OPPOSITION Nо B 3 123 234

 

Jacques Bogart International BY, Parklaan 34, 3016 BC Rotterdam, Netherlands (opponent), represented by Cabinet Marek, 28 rue de la Loge, 13002 Marseille, France (professional representative) 

 

a g a i n s t

 

Christina Said, 50 Wileg Street, Qala, Gozo QLA1932, Malta (applicant).

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

 

 

DECISION:

 

 

1.	Opposition No B 3 123 234 is upheld for all the contested goods and services, namely:

 

		Class 3: Soap; essential oils; toiletries; natural perfumery; natural oils for cosmetic purposes; household fragrances; non-medicated cosmetics and toiletry preparations; shampoo; hair conditioner; handmade soap; bar soap; liquid soap. Class 35: Online retail store services relating to cosmetic and beauty products; retail services in relation to toiletries; retail services relating to fragrancing preparations; wholesale services in relation to toiletries; retail services in relation to hair products; online retail services relating to cosmetics.
2.	European Union trade mark application No 18 211 611 is rejected for all the contested goods and services. It may proceed for the remaining uncontested goods and services.

 

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

 

REASONS

 

On 05/06/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 211 611 (figurative mark), namely against all the goods in Class 3 and some of the services in Class 35. The opposition is based on, inter alia,  European Union trade mark registration No 7 032 634, ‘APRIL’ (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 aforementioned EUTM registration 

 

a) The goods and services

 

The  services on which the opposition is based are, inter alia, the following:

 

EUTM registration No 7 032 634

Class 35: Retail sale, mail order and Internet sales of perfumery and cosmetics in small, medium and large sales outlets.  

The contested goods and services are the following:

 

Class 3: Soap; essential oils; toiletries; natural perfumery; natural oils for cosmetic purposes; household fragrances; non-medicated cosmetics and toiletry preparations; shampoo; hair conditioner; handmade soap; bar soap; liquid soap.

Class 35: Online retail store services relating to cosmetic and beauty products; Retail services in relation to toiletries; retail services relating to fragrancing preparations; wholesale services in relation to toiletries; retail services in relation to hair products; online retail services relating to cosmetics.  

 As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

  

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

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods which are the subject of the opponent’s retails services, namely perfumery and cosmetics, are identical to the contested goods (apart from the essential oils) as they are either included in the broader category of perfumery or cosmetics, respectively, or these goods overlap.

Therefore, all the contested goods except essential oils are similar to the opponent’s retail sale of perfumery and cosmetics in small, medium and large sales outlets in Class 35.

As regards the contested essential oils those are similar to the cosmetics. Therefore there is a low degree of similarity between the opponent’s retail sale of cosmetics and the contested essential oils. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of similar goods being brought together and offered for sale in the same specialized shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

 

 Contested  services in Class 35

The contested online retail store services relating to cosmetic and beauty products; retail services in relation to toiletries; retail services relating to fragrancing preparations; retail services in relation to hair products; online retail services relating to cosmetics overlap with the opponent’s  retail sale, mail order and Internet sales of perfumery and cosmetics in small, medium and large sales outlets. Therefore they are identical.

As regards the contested wholesale services in relation to toiletries those are considered similar to the opponent’s retail sale of cosmetics in small, medium and large sales outlets. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subject of these services (the goods themselves) is the same and the public could take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

 

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 and services found to be identical or similar to varying degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise (e.g. in relation to wholesale services).

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

 

c) The signs

 

APRIL
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 common element of the two signs, the word ‘APRIL’ is an English or German word, meaning ‘the fourth month of the year, after March and before May’ (see e.g. https://dictionary.cambridge.org/dictionary/english/april, https://www.duden.de/rechtschreibung/April, https://en.pons.com/translate/english-german/April). Furthermore, for example in Slovak, the equivalent word is almost identical, the only difference being an accent above the letter ‘i’ (see e.g. https://slovnik.juls.savba.sk/?w=april&s=exact&c=h8c1&cs=&d=kssj4&d=psp&d=sssj&d=orter&d=scs&d=sss&d=peciar&d=hssjV&d=bernolak&d=noundb&d=orient&d=locutio&d=obce&d=priezviska&d=un&d=pskcs&d=psken#, https://en.pons.com/translate/german-slovakian/April?bidir=1 ). Hence this word will be understood as such at least by the English, German- and Slovak-speaking part of the relevant public.

Since it does not convey any descriptive or allusive meaning in relation to the goods and services at issue, the verbal element ‘APRIL’ is considered distinctive.

As regards the second verbal element of the contested sign ‘BLOOM’, it is an English word and it means i.a. a flower on a plant, when a flower blooms, it opens or is open, and when a plant or tree blooms it produces flowers, to grow or develop successfully (see e.g. https://dictionary.cambridge.org/dictionary/english/bloom). However, it is not a basic English word, therefore it is highly unlikely that it will be understood by the non-English speaking public. Hence the above mentioned German- and Slovak-speaking public will perceive this element as a fanciful word with no meaning. Therefore, for this part of the relevant public it is distinctive.

As regards the element ‘by Christina’, it is noted that the English expression formed by the preposition ‘by’ followed by a personal or company name, such as the one at hand, is commonly and frequently used on a worldwide basis in the most disparate trade sectors to indicate the commercial origin of the goods at issue (04/02/2015, T- 372/12, APRO, EU:T:2015:70, § 38). Since the expression ‘by Christina’ of the contested sign serves as an indication of the origin of the goods and services, it is distinctive.

