OPPOSITION Nо B 3 127 039

 

International Sport Nutrition S.R.L., Via Maestri del Lavoro 20/4, 35127 Padova, Italy (opponent), represented by De Gaspari Osgnach S.R.L., Via Altinate, 33, 35121 Padova, Italy (professional representative) 

 

a g a i n s t

 

Zhejiang Jinghui Cosmetics Co., Ltd., No. 8 Anshang Road, Niansanli, 322000 Yiwu City, Zhejiang, China (applicant), represented by Marinos Cleanthous, 8 Victor Hugo, 2107 Nicosia, Cyprus (professional representative).

On 22/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 127 039 is upheld for all the contested goods.

2.	European Union trade mark application No 18 235 420 is rejected in its entirety.

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

REASONS

 

On 30/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 235 420 (figurative mark). The opposition is based on European Union trade mark registration No 16 991 432 (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 5: Pharmaceuticals; Sanitary preparations for medical purposes; Plasters, materials for dressings; Adhesive bandages; Bands and elastic bands for sports and physiotherapy taping; Gauze for dressings; Gauze for dressings; Plasters, materials for dressings; Anti-inflammatory sprays; Disinfectants; Cooling sprays for medical purposes; Instant ice for medical use; Medicinal sprays; First-aid boxes, filled; Pharmaceutical preparations for treating sports injuries; Dietary supplements and dietetic preparations; Nutritional supplements; Nutraceuticals for use as a dietary supplement; Dietary supplements for maintaining a stable body weight; Vitamin supplements; Protein dietary supplements; Soy protein dietary supplements; Casein dietary supplements; Albumin dietary supplements; Amino acid dietary supplements; Creatine dietary supplements; Glutamine dietary supplements; Enzyme dietary supplements; Carbohydrate dietary supplements; Maltodextrin dietary supplements; Thermogenic dietary supplements; Food supplements containing plant extracts; Antioxidant and adaptogen dietary supplements; Carnitine dietary supplements; Caffeine-based stimulating dietary supplements; Mineral food supplements; Multi-vitamin preparations; Vitamin drinks; Dietary supplemental drinks; Nutritional drink mix for use as a meal replacement.

The contested goods are the following:

 

Class 5: Disinfectants; Depuratives; Antibacterial handwashes; Sterilising preparations; Medicinal alcohol; Biocides; Sanitary towels; Sanitizing wipes; Baby diapers; Mosquito-repellent incense; Dietary supplements for animals; Food for babies.

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 5

Disinfectants are identically contained in both lists of goods.

The contested Dietary supplements for animals are included in the broad category of the opponent’s Dietary supplements and dietetic preparations. Therefore, they are identical.

The contested Sterilising preparations; Antibacterial handwashes are included in the broad category of, or overlap with, the opponent’s Disinfectants. Therefore, they are identical.

The contested Sanitary towels; Medicinal alcohol; Sanitizing wipes; Baby diapers are included in the broad category of, or overlap with, the opponent’s Sanitary preparations for medical purposes. Therefore, they are identical.

The contested Depuratives are substances such as food supplements formulated by selecting plant extracts with draining effects that promote the elimination of excess fluid produced by the body. Therefore, they are at least similar, if not identical, to the opponent’s Antioxidant and adaptogen dietary supplements. These sets of goods coincide in at least their purpose, method of use, producers, distribution channels and relevant public.

The contested Food for babies are similar to the opponent’s Nutritional supplements, as they have the same purpose. They usually coincide in producer and distribution channels.

The contested Biocides are preparations for destroying, eliminating, preventing or control the action of harmful organisms. They are similar to at least an average degree to the opponent’s Disinfectants, as they have the same purpose, usually coincide in producer, relevant public and distribution channels. Furthermore, the contested Mosquito-repellent incense are substances used to deter and repel insects such as mosquitos from approaching or settling. These goods are also similar to the opponent’s Disinfectants, as they may coincide in at least their producer, relevant public and distribution channels.

 

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

 

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).

 

Both marks are figurative. The earlier mark consists of the slightly stylised digit ‘4’ represented in black and yellow and the symbol ‘+’. The contested sign consists of the digit ‘4’ represented in a standard font within a circle encompassing the symbol ‘+’, appearing as if in superscript to the digit. These elements are followed by the verbal element ‘Fourplus’, written in a standard font in sentence-case.

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.

