DECISION

of the Second Board of Appeal

of 22 December 2016

In Case R 979/2016-2

Aldi GmbH & Co. KG
Burgstr. 37 45476 Mülheim/Ruhr Germany	Opponent / Appellant

represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft MbB, Haumannplatz 28, 45130 Essen, Germany

v

MAGASALFA, S.L.
C/ Ausias March, núm. 1, 2º 5ª Mirasol Centro 08195 Sant Cugat del Valles Spain	Applicant / Respondent

represented by PCP Abogados, Calle Balmes 205, 6º 2ª, 08006 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 514 928 (European Union trade mark application No 13 652 904)

The Second Board of Appeal

composed of T. de las Heras (Chairperson and Rapporteur), C. Govers (Member) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 19 January 2015, MAGASALFA, S.L. (‘the applicant’) sought to register the figurative mark

for goods which were subsequently limited to the following:

Class 3 – Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; essential oils and aromatic extracts; toiletries.

2. The applicant claimed the colours white, black and grey.

3. The application was published on 28 January 2015.

4. On 22 April 2015, Aldi GmbH & Co. KG (‘the opponent’) filed an opposition against the registration of the published trade mark application in its entirety, pursuant to Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier German trade mark No 30 458 820 for the word mark

KOKETT

filed on registered for, inter alia, goods in Class 3, 5 and 16.

6. The applicant requested that the opponent submit proof of use of its earlier mark.

7. In response, the opponent filed the following proof of use:

• Affidavit (Item 1): signed on 31 July 2015 by Mr Benjamin Albert, the opponent’s Buying Director, responsible both for advertising the goods under German trade mark No 30 458 820 ‘KOKETT’ and for the distribution of those goods by the sales companies of the opponent’s group. In the affidavit, Mr Albert states that the opponent’s trade mark was used in Germany within the relevant period, endorses Items 2, 3 and 4 and includes a list of minimum sales figures.

• Turnover and sales figures (affidavit, Item 1): the affidavit includes a list of annual minimum sales figures for 2010-2015, referring to the following goods: handkerchiefs, paper towels, tissue, napkins, cosmetic towels, moist tissue, refresher towels and balsam handkerchiefs. The list does not refer to the trade mark or demonstrate that the sales listed took place under the earlier sign for the relevant goods.

• Advertisements (Item 2): dated between 14/01/2010 and 10/02/2014, in German (accompanied by a translation) and referring to the following goods: balsam handkerchiefs, napkins, cosmetic towels, toilet tissue, paper table cloth, wet towels and wet toilet tissues. The trade mark ‘KOKETT’ is displayed on the product and/or in a small explanatory legend. The Buying Director affirms in the affidavit that the advertisements were published in approximately 546 daily newspapers published in Germany during the abovementioned period.

• Samples of packaging labels (Item 3): 33 copies of labels for the goods marked with the trade mark ‘KOKETT’, as sold in Germany during the relevant period, as confirmed in the affidavit. The goods labelled are toilet tissues, handkerchiefs, household tissues and napkins.

• Invoices (Item 4): 58 copies of invoices from suppliers dated between 22 April 2010 and 26 January 2015, all containing the earlier sign, ‘KOKETT’, and referring to the following goods: toilet tissues, handkerchiefs, household tissues and napkins.

8. On 18 May 2016, by way of decision No B 2 514 928 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety.

9. The contested decision can be summarized as follows:

• The relevant territory is Germany.

• The evidence shows genuine use of the trade mark for ‘handkerchiefs, tissues, toilet paper, napkins and household tissues.’

• The contested goods in Class 3, namely ‘soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; essential oils and aromatic extracts and toiletries’, are intended for beautifying, grooming or improving the appearance or condition of an animal or human. They are usually mixtures of chemical components, derived from natural or synthetic sources. Conversely, the opponent’s goods in Class 16, namely ‘handkerchiefs; tissues; toilet paper; napkins and household tissues’, are goods made of paper and cellulose, intended for personal or household use. Therefore, they have different natures and methods of use. However, although none of the opponent’s goods is specifically defined as for use with cosmetics, the contested goods and the opponent’s goods may have the same distribution channels and target the same consumers. Therefore, they are considered similar to a low degree.

