OPPOSITION No B 3 106 560

Skeyndor, S.L.U., Calle Navas de Tolosa, 148, 08223 Terrassa (Barcelona), Spain (opponent), represented by Alexander Zuazo & Asociados, Capitán Haya, 51-4º, oficina 8, 28020 Madrid, Spain (professional representative)

a g a i n s t

Uniqsana GmbH & Co. KG, Inselwiesenstr. 6, 74076 Heilbronn, Germany (applicant), represented by Gerhard Wiese, Fuggerstr. 2, 87719 Mindelheim, Germany (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 560 is partially upheld, namely for the following contested goods:

Class 3: All the contested goods in this class.

Class 5: All the contested goods in this class, excluding capsules for medicines; cachets for pharmaceutical purposes.

2. European Union trade mark application No 18 121 805 is rejected for all the contested goods, except those indicated above for which it may proceed for registration.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 121 805 (figurative), namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 17 625 385 (figurative). 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 and services on which the opposition is based are the following:

Class 3: Soaps; perfumes, essential oils, cosmetics, hair lotions; dentifrices; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

Class 5: Food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 44: Hygienic and beauty care for human beings; aromatherapy services; beauty salons; massage.

The contested goods are the following:

Class 3: Laundry bleach; laundry preparations; soap; make-up removing preparations; astringents for cosmetic purposes; antiperspirants [toiletries]; aromatics [essential oils]; breath freshening sprays; ethereal essences; ethereal oils; essential oils of cedarwood; eyebrow cosmetics; eyebrow pencils; cosmetic preparations for baths; extracts of flowers [perfumes]; polish for furniture and flooring; floor wax; deodorants for personal use [perfumery]; scented wood; sachets for perfuming linen; scented water; depilatory preparations; depilatory wax; bases for flower perfumes; shampoos; hair lotions; cosmetic creams; cosmetic preparations for skin care; cosmetics; cosmetic kits; cosmetic pencils; creams for leather; leather preservatives [polishes]; lipsticks; lotions for cosmetic purposes; make-up; almond milk for cosmetic purposes; mouthwashes, not for medical purposes; oils for toilet purposes; oils for cosmetic purposes; oils for cleaning purposes; oils for perfumes and scents; perfumery; perfumes; flavourings for beverages [essential oils]; pomades for cosmetic purposes; furbishing preparations; after-shave lotions; fumigation preparations [perfumes]; joss sticks; cleansing milk for toilet purposes; preparations for cleaning dentures; cosmetic preparations for slimming purposes; make-up powder; beauty masks; antiperspirant soap; soap for foot perspiration; sun-tanning preparations [cosmetics]; terpenes [essential oils]; cosmetics for animals; shampoos for pets [non-medicated grooming preparations]; toiletries; toilet soap; toilet water; tissues impregnated with cosmetic lotions; fabric softeners for laundry use; incense; dentifrices.

