OPPOSITION No B 2 878 398

Cruzeiro Exim S.R.L., Alexandriei, 145A, 077025 Bragadiru, Romania (opponent)

a g a i n s t

Marika Müller, Eichendorffstraße 35, 09131 Chemnitz, Germany (applicant), represented by Kanzlei Sachs, Bredenbekstr. 55, 22397 Hamburg, Germany (professional representative)

On 22/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 878 398 is upheld for all the contested goods.

2. European Union trade mark application No 16 385 213 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 385 213 for the figurative mark , namely against all the goods in Classes 3, 5 and 29. The opposition is based on Romanian trade mark registration No 140 808 for the word mark ‘Bentonitin’. The opponent invoked Article 8(1)(b) EUTMR.

The European Union trade mark application has been partially refused as a result of the outcome in opposition proceedings No B 2 917 584 and the appeal decision dated 04/02/2020 in case number R 0998/2018‑1. In particular, the trade mark application has been refused for all the goods in Classes 5 and 29, and part of the goods in Class 3. Therefore, the present opposition proceedings will proceed only in relation to the goods in Class 3, not affected by the other case.

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: Gel; ointments; cosmetics (except for medical use).

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; fragrant preparations.

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 essential oils and aromatic extracts are similar to the opponent’s cosmetics (except for medical use). On the one hand, cosmetics products include preparations for enhancing or protecting the odour or fragrance of the body, while, on the other hand, essential oils and aromatic extracts are fragrant liquid aroma compounds (synthetic or organic) that are used (among others) primarily for scenting cosmetic products. Essential oils and aromatic extracts are usually one of the main ingredients in many cosmetic products. Additionally, they usually coincide in relevant public, distribution channels, and producer.

The contested fragrant preparations are similar to the opponent’s cosmetics (except for medical use), as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The applicant makes reference to the opponent’s submitted documents and claims that the trade mark is used for a product that reduces skin inflammation and helps accelerating the regeneration process of damaged skin, as well as to heal the skin from burn injuries. The applicant concludes that this is not a cosmetic, but a medical ointment for which the earlier trade mark is currently not registered. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and the case‑law cited therein). Therefore, the argument raised by the applicant is irrelevant.

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.

The degree of attention is considered to be average.

3. The signs

Bentonitin
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 element ‘Bentonitin’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

As regards the contested sign, according to case law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements with (a) particular meaning(s). The Court has not defined what is to be regarded as a ‘component’ or ‘element’ of a sign. It is easy to identify components when a sign is visually divided into different parts (e.g. separate figurative and verbal components), however, the term ‘component’ encompasses more than these visual distinctions. Ultimately, the perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. This happens, for instance, when there are indications within the sign that allow such a dissection like the use of different colours, fonts, styles or even a hyphen.

In the present case, the element ‘BentonitMED’ of the contested sign presents a different lay out of the components ‘Bentonit’ (depicted in black thin lower‑case letters, except for the first letter depicted in upper‑case) and ‘MED’ (depicted in grey upper‑case letters). Therefore, the relevant consumer will clearly break it down into those components. The component ‘Bentonit’ has no meaning for the relevant public and is, therefore, distinctive. The component ‘MED’ will be recognized by the relevant public as a reference to ‘medical’ or ‘medicine’, namely because of the existing similar words in Romanian (‘medical’ and ‘medicament’). This component is only allusive in relation to the goods in Class 3, since these comprise essential oils and aromatic extracts; fragrant preparations. A similar approach was, in fact, confirmed in the decision of 08/06/2018, R 6/2018-5, MediWell (fig.) / Well and well et al., § 35, where ‘medi’ was found to be only allusive in relation to goods in Class 3.

The element ‘Vulkanmineralien’ placed at the bottom of the contested sign is likely to be associated with the similar existing words in Romanian ‘vulcan’ and ‘minerale’. The volcanic minerals include copper, magnesium and zinc, and these volcanic ingredients have beneficial properties to detoxify cells and prolong their life. Accordingly, the relevant public could associate this element with some properties of the goods in questions. Therefore, this element is weak.

The figurative element in the contested sign, consisting of three linked hexagons, will not be associated with any particular meaning and is, therefore, distinctive. However, it must be recalled that 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).

The word element ‘BentonitMED’ and the figurative element in the contested sign are the co‑dominant elements as they are the most eye-catching, whereas the element ‘Vulkanmineralien’ is clearly secondary within the sign because of its position and much smaller size.

Visually, the signs coincide in the string of letters ‘Bentonit*’, which is the first word component perceived in the contested sign and almost the entirety of the earlier mark. 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. The signs differ, on the one hand, in the last two letters of the earlier mark, ‘in’ and, on the other hand, in the second word component perceived in the contested sign, ‘MED’, the secondary element ‘Vulkanmineralien’, as well as in the figurative element and aspects of the sign.

Therefore, bearing in mind the distinctive character and dominance of the elements forming the sings, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Bentonit’ and differ in the sound of the letters ‘in’ at the end of the earlier mark versus ‘MED’ in the contested sign. Contrary to the applicant’s opinion, the element ‘Vulkanmineralien’ of the contested sign will not be pronounced, because of its position, size and weak distinctive character.

In summary, the signs coincide in the pronunciation of eight letters placed in the same order at the beginning of the signs, whereas their differences (i.e. two versus three letters) lie at the end.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of some elements of the contested sign (i.e. ‘MED’ and ‘Vulkanmineralien’) as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

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 has no meaning for 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are similar and target the public at large, with an average degree of attention.

The signs are visually and aurally similar to an above average degree, as they coincide in their beginnings, namely in eight letters placed in the same order ‘Bentonit*’, whereas their differences lie at the end of these long elements, as well as in the secondary element ‘Vulkanmineralien’ and the figurative element of the contested sign. The signs are not conceptually similar due to the elements ‘MED’ and ‘Vulkanmineralien’ of the contested sign, which have, however, less weight as explained in section c) of the present decision.

The distinctive character of the earlier mark is normal.

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. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 140 808. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Marta GARCÍA COLLADO

María del Carmen SUCH SANCHEZ

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.