OPPOSITION Nо B 3 111 902

Benjamin Casals Marques, Pl. Joan Cornudella, 18 4º 2ª, 08035 Barcelona, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

The Skinfactory Co., Ltd., Kundal Office Building, 17, Eonju-ro113-gil, Gangnam-gu, Seoul, Republic of Korea (applicant), represented by Peter Lee, Immermannstr. 14-16 -steinwayhaus-, 40210 Düsseldorf, Germany (professional representative)

On 08/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 902 is upheld for all the contested goods, namely

Class 3: Shampoos; hair treatment preparations; body lotions; body washes; body scrub; body mist; feminine deodorant sprays; feminine hygiene cleansing towelettes; hand washes; hand creams; cleansing foam; toothpaste; air fragrance reed diffusers; fabric softeners; perfumes; hair wax; hair spray; detergents.

2. European Union trade mark application No 18 152 118 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

On 18/02/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 152 118 ‘Kundal’ (word mark), namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 905 477 (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 905 477.

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: Shampoos; hair treatment preparations; body lotions; body washes; body scrub; body mist; feminine deodorant sprays; feminine hygiene cleansing towelettes; hand washes; hand creams; cleansing foam; toothpaste; air fragrance reed diffusers; fabric softeners; perfumes; hair wax; hair spray; detergents.

The contested shampoos; hair treatment preparations; body lotions; body washes; body scrub; body mist; feminine deodorant sprays; feminine hygiene cleansing towelettes; hand washes; hand creams; cleansing foam; hair wax; hair spray are included in the opponent’s broad category of cosmetics. Therefore, they are identical.

The contested toothpaste is included in the broad category of the opponent’s dentifrices. Therefore, they are identical.

The contested perfumes; air fragrance reed diffusers are included in the opponent’s broad category of perfumery. Therefore, they are identical.

The contested fabric softeners are included in the opponent’s broad category other substances for laundry use. Therefore, they are identical.

The contested detergents overlap with the opponent’s soaps. Therefore, they are 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 average.

c) The signs and the distinctiveness of the earlier mark

	Kundal
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 signs are meaningless for the relevant public and therefore have an average degree of distinctiveness.

The earlier mark is figurative with a banal stylisation of the verbal element (a slightly stylised black font). As consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely decorative. Therefore, the public will not pay significant attention to these features as indicators of commercial origin.

Since the opponent did not make any particular claim in relation to the distinctiveness of his trade mark and it has no meaning in relation to the goods involved, it is deemed to be normal.

Visually and aurally, the earlier mark is entirely reproduced in the verbal element of the contested sign. They coincide in their first five letters and sounds, which form the whole earlier mark. They differ in the last letter/sound of the contested sign (‘l’).

The signs also differ in the diaeresis over the letter ‘U’ of the earlier mark; however, this is not a significant visual difference. In addition, following the Spanish rules of pronunciation, ‘U’ and ‘Ü’ are pronounced identically, and therefore this difference has no impact aurally either.

The signs further differ visually in the slightly stylised typeface of the earlier mark, which has reduced impact, if any, as explained above.

Therefore, taking the above into account and also that the earlier mark is entirely reproduced in the contested sign, the marks are considered visually similar and aurally similar to a high degree.

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) Global assessment, other arguments and conclusion

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).

The goods are identical. They target the public at large with an average degree of attention.

The signs are visually and aurally similar to a high degree since they only differ in the last letter of the contested sign, which therefore reproduces the entire earlier mark, and in the typeface of the earlier mark, which has a reduced impact. No conceptual comparison can be made. Both signs are meaningless and therefore consumers cannot differentiate them conceptually. The earlier mark has a normal degree of distinctiveness.

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). Due to this imperfect recollection, consumers may overlook the differences at the end of the signs.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 905 477. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Inés GARCÍA LLEDÓ

Sofía SACRISTÁN MARTÍNEZ

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.