OPPOSITION No B 3 123 914

Industrias Alen S.A. de C.V., Blvd. Díaz Ordaz No. 1000, Col. Los Treviño, 66350 Santa Catarina, Mexico (opponent), represented by Arochi & Lindner, S.L., Paseo de Gracia 101- Piso 1º 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Robidia s.r.o., Českomoravská 2408/1ª, 19000 Praha 9 – Libeň, Czech Republic (applicant), represented by Patentcentrum Sedlák & Partners S.R.O., Okružní 2824, 370 01 České Budějovice, Czech Republic (professional representative).

On 27/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 123 914 is upheld for all the contested goods, namely

Class 3: Cleaning preparations; fragrance preparations.

Class 5: Disinfectants and antiseptics; pharmaceuticals and natural remedies; detergents for medical purposes; adhesive plasters; materials for dressings.

2. European Union trade mark application No 18 199 622 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

On 12/06/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 199 622 for the figurative mark , namely against some of the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 16 916 165 for the 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.

a) The goods

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

Class 3: Bleaching preparations; preparations for cleaning; grease-removing preparations; abrasive preparations; abrasive preparations; soaps for household use.

Class 5: Hygiene preparations for medical purposes; plasters; materials for dressings; teeth filling material; dental impression materials; disinfectants.

The contested goods are the following:

Class 3: Cleaning preparations; fragrance preparations.

Class 5: Disinfectants and antiseptics; pharmaceuticals and natural remedies; detergents for medical purposes; adhesive plasters; materials for dressings.

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

Cleaning preparations are identically contained in both lists of goods (including synonyms).

The contested fragrance preparations are similar to the opponent’s preparations for cleaning. These goods coincide in distribution channels, relevant public and might be produced by the same kind of undertakings.

Contested goods in Class 5

Disinfectants and antiseptics; materials for dressings are identically contained in both lists of goods (including synonyms).

The contested adhesive plasters are included in the broad category of the opponent’s plasters. Therefore, they are identical.

The contested detergents for medical purposes are included in the broad category of the opponent’s hygiene preparations for medical purposes. Therefore, they are identical.

The contested pharmaceuticals and natural remedies are similar to the opponent’s materials for dressings. These goods coincide in purpose, distribution channels and relevant public.

The applicant argued that the nature of its goods is different to that of the opponent’s, since the opponent is primarily engaged in the production of bleaches, liquid detergents, liquid and powder detergents, laundry softeners, dishwashing liquids and muriatic acid, and also focuses on plastic recycling, whereas the applicant sells and markets contact lenses, sunglasses and spectacles and accessories for those products, mainly in the area of medical devices. In that regard the following has to be taken into account: the comparison of goods and services required by Article 8(1)(b) EUTMR must relate to the description of the goods and services covered by the marks and not to the goods and services for which the trade mark is actually used unless, following a valid and admissible request for proof of genuine use of the earlier mark, the proof is furnished only in respect of some of the goods/services. Therefore, in the present case, the comparison of the goods must be based on the wording indicated in the lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). For all these reasons, the applicant’s argument must be dismissed.

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 goods found to be identical and similar target both the public at large and professionals in, for example, the medical and healthcare fields, such as doctors and pharmacists.

The degree of attention varies from average (e.g. adhesive plasters and cleaning preparations) to above average (e.g. pharmaceuticals) depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods.

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. For example, some of these products, such as pharmaceuticals, may have an impact on one’s health and therefore consumers would display an above average degree of attention.

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 earlier mark is a figurative mark composed of the verbal element ‘AlEn’, written in fairly standard green and mixed upper- and lower-case letters. The verbal element is placed in a device in the form of a house, also in green.

The contested sign is a figurative mark composed of the verbal element ‘Alensa’, written in fairly standard title case red letters.

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 last letters ‘sa’ of the contested sign are meaningful in certain territories, for example in those countries where Spanish and Polish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Polish-speaking part of the public such as consumers in Spain and Poland.

The verbal element ‘AlEn’ of the earlier mark will be perceived, at least by the vast majority of the consumers, as a meaningless term and is, therefore, distinctive. The figurative element in the form of a house refers to this concept as such. It is at most weak for products used for the house or for household purposes, such as soaps for household use. For other goods that have nothing to do with households for instance, such as adhesive plasters, it is distinctive.

Furthermore, the Opposition Division considers that the earlier mark has no element that could be considered clearly more dominant than other elements. The sign does not contain any components that due to their position, size, dimensions and/or use of colours would be visually outstanding in respect to others.

In any case, 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, because the public will more easily refer to the signs by their verbal element (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This also applies to the figurative element in the earlier mark. In this respect, the Opposition Division disagrees with the applicant, in its observations of 19/01/2021, where it points out that both the verbal and graphic elements are equivalent. This is even more the case, as pointed out above, considering that the figurative element is at most weak for at least some of the goods.

As regards the contested sign, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning, or that resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, consumers naturally will look for a meaning when reading a word. This applies to the contested sign.

In light of the above judgment, the Opposition Division considers that at least the vast majority of the relevant public will dissect the contested sign into the components ‘Alen’ and ‘sa’, since the last letters ‘sa’ are meaningful in Polish (‘spolka akcyjna’) and Spanish (Sociedad Anónima’). In both languages this abbreviation stands for ‘LLC’ (‘Limited Liability Company’) and rather refers to the nature of the company. These letters are, therefore, at most weak.

Visually, the signs coincide in the letters ‘ALEN*’, although written in a different typeface and colour, meaning that the verbal element of the earlier mark is included in the distinctive element ‘Alensa’ of the contested sign. However, they differ in the figurative element of the earlier mark, the typeface, albeit being fairly standard, and the colour green, versus the last letters ‘sa’, the typeface, albeit also fairly standard, and the colour red.

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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that the first four letters of the verbal elements coincide, is relevant for the comparison.

The red and green colours and fairly standard typefaces will not lead the consumer’s attention away from the words they embellish.

Therefore, bearing in mind the above principles and assertions on the distinctiveness of the elements contained in the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ALEN’, present identically in the signs. However, the marks differ in the pronunciation of the last letters ‘sa’.

Therefore, bearing in mind the above principles and assertions on the distinctiveness of the elements contained in the signs, they are aurally similar to at least an average degree.

Conceptually, neither of the elements ‘AlEn’ or ‘Alensa’ as a whole have a meaning for, at least, the vast majority of the public in the relevant territories. However, the letters ‘sa’ of the contested sign have the abovementioned meaning. Furthermore, the earlier mark also contains the figurative element of a house, which is not contained in the contested sign. As the signs will be associated with a dissimilar meaning, the signs are conceptually not similar. Even though the letters ‘sa’ of the contested sign (at most weak) and the figurative element of the earlier mark (also at most weak at least for some of the products) give both signs an additional concept that cannot be fully ignored, this has a very limited impact on the overall conceptual comparison.

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 the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an at most weak element, for at least some of the goods, in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

A global assessment of a 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, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar. They target the public at large and a more professional public. The degree of attention varies from average to above average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally similar to at least an average degree and conceptually they are not similar, the differentiating concepts having, however, a very limited impact on the conceptual comparison.

In addition, account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their minds (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with an above average degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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. Indeed, it is quite likely that the relevant public will overlook the small differences in the last letters ‘sa’ (being at most weak) and in the figurative element of a house (also at most weak for at least some of the goods).

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Polish-speaking public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 916 165 for the figurative mark . It follows that the contested trade mark must be rejected for all the contested goods.

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

Helen Louise MOSBACK

Chantal VAN RIEL

Michal KRUK

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.