• The earlier mark is a word mark composed of the word ‘KOKETT’, which is a German word meaning ‘a person who strives to attract others’ attention and to please them’ (information extracted from Duden at http://www.duden.de/suchen/dudenonline/kokett). The earlier mark has no elements that could be considered clearly more distinctive or dominant than other elements.

• The contested sign is a figurative mark composed of the French word ‘COQUETTE’, depicted twice, once in black upper-case letters on a white rectangle and again, underneath this, in white upper-case letters on a black rectangle. The typeface used is relatively standard, however, the letters ‘O’ have a dot inside them. The verbal element is considered the most distinctive element of the mark since the figurative elements will be perceived as purely decorative. The term ‘COQUETTE’ is a French word that has no meaning for the relevant public. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

• Visually, the signs coincide in the letters ‘*O*E*ETT*’. However, they differ in their first letters, ‘C’ versus ‘K’, in their third letters, ‘Q’ versus ‘K’, and in the additional fourth and last letters, ‘U’ and ‘E’, of the contested sign. In addition, the contested sign is composed of two verbal elements with eight letters each, while the earlier mark has six letters. Finally, although the figurative elements are not the most distinctive elements of the sign, the contested sign is depicted on black and white rectangles, creating a different visual impression from that created by the earlier mark. Therefore, the signs are visually similar to a low degree.

• Aurally, the pronunciation of the signs coincides in the letters ‘C/K-O*E-TT’. However, they differ in the last letter, ‘E’, of the contested sign, which has no counterpart in the earlier mark. As regards the pronunciation of the letters ‘K’ and ‘Q’, the public that perceives the contested mark as a French word will pronounce these letters identically and, for this part of the public, the letter ‘U’ of the contested sign is silent. However, the rest of the German public will pronounce ‘QU’ in the contested sign in a different way from the letters ‘K’ in the earlier mark. Furthermore, the sign ‘COQUETTE-COQUETTE’ has two verbal elements with eight letters each, whereas the mark ‘KOKETT’ has a single element with six letters. Therefore, the lengths of the signs are different. Consequently, their rhythms and structures are also different. Therefore, the signs are aurally similar to an average degree.

• Conceptually, while the public in the relevant territory will perceive the earlier mark as meaning ‘coquettish or flirtatious’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

• As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

• As has been concluded above, the contested goods in Class 3 are similar to a low degree to those of the earlier mark and target the public at large, whose degree of attention is between average and low. The goods are visually and aurally similar to the extent that they have some letters in common. However, they are not conceptually similar and the contested sign is a figurative mark composed of two verbal elements in a particular graphic depiction. This repetition of the verbal element in the contested sign implies a different length, rhythm and structure from the earlier mark. Therefore, the opponent’s argument that the marks are aurally identical must be set aside.

• On the other hand, even bearing in mind that the figurative elements are of a purely decorative nature, they are not negligible and cannot be completely disregarded. In fact, contrary to the opponent’s claim, the visual similarity between signs may also have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided in particular by the visual impact of the mark they are looking for. Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

• The additional elements of the contested mark are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks. Therefore, the opposition must be rejected.

10. On 31 May 2016, the opponent filed a notice of appeal against the contested decision.

11. The opponent filed its grounds of appeal on 12 September 2016.

12. The applicant filed no observations on the grounds of appeal.

Submissions and arguments of the opponent

13. The opponent requests that the contested decision be annulled and the opposition allowed in its entirety. Its reasons can be summarized as follows:

• The Opposition Division wrongly assumed that the additional elements of the contested mark are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

• The consumer will not be in a position to see the marks side-by-side. Due to indistinct memory he or she will confuse the marks. Trade marks are often communicated under unfavourable conditions.

• From a visual point of view, the signs share important similarities. The figurative elements in the applicant’s sign are purely decorative and cannot be taken into account in the comparison. The word element ‘COQUETTE’ clearly dominates the mark and will be considered as the dominant part of it. The fact that the sign is depicted on a black-and-white rectangle is not sufficient to avoid confusion. The doubling of the word element will also not be recalled by the consumer.

• The minor differentiating elements are not sufficient to avoid a risk of confusion. The signs are phonetically identical. The Opposition Division erred in claiming that the sound made by ‘qu’ differs from that of a ‘k’. No evidence was put forward for this. Consumers are well aware of the rule of pronunciation. It is unlikely that consumers will perceive the contested sign as two verbal elements.

