OPPOSITION No B 2 556 291

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Cotril S.P.A., Via Trento 69, 20021 Ospiate di Bollate (MI), Italy (applicant), represented by GLP S.R.L., Via L. Manara 13, 20122 Milano, Italy (professional representative)

On 28/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 291 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 of European Union trade mark application No 13 856 208. The opposition is based on Swedish trade mark registration No 389 290. The opponent invoked Article 8(1)(b) EUTMR.

Proof of use of the earlier mark was requested by the applicant. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best scenario in which the opponent’s case can be considered.

1. The goods

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

Class 3: Cosmetics, hair lotions.

The contested goods are the following:

Class 3: Products for the care and conditioning of hair; Hair creams and lotions; Hair spray; Hair waxes; Hair dye; Tints for the hair; Hair care lotions; Hair waving and hair-setting preparations; Preparations for setting hair; Hair straightening preparations; Bleaching preparations for the hair; Hair sprays and hair gels; Hair mouse; Shampoo; Soaps and detergents for the skin and scalp; Perfumery; Cosmetic products; Face creams for cosmetic use; Body cream; Foam bath; Detergents; Body lotions; Lip gloss; Lip care preparations.

Some of the contested goods are identical to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. 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 assumed to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

NATURELLE	NATURIL
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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 marks are word marks and – as such - have no elements that are more dominant (visually eye-catching) than others.

The earlier sign consists of the word ‘NATURELLE’ which closely resembles the Swedish words ‘natur’ and ‘naturell’ referring to nature and/or something pure without further processing or – for example – without any additives, like the words ‘nature’ and ‘natural’ in English. Bearing in mind that the relevant goods are cosmetics and hair lotions, ‘NATURELLE’ will, in all likelihood, be perceived as alluding to their characteristics, namely their lack of artificial components or industrial manipulation. Therefore, the inherent distinctiveness of the word ‘NATURELLE’ for the relevant goods is low in the perception of the relevant public and its impact is therefore limited when assessing the likelihood of confusion between the marks at issue.

The contested sign ‘NATURIL’ has no clear meaning in the relevant territory. It will be seen as an invented word, even if it can be assumed that its beginning, ‘NATUR’, will be perceived as alluding to ‘nature’.

Visually, the signs coincide in ‘NATUR*L(**)’. In contrast the signs differ in the sixth letter ‘E’ and the last letters ‘LE’ of the earlier mark, and in the sixth letter ‘I’ of the contested sign.

In its submissions of 17/12/2015 the opponent argues on the impact of the identical beginning of the conflicting signs, namely ‘NATUR’. Although it is established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, the outcome always depends on the circumstances of the case. In the present case it is of particular importance that the common beginning of the signs, “NATUR”, has only limited distinctiveness for the reasons explained above, and therefore is not likely to be remembered more clearly that the rest of the signs.

Therefore, they are visually similar to a low degree.

Aurally, the signs coincide in the sound of the letters ‘NATUR’, but they differ in their endings, namely ‘ELLE’ in the earlier mark and ‘IL’ in the contested sign. While the applicant’s sign consists of the three syllables ‘NATU-RIL’, the opponent’s mark consists of four syllables ‘NA-TU-RELL-E’. Therefore, the pronunciation of the signs coincides in the first two syllables, while the others differ.

The stress in the pronunciation of the contested sign is on the last syllable ‘RIL’, whereas for the earlier mark on the syllables ’RELL-E’.

Taking into account the aforesaid, the signs are aurally similar to a low degree.

Conceptually, as stated above, although the signs as a whole do not have a meaning as such for the public in the relevant territory, the element ‘NATUR’, included in both signs, will be associated with a reference to ‘nature’. However, since this element is allusive of the characteristics of the goods in question, the signs are conceptually similar only to a low degree (18/09/2013, R 1462/2012-G, ULTIMATE GREENS/ULTIMATE NUTRITION (FIG. MARK) et al.).

4. 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question, namely cosmetics and hair lotions.

5. Global assessment, other arguments and conclusion

The goods assumed to be identical are directed at the public at large. The degree of attention is average.

The signs are similar to the extent that the element ‘NATUR’ in common. Since this element is lowly distinctive for all the relevant goods, the signs are – as a whole - similar only to a low degree.

It is now an established practice that, when the marks share an element with a low degree of distinctive character, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression conveyed by the marks Considering this, the different endings of the marks, which have no features and no concept in common, suffice to offset the commonality between the signs that lies in the coinciding weak element.

Therefore, the Opposition Division considers that, contrary to the opponent’s arguments and despite the identity of the goods in question, the differences between the marks avoid any likelihood of confusion, even when the degree of attention is average.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use submitted 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.