OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 141 813
Chanel (Société par Actions Simplifiée), 135, avenue Charles de Gaulle, 92200 Neuilly sur Seine Cédex, France (opponent), represented by Chanel Société par Actions Simplifiée, Sylvie Harding, 135, avenue Charles de Gaulle, 92521 Neuilly sur Seine Cédex, France (professional representative)
a g a i n s t
Demi Johannus Miriam Nievelstein, Tongersesteenweg 53, 3620 Lanaken, Belgium, and Quinten Paulus Dorathea Hubertus Nievelstein, Tongersesteenweg 53, 3620 Lanaken, Belgium (applicants), represented by Marcel Van Maele, Kapellenstr. 82, 52066 Aachen, Germany (professional representative).
On XX/XX/XXXX, the Opposition Division takes the following
Class 3: soaps; perfumery, essential oils, cosmetics, hair lotions.
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier French trade mark No 1 571 046.
The goods on which the opposition is based are the following:
Class 3: Soaps; perfumery, cosmetics, essential oils, hair products.
The contested goods are the following:
Class 3: soaps; perfumery, essential oils, cosmetics, hair lotions.
The contested soaps; perfumery, essential oils, cosmetics are also listed in the goods of the earlier mark. Therefore there is identity with regard to these goods.
The contested hair lotions are included in and therefore identical to the opponent’s hair products.
Earlier trade mark
The relevant territory is France.
Visually, the signs are similar to the extent that they coincide in the string of letters ‘C-O-C-O’, which is the only element in the earlier trade mark and forms the first four of seven letters in the contested sign. However, the signs differ in the last three letters of the contested sign, namely ‘CHE’, and in the figurative elements of the latter, namely a black rectangular background and an undefined small brown device placed above the verbal element. Also worth noting is the standard typeface used in the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‘COCO’, present identically in both signs and in a same initial position. Furthermore, the signs have the same aural length, as they are both pronounced as two syllables. To the extent of the foregoing, the marks are aurally similar. The pronunciation differs in the sound of the additional last letters ‘CHE’ of the contested sign, namely /ʃ/.
Conceptually, the earlier sign ‘COCO’ will be perceived by a part of the public as being an abbreviation for coconut, a fruit of the palm tree. Another part of the public will see a female first name, made popular by Coco Chanel. In addition, it cannot be excluded that the earlier sign will not have a clear meaning for a part of the public.
Regarding the contested sign, the verbal part ‘COCOCHE’ and the undefined small brown device do not have any meaning.
In the light of the above, the signs are not conceptually similar for a part of the public, since one of the signs will not be associated with any meaning. However, for the part of the public which doesn’t see any clear meaning in the earlier mark, the conceptual aspect does not influence the assessment of the similarity of the signs since a conceptual comparison is not possible.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.
The verbal element ‘COCOCHE’ in the contested sign is the dominant element as it is the most eye‑catching.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
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 are directed at the public at large. The level of attention is average. It may be higher for expensive goods such as perfume.
Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of
11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.).
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’, paragraph 17 et seq.). In the present case, the contested goods are identical to the opponent’s goods.
The signs are similar to the extent that the whole of the earlier mark is reproduced at the beginning of the dominant element of the contested mark. The differences in the marks are to be found in the last three letters ‘CHE’ of the contested sign and in two not striking figurative elements.
It is particularly relevant to point out that the similarities between the signs are found at the beginning of the contested sign, since consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the similarities in the beginning of the contested sign and the only element of the earlier mark have to be taken into account when assessing the likelihood of confusion between the marks.
It should also be recalled that when a sign consists of both verbal and figurative components, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public will most readily refer to the signs by their verbal elements rather than by describing the figurative elements of the marks.
Moreover, it has to be mentioned that the additional letters of the contested sign create only one phoneme, namely /ʃ/, that they do not generate an additional syllable and that the final ‘E’ is mute. In addition, the slight difference residing in a not striking sound, which is also located at the end and which doesn’t generate an additional syllable, could easily be missed by the listener.
Furthermore, the conceptual aspect does not influence the assessment of the similarity of the signs for a part of the public.
Considering all the above, the Opposition Division finds that the differences are not sufficient to counteract the significant visual and aural similarity and that there is a likelihood of confusion on the part of the public. The relevant public could be mistaken about the origin of the goods and the contested sign could be perceived as a sub-brand for the products of the opponent’s mark, in spite of the higher degree of attention vis-à-vis some of the relevant goods.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 1 571 046 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (see judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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
Loreto URRACA LUQUE
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.