OPPOSITION No B 3 051 884

Chun Ho Wong, PO Box K744 Haymarket NSW 1240, 1240 Haymarket, Australia (opponent), represented by IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

SC Life Care Corp SRL, DN 59, KM:8 +550M Stânga, Județul Timiș, Chișoda, Romania (applicant), represented by Livia Negomireanu, sos. Nicolae Titulescu 94, bloc 14 A, S.C. 4, ap 127, sector 1, Bucharest, Romania (professional representative).

On 29/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 884 is partially upheld, namely for all the contested goods in Classes 3 and 5 with the exception of:

Class 3: Cleaning and fragrancing preparations; Perfumery; Perfumes; Fragrances; Cleaning preparations for use in livestock farming; Abrasives; Tailors' and cobblers' wax; Abraders; Household fragrances; Laundry preparations; Leather and shoe cleaning and polishing preparations; Vehicle cleaning preparations; Agents for removing wax; Air fragrance reed diffusers; Alcoholic solvents being cleaning preparations; Perfumery and fragrances; Adhesives for affixing false hair; Adhesives for cosmetic purposes; Cleaner for cosmetic brushes; Cotton balls for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool for cosmetic purposes; Hair piece bonding glue; Make-up pads of cotton wool; Lint for cosmetic purposes; Oil removing papers for cosmetic purposes; Double eyelid tapes; Essential oils for use in air fresheners.

2. European Union trade mark application No 17 376 121 is rejected for all the contested goods with the exception of the goods in Class 3 mentioned above for which it may proceed to registration.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 376 121 . The opposition is based on international trade mark registration No 1 190 143 designating the European Union ‘POWEROLL’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

In the Notice of Opposition the opponent based its opposition on the international trade mark registration No 1 190 143 designating, among other European countries, the European Union. However, the TMview database shows that this international registration does not designate any other European Member State but for the European Union as a whole. Therefore, the Opposition Division will consider only the designation of the European Union as basis of this 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 on which the opposition is based are the following:

Class 5: Herbal dietary supplements; herbal medicine; herbal preparations for medicinal purposes; herbal remedies; medicinal oils; medicinal ointments; natural oils (medicinal); liniments; medicated massage oils; oils for pharmaceutical purposes; pharmaceutical preparations; pharmaceutical preparations for animals; pharmaceutical products; medicinal food supplements; medicinal food supplements for animals; medicinal herbs; medicinal preparations; embrocations; medicinal embrocations.

The contested goods are the following:

Class 3: Cleaning and fragrancing preparations; Patches containing sun screen and sun block for use on the skin; Perfumed creams; Perfumed oils for skin care; Perfumed powder [for cosmetic use]; Petroleum jelly for cosmetic purposes; Pores tightening mask packs used as cosmetics; Powder for forming sculpted finger nail tips; Shaving lotion; Shaving stones [astringents]; Shower salts not for medical purposes; Skin balms (Non-medicated -); Skin care creams [cosmetic]; Skin care creams, other than for medical use; Skin care lotions [cosmetic]; Skin care mousse; Skin care oils [cosmetic]; Skin cleaning and freshening sprays; Skin cleansers; Skin cleansers [cosmetic]; Skin cleansers [non-medicated]; Skin cleansing cream; Skin cleansing cream [non-medicated]; Skin cleansing lotion; Skin conditioners; Skin conditioning creams for cosmetic purposes; Skin cream; Skin emollients; Skin emollients [non-medicated]; Skin fresheners; Skin lotion; Skin lightening creams; Skin masks [cosmetics]; Skin moisturisers; Skin toners; Sparkling fluid for the body; Toners for cosmetic use; Tonics [cosmetic]; Toning creams [cosmetic]; Toning lotion, for the face, body and hands; Wrinkle removing skin care preparations; Dermatological lotions, other than medicated; Warming skin lotions, other than medical use; Aromatic oils for the bath; Baby bath mousse; Baby bubble bath; Bath bombs; Bath concentrates (Non-medicated -); Bath creams (Non-medicated -); Bath flakes; Bath foam; Bath gel; Bath foams (Non-medicated -); Bath herbs; Bath lotions (Non-medicated -); Bath milk; Bath oil; Bath oils for cosmetic purposes; Bath pearls; Bath pearls (Non-medicated -); Bath powders (Non-medicated -); Bath preparations, not for medical purposes; Bath salts, not for medical purposes; Bath soak for cosmetic use; Bath soap; Bubble bath; Cosmetic preparations for baths; Foaming bath gels; Foaming bath liquids; Non-medicated bath oils; Non-medicated bath salts; Non-medicated body soaks; Scented bathing salts; Anti-perspirant deodorants; Anti-perspirants in the form of sprays; Antiperspirants [toiletries]; Antiperspirants for personal use; Body sprays; Deodorant soap; Deodorants for body care; Deodorants for human beings or for animals; Deodorants for personal use [perfumery]; Deodorants for the feet; Deodorants, for personal use in the form of sticks; Feminine deodorant sprays; Foot powder [non-medicated]; Non-medicated antiperspirants; Personal deodorants; Roll-on deodorants [toiletries]; Baby hair conditioner; Conditioning balsam; Conditioning creams; Cosmetic hair dressing preparations; Cosmetic hair lotions; Cosmetic preparations for the hair and scalp; Cosmetics for the use on the hair; Hair balm; Hair balsam; Hair lotions; Hair gel; Hair moisturisers; Non-medicated hair shampoos; Non-medicated shampoos; Oil baths for hair care; Oils for hair conditioning; Pomades for cosmetic purposes; Shampoo-conditioners; Shampoo bars; Shampoos; Shampoos for human hair; Shampoos for personal use; Styling gels; Styling lotions; Styling mousse; After-shave emulsions; After-shave gel; After-shave lotions; After-shave preparations; Aftershave balms; Aftershave creams; Aftershave milk; Aftershave moisturising cream; Depilatory preparations; Shaving balm; Pre-shaving preparations; Shaving cream; Shaving foam; Shaving gel; Shaving preparations; Shaving preparations in liquid form; Shaving soap; Shaving sets, comprised of shaving cream and aftershave; Shaving sprays; Shaving sticks [preparations]; Shaving stones; Wax strips for removing body hair; Dentifrices; Denture polishes; Non-medicated dentifrices; Non-medicated toothpaste; Non-medicated mouth sprays; Mouthwashes, not for medical purposes; Preparations for cleaning dentures; Sets of cosmetic oral care products; Solid toothpaste tablets; Teeth cleaning lotions; Teeth whitening strips; Teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; Throat sprays [non-medicated]; Tooth care preparations; Tooth cleaning preparations; Tooth gel; Tooth polish; Tooth powder; Tooth whitening creams; Toothpaste; Breath fresheners; Breath freshening preparations for personal hygiene; Perfumery; Perfumes; Fragrances; Bath preparations for animals; Cosmetics for animals; Dental care preparations for animals; Deodorants for animals; Shampoos for animals [non-medicated grooming preparations]; Skin care products for animals; Breath fresheners for animals; Cleaning preparations for use in livestock farming; Conditioning sprays for animals; Abrasives; Tailors' and cobblers' wax; Abraders; Essential oils and aromatic extracts; Toiletries; