OPPOSITION DIVISION




OPPOSITION No B 2 531 385


GHC Systems Inc., 2-501 Cartwright Street, Saskatoon Saskatchewan S7T 1E1, Canada (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative)


a g a i n s t


Pangaea Laboratories Limited, 240 Centennial Avenue, Centennial Park, Elstree Herts. WD6 3SJ, United Kingdom (applicant), represented by Wedlake Bell LLP, 52 Bedford Row, London WC1R 4LR, United Kingdom (professional representative).


On 16/06/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 531 385 is partially upheld, namely for the following contested goods:


Class 3: Toiletries; essential oils; body cleaning and beauty care preparations; bath preparations; deodorants and antiperspirants; hair preparations and treatments; hair removal and shaving preparations; make-up; skin care preparations; soaps and gels; perfumed tissues; tissues impregnated with cosmetics; tissues impregnated with cosmetic lotions; tissues impregnated with preparations for cleaning; except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use.


Class 5: Hygienic preparations and articles; sanitary preparations for medical purposes; tissues impregnated with pharmaceutical lotions.


2. European Union trade mark application No 13 753 314 is rejected for all the above goods. It may proceed for the remaining goods.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against some of the goods of European Union trade mark application No 13 753 314, namely against all the goods in Class 3 and some of the goods in Class 5. The opposition is based on European Union trade mark registration No 12 543 393. The opponent invoked Article 8(1)(b) EUTMR.



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


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


Class 3: Shampoo, conditioners, styling products, namely restorative hair tonics and treatments containing proteins, glossing preparations and serums for the hair, hair spray, smoothing creams, hair-styling gels, pastes, waxes, ointments and creams, hair repair treatment, hair-styling mousse, hair lotions, chemical products for curling and styling the hair, hair dyes.


Class 8: Hair-clippers and razor blades.


Class 21: Cosmetic utensils and styling aids, namely combs, hair for brushes.


The contested goods are the following:


Class 3: Toiletries; essential oils and aromatic extracts; perfume oils for the manufacture of cosmetic preparations; body cleaning and beauty care preparations; bath preparations; deodorants and antiperspirants; hair preparations and treatments; hair removal and shaving preparations; make-up; skin care preparations; soaps and gels; perfumed tissues; tissues impregnated with cosmetics; tissues impregnated with cosmetic lotions; tissues impregnated with preparations for cleaning; except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use.


Class 5: Hygienic preparations and articles; sanitary preparations for medical purposes; tissues impregnated with pharmaceutical lotions.



An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods. From the structure and wording of the opponent’s specification in Class 3, the Opposition Division concludes that the term ‘namely’ concerns only the last preceding term, that is, styling products. Therefore, the earlier mark is registered for, inter alia, the whole broad categories of shampoo and conditioners.


As regards the specification of the contested mark in Class 3, it contains, in fine, a list of goods excepted from protection (except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use). In the absence of a semicolon between any of those products, it is considered that none of the listed goods is a part of the list of goods for which the mark is protected but that they all represent an exception from protection.


As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.


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.


Contested goods in Class 3


The contested body cleaning and beauty care preparations; toiletries and hair preparations; (except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use) are broad categories that include the opponent’s shampoo. Since the Opposition Division cannot, ex officio, dissect the contested broad category, these goods are considered to be identical.


The contested hair treatments; (except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use) is a broad category that includes the opponent’s hair repair treatment. Since the Opposition Division cannot, ex officio, dissect the contested broad category, these goods are considered to be identical.


The contested essential oils; bath preparations; deodorants and antiperspirants; hair removal and shaving preparations; make-up; skin care preparations; soaps and gels; perfumed tissues; tissues impregnated with cosmetics; tissues impregnated with cosmetic lotions; tissues impregnated with preparations for cleaning; (except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use) are preparations the purpose of which is to improve the appearance of a body or its parts, including for example the smell or the skin texture. The goods of the earlier mark in Class 3 have the same purpose, in relation to hair. Such goods are available through the same distribution channels in the same outlets or in the same sections of supermarkets and they are directed at the same consumers who may assume that the same undertaking is responsible for their production as it is common on the market that the same company produces many different cosmetic preparations. Consequently, these goods are similar.


Finally, the remaining contested aromatic extracts and perfume oils for the manufacture of cosmetic preparations; except laundry preparations, household fragrances, de-greasing preparations for household purposes, detergents for household use are, unlike the goods of the earlier mark in all Classes, not final consumer products designed for end consumers but they are, as ingredients for manufacture of other products (perfumes and cosmetic products), directed at industries and producers. Therefore, the target public and distribution channels of these goods and those of the earlier mark are different. So is their nature and method of use. Moreover, it is not common that these contested goods and the goods of the earlier mark are produced by the same entity. Therefore, these contested goods are dissimilar to the goods of the earlier mark in Classes 3, 8 and 21.


Contested goods in Class 5


The contested hygienic preparations and articles and sanitary preparations for medical purposes are products used for hygiene and disinfection. Tissues impregnated with pharmaceutical lotions include tissues impregnated with disinfectants, products for calming irritated or sensitive skin etc. All these goods may be purchased for hygienic and cleanliness purposes. The earlier mark’s shampoo also serves purposes of personal cleanliness and hygiene. Moreover, these goods may be available through the same distribution channels (pharmacies) and are directed at the same consumers. Therefore, these contested goods are similar to a low degree to the opponent’s shampoo.


The applicant refers to the real use of the goods by the opponent and the specific sales manner the opponent uses. However, it must be reminded that, in order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) EUTMR, in the absence of proof of use obligation, the goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Likewise, the specific marketing channels are irrelevant because they may change in time, while the protection of the mark for the goods stays the same.


  1. 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 or similar are directed at the public at large. The degree of attention will range from average to higher (as regards the products with medical effects).



  1. The signs



SURFACE



Earlier trade mark


Contested sign


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 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).


The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that speaks Slavic languages (Polish, Czech, Slovak, Croatian, Slovene, Bulgarian).


The earlier mark is a figurative mark containing the clearly visually dominant element ‘surface’ written in somewhat stylised lower case letters. This element is many times larger than the remaining verbal elements written beneath it, ‘HAIR’, ‘HEALTH’ and ‘ART’, and will certainly visually overshadow these words. None of the verbal elements will be perceived as meaningful by the relevant public (as limited above). Therefore, the earlier mark has no element that could be considered more or less distinctive than the other elements.


The contested sign is a word mark consisting of a single element ‘SURFACE’. As a single element word mark, this mark has no elements that could be considered dominant or more distinctive than other elements.


Visually, the signs coincide in the word ‘surface’. The fact that this word is slightly stylised in the earlier mark has no relevance for the comparison because the contested sign is a word mark and as such, it is protected for the word itself including specific graphic representations. The coinciding element is the dominant element of the earlier mark and the whole of the contested sign. The remaining elements of the earlier mark have no counterpart in the contested sign. However, these elements are visually so minor that they have hardly any influence on the overall visual impression created by the mark. Therefore, the marks are visually similar to a high degree.


Aurally, consumers are likely to pronounce only the element ‘surface’ in the earlier mark. It has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. This is especially the case when, as in the two signs at stake, the remaining words can be easily separated from the dominant term (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). In the present case, it is highly unlikely that consumers would pronounce the three very small words placed under the dominant element. Therefore, the marks will most likely be pronounced identically.


Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.



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



  1. 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.


The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.


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.



  1. Global assessment, other arguments and conclusion


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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).


The only element of the contested sign is identical to the clearly dominant element of the earlier mark, while this coinciding element is perfectly distinctive. The marks are visually highly similar and most likely will be pronounced identically. There is no perceptible conceptual difference between them from the perspective of the relevant public. The barely perceptible verbal elements of the earlier mark cannot significantly influence the overall impression created by the earlier mark. Consumers, in particular bearing in mind that they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), will not distinguish the two marks. Even if they noticed that there is additional text present in one sign and not in the other, they would be likely to assume that those are just two versions of the same mark.


The degree of similarity between the marks is sufficiently high to counteract even the low degree of similarity found between some of the goods.


Considering all the above, there is a likelihood of confusion on the part of the part of the public that speaks Slavic languages. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.


Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark No 12 543 393. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including similar to a low degree) to those of the earlier trade mark.


The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.




COSTS


According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.


Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.





The Opposition Division


María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Vita VORONECKAITĖ




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.



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