OPPOSITION No B 2 147 166

Naturalia France S.A.S, 10, rue Franquet, 75015 Paris, France (opponent), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (professional representative)

a g a i n s t

Naturalia Ingredients S.R.L., Via Rosario Ballatore, 5, Mazara del Vallo (TP), Italy (applicant), represented by Studio Torta S.p.A., Via Viotti, 9, 10121 Turin, Italy (professional representative).

On 19/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 147 166 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 257 912. The opposition is based on French trade mark registrations Nos 63 430 683 and 3 547 586. The opponent invoked Article 8(1)(b) EUTMR.

NATURALIA French trade mark No 63 430 683 NATURALIA BEAUTE French trade mark No 3 547 586
Earlier trade marks	Contested sign

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.

1. The goods and services

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

French trade mark registration No 63 430 683

Class 35: Retail sale services of bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; perfumes, toilet water, sachets for perfuming linen, extracts of flowers and plants (perfumes), bases for flower and plants perfumes, perfumed micro-caps, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, body lotions, cleansing milk for toilet purposes, pomades for cosmetic purposes, cosmetic preparations for bath not for medical purposes, bath salt, not for medical purposes, deodorants for personal use, dietetic substances adapted for medical use, nutritional supplements for medical purposes, food for babies, vitamin preparations, dietetic beverages adapted for medical purposes, herbs teas, medicinal tea; preparations for the treatment of burns, edible plant fibers (non-nutritive), preparations of trace elements for human use, sugar for medical purposes, mineral food-supplements, meat and meat extracts, fish (no alive), poultry and game; preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, food supplements based on fish, algae, crustaceans, molluscs, meat, fruits, vegetables, eggs or milk; dietetic substances based on fish, algae, crustaceans, molluscs, meat, fruits, vegetables, eggs or milk, soups, soups, pollen prepared as foodstuff, protein for human consumption, tea, cocoa, sugar, rice, tapioca, sago, coffee, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, edible ices, honey, golden syrup, yeast, baking-powder, salt, pepper, mustard, vinegar, sauces [condiments], spices, ice for refreshment, pasta; food supplements of vegetal origin prepared for human consumption, cereals prepared for human consumption, yeast, yeast in pill form, not for medical use royal jelly for human consumption, not for medical purposes, flavouring [flavourings], other than essential oils, almond paste, rusks, biscuits, chips [cereal products], infusions, not medicinal, muesli, semolina, baked custards, farm, horticultural and forestry products (neither prepared not processed), grains [seeds], fresh fruits and vegetables, animal foodstuffs, live animals; natural plants and flowers, malt, almonds, peanuts [fruits], hazelnuts, nuts, non-alcoholic beverages and preparations for making beverages (except those based on coffee, tea or cocoa, milk beverages), beers, mineral and aerated waters, fruit drinks and fruit juices, syrups for beverages, isotonic beverages, vegetables juices, cocktails, non-alcoholic.

French trade mark registration No 3 547 586

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; perfumes, toilet water, products for perfuming linen, extracts of flowers and plants (perfumes), bases for flower and plants perfumes, perfumed micro-caps, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, body lotions, cleansing milk for toilet purposes, pomades for cosmetic purposes, cosmetic preparations for bath not for medical purposes, bath salts, not for medical purpose, deodorants for personal use.

Class 5: Dietetic substances adapted for medical use, nutritional supplements for medical purposes, food for babies, vitamin preparations, dietetic beverages adapted for medical purposes, herbs teas, medicinal tea; preparations for the treatment of burns, edible plant fibers (non-nutritive), preparations of trace elements for human use, sugar for medical purposes, mineral food-supplements.

Class 35: Retail sale services of bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices, perfumes, toilet water, products for perfuming linen, extracts of flowers and plants (perfumes), bases for flower and plants perfumes, perfumed micro-caps, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, body lotions, cleansing milk for toilet purposes, pomades for cosmetic purposes, cosmetic preparations for bath not for medical purposes, bath salts, not for medical purposes, deodorants for personal use, dietetic substances adapted for medical use, nutritional supplements for medical purposes, food for babies, vitamin preparations, dietetic beverages adapted for medical purposes, herbs teas, medicinal tea; preparations for the treatment of burns, edible plant fibers (non-nutritive), preparations of trace elements for human use, sugar for medical purposes, mineral food-supplements.

Following a decision by the Boards of Appeal in Case R 1386/2014-2, the contested trade mark application was rejected for all the goods contested by the opponent in these proceedings except for those listed below, which are the subject of the present decision:

Class 33: Brandy.

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.

The contested brandy is a strong alcoholic spirit distilled from wine or fermented fruit juice. The earlier goods in Class 3 are types of household cleaning products, personal hygiene goods, cosmetics and perfumes. The earlier goods in Class 5 are types of dietetic substances, vitamins and baby food. The contested brandy has nothing in common with these goods. They are of a different nature, will be produced by different companies, distributed via different channels, and they are not in competition with one another or complementary. These goods are therefore dissimilar.

The retail services protected under the earlier French marks, listed in full above, and the contested brandy are not similar. 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 products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, the 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 specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar to varying degrees (retail sale services of beers, mineral and aerated waters, fruit drinks and fruit juices, syrups for beverages, isotonic beverages, vegetables juices, cocktails, non-alcoholic protected under earlier French mark No 63 430 683) or dissimilar (all the remaining retail services protected by both earlier marks).

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Lucinda Jane CARNEY

Andrea VALISA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.