Class 5: Purgatives; medical preparations for slimming purposes; adjuvants for medical purposes; algicides; analgesics; antibiotics; parasiticides; antiseptics; antiseptic cotton; appetite suppressants for medical purposes; medicines for human purposes; medicines for veterinary purposes; medicines for dental purposes; caustics for pharmaceutical purposes; bath salts for medical purposes; bath preparations for medical purposes; therapeutic preparations for the bath; biological preparations for medical purposes; biological preparations for veterinary purposes; candy, medicated; deodorants for clothing and textiles; dietetic beverages adapted for medical purposes; dietetic foods adapted for medical purposes; febrifuges; fish meal for pharmaceutical purposes; chilblain preparations; frostbite salve for pharmaceutical purposes; fungicides; gum for medical purposes; haemorrhoid preparations; extracts of medicinal herbs; remedies for foot perspiration; remedies for perspiration; corn remedies; repellents for dogs; medicated lotions; sanitary preparations for medical purposes; insect repellents; insecticides; capsules for medicines; germicides; topical analgesic creams; haemostatic pencils; smoking herbs for medical purposes; laxatives; lotions for pharmaceutical purposes; lotions for veterinary purposes; air deodorizing preparations; air purifying preparations; medicinal drinks; medicinal herb infusions; medicinal hair growth preparations; medicinal tea; medicinal herbs; milk ferments for pharmaceutical purposes; mineral food supplements; preparations for the treatment of burns; anti-uric preparations; preparations to facilitate teething; moleskin for medical purposes; mud for baths; medicinal mud; mothproofing preparations; mouthwashes for medical purposes; nutritional supplements; nervines; cachets for pharmaceutical purposes; medicinal oils; opotherapy preparations; pastilles for pharmaceutical purposes; bunion pads; adhesive tapes for medical purposes; plasters, materials for dressings; pharmaceutical preparations; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for skin care; pharmaceutical preparations for veterinary use; pharmaceutical preparations for dental use; pharmaceutical drugs; anticryptogamic preparations; pomades for medical purposes; porcelain for dental prostheses; bronchodilating preparations; preparations of trace elements for human and animal use; quassia for medical purposes; fumigating sticks; fumigation preparations for medical purposes; medicine cases, portable, filled; smelling salts; ointments for pharmaceutical purposes; acids for pharmaceutical purposes; pesticides; lint for medical purposes; soporifics; slimming tea for medical purposes; serotherapeutic medicines; sunburn ointments; pharmaceutical preparations for treating sunburn; steroids; breast-nursing pads; suppositories; animal washes [insecticides]; tinctures for medical purposes; tonics [medicines]; tissues impregnated with pharmaceutical lotions; vermin destroying preparations; vaginal washes for medical purposes; gauze for dressings; dressings, medical; surgical dressings; absorbent cotton; digestives for pharmaceutical purposes; veterinary preparations; cattle washes [insecticides]; vitamin preparations; wart pencils; wadding for medical purposes; insect repellent incense; vulnerary sponges; vermicides; dietetic preparations adapted for medical use; infant formula; teeth filling material; dental wax; disinfectants; herbicides; disinfectant soap; medicated soap.

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

Based on the natural meaning of the goods in comparison, also supported by the classification Harmonised Database (HDB), which can be found at https://euipo.europa.eu/ohimportal/en/harmonised-database, all the contested goods are or fall under at least one of the following broad categories or subcategories:

(1) ‘Cleaning and fragrancing preparations’:

a. ‘Laundry preparations’ (e.g. laundry bleach);

b. ‘Household fragrances (e.g. joss sticks; incense);

c. ‘Leather and shoe cleaning and polishing preparations’ (e.g. creams for leather).

(2) ‘Toiletries’ (e.g. cosmetics; tissues impregnated with cosmetic lotions):

a. ‘Body cleaning and beauty care preparations’ (e.g. soap; cosmetic creams; almond milk for cosmetic purposes; depilatory wax; shampoos; make-up);

b. ‘Oral hygiene preparations’ (e.g. breath freshening sprays; dentifrices);

c. ‘Perfumery and fragrances’ (e.g. scented water; perfumery; toilet water).

(3) ‘Essential oils and aromatic extracts’ (e.g. ethereal oils; oils for perfumes and scents).

(4) ‘Animal grooming preparations (e.g. cosmetics for animals).

Accordingly, the contested goods that fall under the above mentioned category (1) are included in the broad categories of the opponent’s perfumes; cleaning and polishing preparations. Therefore, they are identical.

The contested goods that fall under the above mentioned category (2) are either identically contained in both lists of goods (e.g. cosmetics; soap; dentifrices; perfumes) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested goods that fall under the above mentioned category (3) are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested goods that fall under the above mentioned category (4), namely cosmetics for animals; shampoos for pets [non-medicated grooming preparations], are included in the broad category of the opponent’s cosmetics; soaps, respectively. Therefore, they are identical.

Contested goods in Class 5

Based on the natural meaning of the goods in comparison, also supported by the classification Harmonised Database (HDB), which can be found at https://euipo.europa.eu/ohimportal/en/harmonised-database, all the contested goods are or fall under at least one of the following broad categories or subcategories:

(1) ‘Medical and veterinary preparations and articles’ (e.g. corn remedies; haemostatic pencils; medicinal mud; veterinary preparations):

a. ‘Pharmaceuticals and natural remedies’ (e.g. purgatives; antibiotics; febrifuges; medicated lotions; laxatives; pharmaceutical preparations);

b. ‘Medical dressings, coverings and applicators’ (e.g. bunion pads; gauze for dressings; absorbent cotton).

