OPPOSITION No B 2 483 876
Penhaligon's Limited, Fourth Floor, 184-192 Drummond Street, London NW1 3HP, United Kingdom (opponent), represented by Ashfords LLP, Ashford House Grenadier Road, Exeter EX1 3LH, United Kingdom (professional representative)
a g a i n s t
Kai Oliver Koster, Am Steinbruch 3, 67685 Weilerbach, Germany (applicant), represented by Sigrid Asschenfeldt, Pfingstberg 30, 21029 Hamburg, Germany (professional representative).
On 19/09/2017, the Opposition Division takes the following
Class 3: Cleaning, polishing, scouring and abrasive preparations; Perfumery; Eau de toilet; Parfum; Cosmetics; Shaving foams and creams; Cosmetics; Hair lotions; Soaps; Dentifrices.
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods
European Union trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The applicant requested proof of use for the earlier trade marks GB 2 549 436, DE 302 010 033 187, BX 0 201 015, ES M2 934 557, IT 1 407 657, GB 2 581 451, and EUTM 9 964 396 to be submitted, but this request could not be taken into account because it concerned marks which, at the date of publication of the contested mark, had not been registered for at least five years. Furthermore the opponent withdrew its earlier FR 3 752 308 trade mark – which had been registered for more than five years at the time of publication of the contested mark - as basis for its opposition.
Therefore the request for proof of use was not admissible.
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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s UK trade mark registration No 2 549 436.
The goods on which the opposition is based are the following:
Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; aftershave lotions; shaving preparations; shaving soaps; perfumed and scented oils and waxes; dentifrices.
The contested goods are the following:
Class 3: Cleaning, polishing, scouring and abrasive preparations; Perfumery; Eau de toilet; Parfum; Cosmetics; Shaving foams and creams; Cosmetics; Hair lotions; Soaps; Dentifrices.
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 Perfumery; cosmetics (contained twice); hair lotions; soaps; dentifrices are identically contained in both lists of goods (including synonyms).
The contested Eau de toilet; parfum are included in the broad category of the opponent’s perfumery. Therefore, they are identical.
The contested Shaving foams and creams are included in the broad category of the opponent’s shaving preparations. Therefore, they are identical.
Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles.
The contested Cleaning preparations are identical to soaps since soap is used for cleaning purposes.
Polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Therefore, these contested goods are considered similar to the opponent’s soaps.
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 case at hand, the identical and similar goods are directed at the public at large. Contrary to the applicants allegations, and even if some of the public might adopt a decidedly more demanding approach to the features of the goods in question and, consequently, pay special attention when purchasing the goods covered by the application, these are undoubtedly ordinary consumer goods targeting the average consumers who, being reasonably observant and circumspect, will, in the main, pay a normal level of attention that is not especially high when making his/her purchase.
Earlier trade mark
The relevant territory is the United Kingdom.
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 signs are word marks and are protected as such, independently of the type script used. They have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
The number “1870” in the earlier sign which could be understood like for instance as an indication of a year, or the year a company was founded, may in general have a lower level of distinctiveness for certain goods such as wine where numbers usually indicate the years of harvest, but not with respect to the goods concerned here. “Eximium” – a Latin word - has its English equivalent in “eximious“ (see www.collinsdictionary.com/es/diccionario/ingles/eximious), meaning ‘select’, ‘distinguished’ or ‘eminent’, and might therefore be understood as allusion to this English word. Bearing in mind that according to the Collins dictionary this verb is infrequently used in the English language – and in absence of evidence to the contrary – the Opposition Division considers that neither the Latin word “eximium” is not commonly used in the context of the goods at issue, and nor that the English derivate ‘eximious’ would be widely known. Thus, it is likely that a significant part of the relevant public will not be able to attribute a meaning to this word. Therefore, in the present case, for the personal care or cleaning goods in Class 3, both the number “1870”, and the word “eximium” of the contested sign should be considered distinctive even when the former could perceived as a year and the latter might be perceived as alluding to a particular quality. The same is true for the word “OPUS” which means “an artistic composition, especially a musical work” in English (see https://www.collinsdictionary.com/dictionary/english/opus). Although the word “OPUS” may be allusive of great achievements in relation to music or literature or even science, it is not commonly used as such in relation to personal care or cleaning products in Class 3.
