OPPOSITION Nо B 3 120 135

Naos SAS, 355 rue Pierre-Simon Laplace, 13290 Aix-En-Provence, France (opponent), represented by Cabinet Laurent & Charras, Le Contemporain, 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative)

a g a i n s t

Korres Single Member SA Natural Products, 3 Drosini Str., 144 52 Metamorfosi, Greece (applicant), represented by Tsimikalis Kalonarou Law Firm, Neof, Vamva, 1, 106 74 Athens, Greece (professional representative).

On 25/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 120 135 is upheld for all the contested goods.

2. European Union trade mark application No 18 197 304 is rejected in its entirety.

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

REASONS

On 13/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 197 304 (figurative mark), namely against all the goods in Class 3. The opposition is based on, inter alia, French trade mark registration No 1 228 781, ‘HYDRABIO’ (word 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 French trade mark registration No 1 228 781.

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; toothpastes.

The contested goods are the following:

Class 3: Non-medicated cosmetics and toiletry preparations; perfumery, essential oils; non-medicated dentifrices.

The contested non-medicated cosmetics and toiletry preparations; perfumery, essential oils; non-medicated dentifrices are identical to the opponent’s perfumery; essential oils; cosmetics; toothpastes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

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.

The applicant argues that the (identical) goods target both the public at large and the professional public, and that the degree of attention ‘will vary from average to somewhat more than that’. The Opposition Division disagrees.

The (identical) goods target the public at large. Even if some of the goods in question, including perfumery or cosmetics, are for application to the human body, they are not used for the treatment of diseases. Therefore, they constitute everyday products that target the average consumer (14/04/2011, T‑466/08, Acno focus, EU:T:2011:182, § 49).

The degree of attention is only average (07/02/2012, T‑305/10, Dynique, EU:T:2012:57, § 26), as confirmed by the decisions to which the applicant itself refers (21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 38; 14/04/2011, T‑466/08, Acno focus, EU:T:2011:182, § 49). This is clearly expressed in the latter decision, where it is held that ‘the relevant public’s attention cannot be regarded as greater than it would be in relation to everyday consumer goods’.

c) Distinctiveness of the earlier mark and comparison of the signs

HYDRABIO
Earlier trade mark	Contested sign

The relevant territory is France.

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).

In addition, the distinctiveness of the earlier mark, is one of the factors to be taken into account in the global assessment of likelihood of confusion. As the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, this assessment will rest on the earlier mark’s inherent distinctiveness.

Although the earlier mark comprises one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). It is possible for the relevant consumers to break down a word mark even if only one of the components making up that mark is familiar to them (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 72, and the case-law cited). The relevant public will at least discern the universally known component ‘BIO’ in the contested sign. This will be perceived as referring to the idea of environmental protection, the use of natural materials, or ecological/organic manufacturing processes (05/06/2019, T‑229/18, Biolatte, EU:T:2019:375, § 48). In the context of the relevant goods in Class 3, it can be perceived as an indication of the characteristics of the goods (i.e. that they are made of natural or organic substances). Therefore, this component is non-distinctive. It is reasonable to assume, in line with the applicant’s arguments, that (a sizeable) part of the relevant public will perceive ‘HYDRA’ as alluding to the goods’ moisturising characteristics. For this part of the public, the element ‘HYDRA’ is (relatively) weak. The Opposition Division considers it appropriate to focus its assessment on this part of the relevant public, as this scenario is the best light in which the opposition may be assessed for the applicant. The validity of earlier trade marks may not be called into question in proceedings opposing the registration of an EUTM. Therefore, even if ‘BIO’ is non-distinctive and ‘HYDRA’ has a low degree of distinctiveness for part of the relevant public, these elements must be deemed to have some degree of distinctiveness. Therefore, the distinctiveness of the earlier mark is considered to be at least low.

The contested sign is a figurative mark comprising the verbal element ‘HYDRA-BIOME’, depicted in blue, standard upper-case letters, within a white circle with a golden edge. As a result of the hyphen, the relevant public will break this verbal element down into ‘HYDRA’ – which is meaningless or allusive as explained above – and ‘BIOME’. The applicant argues that the component ‘BIOME’ means ‘a large naturally occurring community of flora and fauna occupying a major habitat, e.g., forest or tundra’, and that the relevant public will perceive it as referring to ‘the microbiome (mix of organisms, namely, bacteria and other microorganisms) that coexist and are present on our human body and skin’. The Opposition Division cannot concur with this point of view. ‘Biome’ is a scientific concept (from biology). It will not be understood by a sizeable part of the public, which, as explained above, consists of the public at large, and not the professional public, who would be more likely to grasp such a concept. The applicant states that

… it is obvious that the words ‘HYDRA’ and ‘BIOME’ seen together in relation to the relevant goods, will be perceived as ‘an area or community of several organisms which ensure hydration’, therefore, providing information that the relevant goods contain hydrating substances to safeguard the microbiome balance of the human body and skin, due to their moisturising properties (see also Annex 7).

However, this clearly involves too many mental steps, even for the part of the public that would grasp the meaning of ‘BIOME’. Therefore, although the relevant public may break down the component ‘BIOME’ into ‘BIO’ and ‘ME’, for the reasons explained above, this component, taken as a whole, is meaningless and has a normal degree of distinctiveness. The white circle depicts a top view of an open cream box, displaying the texture of white cream. In order to function as a distinctive and differentiating element, a device must be striking and uncommon, so that it will be mentally retained by the public (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 47-48). This is not the case here: the figurative element is descriptive, as it points to the nature of the goods (being an ointment or paste) and, as such, is non-distinctive. The white circle is contained within a blue rectangle, which is merely decorative and therefore of a secondary nature. Within the blue rectangle are the elements ‘EST KORRES 1996’, with ‘KORRES’ in white upper-case letters and ‘EST’ and ‘1996’ in smaller golden letters. These elements are depicted above the white circle. The word and number combination ‘EST 1996’ will be perceived as information regarding the year in which the applicant became legally entitled, or when it started its business. It is therefore descriptive and devoid of distinctive character. The element ‘KORRES’ is meaningless and, as correctly pointed out by the applicant, has a normal degree of distinctiveness.