(2) ‘Pest control preparations and articles’ (e.g. algicides; insecticides; fumigating sticks; herbicides).

(3) ‘Sanitary preparations and articles’ (e.g. sanitary preparations for medical purposes):

a. ‘Disinfectants and antiseptics’ (e.g. antiseptics; germicides);

b. ‘Absorbent articles for personal hygiene’ (i.e. breast‑nursing pads);

c. ‘Medicated and sanitising soaps and detergents’ (e.g. vaginal washes for medical purposes; disinfectant soap).

(4) ‘Dietary supplements and dietetic preparations’ (e.g. mineral food supplements; vitamin preparations; infant formula).

(5) ‘Air deodorising and air purifying preparations (e.g. deodorants for clothing and textiles; air purifying preparations).

(6) ‘Dental preparations and articles, and medicated dentifrices (e.g. pharmaceutical preparations for dental use; teeth filling material; dental wax).

Accordingly, some of the contested goods that fall under the above mentioned categories (1), (2), (3), (4) and (6) are identical because:

- they are contained in both lists of goods (e.g. plasters; materials for dressings; fungicides; herbicides; vermin destroying preparations; disinfectants; dental wax); or

- they overlap (e.g. the contested pesticides and the opponent’s fungicides; the contested animal washes [insecticides] and the opponent’s vermin destroying preparations; the contested dietetic foods adapted for medical purposes and the opponent’s food for babies), or

- the contested sanitary preparations for medical purposes include the opponent’s disinfectants.

Other goods that fall under the above mentioned categories (1), (2), (3), (4), (5) and (6) are similar to varying degrees to the opponent’s goods, for instance:

- similar to a high degree (e.g. the contested insecticides and the opponent’s fungicides, as they have the same purpose, and they usually coincide in producer, relevant public and distribution channels), or

- similar (e.g. the contested veterinary preparations are similar to the opponent’s materials for dressings, the contested medicines for human purposes; pharmaceutical preparations are similar to the opponent’s plasters; materials for dressings; the contested vitamin preparations and the opponent’s food for babies; the contested air deodorizing preparations and the opponent’s disinfectants - as they as they have the same purpose, and they usually coincide, at least, in relevant public and distribution channels), or

- similar to a low degree (e.g. the contested teeth filling material and the contested disinfectants, as they usually coincide in relevant public and distribution channels).

However, the contested capsules for medicines; cachets for pharmaceutical purposes in Class 5 are dissimilar to the opponent’s goods. They are empty capsules and empty cachets, only designed to hold a certain dosage of medicines. The purpose of capsules and cachets is only to hold a certain dosage of medicines (in the form of powder or liquid), allowing them to be taken orally. These contested goods have no relevant points in contact with the opponent’s goods in Class 5 (food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides). Their producers and distribution channels are different. They are not complementary or in competition. Even if the public may coincide as capsules for medicines are available to general public, this factor is not sufficient to establish similarity between capsules, cachets and the opponent’s goods. The goods under comparison are also dissimilar to the opponent’s goods in Class 3 (soaps; perfumes, essential oils, cosmetics, hair lotions; dentifrices; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations) and to the opponent’s services in Class 44 (hygienic and beauty care for human beings; aromatherapy services; beauty salons; massage), as they do not coincide in any relevant criteria.

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 or similar to varying degrees are directed at the public at large and also at professionals in the medical and pharmaceutical fields.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

For instance, an average degree of attention is usually paid in respect of goods such as cleaning preparations and dental wax.

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

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 word elements forming the respective signs are not meaningful in certain territories, for example in those countries where English is not understood. Since the similarities between the signs are higher from the part of the relevant public for which the word elements of the signs are meaningless, the Opposition Division finds appropriate to focus the comparison of the signs on this (significant) part of the public which includes, inter alia, the Spanish‑speaking part of the public.

The element ‘SKEYNDOR’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

As regards the second word element of the earlier mark, although the letters ‘CURE’ are slightly represented in bold, the Opposition Division finds it unlikely that the consumers in question will perceive the element ‘UNIQCURE’ as two independent elements (‘UNIQ’ and ‘CURE’) despite the slight difference in the typeface, but rather as a single unit with no meaning, since mentally dissecting the word as ‘UNIQ’ and ‘CURE’ does not help them to identify any clear concept in the resulting words. The parties have not submitted any arguments that could reach a different conclusion. Accordingly, the element ‘UNIQCURE’ of the earlier mark is considered to be perceived as one single meaningless distinctive word.

