OPPOSITION No B 2 641 234

Basilio Sciacca, 46 Philbeach Gardens, London SW5 9EB, United Kingdom (opponent), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative)

a g a i n s t

Kjetil Karstad, Åråsveien 14, 2007 Kjeller, Norway (applicant), represented by Angelica Coppini, 137, Spinola Roard, St. Julians, STJ3011, Malta (professional representative).

On 23/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 641 234 is partially upheld, namely for the following contested goods and services:

Class 3: Aromatics [essential oils]; Bath preparations, not for medical purposes; Essential oils of cedarwood; Hair dyes; Breath freshening sprays; Depilatories; Hair spray; Jasmine oil; Hair lotions; Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations for slimming purposes; Hair waving preparations; Soaps; Shampoos.

Class 5: Fungicides.

Class 35: The bringing together, for the benefit of others, of hair products, enabling customers to conveniently view and purchase those goods from a website, a mail catalogue or a physical shop.

2. European Union trade mark application No 14 643 316 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 643 316. The opposition is based on, inter alia, UK trade mark registration No 2 612 965. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s UK trade mark registration No 2 612 965.

1. The goods and services

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

Class 3: Soaps; perfumery; essential oils; cosmetics; hair lotions; skin care preparations; skin creams, lotions and gels; hair care preparations; shampoo; conditioner (hair); non-medicated herbal preparations for the care of the skin or hair; non-medicated toiletry preparations; toiletry products (non-medicated); beauty care preparations and products; bath preparations.

The contested goods and services are the following:

Class 3: Aromatics [essential oils]; Bath preparations, not for medical purposes; Essential oils of cedarwood; Hair dyes; Breath freshening sprays; Depilatories; Hair spray; Jasmine oil; Hair lotions; Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations for slimming purposes; Hair waving

preparations; Soaps; Shampoos.

Class 5: Antioxidant pills; Appetite suppressant pills; Mineral food supplements; Mineral water salts; Fungicides; Soporifics.

Class 35: Import-export agencies; The bringing together, for the benefit of others, of a variety of food supplement, articles of clothing, hair products, herbal based supplements and dietary products, enabling customers to conveniently view and purchase those goods from a website, a mail catalogue or a physical shop.

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 Aromatics [essential oils]; Bath preparations, not for medical purposes; Hair lotions; Cosmetic preparations for skin care; Soaps; Shampoos are identically contained in both lists of goods (including slightly different wording).

The contested Essential oils of cedarwood; Jasmine oil (being a type of essential oil derived from the jasmine flower) are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested Hair dyes; Hair spray; Hair waving preparations are included in the broad category of the opponent’s hair care preparations. Therefore, they are identical.

The contested Breath freshening sprays; Depilatories; Cosmetic preparations for eyelashes; Cosmetic preparations for slimming purposes are included in, or overlap with, the broad categories of the opponent’s toiletry products (non-medicated); beauty care preparations and products. Therefore, they are identical.

Contested goods in Class 5

The contested Fungicides are similar to a low degree to the opponent’s essential oils. Some essential oils have antifungal qualities, e.g. tea tree oil and they are used as fungicides. Therefore, the goods at issue may have the same purpose. They can coincide in end user and method of use.

The remaining contested goods, namely Antioxidant pills; Appetite suppressant pills; Mineral food supplements; Mineral water salts; Soporifics are dissimilar to the opponent’s goods. These contested goods include food supplements, preparations and substances with nutritional purpose; preparations aimed to improve health conditions and drugs to treat sleep disorders. These goods have medical purpose and are intended to remedy nutritional deficiencies and sleep disorders. Their aim can be to ensure that enough essential nutrients are provided in a diet and, in case of soporifics, to treat insomnia. Therefore, these contested goods are dissimilar to the opponent’s cosmetics products which are used to enhance or protect the appearance or odour of the human body. The goods at issue have different purpose, nature, distribution channels as well as different producers.

