OPPOSITION No B 2 045 378
Elephant Design Limited, Jubilee Barn, Ham Court, OX18 2HG, Bampton, United Kingdom (opponent), represented by Boult Wade, S.L., Avda. de Europa, 26, Edif. Ática 5, Planta 2, 28224, Pozuelo de Alarcón, Spain (professional representative)
a g a i n s t
The Bridgewater Candle Company LLC, 951 South Pine Street Suite 105, 29302 Spartanburg, United States of America (applicant), represented by WP Thompson, 138 Fetter Lane, EC4A 1BT, London, United Kingdom (professional representative).
On 12/12/2019, the Opposition Division takes the following
1. Opposition No B 2 045 378 is upheld for all the contested goods.
2. European Union trade mark application No 10 662 906 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 10 662 906 for the figurative mark . The opposition is based on European Union trade mark registration No 4 012 506 for the word mark ‘EMMA BRIDGEWATER’. The opponent invoked Article 8(1)(b).
The opponent initially based its opposition also on i) European Union trade mark registration No 1 420 710 for the word mark ‘BRIDGEWATER’ (for which both articles Article 8(1)(b) and Article 8(5) EUTMR were invoked) ii) the well-known trade marks (Article 6bis of the Paris Convention) and non-registered trade marks for the word marks ‘EMMA BRIDGEWATER’ and ‘BRIDGEWATER’ used in the course of trade in all Member States of the European Union (except for Croatia), in relation to which the opponent invoked Article 8(1)(b) and Article 8(4) EUTMR respectively iii) Article 8(5) EUTMR as regards European Union trade mark registration No 4 012 506 for the word mark ‘EMMA BRIDGEWATER’.
However, in its further submissions of 29/01/2018 and 28/12/2018 the opponent withdrew the aforementioned earlier rights and grounds as a basis of the opposition, relying exclusively on European Union trade mark registration No 4 012 506 and Article 8(1)(b) EUTMR invoked in relation to that earlier mark.
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 inter alia the following:
Class 3: Perfumery, essential oils, cosmetics and hair lotions; hair shampoos and conditioners; soaps; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; dentifrices.
Class 4: Candles; Christmas tree candles; candles for use as night lights; candles for use in the decoration of cakes; candle assemblies; packaged candles; candle boxes; candles sold as gifts; bees wax; illuminates; illuminating grease, oil and wax; illuminating materials; preservatives for leather; tapers; textile oil; wax; wax for use in manufacture; wax lights; wicks for candles and lamps; parts and fittings for all the aforesaid goods.
The contested goods are the following:
Class 3: Packaged scented granules; scented sachets.
Class 4: Candles; scented candles.
Class 5: Air fresheners; room deodorisers.
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 goods packaged scented granules; scented sachets are at least similar to the earlier essential oils in the same class. The contested goods are products used for perfuming rooms or objects and for freshening the air. The earlier goods are also used for perfuming, whether it be for houses or people. Indeed, the earlier goods may be used as an ingredient when producing the contested goods. Therefore, the goods at issue serve a similar purpose, may derive from the same manufacturers and are distributed through the same channels.
Contested goods in Class 4
The contested candles; scented candles are identical to the opponent’s candles, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.
Contested goods in Class 5
The earlier category of perfumery in Class 3 encompasses a wide range of preparations used to give a pleasant smell to the human body, to improve the scent of pets, and also to fragrance a room, car, wardrobe or other closed spaces. Therefore, they have a very similar purpose to that of the contested air fresheners; room deodorisers in Class 5. In fact, the technical difference between these goods is that, in Class 3, the goods are exclusively for fragrancing, whereas the goods in Class 5 are for getting rid of unpleasant smells thus freshening the air. These goods are directed at the same public who can look for them in the same sections of supermarkets / department stores or specialised shops. Furthermore, they coincide in the usual producers and their method of use. Therefore, it is considered that these goods are at least similar.
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. The degree of attention is considered to be average.
c) The signs
Earlier trade mark
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 common element ‘BRIDGEWATER’ would be perceived by a part of the relevant public, such as the English-speaking public, as a family name, while the first element of the earlier mark in the given sequence, ‘EMMA’, would be seen as a forename. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the abovementioned part of the relevant public, for which conceptual similarity would exist.
The earlier mark is a word mark consisting of the words ‘EMMA BRIDGEWATER’ which will be perceived by the relevant public as a first name (‘EMMA’) followed by a family name (‘BRIDGEWATER’). Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). Consequently, the verbal element ‘BRIDGEWATER’, which does not appear to be a common English surname and does not have any particular relationship with the relevant goods, has a normal degree of distinctiveness and is more distinctive than the English first name ‘EMMA’.