Nevertheless, due to its size, stylization and position this expression, together with the depiction of a lotus flower surrounded by a circular line (due to its size), play rather a secondary role in the contested sign. Besides, the lotus flower will be perceived as a reference to the characteristics of the goods in Class 3 and the goods which are subject matter of the services in Class 35, bearing in mind that lotus flower extract could be used as one of the ingredients of the cosmetic and perfumery products. Therefore, it is of a very limited (if any) distinctive character.

 

Thus the verbal elements ‘APRIL BLOOM’ together with the figurative elements creating the eye-catching background, namely white circle within the black square, are the dominant elements of the contested sign. Yet, those figurative elements are simple geometrical shapes, and even if used in combination, they will be perceived as having a purely decorative nature.

Having a meaningful element in common could make the signs more similar conceptually. Furthermore, the likelihood of confusion is greater in case the differing elements do not convey any additional meaning. Considering all the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the German- and Slovak-speaking part of the public.

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.

Visually, the signs coincide in the verbal element ‘APRIL’ which is the entire earlier mark and the first verbal element of the contested sign. They differ in the remaining verbal and figurative elements of the contested sign. However, the size and position of the verbal elements ‘by Christina’ as well as the distinctive character of the figurative elements must be taken into account when assessing the visual similarity between the two signs.

Besides, 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 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). There is no reason why this principle would not apply in the present case, given that there is nothing particularly imaginative or fanciful about the stylization, font and colours used in the contested mark to deviate the public’s attention from the verbal elements APRIL BLOOM’

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, thus in this case the consumers will focus on the verbal and coinciding element ‘APRIL’. 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, the signs are visually similar to an average degree.

  

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the  sound of the verbal element ‘APRIL’, present identically in both signs. The pronunciation differs in the second verbal element of the contested sign ‘BLOOM’ and the further verbal elements ‘by Christina’. However, it is highly unlikely that the latter will be pronounced. Firstly due to their size, stylization and position they are not easy to read (barely legible if the mark is small) . Secondly, it must be noted that consumers have a natural tendency to shorten long signs when pronouncing them (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75). The figurative elements of the contested sign have no bearing on the aural assessment since the relevant public has no reason to refer to them in addition to the word elements (11/09/2014, T-536/12, Aroa, ECLI:EU:T:2014:770, § 45).

 

Therefore, the signs are aurally similar at least to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Hence, due to the coinciding element ‘APRIL’, the signs will be associated with almost the same meaning. The figurative elements of the contested signs are of a very low (if any) distinctive character and as such have rather a minimal impact on differentiating of the signs. The verbal element ‘BLOOM’ does not convey any meaning and the verbal elements ‘by Christina’ will be likely not even perceived. In any case, even if perceived and read, the elements ‘by Christina’ would not change the meaning of the word ‘April’ in the contested sign.

Therefore, the signs are conceptually similar at least to an average 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) 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  services 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

 

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Furthermore, the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the contested goods and services and the opponent’s services have been found partly identical and partly similar to varying degrees and are directed at the public at large and professionals whose degree of attention will vary from average to high.

The earlier mark is reproduced in its entirety in the contested sign in which it plays an independent distinctive role. The majority of the additional elements of the contested sign are either secondary or of a limited (if any) distinctive character. The only distinctive element additional element is the word BLOOM. However, it does not convey any meaning and as such does not contribute to the differentiating of the two marks from the semantic point of view. In addition, the fact that the earlier mark is reproduced as the first element of the verbal elements of the contested sign is particularly relevant, since consumers generally pay more attention to the beginnings of marks than to their endings (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, §§ 64, 65).

Hence, the differences between the signs are not sufficient to counteract their visual, aural and the conceptual coincidences.

Bearing in mind all the foregoing, the Opposition Division finds that when confronted with the contested sign, the relevant public will highly likely perceived it as a sub-brand of the earlier mark, configured in a different way according to the type of goods or services that it designates.

It is a common practice for producers/providers of goods and services to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new products or service lines or to endow their trade mark with a new, modernized image and the consumers are accustomed to it.

Consequently, even the consumers with higher attention, may attribute the same (or an economically linked) commercial origin to all the goods and services at issue, even to those similar to a low degree.

As regards the applicant’s claim that the products bearing the contested mark are planned to be distributed only locally, i.e. in Gozo, Malta, the Opposition Division points out that following the Article 1(2) EUTMR one of the cornerstones of the EUTM system is the principle of the unitary character of the EUTM. The registration of a EUTM leads to the grant of a right to the EUTM that is effective throughout the entire territory of the EU, i.e. it allows its owner at any time to use, respectively to extend the use of its trade mark in any of the EU Member State while enjoying the protection which the registration of that trade mark confers on it. Hence, the applicant’s intentions to provide its goods and services (for the time being) only in Gozo, do not have any bearing in the case at hand. Therefore, this argument must be set aside.

Considering all the foregoing, there is a likelihood of confusion on the part of the German- and Slovak-speaking part of the 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

Thus, the opposition is well founded on the basis of the opponent’s EUTM registration No 7 032 634. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

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 and services 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

 

 

Astrid WÄBER

Renata COTTRELL

Karin KLÜPFEL

 

 

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.