• Other decisions of the Opposition Division support the opponent’s case.

• The degree of similarity between the goods must be characterized as at least medium. Moist tissues impregnated with pharmaceutical lotions are used for body care/skin care. No clear line exists between cosmetics in a broader sense and products like moist tissues and handkerchiefs. Such goods are used to dry one’s hands, to remove make-up or for manicure or skin-care purposes. Therefore, the consumer will assign both marks to the same origin.

• In conclusion, the Opposition Division made an incorrect assessment of the degree of similarity of the opposing signs and goods. Therefore, the mark applied for must be rejected in its entirety.

Reasons

The applicable Regulations

14. The EU trade mark application was filed before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (CTMR) is applicable to this appeal (04/10/2016, T-549/14, Castello / Castellò (fig.) et al., EU:T:2016:594, § 33), at least for non-strictly procedural provisions (13/06/2013, C 346/12 P, Milram, EU:C:2013:397, § 2). However, for easy reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, albeit the material changes in the Regulation will not be applied to the case at hand.

15. Since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will keep on referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).

16. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48(1) CTMIR. Therefore, it is admissible.

On substance

17. Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

18. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30-33 and the case-law cited).

19. The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333 , § 35 and the case-law cited).

20. The relevant territory is Germany.

Proof of use of the earlier mark

21. The opponent was obliged by the applicant to provide proof of use of its earlier mark pursuant to Article 42(2) and (3) EUTMR. There is no dispute that the earlier mark was put to use in Germany on ‘handkerchiefs, tissues, toilet paper, napkins and household tissues’ in Class 16.

Relevant consumer and level of attention

22. Since the goods are household goods, the relevant consumer is a member of the general public in Germany. Moreover, established case-law has it that the average consumer is deemed to be ‘reasonably well-informed and reasonably observant and circumspect’ (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, §  26). Therefore, the Opposition Division was not justified in defining the level of attention of the relevant consumer as ‘between average and low’, despite the goods being household items of low cost.

Comparison of goods

23. In assessing the similarity of the goods and services concerned… all the relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose of use and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors relevant to the characterisation of the relationship which may exist between the goods or services in question may also be taken into account, such as the channels of distribution of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37 and 24/09/2008, T-116/06, O Store, EU:T:2008:399, § 49 and the case-law cited therein).

24. The contested decision found that the applicant’s ‘soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; essential oils and aromatic extracts and toiletries’ in Class 3, were only similar to a ‘low degree’ to the opponent’s ‘handkerchiefs; tissues; toilet paper; napkins and household tissues’ in Class 16. The Board concurs with that finding—although the degree of similarity must be deemed almost non-existent with respect to some of the applicant’s goods, such as ‘essential oils, hair lotions and dentifrices’.

25. In response to the opponent’s arguments filed on appeal, the Board finds them without substance for the following reasons.

26. The opponent clearly errs in suggesting that its ‘tissues’ and ‘handkerchiefs’ would include those ‘impregnated’ with pharmaceutical lotions. On the contrary, such goods fall in Class 5, not Class 16, which is the class in which the opposing goods are listed. Nor can the Board accept that the opponent’s ‘tissues’ including those which are used to remove make-up. The Opposition Division found no evidence to suggest that the mark was ever put to use on such goods and even explicitly denies such use (see Opposition Division decision p.6, § 5). Furthermore, as already noted, the opponent does not dispute the finding on proof of use.

27. Equally, the Board rejects the claim that the opponent’s goods are used for body or skin care or are specifically for cosmetics purposes. On the contrary, the opponent’s tissues are general purpose and may be used around the household for a variety of tasks such as mopping up spilled liquids, removing dirt and stains, kitchen cleaning, or, for personal use, such as in blowing the nose, drying the hands and so on. However, they have no specialized body-care function and have no relation to cosmetics. The opponent’s toilet paper has a specific use unrelated to cosmetic purposes.

28. The two sets of goods follow different lines of trade: the opponent’s goods are of interest to the house-hold sector, while the applicant’s fall into the cosmetics sector. The goods are not in competition with each other. None of the opponent’s ‘tissues, napkins or toilet paper’ could substitute any of the applicant’s goods. Nor are they truly complementary, because complementary goods are those which are closely connected in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 48). On its own, the fact that a household tissue may be used to remove make-up does not make the goods complementary.

