OPPOSITION No B 2 800 996

Rituals International Trademarks B.V., Kalverstraat 73, 1012 NZ, Amsterdam, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA, Amsterdam, Netherlands (professional representative)

a g a i n s t

Natals Inc., 636 N Almont Drive, West Hollywood, California 90069, United States (applicant), represented by Marks & Clerk LLP, 40 Torphichen Street, Edinburgh EH3 8JB, United Kingdom (professional representative).

On 20/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 800 996 is upheld for all the contested goods.

2. European Union trade mark application No 15 696 206 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 696 206 for the word mark ‘RITUAL’, namely against all the goods in Class 5 (after the applicant had deleted Class 3 from the list during the proceedings). The opposition is based on, inter alia, international trade mark registration No 914 438 designating the European Union for the word mark ‘RITUALS’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 914 438 designating the European Union.

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; laundry products for woven fabrics; fabric softeners; perfumery, essential oils, cosmetic preparations, colognes, eau de toilette, perfume body sprays; cosmetic oils, creams and lotions for skincare

purposes; shaving foam, shaving gel, pre-shaving and after-shaving lotions; talcum powder for toiletry use; toiletries for the bath and shower use; hair lotions; dentifrices; non-medicated mouthwashes, deodorants for personal use, anti-perspirants (toiletries); non-medicated toilet preparations; depilatory preparations; non-medicated massage preparations (cosmetics); tissues impregnated with cosmetic lotions.

The contested goods are the following:

Class 5: Vitamin, mineral, nutritional, and dietary supplements.

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.

The contested goods are similar to the opponent’s cosmetics preparations since the goods have the same purpose. Moreover, they coincide in producers, relevant public and distribution channels.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average for the opponent’s goods to high for the contested goods.

The latter are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Consequently, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness. Non-professionals also have a higher degree of attention, as these goods affect their state of health.

3. The signs

RITUALS	RITUAL
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘RITUAL(*)’ is meaningful and distinctive in certain territories, for example in territories where German is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as Germany and Austria, because the signs share conceptual similarities in these territories.

The element ‘RITUAL’ of the contested sign is associated with, among others, an action or series of actions regularly or habitually repeated in a certain order; a ceremonial observance. This element is distinctive for the relevant goods.

As regards the earlier mark ‘RITUALS’, the relevant public will also perceive the above meaning of the word ‘RITUAL’. The final letter ‘S’ has no meaning as such in German but merely indicates the possessive form of the noun in German. Some consumers have sufficient knowledge of English to perceive the final ‘S’ as the plural form in English and consequently, they perceive the whole earlier mark as the plural form of the English word ‘RITUAL’.

Therefore, conceptually, the signs evoke the same distinctive concept for the public in the relevant territory and merely differ in the final letter ‘S’ that is not associated with any meaning as such. Thus, the signs are conceptually at least highly similar.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the first six letters ‘RITUAL’. This element is distinctive. However, they differ in the additional letter/sound ‘S’ at the end of the earlier mark.

Therefore, the signs are also visually and aurally highly similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that 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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods are similar. They are directed at both the general and specialized public whose degree of attention varies from average to high.

The earlier mark enjoys a normal degree of distinctiveness per se.

Due to high visual, aural and conceptual similarity, a likelihood of confusion exists since the difference between the signs is confined to the presence of an additional letter ‘S’ at the end of the earlier mark.

In its observations, the applicant refers to a previous decision (B 2 784 315) of the Office to support its arguments regarding the dissimilarity of the goods. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same.

Finally, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘RITUAL(S)’ in Class 3. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market, in this case the German or Austrian market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘RITUAL(S)’. In this context the applicant also claimed common usage of the word ‘RITUAL(S)’ on the market for cosmetics and it filed the result of an online search for English-speaking countries. However, the decision at hand focuses on the German-speaking public. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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 well founded on the basis of the opponent’s international trade mark registration No 914 438 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 914 438 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Karin KLÜPFEL

Beatrix STELTER

Martin EBERL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.