Contrary to the applicant’s argument that the elements ‘EST KORRES 1996’ are dominant in the sign ‘because they are placed at its beginning, in a central position, and on its upper part’, there is no element which is more dominant (eye-catching) than the other elements. Even if ‘KORRES’ is distinctive to an average degree, its size is smaller than that of the element ‘HYDRA-BIOME’. Therefore, ‘HYDRA-BIOME’ catches the eye at least as easily, if not more easily, than ‘KORRES’. There is no legal ground to consider the applicant’s (implicit) claim that ‘KORRES’ is well known, or its claim that, as a result of such use, ‘KORRES’ would be the dominant element. In this regard, it is irrelevant whether or not ‘KORRES’ is highly recognised due to its use in the past. The right to an EUTM begins on the date when the EUTM application is filed and not before, and it is from that date onwards that the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the opponent’s rights, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. On the other hand, the Opposition Division agrees with the applicant that it is highly likely that this element will be perceived as a business name, that is to say, indicating a specific trade origin, especially since it will be read in conjunction with the combination ‘EST 1996’.

Although the contested sign does not have a dominant element, in principle, the verbal component of a sign consisting of both verbal and figurative components 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). Therefore, the verbal elements ‘HYDRA-BIOME’ and ‘KORRES’ are considered more important in the overall impression of the contested sign.

Visually, the signs coincide in the letters ‘H-Y-D-R-A-B-I-O’, which constitute the entire earlier mark and are the first eight (out of ten) letters, in the same order, in one of the more important elements of the contested sign. They differ in the hyphen, which will not go unnoticed, as it clearly breaks the contested sign’s verbal element into two separate elements. They further differ in the additional letters ‘ME’, present only in the corresponding verbal element of the contested sign. The signs also differ in the contested sign’s additional verbal elements (‘EST KORRES 1996’), as well as in all its figurative elements, which are – for the reasons set out above – at best of a merely secondary nature.

Therefore, as the impact of the element ‘EST KORRES 1996’ must also be given due consideration, the signs are only visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HYDRABIO’, present identically in both signs. It differs in the sound of the letters ‘ME’, placed at the end of the contested sign’s more important element. The difference in sound caused by the letters ‘ME’ is somewhat reduced, in that the letter ‘E’ is silent. Therefore, the additional letters ‘ME’ will not result in an additional syllable.

It is likely that a part of the public under analysis will not pronounce ‘EST KORRES 1996’, taking into account that the relevant public tends to shorten long signs (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55). For this part of the public, the signs are aurally similar to a high degree.

For the part of the public under analysis that will pronounce the element ‘Korres’, the signs are aurally similar to at least a below-average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the public under analysis will associate the components ‘HYDRA’ and ‘BIO’, included in both signs, with the meanings explained above. To that extent, and without this being altered by the fact that they will also understand ‘EST 1996’, the signs are conceptually similar 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) 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 contested goods are identical, and target the general public, whose degree of attention is average. The earlier mark has a low degree of inherent distinctiveness for the part of the relevant public under analysis.

The assessment of the likelihood of confusion may be influenced by the fact that one of the signs contains several verbal elements, one of which could be seen as a business name, indicating a specific trade origin. In this scenario, either element (i.e. the business name or the element typically indicating the mark designating the line of product) may become more relevant in the overall impression of the sign, even if it has a lower degree of distinctiveness or is visually less prominent. This is because, in this scenario, both elements of the sign (i.e. the business name and the mark designating the product line) will, in principle, play an independent distinctive role, even where the inherent distinctiveness of one of them is lower. Because of this particular configuration of the sign, the consumer will perceive the elements independently, as each indicating an aspect of the commercial origin of the goods or services designated by it (e.g. a business name and a mark designating the product line). Consequently, if the earlier mark is identical or highly similar to either element of the contested sign (the business name or the mark designating the product line), even if it is the element that would otherwise be less relevant (e.g. due to its size or its lower degree of distinctiveness), there will, in principle, be a likelihood of confusion.

Admittedly, even though the signs are aurally similar to at least a below-average degree, they are only similar to a low degree from a visual and conceptual point of view. However, all of the earlier mark’s letters are entirely contained, in the same order, in the element that will be considered to designate the product line of the contested sign (‘HYDRA-BIOME’). In view of the aforementioned interdependence principle, these similarities strongly outweigh the differences caused by the presence of a hyphen and two additional letters in the contested sign, along with some of its non-distinctive and decorative figurative aspects.

Considering all the above, there is a likelihood of confusion on the part of the public, even if the earlier mark is considered to have a low degree of distinctiveness, and even if the element ‘HYDRA-BIOME’ is considered visually less important in the contested sign than its verbal element ‘KORRES’. This outcome is not altered by the presence of the distinctive element ‘KORRES’ in the contested sign, which will be perceived as a business name, and therefore as indicating a different aspect of the commercial origin of the goods designated by it.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 228 781. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned 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 rights 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

Andrea VALISA

Christophe DU JARDIN

Martin MITURA

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.