OPPOSITION No B 3 130 513

Dirk van Erp, Clemensstraße 2a, 80803 Munich, Germany (opponent), represented by Hafner & Kohl Partnerschaft mbB, Schleiermacherstr. 25, 90491 Nuremberg, Germany (professional representative)

a g a i n s t

Brand Labs LTD, Konstantin Fotinov No 134, 1517 Sofia, Bulgaria (applicant), represented by J. Varbanov & Partners, South Park Complex, bl. 1A, 2nd floor, 1421 Sofia, Bulgaria (professional representative).

On 11/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 130 513 is partially upheld, namely for the following contested goods:

Class 3: All the contested goods in this class.

Class 5: All the contested goods in this class, except biocides; insecticides; insect repellents; pest control preparations and articles; anti-insect spray.

2. European Union trade mark application No 18 240 904 is rejected for all the above goods. It may proceed for the remaining goods in Class 5.

3. Each party bears its own costs.

REASONS

On 09/09/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 240 904 (figurative mark), namely against all the goods in Class 3 and all the goods in Class 5 except medicated shampoos and bath preparations for medical purposes. The opposition is based on German trade mark registration No 302 017 205 591 ‘Veel Clean’ (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 and services

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

Class 1: Biodegradable detergents for use in manufacturing processes; chemical detergents for use in industrial manufacturing processes; chemical detergents for use in industrial processes; chemical substances for the production of perfumed detergents; enzymes for the detergent industry; non-ionic detergents for industrial processes; solvent-based detergents for grease removal in manufacturing processes; surfactants for use in detergents.

Class 3: Alcoholic solvents as cleaning agents; floor treatment agents [cleaning agents]; deodorized cleaning agents for cat toilets; solvents for floor wax [cleaning agents]; wipes impregnated with a cleaning agent for eyeglasses; wipes impregnated with a cleaning agent; wet wipes impregnated with cleaning agents; pads impregnated with cleaning agents; wipes impregnated with cleaning agents; spectacle cleaning cloths impregnated with cleaning agents; paper towels impregnated with cleaning agents; cleaning cloths impregnated with cleaning agents for camera lenses; wiping cloths impregnated with cleaning agents; non-medical cleaning agents for intimate hygiene; cleaning agents; cleaning agents for drainpipes; cleaning agents for drainpipes with delayed action; cleaning agents for household use; cleaning agents for personal use; cleaning agents for hands; cleaning agents for tiles; cleaning agents for glass; cleaning agents for golf clubs; cleaning agents for stoves; cleaning agents for cat toilets; cleaning agents for leather; cleaning agents for masonry; cleaning agents for metal; cleaning agents for plant leaves; cleaning agents for shoes; cleaning agents for stone; cleaning agents for carpets; cleaning agents for textiles; detergents for freezers; detergents for whitewall tires; detergents for windscreens; detergents for dentures; detergents in foam form; detergents for cleaning glass; detergents for removing stains; detergents for household use; detergent foam [detergent]; ammonia as detergent; reinforcing additives for detergents; corrosive detergents.

Class 35: Retail trade services of cleaning products; wholesale trade services of cleaning products.

The contested goods are the following:

Class 3: Detergents; detergents for household use; dishwashing detergents; substances for laundry use; vehicle cleaning preparations; soap products; soaps for body care; almond soap; waterless soap; soaps in liquid form; shampoos; shampoo-conditioners; dry shampoos; household fragrances; cleaning sprays; body cleaning and beauty care preparations; cosmetics; baby wipes; hand gels; pre-moistened cosmetic wipes; cologne impregnated disposable wipes; beauty masks; body masks; facial masks; cleansing masks; skin cleaning and freshening sprays; spray cleaners for household use; body oil spray; hair spray.

Class 5: Disinfectants; disinfectants and antiseptics; disinfectant soap; sanitizers for household use; disinfectants for medical use; air deodorising and air purifying preparations; antibacterial wipes; impregnated medicated wipes; impregnated antiseptic wipes; sanitizing wipes; wipes for medical use; biocides; insecticides; insect repellents; pest control preparations and articles; hygienic preparations and articles; air deodorizing preparations; anti-insect spray; antibacterial sprays; antibacterial gels.

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

The contested detergents include, as a broader category, (inter alia) the opponent’s detergents in foam form. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Detergents for household use are identically contained in both lists of goods.

The contested dishwashing detergents; spray cleaners for household use are included in the broad category of, or overlap with, the opponent’s detergents for household use. Therefore, they are identical.

The contested vehicle cleaning preparations; cleaning sprays overlap with the opponent’s detergents in foam form. Therefore, they are identical.

The contested soap products; soaps for body care; almond soap; waterless soap; soaps in liquid form; shampoos; shampoo-conditioners; dry shampoos; body cleaning and beauty care preparations; cosmetics; pre-moistened cosmetic wipes; beauty masks; body masks; facial masks; cleansing masks; skin cleaning and freshening sprays; body oil spray; hair spray are included in the broad category of, or overlap with, the opponent’s cleaning agents for personal use. Therefore, they are identical.

The contested hand gels overlap with the opponent’s cleaning agents for hands. Therefore, they are identical.

The contested substances for laundry use and the opponent’s detergents for household use have the same purpose, which is to clean different kinds of items. They also use the same distribution channels, target the same public and are often produced by the same kind of undertakings. Therefore, they are similar.

The contested household fragrances are used to give a pleasant scent to, or remove odours from, the house. These contested goods and the opponent’s cleaning agents have similar purposes, since the opponent’s goods are also used to remove unpleasant odours. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same sections in supermarkets. Therefore, they are similar.