In the present case, the verbal element ‘Fourplus’ of the contested sign is meaningful in certain territories, for example in those countries where English is understood, such as in Ireland and Malta, as well the remaining parts of the EU, in which the public has at least some level of knowledge of English as a foreign language. In English, on account of the underlying concepts, the verbal element ‘Fourplus’ of the contested sign will be split into two meaningful words, namely ‘four’ which stands for the number ‘4’ and ‘plus’ which is the verbal counterpart of the symbol ‘+’. This is because 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). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public that will associate the verbal element ‘Fourplus’ of the contested sign with the meanings referred to above, as this will have an impact on the aural and conceptual comparison of the signs and their overall degree of similarity.

The digit ‘4’ and its verbal counterpart ‘Four’ included in the signs do not have any descriptive, non-distinctive or otherwise weak meaning for the relevant goods. Therefore, their inherent distinctiveness is normal. As to the symbol ‘+’ and its verbal counterpart ‘plus’ of the signs, these elements are merely denoting a particular positive or appealing quality or function of the goods, i.e. ‘additional, extra, of superior quality, excellent of its kind’. Therefore, these elements are non-distinctive. As to the circle of the contested sign, it is not distinctive, as it is a simple geometrical shape commonly used on labels and/or in frames to highlight information. The font/stylisation of the digit of the earlier sign, albeit not being entirely basic, is not that unusual or fanciful either. In spite of adding a yellow colour to part of the digit, it is still the digit itself that is the most distinctive element and not its font or colour, which are very weakly distinctive, at best. Likewise, as mentioned above, the font of the remaining elements, including of the contested sign is quite standard and does not have any distinctiveness.

The marks do not have any element(s) that could be considered clearly more dominant (visually eye-catching) than other elements.

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.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in ‘4’ and ‘+’ which are the only elements of the earlier mark and appear in the same order in the beginning of the contested sign. The signs differ in the stylisation/font and colour of the earlier mark and in the circle, the slightly higher position of the ‘+’ symbol and in the additional word ‘Fourplus’ of the contested sign. Although the coinciding ‘+’ symbol is non-distinctive, the majority of the different elements (the stylisation and font, colour, circle) are also non-distinctive or weakly distinctive, at best. In addition, as to the additional word ‘Fourplus’, which makes the contested sign different in structure and considerably longer as compared to the fairly short earlier mark, it should be taken into account that this additional verbal element is the verbal counterpart of the coinciding ‘4’ and ‘+’ and its relevance as a difference is somehow mitigated. In addition, as mentioned above, the word ‘plus’ therein is non-distinctive.  

Bearing in mind the aforesaid, the fact that the coinciding ‘4’ and ‘+’ are the only elements of the earlier mark and are reproduced in the beginning of the contested sign where consumers generally tend to focus, but also the different length of the signs, and accounting for the other mentioned differences between them, their respective positioning, relevance and distinctive capacity within the signs, it is considered that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in full for a significant part of the relevant public. This is because it is unlikely that, faced with the contested sign, the public will pronounce the same words/symbols twice. This is also in view of the tendency of consumers shortening signs to economise on time. Therefore, the marks are aurally identical for at least a significant part of the relevant public under analysis.

The concepts of the signs have been defined above. Since the marks contain identical concept, with the exception of the non-distinctive circle contained in the contested mark, they are conceptually similar to a high degree, if not identical.

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 some non-distinctive and weakly distinctive elements, at best, in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

In the present case, the contested goods are identical, at least similar and similar (to at least an average degree) to the opponent’s goods. The relevant goods are directed at the public at large and at the professional public and the degree of attention may vary from average to high. The earlier mark has a normal degree of inherent distinctiveness.

 

The signs are visually similar to a low degree and they are aurally identical for a significant part of the public. The signs are conceptually similar to a high degree, if not identical.

Although some of the coincidences between the signs are on account of non-distinctive elements, they coincide in an inherently distinctive element as well, and the elements of the earlier mark are entirely reproduced in the beginning of the contested mark. In addition, the differences between the signs are either on account of weakly distinctive, at best, elements or in a verbal element (‘Fourplus’), which is the verbal counterpart of the coinciding digit-symbol combination ‘4+’ of the signs. In view of this, the visual differences due to the word ‘Fourplus’ in the contested sign cannot be given excessive weight as an important difference between the signs.

 

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 highly conceivable that the relevant consumer will 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the similarity between the signs is sufficient to induce a likelihood of confusion on the part of the relevant public in connection with identical, at least similar and similar (to at least an average degree) goods.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, as defined above. 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 EUTM registration No 16 991 432. 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

 

 

Anna PĘKAŁA

Liliya YORDANOVA

GAZDA Ferenc

 

 

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.