The word element ‘UNIQCURE’ is depicted slightly bigger than the word element ‘SKEYNDOR’ depicted on top of the sign.

The element ‘UNIQPUR’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The figurative element of the contested sign has no particular meaning and is, therefore, also distinctive. However, it must be recalled that 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).

Even though a part of the public might perceive it as a fanciful letter ‘Q’, referring to this letter as such, it has no particular meaning either in relation to the relevant goods and is distinctive. Furthermore, when perceived, the letter ‘Q’ will most probably be associated with the letter ‘Q’ in the middle of the word element ‘UNIQPUR’, thus as a reference to such word. Despite its bigger size, the sign does not have any element more dominant than others, since all the elements forming the mark are clearly perceived at the same time, with a similar intensity. In the contested sign, it is expected that the relevant public will only refer to the sign through its word element ‘UNIQPUR’.

Visually, the signs coincide in the string of letters ‘UNIQ*UR*’ found in the biggest element of the earlier mark and being most of the letters forming the word element of the contested sign. The signs differ in the fifth letters ‘C’ versus ‘P’ of that word element and in the letter ‘E’ at the end of the earlier mark. The signs also differ in the elements placed on top of the signs, namely the word element ‘SKEYNDOR’, which is, however, slightly smaller, and the figurative element of the contested sign, which has a lower impact for a part of the public that would perceive it as merely being an unidentifiable figurative elements, for the reasons explained above. For another part of the public that will perceive it as being a fanciful letter ‘Q’, the marks also differ in this regard.

Therefore, taking into account the foregoing, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘UNIQ*UR*’, placed in the same order in the biggest element of the earlier mark and in the word element of the contested sign. The pronunciation differs in the fifth letters ‘C’ versus ‘P’ of that word element and in the letter ‘E’ at the end of the earlier mark. The pronunciation also differs in the sound of the letters ‘SKEYNDOR’ at the beginning of the earlier mark. In addition, probably the majority of the consumers would not pronounce the letter ‘Q’ on top of the contested sign (if perceived as such) and only pronounce ‘UNIQPUR’.

Therefore, for a significant part of the public under assessment, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in question. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for a part of the public. For another part of the public that would perceive the letter ‘Q’ as referring to this letter in the alphabet, while the earlier mark has no meaning, the marks 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 question. 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 which can be made with the registered mark, 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods and services. The relevant public is the public at large and business customers with a degree of attention that may vary from average to high.

The earlier mark has a normal degree of distinctive character.

The signs are visually and aurally similar to an average degree for a significant part of the relevant public under assessment. Although the earlier mark contains two word elements, the second element, ‘UNIQCURE’, is depicted slightly bigger and is, therefore, likely to attract more the attention of the relevant public. This element coincides in most of the letters/sounds with the word element ‘UNIQPUR’ of the contested sign, placed in the same order.

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 the present case, it is very probable that the relevant consumer, even when displaying a high degree of attention, will confuse the differing letters (‘C’/‘P’), which are placed in the middle of such long words (‘UNIQCURE’ and ‘UNIQPUR’), and even not recall the letter ‘E’ at the end of the earlier mark. In terms of recognition and recall, the identity between the first part of the verbal elements is more important, as differences in the middle of verbal elements may be ignored or not noticed and readily recalled by the relevant consumer.

The conceptual comparison between the signs in question is either not possible or they are not conceptually similar. In the latter scenario, it must be recalled that only a part of the public may perceive the figurative element of the contested sign as a fanciful letter ‘Q’ and, in that case, it will most probably be associated with the letter ‘Q’ in the middle of the word element ‘UNIQPUR’, thus as a reference to such word. In any case, it is expected that the relevant public will only refer to the contested sign through its word element ‘UNIQPUR’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on a significant part of the public, namely in all consumers for whom the word elements of the signs are meaningless, such as the Spanish-speaking 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 or similar to those of the earlier trade mark. The opposition is also successful as regards the goods that are similar to a low degree only, taking into account the similarities between the signs and according to the interdependence principle mentioned above.

The rest of the contested goods 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 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

Chantal VAN RIEL

Marta GARCÍA COLLADO

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.