OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 466 723
Multi Access Limited, Palm Grove House, PO Box 438, Road Town, Tortola, British Virgin Islands (opponent), represented by Grünecker Patent- und Rechtsanwälte Partg Mbb, Leopoldstr. 4, 80802 München, Germany (professional representative)
a g a i n s t
Guangzhou Baiyunshan Pharmaceutical Holdings Co. Ltd., 45 Sha Mian North Street, Guangzhou, Guangdong, People’s Republic of China (applicant), represented by Algemeen Octrooi- En Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, Netherlands (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all 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.
WANG LAO JI
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark 1 is a word mark consisting of the words ‘WANG LAO JI‘ which do not have any meaning for the relevant public.
The earlier marks 2, 3 and 4 are figurative marks consisting of oriental characters being composed in the earlier mark 2 by three characters followed by other three very similar symbols within a rectangular label ornamented at its edges. The earlier marks 3 and 4 contain the same three oriental characters but vertically represented in the case of the earlier mark 4. Contrary to the opponent arguments, these signs do not have a specific meaning for the relevant public since these characters are not part of any of the official languages in the relevant territory. Therefore, they will be perceived as oriental characters, such as Chinese, Japanese or Korean characters.
The contested sign is a figurative mark comprising a circle with oriental symbols within one bigger circle containing a thick broken line and the verbal elements ‘AUTHENTIC HERBAL TEA’, ‘ WELLUCKY’ and ‘SINCE 1828’ curved so that engage the edge of the circle.
The earlier marks have no elements that could be considered clearly more distinctive than other elements.
The elements ‘AUTHENTICAL HERBAL TEA’ of the contested sign consist of English words referring to any genuine beverage made from the infusion or decoction of herbs, spices or other plant material in hot water and will be perceived as such by the part of the public that understand English and by the part of the public in whose languages similar equivalents exist, such as in Spanish auténtico herbal te. Bearing in mind that the relevant goods are medicinal goods and foodstuffs, these elements are non-distinctive for this part of the public and for a part of the relevant goods, at least for medicinal drinks; medicinal tea; herbal teas for medicinal purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use and depuratives in Class 5; ginseng tea; tea-based beverages; milk tea (not based on milk); herbal beverage in Class 30 and preparations for making beverages in Class 32.
On the other hand, the elements ‘SINCE 1828’ also of the contested sign include the English word ‘since’ which means ‘during or throughout the period of time after’ (information extracted from English Collins Dictionary). This element followed by a figure of four digits will be associated with the year from which the goods are made by the producer or the starting year of use of the mark. Since this type of expression in English is commonly used in the European Union trade, it is considered that is going to be understood also by the non-English speaking part of the relevant public. Therefore, this expression is considered weak for the relevant goods since is descriptive of one characteristic of these goods.
However, the element ‘WELLUCKY’ does not have any meaning for the relevant public and has a normal distinctiveness.
The earlier marks and the contested sign have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs have a completely different structure: the earlier mark 1 consists of three words and the earlier marks 2, 3 and 4 are composed by a sequence of oriental symbols horizontally or vertically arranged whereas the contested sign is a combination of figurative and verbal elements contained in a circle. Even if some of the letters of the earlier mark 1 appear in the contested sign, namely, the letters ‘I’, ‘W’, ‘A’, ‘N’ and ‘L’, these are placed in different positions and are part of so different verbal elements that the public will not identify these isolated coincidences, even taking into account the weak nature of the verbal element ‘SINCE 1828’ and for the part of the public for which the verbal elements ‘AUTHENTIC HERBAL TEA’ are non-distinctive. Regarding the oriental characters of the earlier marks 2, 3 and 4 and the figurative element in the contested sign which will be associated with oriental symbols as well, it should be noted, that although they show some lines in common the earlier marks have three of six elements isolated while the contested mark includes what seems one symbol composed of different intersected lines bigger than other triangular symbol beside. The different elements in each sign give rise to a completely different visual impression. Even taken in an isolated manner, none of the elements of which the figurative earlier marks are formed is similar to the figurative elements of the contested sign. The one in the contested sign has more lines and it has a rounded line at the top that is not present in any of the elements of the earlier marks.
As the signs only coincide in irrelevant aspects, such as the presence of some letters, it is concluded that the signs are not visually similar.
Aurally, the pronunciation of the earlier mark 1 and the contested sign may coincide for part of the public in the sound of the letters ‛W’, ‘L’ or ’I/Y’ of the earlier mark ‘WANG LAO JI’ and the verbal element ‘WELLUCKY’ of the contested sign, depending of the different pronunciation rules in the different parts of the relevant territory. The pronunciation differs in the sound of the rest of the letters in both marks. The verbal elements ‘SINCE 1828’ have been considered weak for the goods in question and given the non-distinctiveness of the elements ‘AUTHENTIC HERBAL TEA’ for some of the goods and a part of the relevant public, these elements will not receive the consumer’s immediate attention, which will fall on the distinctive element ‘WELLUCKY’. However, despite the presence of the above mentioned common sounds in ‘wang lao ji’ and ‘wellucky’, these sounds are not adjacent nor form a recognisable sequence, they are isolated and they will not be identified as a common element in both signs.
For the part of the relevant goods and the relevant public for which the verbal elements ‘AUTHENTIC HERBAL TEA’ have a normal distinctiveness the signs have even more dissimilarities.
Taking into account all these factors, it is considered that the earlier mark 1 and the contested sign are aurally dissimilar.
The earlier marks 2, 3 and 4 will be perceived as figurative signs. Purely figurative signs are not subject to a phonetic assessment. As these earlier marks will be perceived as purely figurative, it is not possible to compare them aurally with the contested sign.
Conceptually, while the public in the relevant territory will perceive some concepts in the contested mark, namely the figurative elements as oriental symbols, the verbal elements ‘SINCE 1828’ as the year from which the goods are made by the producer or the starting year of use of the mark and the elements ‘AUTHENTICAL HERBAL TEA’ as any genuine beverage made from the infusion or decoction of herbs, spices or other plant material in hot water, these latter for a part of the relevant public, the earlier mark 1 lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
Regarding the earlier marks 2, 3 and 4, although these signs will be perceived as oriental characters, the public will not associate them with any meaning but with simple figurative marks. Contrary to the opponent’s arguments, they are not conceptually similar to the contested sign because the relevant public will not perceive the semantic meaning of the symbols. Despite the exhaustive explanations about the similar appearance of the symbols in the earlier marks and the contested sign submitted by the opponent, the fact is that the relevant public will perceive the earlier marks as purely figurative signs composed of crossed lines that, as has been mentioned, seem characters in an oriental language. It should be taken into account that the relevant public does not have any knowledge of this language since it is not part of any of the official languages in the relevant territory, and, thus, hardly could detect the same features in the symbols of the device in the contested sign.
Therefore, since the earlier marks will not be associated with any meaning, the signs are not conceptually similar.
As the signs merely coincide in irrelevant aspects, they are dissimilar
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected.
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 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 (7)(d)(ii) CTMIR, 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
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.