘maman’. Considering that the goods concerned are, inter alia, creams and cosmetic preparations, this element will be considered as weak by the relevant public as it would serve to indicate the intended public of the goods. Therefore, the earlier sign is composed of a weak verbal element and figurative elements of a purely decorative nature and has no element that could be considered clearly more dominant than other elements. 

The contested mark is a figurative mark containing the word elements ‘MAMA & KIDS’ reproduced using fanciful black characters, being the first letters ‘M’ and ‘K’ capital letters. With regards to the verbal element ‘MAMA’, the Opposition Division makes reference to the above mentioned findings. In relation to the word element ‘KIDS’, it consists of a basic English word. On account of its widespread use, it will be understood throughout the European Union as referring to the concept of 'children’. Therefore, these elements will be directly perceived by the relevant public as an indication that the goods in question are destined/provided for mothers and children. Therefore, these verbal elements are weak, for the relevant goods (07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, §32-33; 15/06/2020, R 26/2020-4, Kidkii / Kids ii et al., § 26). The ampersand ‘&’ between the verbal elements ‘Mama’ and ‘Kids’ of the contested sign will be perceived as a non-distinctive element.

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).

 

Furthermore, 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.

 

Visually and aurally, the signs coincide in the letters/sounds ‘MAMA’, being a weak element as addressed above. However, they differ in the letters/sounds ‘& KIDS’ of the contested sign which are considered as a non-distinctive and weak elements respectively. The signs further differ in the figurative device of a shape of a heart contained in the earlier mark as well as in different stylization, which as addressed above, are weakly distinctive.

Therefore, the signs are visually and aurally similar at least to a low degree. 

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative element of the earlier mark resembles a heart-shaped device and therefore evokes the concept of a heart which has a decorative nature. As the signs will be associated with a similar meaning, the signs are conceptually similar at least 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal, notwithstanding the fact that the verbal element of the mark ‘Mama’ as well as the figurative element which consists of a ‘heart-shaped’ device are weak. This is due to the fact that the mark as a whole is distinctive, due to its graphical arrangement.

e) Global assessment, other arguments and conclusion

 

 According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

 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, the goods for the marks in dispute have been found to be similar and target the public at large. The earlier mark is distinctive to a normal degree, due to its overall graphical arrangement, as stated above.

The signs under dispute are visually, aurally and conceptually similar to at least a low degree, as explained above in section c) of this decision. The similarities between the signs result from their weak verbal element, ‘MAMA’ which is included in the beginning of both signs. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks. The earlier mark is fully contained in the beginning of the contested mark. Furthermore, the additional elements included in both signs are weak and will have a lower impact on the consumer.

Therefore, taking into account the similarity of the contested goods and the relevant public’s imperfect recollection, it cannot be excluded that the relevant consumers, will perceive the contested mark as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), in that it merely points out an additional public of the goods, and they will therefore assume that the goods covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 958 125.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods 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

 

 

Andrea VALISA

Inês RIBEIRO DA CUNHA

Philipp HOMANN

 

 

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.