Comparison of signs

29. The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333 , § 35 and the case-law cited).

30. The signs to be compared are as follows:

KOKETT
Earlier sign	Later sign

Visual comparison

31. The later sign consists of the word ‘COQUETTE’ repeated twice on two lines. The uppermost word is depicted in grey letters against a white background, while the lower word is depicted in white letters against a black background. At the centre of the letter ‘O’ is a ‘dot’. Against this relative complexity, the earlier sign consists merely of the word ‘KOKETT’. There is a moderate degree of similarity between the signs, nevertheless, given that in many of the relevant languages, the letter ‘K’ can be a substitute for both ‘C’ and ‘Q’, the perception of the words ‘COQUETTE’ and ‘KOKETT’ may coincide to some degree. However, the degree of similarity must not be overstated. The word elements only strictly coincide with the second letter ‘O’ and the double ‘TT’ element. Otherwise, all the other letters have no identical counterparts. The double nature of the later sign is also a feature radically absent in the earlier sign.

Phonetic comparison

32. The Opposition Division found the signs only ‘aurally similar to an average degree’. However, the Board finds the degree of similarity to be much greater. In German, ‘CO-QUE-TT-E’ is pronounced ‘KO-KE-TT-E’, which is virtually identical to the later sign ‘KO-KE-TT’, differing only in the absence of the final syllable ‘-E-’ . Moreover, consumers generally take more note of a mark’s beginning than of its ending (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 45) which is often sounded less emphatically and more weakly or skipped over altogether. It is highly unlikely, as proposed by the Opposition Division, that the consumer would repeat the words ‘CO-QUE-TT-E-CO-QUE-TT-E’ twice and thus arrive at ‘different rhythms and structures’. For these reasons, the signs must be deemed phonetically highly similar.

Conceptual comparison

33. The earlier sign ‘KOKETT’ has a concrete meaning in German, namely ‘a person who strives to attract the attention’ of others. The element ‘COQUETTE’ in the later sign, despite phonetic equivalence between ‘K’ and ‘C’ and ‘Q’, will not convey an unambiguous meaning to the average German consumer. It will suggest a French word, and it may even suggest the German word ‘KOKETT’, but the relevant public are unlikely to have any completely trustworthy idea of its meaning. Therefore, the Board finds the signs to be, at most, conceptually similar to a low degree or entirely dissimilar.

Likelihood of confusion

34. On the one hand, the goods covered by the conflicting marks are similar, but only to a significantly low degree. On the other, while near identical from a phonetic point of view, the signs are not highly similar either visually or conceptually. Given that the opponent’s ‘napkins, toilet paper and tissues’ will not be sold in the same zones of high-street outlets or supermarkets as the applicant’s ‘cosmetics’, and given that cosmetic goods will generally occupy a specially dedicated space in such outlets, the Board finds that there is no likelihood of confusion between the marks, since in this instance the low degree of similarity between the goods is not offset by a sufficient degree of similarity between the signs (see by an analogy 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

35. This finding is not undermined by the two decisions of the Opposition Division adduced by the opponent. In 18/02/2015, B 2 350 216, CHARRED OAK / CHARETTE and 14/05/2014, B 2 219 254, LEVRETTE / LEVERET, risk of confusion was found in both cases. However, they are not highly relevant in this instance. Several critical differences between those cases and the case at hand could be pointed out; one of the most important being that in both the aforementioned cases the goods covered by the conflicting marks were found identical, a critical factor in finding a risk of confusion. In these proceedings, however, the goods are only similar to a low degree.

36. The contested decision is upheld.

Costs

37. Pursuant to Article 85(1) and 85(6) EUTMR and Rule 94(3) and 94(7) CTMIR, the opponent as the losing party, is ordered to reimburse the applicant’s representation costs in the appeal proceedings of EUR 550. As to the opposition proceedings, the Board confirms that the opponent must bear the applicant’s representation costs of EUR 300.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear EUR 850 in respect of the applicant’s costs incurred in the opposition and appeal proceedings.

Signed T. de las Heras

Signed C. Govers

Signed C. Negro

Registrar: Signed H. Dijkema