Contested services in Class 35

The contested The bringing together, for the benefit of others, of hair products, enabling customers to conveniently view and purchase those goods from a website, a mail catalogue or a physical shop is similar to a low degree to the opponent’s hair care preparations. Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The contested The bringing together, for the benefit of others, of a variety of food supplement, articles of clothing, herbal based supplements and dietary products, enabling customers to conveniently view and purchase those goods from a website, a mail catalogue or a physical shop are dissimilar to the opponent’s goods. Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

The contested Import-export agencies relate to the transport of goods over national borders. These services have no point of contact with the opponent’s goods in Class 3. These goods and services are not in competition with each other nor are they complementary. Therefore, they are dissimilar.

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 and services found to be identical and similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

THE HERB CLUB
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier mark is a word mark consisting of ‘THE HERB CLUB’.

The contested sign is a figurative mark consisting of ‘HERBACLUB’ written in red stylised typeface with the capital letters ‘H’ and ‘C’. The verbal elements are written below the figurative red and green device of a stylised figure of a running person.

The word ‘HERB’ of the earlier mark will be perceived as ‘a plant of which the leaves, or stem and leaves, are used for food or medicine, or in some way for their scent or flavour’. The verbal element ‘HERBA’ of the contested sign will be perceived in the same meaning given its proximity to the word ‘HERB’. The element ‘THE’ of the earlier mark will be perceived as a definite article. The element ‘CLUB’ included in both signs will be understood as meaning ‘an organization of people interested in a particular activity or subject who usually meet on a regular basis’. Although, the words ‘HERB’ and ‘HERBA’ could be perceived as descriptive given their indication to herb-based cosmetics or Class 5 goods as using a plant’s seeds or roots for medicinal purposes, the signs as a whole are meaningless for the goods and services at issue. Therefore, they are distinctive.

The signs as a whole are not descriptive, allusive or otherwise weak for the relevant goods and services at issue.

The figurative device in the form of a running person in the contested sign, by virtue of its large size, is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the letters ‘HERB* CLUB’. Although these verbal elements are written together in the contested sign, the use of the capital letters ‘H’ and ‘C’ clearly singles out the words ‘HERBA’ and ‘CLUB’. The signs differ in the article ‘THE’ of the earlier mark and in the additional final letter, ‘A’, of the element ‘HERBA’ of the contested sign as well as in the stylisation and the figurative device of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘H-E-R-B-* C-L-U-B’, present identically in both signs. The pronunciation differs in the sound of the letters ‘T-H-E’ of the earlier mark and in the sound of the last letter ‘A’ of the word ‘HERBA’ of the contested sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the earlier mark and the verbal part of the contested sign, considered as a whole, do not have any clear univocal meaning in relation to the goods and services at issue, the verbal elements included in both signs, in isolation, will be associated with the meanings explained above. To that extent, the signs are conceptually similar to a high degree. On the other hand, the signs also have some conceptual differences due to the presence of the figurative device in the form of a running person in the contested sign.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partially identical, partially similar to a low degree and partially dissimilar.

The signs at issue are similar insofar as they overlap in the verbal elements ‘HERB CLUB’ because, despite the slight alteration of the first element in the contested sign, the public will associate both ‘HERBA’ and ‘HERB’ with, essentially, the same concept.

Notwithstanding that the contested sign includes the figurative device as well as applies stylisation to the verbal element, the elements ‘HERBA’ and ‘CLUB’ are clearly distinguishable within the contested sign. It is noted that the word elements will have a stronger impact on the consumer than the remaining component of the signs. This is because the consumers will more readily refer to signs by their verbal components rather than by describing the figurative elements and stylisation. Therefore, it is considered that the figurative elements and stylisation of the contested sign are insufficient to differentiate the marks. This is even more given that the verbal part of the contested sign conveys the same meaning as the earlier mark. The overlap in the word elements ‘HERB CLUB’ has an important impact in the overall impression created by the marks.

Further, it must be noted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Therefore, the relevant public may erroneously led into believing that the goods and services, including those similar to a low degree originate from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s UK trade mark registration No 2 612 965.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to a low degree to the goods of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier UK trade mark registration No 2 612 965 for the figurative mark .

Since this mark is similar to the one which has been compared and covers the same scope of goods in Class 3, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Marzena MACIAK

Sandra KASPERIŪNAITĖ

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.