OPPOSITION Nо B 3 122 964

 

Laboratoires SVR, Zac de la Tremblaie - Rue de la Mare a Blot, 91220 Le Plessis Pate, France (opponent), represented by Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representative) 

 

a g a i n s t

 

JeTaSo GmbH, Schultenfeld 1, 59302 Oelde, Germany (applicant).

On 14/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 122 964 is partially upheld, namely for the following contested goods:

 

	Class 3: Toiletries; fragrancing preparations; Animal grooming preparations; Essential oils and aromatic extracts; Body cleaning and beauty care preparations; Perfumery and fragrances; Oral hygiene preparations; Bath preparations; Deodorants and antiperspirants; Hair removal and shaving preparations; Hair preparations and treatments; Skin, eye and nail care preparations; Make-up; Soaps and gels. Class 5: Dietary supplements and dietetic preparations; Sanitary preparations and articles; medicated dentifrices; dietary supplements for animals .
2.	European Union trade mark application No 18 232 300 is rejected for all the above goods. It may proceed for the remaining, contested and non-contested, goods.
3.		Each party bears its own costs.

 

REASONS

 

On 03/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 232 300 ‘SCR’ (word mark), namely against some of the goods in Classes 3 and 5. The opposition is based on EUTM registration No 10 871 631 ‘SVR’ (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.

 

 

a) The goods

 

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

 

Class 3: Cosmetics, Anti-perspirants for personal use.

 The contested goods are the following:

 

Class 3: Toiletries; Cleaning and fragrancing preparations; Animal grooming preparations; Essential oils and aromatic extracts; Body cleaning and beauty care preparations; Perfumery and fragrances; Oral hygiene preparations; Bath preparations; Deodorants and antiperspirants; Hair removal and shaving preparations; Hair preparations and treatments; Skin, eye and nail care preparations; Make-up; Soaps and gels.

Class 5: Dietary supplements and dietetic preparations; Sanitary preparations and articles; medicated dentifrices; Dietary supplements for animals.

Contested goods in Class 3

The contested toiletries; fragrancing preparations; animal grooming preparations; essential oils and aromatic extracts; body cleaning and beauty care preparations; perfumery and fragrances; oral hygiene preparations; bath preparations; deodorants and antiperspirants; hair removal and shaving preparations; hair preparations and treatments; skin, eye and nail care preparations; make-up; soaps and gels are all products which are used for beautification and enhancement of the odor or fragrance of the body (including mouth and teeth). These goods and the opponent’s cosmetics often coincide in their manufacturers, customers and distribution channels, therefore, the goods in conflict are at least similar.

The contested cleaning preparations are dissimilar to the opponent’s cosmetics, anti-perspirants for personal use. On the one hand, the opponent’s goods include preparations for enhancing or protecting the appearance, odour or fragrance of the body while on the other hand cleaning preparations are substances used for household washing and cleaning. Therefore, one is for personal use on the body, while the other is for household use for cleaning floors, bathrooms, domestic items, laundry, etc. The goods, therefore, differ in their purpose and do not usually coincide in their manufacturers and distribution channels. Furthermore, they are neither in competition nor complementary to one another.

 
Contested goods in Class 5

The opponent’s cosmetics is a broad category which includes goods such as tanning and slimming creams and the contested dietary supplements and dietetic preparations also include goods which are used for such purposes, that is, to have a cosmetic effect. Therefore, these broad categories of goods both include goods that can have the same intended purpose (tanning/slimming the consumers’ body). Furthermore, they can be directed at the same consumers, may be sold through the same distribution channels and can also be produced by the same undertakings. Therefore, these goods are similar.

The opponent’s cosmetics is a broad category which includes cosmetics for animals. This means that the above considerations also apply as regards the relationship between goods used for cosmetics purposes and the contested dietary supplements for animals. Accordingly, these goods at issue may coincide in their essential purpose, and also in their manufacturers, distribution channels and consumers. Therefore, they are similar.

The contested sanitary preparations and articles; medicated dentifrices are similar to the opponent’s cosmetics in Class 3. In addition to their beautification purposes, cosmetics also have the function of cleaning the body or its parts and to provide or enhance hygiene also for health-related purposes. Therefore, all the conflicting goods may serve to clean (and/or disinfect) parts of the human body (including mouth and teeth), albeit to a different extent, and may also share the same manufacturers, distribution channels and relevant public.

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 (at least) similar are directed both at the public at large and at business customers with specific professional knowledge.

The degree of attention varies from average in relation to goods in Class 3 to high in relation to the goods in Class 5 regardless of whether these latter goods are sold with or without prescription since they can directly affect one’s state of health.

 

c) The signs

 

SVR	SCR
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 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 signs’ only differing elements, namely their middle letters ‘V’ and ‘C’ are pronounced in a rather similar manner in some of the relevant languages. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on one such public, namely the English-speaking part of the public.

Both signs are acronyms which lack any meaning, therefore, they are distinctive to an average degree.  

 

Visually and aurally, the signs coincide in their first and third letters and differ in their middle ones ‘V’ / ‘C’. In addition, both signs are three-letter acronyms and are, thus, likely to be pronounced as such, that is, with their letters pronounced separately. This means that their first and third letters are pronounced identically while their differing middle letters will also sound somewhat similar. Overall, the signs are visually similar to an average degree and aurally to an above 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.

 

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 and 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

 

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).

 

Even consumers who pay a high degree of attention need to rely on 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.

 

Some of the goods are at least similar and the signs are visually similar to an average degree and aurally to an above average degree, with the conceptual aspect playing no role. The contested sign reproduces two of the earlier mark’s three letters, in the same order and without any further element or feature that could divert consumers’ attention from this coincidence. In addition, the signs start by the same letter, and even the differing ones in their middle parts show a certain degree of aural similarity. All these factors added up, in combination with the similarity of some of the goods, are considered to be sufficient for the Opposition Division to find that consumers are likely to believe the similar goods come from the same or linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration invoked. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be at least similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Liliya YORDANOVA Ferenc GAZDA Octavio MONGE GONZALVO

 

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.