OPPOSITION No B 3 114 859

Just Italia SPA, Via Cologne 12, 37023 Grezzana, Fraz. Stallavena (VR), Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Mäurer & Wirtz GmbH & Co. KG, Zweifaller Str. 120, 52224 Stolberg, Germany (applicant).

On 21/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 859 is upheld for all the contested goods.

2. European Union trade mark application No 18 165 223 is rejected in its entirety.

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

REASONS

On 26/03/2020, the opponent filed an opposition against all the goods (Class 3) of European Union trade mark application No 18 165 223 ‘Just Life’ (word mark). The opposition is based on, inter alia, Italian trade mark registration No 1 432 463 ‘JUST’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opposition was filed by ‘Just Italia SPA’, whereas, the owner of the earlier marks is ‘Just Italia S.R.L.’ However, together with the opposition, the opponent submitted evidence that this is the same legal entity, which has merely changed its legal form.

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 Italian trade mark registration No 1 432 463.

a) The goods

The goods on which the opposition is based are, inter alia, 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: Soaps, perfumery, essential oils and cosmetics, other than those for use on hair and scalp, non-medicated dentifrices.

The contested soaps, other than those for use on hair and scalp are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested perfumery, other than those for use on hair and scalp is included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested essential oils, other than those for use on hair and scalp are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested cosmetics, other than those for use on hair and scalp are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested non-medicated dentifrices are included in the broad category of the opponent’s dentifrices. 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 average.

c) The signs

JUST	Just Life
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 common verbal element ‘JUST’ has no meaning for the relevant public and is, therefore, distinctive.

The contested sign’s verbal element ‘Life’ will be understood by part of the public as the basic English word used to refer to the period in which someone is alive. However, the possibility that part of the public could perceive this word as meaningless cannot be excluded. Because of its non-specific nature, the verbal element ‘Life’ has no particular relationship with the relevant goods and has, therefore, a normal degree of distinctiveness, both for the part of the public that perceives its meaning and for the part of the public that might not.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that would not associate ‘Life’, in the contested sign, with a meaning, as this is the best light in which the opposition can be examined.

Since both marks are word marks, it is the word as such that is protected. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in upper-case letters and the other in title-case letters.

Visually and aurally, the signs coincide in the distinctive element ‘JUST’, which is the entire earlier mark and the first component of the contested sign. The signs differ in the verbal element ‘Life’, positioned at the end of the contested sign.

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.

Therefore, contrary to the applicant’s arguments, the signs are visually and aurally similar to an average 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) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, 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).

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.

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).

The goods are identical and target the public at large, who display an average degree of attentiveness. The signs are visually and aurally similar to an average degree, as the earlier mark is entirely incorporated as an independent and distinctive element in the contested sign. Furthermore, it is placed at the beginning of the contested sign, which, as explained above, is the part that first catches the consumers’ attention. In an overall assessment of the marks, the contested sign’s differing element ‘Life’ is not sufficient to outweigh the abovementioned similarities. The distinctiveness of the earlier mark is normal and neither of the signs has a meaning that could help the relevant public to differentiate them more easily.

Therefore, also taking into account the interdependence principle, it is highly conceivable that the relevant public, who will also have to rely on their imperfect recollection of the signs, could confuse the signs or believe that the identical goods originate from the same or economically linked undertakings.

Indeed, it cannot be excluded that, owing to the inclusion of the sole element of the earlier mark in the contested sign, the relevant consumers might perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argued that the verbal element ‘JUST’ has a low distinctive character, given that it is a basic English word often used in advertising, and that there are many trade marks that include it. In support of its argument the applicant referred to several European Union trade mark registrations and submitted a list of perfumes that contain the verbal element ‘JUST’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘JUST’.

In the present case, the relevant territory is Italy and, as has been pointed out above, the verbal element ‘JUST’ does not have any meaning in Italian. Therefore, it is distinctive. Moreover, even if a part of the public in Italy did understand the English word ‘just’, it would have no concrete meaning in relation to the relevant goods and is, therefore, distinctive.

Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public that would not associate the contested sign’s verbal element ‘Life’ with a meaning. A likelihood of confusion for part of the relevant public in the relevant territory is sufficient to reject the contested application and there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 432 463. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned 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

Christian STEUDTNER

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.