The contested baby wipes; Cologne impregnated disposable wipes are similar to the opponent’s cleaning agents for personal use, as these goods usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 5

The contested disinfectants; disinfectants and antiseptics; disinfectant soap; sanitizers for household use; disinfectants for medical use; antibacterial wipes; impregnated medicated wipes; impregnated antiseptic wipes; sanitizing wipes; wipes for medical use; hygienic preparations and articles; antibacterial sprays; antibacterial gels are similar to the opponent’s cleaning agents in Class 3, as they have the same purpose, and usually coincide in producer, relevant public and distribution channels.

The contested air deodorising and air purifying preparations; air deodorizing preparations are sprays, gels and other substances used for odour elimination in rooms and other indoor spaces, for example, cars. It is not uncommon that they are also fragranced. These goods belong to the same market sector as the opponent’s cleaning agents in Class 3. They satisfy the needs of the same consumers and are commonly sold in the same specialised shops and sections of supermarkets or department stores. Furthermore, the public can expect that they are produced by the same undertaking. Therefore, they are similar.

However, the contested biocides; insecticides; insect repellents; pest control preparations and articles; anti-insect spray, which prevent risks to human or animal health from the species they eliminate or repel, are not similar to any of the opponent’s goods in Classes 1 and 3. The expertise needed to manufacture these contested goods is different to the expertise required to produce the opponent’s goods in Classes 1 and 3. The goods in question satisfy very different needs, are offered by specialised companies in their corresponding fields, are not interchangeable and, therefore, are not in competition. Therefore, these goods are dissimilar to the opponent’s goods in Classes 1 and 3. Moreover, these contested goods are dissimilar to the opponent’s retail trade services of cleaning products; wholesale trade services of cleaning products in Class 35. Retail trade services of cleaning products are not similar to the aforementioned contested goods because, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. In the present case, these conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores, however, in these outlets, the goods at issue are sold in specialist departments that, even though they may be close, are separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51). The same applies to the opponent’s wholesale trade services of cleaning products, as these services also consist exclusively of activities revolving around the actual sale of cleaning products.

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 (e.g. shampoos in Class 3), or at business customers with specific professional knowledge or expertise (e.g. disinfectants for medical use in Class 5).

The degree of attention may vary from average to relatively high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Veel Clean
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘CLEAN’, included in both signs, is used in German as an adjective meaning ‘one no longer uses drugs’ (information extracted from Brockhaus on 04/08/2021 at https://brockhaus.de/dict/search?s=clean). However, although it is not excluded that part of the relevant public may also perceive its meaning in English as ‘free from dirt, marks, or stains’ (information extracted from Lexico Dictionary on 04/08/2021 at https://www.lexico.com/definition/clean), it will be meaningless and, therefore, distinctive for a sizeable part of the relevant public. The Opposition Division finds it appropriate to focus the comparison of the signs on this part of the German public.

The earlier mark is a word mark comprising two verbal elements ‘Veel’ and ‘Clean’, depicted in a title-case font. As is the case for the element ‘Clean’, the element ‘Veel’ is meaningless and, therefore, distinctive for the public under analysis. In the case of word marks without irregular capitalisation, the word as such is protected and not the written form. Therefore, any differences in the use of lower- or upper-case letters (or combination thereof) are immaterial in the present case.

The contested sign is a figurative mark comprising two verbal elements, namely the word ‘CLEAN’, depicted in a fairly standard italicised font, which is preceded by a stylised green letter ‘V’. In relation to the goods under analysis, the element ‘V’ has no meaning other than the concept of its letter and is, therefore, distinctive. The contested sign has no element that could be considered clearly more dominant than other elements. However, 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). Consequently, the figurative aspects of the contested sign will have less impact on the consumer than its verbal elements ‘V CLEAN’.

Visually, the signs coincide in the letters ‘V***CLEAN’, which constitute the entire contested sign. The letter ‘V’ coincides at their beginnings and ‘CLEAN’ coincides at their endings.

They differ in the letters ‘*eel’, placed towards the middle of the earlier mark, which have no counterpart in the contested sign, and in the figurative aspects of the contested sign. However, the impact of these figurative aspects on the consumer is, as explained above, less important than its verbal element.

Furthermore, the difference in the additional letters ‘*eel’ of the earlier mark does not greatly impact the visual similarity of the signs because these letters lie towards the middle of the earlier mark, whereas the beginnings and endings of both signs are the same.

Therefore, the signs are visually similar to an average degree.

Aurally, the relevant public will pronounce the letters ‘Vee*’ of the earlier mark and the letter ‘V’ of the contested sign similarly, and the element ‘CLEAN’ in both signs identically. As both signs have two syllables, their rhythm and intonation is the same.

The only difference in the signs’ pronunciation resides in the sound of the letter ‘*L’ in the earlier mark and, therefore, the signs are aurally similar to an average degree.

Conceptually, as neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible.

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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The goods found to be identical or similar target the general public or business customers, and the degree of attention varies from average to relatively high.

The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has an average degree of inherent distinctiveness, which affords it a normal scope of protection. 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). All six letters of the contested sign are fully incorporated in the same order in the earlier mark, therefore, the signs have identical beginnings and endings. As the only difference in their verbal elements is placed towards the middle of the signs, it can be easily overlooked, and the differences in the figurative aspects play a secondary role. Therefore, the similarities between the signs outweigh the differences. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will not perceive any meaning in the signs’ verbal elements, as explained above, and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 017 205 591.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods and services of the earlier trade mark.

The rest of the contested goods are dissimilar to the goods and services of the aforementioned earlier mark. As similarity of goods and services is a necessary condition for the application of Article 8(1) 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

Christian STEUDTNER

Christophe DU JARDIN

Philipp HOMANN

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.