OPPOSITION Nо B 3 116 939

Mega Disposables S.A., Dekelias 148, 136‑78 Aharnes, Greece (opponent), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106‑80 Athens, Greece (professional representative)

a g a i n s t

Resani As, Gaustadalléen 21, 0349 Oslo, Norway (applicant), represented by Advokatfirma Ræder Da, Henrik Ibsens Gate 100, 0230 Oslo, Norway (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 116 939 is upheld for all the contested goods, namely:

Class 5: Sanitary preparations and articles; hygienic preparations and articles; disinfectants and antiseptics.

2. European Union trade mark application No 18 156 818 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 24/04/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 156 818 ‘RESANI’ (word mark), namely against all the goods in Class 5. The opposition is based on Greek trade mark registration No 98 618 and Bulgarian trade mark registration No 72 744, both for the word mark ‘SANI’, for which the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(5) EUTMR in relation to Greek trade mark registrations No 226 608 and No 98 618, both for the word mark ‘SANI’.

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 Greek trade mark registration No 98 618.

a) The goods

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

Class 5: Sanitary napkins from cellulose and gauze.

The contested goods are the following:

Class 5: Sanitary preparations and articles; hygienic preparations and articles; disinfectants and antiseptics.

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 sanitary preparations and articles; hygienic preparations and articles include, as broader categories, the opponent’s sanitary napkins from cellulose and gauze. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s goods are also similar to a normal degree to the applicant’s disinfectants and antiseptics, as they can share the same purpose, are typically sold through the same distribution channels (i.e. pharmacies), and have the same end users and producers.

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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise (especially in the medical and pharmaceutical sectors).

The degree of attention varies from average to high, depending on the nature of the goods, their price, and the frequency of purchase. For example, for sanitary articles the level of attention may be average.

c) The signs

SANI	RESANI
Earlier trade mark	Contested sign

The relevant territory is Greece.

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 ‘SANI’, which has no meaning in Greek. Although the part of the public that also understands English might perceive an allusion to ‘sanitary’ and establish a connection with the relevant goods, for the vast majority of the relevant public the term is perfectly distinctive in relation to these goods.

The contested sign, ‘RESANI’, has no meaning for the relevant public.

Visually, the signs share the letters ‘SANI’ and differ in the contested sign’s additional letters ‘RE’. The common element ‘SANI’ constitutes four of the contested sign’s six letters.

Despite these differences, the signs are visually similar to at least a low degree (09/12/2020, T‑190/20, Almea (fig.) / Mea, EU:T:2020:597; 23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 33-35; 07/06/2018, R 2592/2017‑5, beevo (fig.) / EVO et al., § 36; 01/08/2011, R 1610/2010‑4, ZOLUX / LUX, § 23; 23/02/2012, R 433/2011‑1, SUKIN / kIN (fig.) et al., § 36; 15/03/2011, R 88/2010‑4, YOONO / ONO et al., § 26). The fact that the contested sign is longer than the earlier sign, and that it contains the additional letters ‘RE’ at its beginning, does not prevent consumers from noticing the common element ‘SANI’. As a result of that common element the relevant public will perceive a certain visual similarity between the marks (23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 33, 35). Although the initial part of a word may be more likely to catch the consumer’s attention, this principle cannot apply in all cases. The contested sign’s differing letters, ‘RE’, do not attract the relevant public’s attention more than ‘SANI’, which follows (23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 35).

Aurally, the common letters, ‘SANI’, are pronounced identically in Greek. The only aural difference lies in the sound of the contested sign’s first syllable, ‘RE’, which does not have a counterpart in the earlier sign. Two out of three of the contested sign’s syllables are phonetically identical to the earlier sign. The earlier sign is completely contained in the contested sign. Therefore, the signs are also aurally similar to at least a low degree.

A conceptual comparison is not possible because neither ‘SANI’ nor ‘RESANI’ have a meaning for the relevant consumers.

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 claimed that the earlier trade mark is reputed but did not file any evidence in order to prove such a claim.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the degree of 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). Accordingly, a higher degree of similarity between the conflicting goods can outweigh a lower degree of similarity between the conflicting signs.

Since the earlier mark is completely included in the contested sign, the contested sign does not maintain the required distance. There is a likelihood of confusion, even for those goods for which consumers display a higher degree of attention. The conflicting signs are visually and aurally similar to at least a low degree. The goods at issue are partly identical and partly similar, and the earlier mark has a normal degree of distinctiveness. Therefore, the overall impression produced by the marks at issue could lead the public to believe that the goods come, at the very least, from undertakings that are economically linked. Even though ‘SANI’ does not play an independent distinctive role within the contested mark, it still contributes in a significant way to the overall impression it produces, insofar as it constitutes two thirds of the sign (23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 68).

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 Greek trade mark registration No 98 618. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier mark 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Martina GALLE

Gonzalo BILBAO TEJADA

Erkki MÜNTER

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.