OPPOSITION No B 2 591 645

AS Prime Partner, Pärnu mnt 139E/2, 11317 Tallinn, Estonia (opponent), represented by Patendibüroo Käosaar OÜ, Tähe 94, 50107 Tartu, Estonia (professional representative)

a g a i n s t

Brendson Company Limited, Lykavitou 29, Egkomi, 2401 Nicosia, Cyprus (applicant), represented by Dr. Emil Benatov & Partners, Asen Peykov Str. No.6, 1113 Sofia, Bulgaria (professional representative).

On 01/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 591 645 is upheld for all the contested goods.

2. European Union trade mark application No 14 333 124 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods (in Class 3) of European Union trade mark application No 14 333 124 (figurative mark: “ ”). The opposition is based on Estonian trade mark registration No 37 336 (figurative mark: “ ”). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Estonian trade mark No 37 336.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years (22/01/2003) prior to the publication of the contested application.

The contested application was published on 09/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Estonia from 09/07/2010 to 08/07/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods in Class 3 on which the opposition is based, namely the following:

Deodorant soap; disinfectant soap; Essential oils of cedar wood; ethereal essences; essential oils; essential oils of lemon; shaving soap; soap for foot perspiration; antiperspirant soap; depilatory wax; cobblers wax; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; scouring solutions; sachets for perfuming linen; almond soap; mint essence (essential oil); scale removing apparatus; scale removing preparations for household purposes; laundry smoking preparations; laundry wax; washing preparations; laundry bleach; pumice stone; stain removers; furbishing preparations; polishing creams; polishing wax; parquet floor wax; preparations for cleaning waste pipes; cleaning preparations; swabs (toiletries); detergents other than for use in manufacturing operations and for medical purposes; floor wax; shaving preparations; medicated soap; soap for brightening textiles; boot polish; soap; shampoos; talcum powder for toilet use; sharpening preparations; toiletries; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; toilet water; oils for toilet purposes; windscreen cleaning liquids; cakes of soap; whiting.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 17/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 21/02/2016 to submit evidence of use of the earlier trade mark. On 18/02/2016, within the time limit, the opponent submitted evidence of use.

The opponent has submitted a total of 38 items, which can be summarised as follows: nearly 100 invoices (items 15-20), pictures of the products as positioned in stores (items 1-7), packages, declarations from different managers of the main retail stores to which the opponent sells its products (items 29-34), a list of online stores (items 35-38) and a signed deed of reception between the opponent and the company that designed the packages (items 8-11).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory. The proof of use in its entirety has sufficient supporting documentation regarding quantity and quality (extent of use, nature of use, place of use (Estonia), volume and time) for the earlier trade mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; cotton pads for cosmetic purposes; tissues.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 in Class 3 on which the opposition is based are the following:

Cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; cotton pads for cosmetic purposes; tissues.

The contested goods in Class 3 are the following:

Tissues impregnated with cosmetic lotions; Cloths impregnated with a detergent for cleaning.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 Tissues impregnated with cosmetic lotions are included in the broad category of the opponent’s tissues. Therefore, they are identical.

The remaining contested Cloths impregnated with a detergent for cleaning have the same distribution channels, public and producers as the opponent´s tissues. Therefore, they are similar.

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 found to be identical and similar are directed at the public at large. The degree of attention is rather low, because they are cheap goods for (daily) consumption.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Estonia.

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 figurative marks containing the word element ‘SMILE’ (written in ordinary upper case letters in the earlier mark and in slightly slanting letters in the contested sign). Both signs have an oval-shaped background, which is more elongated in the earlier trade mark than in the contested sign.

Neither of the signs has any elements that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs convey very similar overall impressions: the word element ‘SMILE’ is identical (although it is depicted slightly differently) and the backgrounds, which are oval shaped in both signs, are also very similar. The only minor differences are in their sizes (length and height). When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the signs are visually similar to a high degree.

Aurally, the figurative elements will not be taken into account. The signs are aurally identical as regards the pronunciation of the word ‘SMILE’, which both signs have in common.

Conceptually, for the part of the public that understands the coinciding English word ‘SMILE’, in the sense of ‘a pleased, kind, or amused facial expression, typically with the corners of the mouth turned up and the front teeth exposed’, the signs will have an identical meaning. For the rest of the public, the signs are meaningless and therefore a conceptual comparison is not possible.

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

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. 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The goods are partly identical and partly similar. The signs are visually highly similar, aurally identical and (for part of the public) also conceptually identical.

Taking into account the significant similarities between the signs, the normal degree of distinctiveness of the earlier trade mark, the low degree of attention and the identity and similarity between the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other.

The opposition is well founded under Article 8(1)(b) EUTMR.

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 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

Konstantinos MITROU

Peter QUAY

Julie GOUTARD

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.