Regarding the contested sign, it is a figurative mark composed of the distinctive element ‘BRIDGEWATER’ (having no meaning in relation to the relevant goods) and the additional elements ‘CANDLE COMPANY’ written in slightly stylised black capital letters arranged in an arcuate form and preceded and followed by one black dot. As all the goods of the contested application are either candles or goods that are used to fragrance rooms in the same way as scented candles, the verbal element ‘CANDLE COMPANY’ will be understood by the relevant public as indicating the type of undertaking that produces the goods and will therefore be seen as descriptive and non-distinctive.
The typeface of the contested sign is rather standard and does not detract the public from immediately perceiving the verbal elements of the signs, to which consumers will attribute more importance. Therefore, its distinctive character is considered low. Likewise the figurative elements will make little impact in the overall perception of the contested sign as they are inconspicuous. Furthermore, 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).
Visually, the signs coincide in ‘BRIDGEWATER’ which is the most distinctive element of the earlier trade mark and the sole distinctive element of the contested sign. However, the marks differ in the less distinctive element ‘EMMA’ of the earlier mark and the non-distinctive elements ‘CANDLE COMPANY’ of the contested sign which have a lesser impact. The marks also differ in the commonplace bold title case letters and two dots in the contested sign which, however, have very little impact, if any, as outlined above.
Therefore, the signs are visually similar at least to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BRIDGEWATER’, present identically in both signs. The pronunciation differs in the sound of the word ‘EMMA’ of the earlier sign, which is rather short and less distinctive and in the expression ‘CANDLE COMPANY’ of the contested mark which is non-distinctive.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the same meaning evoked by the surname ‘BRIDGEWATER’. In the earlier mark said element is indeed preceded by the first name ‘EMMA’, which however has a limited distinguishing impact since both marks can still be understood as referring to the same person. Nor, contrary to the applicant’s submission, can the other verbal elements of the contested sign (‘CANDLE COMPANY’) distinguish the signs to a significant extent because they are non-distinctive and unlikely to attract the public's attention.
In the light of the above, 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 initially claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence to support it in its subsequent submissions of 29/01/2018 and 28/12/2018.
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.
e) Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 16).
In the present case, the goods at issue are partly identical and partly similar. The relevant public is the public at large with an average degree of attention.
Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It has also been established above that the signs are visually similar at least to a low degree and aurally and conceptually similar to an average degree.
It is taken into account that, 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.
As the contested sign contains the element that is perceived as a surname, while the earlier one would be seen as a first name and the same surname, it is likely that the relevant public will perceive both signs as referring to the same person and that, for commercial purposes, the contested sign refers to another version of the earlier mark. The additional elements ‘CANDLE COMPANY’, the slight stylization of the verbal elements and the small figurative elements in the contested sign do not have decisive influence on differentiating the signs, for the reasons explained above in section c) of the present decision.
Therefore, due to the coincidences between the signs, when consumers encounter the signs at different times, they may assume that the signs have the same origin or are at least economically linked.
The applicant submitted a coexistence agreement between the predecessor in title of the opponent and the applicant, dated 26/09/2006, where both parties agreed terms to regulate the use and registration of their marks, ‘BRIDGEWATER’/‘EMMA BRIDGEWATER’. For the applicant, the agreement would show that the opponent was disposed to tolerate the registration of the ‘BRIDGEWATER CANDLE COMPANY’ oval logo mark without perceiving any risk of confusion with its earlier marks. However, the oval logo marks reproduced in exhibit 1 of the agreement are not the same as the EUTM application at issue in the present proceedings (which among other things does not resemble an oval). Therefore it cannot be concluded that the parties agreed on the registration and use of the mark that is the subject of the present case, nor that a likelihood of confusion is excluded in the present case.
In any case, as regards coexistence agreements between the parties, when assessing likelihood of confusion, the Office’s policy is that these agreements may be taken into account like any other relevant factor, but they are in no way binding on the Office. This is particularly true when the application of the relevant provisions of the EUTMR and the established case-law lead to a conclusion that is not in accordance with the content of the agreement. In the present case, taking into account the striking similarities between the signs and the identity and similarity between the goods, a likelihood of confusion cannot be excluded.
Considering all the above, there is a likelihood of confusion on the part of the English-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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 012 506. It follows that the contested trade mark must be rejected for all the contested goods.
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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
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.