Visually and aurally, the signs coincide in the distinctive word “OPUS”. They differ in the appearance and pronunciation of the additional numerical element “1870” in the earlier mark and the word “eximium” in the contested sign. Although these elements are distinctive, and therefore, will have an impact on the consumers’ visual and aural perception of the marks, they do not alter the fact that the first and identical word of both signs, namely “OPUS”, has an independent distinctive character in both marks.
Furthermore, it must be taken into account that the common element “OPUS”, as the first element of the contested sign, will catch the primary attention of the consumers when encountering the 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 fact that the first verbal element of the contested sign coincides identically with the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.
Hence, the marks are visually and aurally similar to an average degree.
Conceptually, the relevant consumer will perceive the word “OPUS”, present in both signs, as meaning a work, especially an artistic work. The additional elements “1870” in the earlier mark and “eximium” in the contested sign do not alter the signs’ meanings but will be understood either as referring the year 1870 or only by a very limited part of the public as alluding to the qualities of the goods. Since the two signs will be associated with a similar meaning due to the identical element “OPUS”, the signs are conceptually similar 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.
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 inherent, intrinsic distinctive character of the earlier mark is high. Furthermore, the opponent argues that the earlier mark had been extensively used and enjoyed an enhanced scope of protection.
However, for reasons of procedural economy, 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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the contested goods in Class 3 were found identical or similar and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually, aurally and conceptually similar to an average degree.
The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore the visual identity of the first parts of the signs has a particular impact.
Although the marks differ in their second elements, these may be perceived as a number or a year, namely as the 1870, or as foreign word or – for a very small part of the public – as an allusion to the special qualities of the goods sold under the brand named ”OPUS”. This is important, since consumers will reasonably assume that these numbers or verbs distinguish different lines of products originating from the same undertaking or from connected entities. It is usual for the same mark to be configured in various different ways according to the type of product which it designates. Furthermore, it is also common for the same manufacturer or provider to use sub-brands, that is to say, signs that derive from a principal mark and which share with it a common element, in order to distinguish its various lines from one another.
In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, the Opposition Division concludes that the differences between the signs in question are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could believe, for instance, that the goods designated by the conflicting signs distinguish different product lines coming from the same or related undertakings. It must be observed that consumers, exposed, at different moments, to the two signs, will reasonably assume that the marks distinguish different lines of products originating from the same undertaking or from connected entities. In the current case, the different elements between the sign are the number “1870”, which can be understood as the year of creation of the opus, and the word “eximium” which will be perceived by the majority of the public concerned as a foreign or fancy word. It is conceivable that the targeted public may regard the identical and similar goods designated by the opposing mark as originating from the same undertaking or from connected entities.
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s UK trade mark registration No 2 549 436. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the normal distinctiveness of the earlier mark, there is no need to assess the enhanced scope of protection of the opposing mark as claimed by the opponent. The result would be the same even if the earlier mark enjoyed a higher than normal intrinsic distinctiveness.
As the earlier UK mark 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 (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
The applicant refers to previous decisions to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In particular, the decision T-240/13, ALDI/Alifoods (stylized), concerns trade marks which consist of only one word and it is constant practice that small differences in short word elements have a greater impact on the perception of the consumer than small differences in signs which consist of several words or elements. In addition, as indicated in the quotation from this decision, there were no visual or aural similarities and the Court also denied any conceptual similarity as well, facts, which are different here.
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 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) and (6) and Rule 94(7)(d)(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
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 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 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 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.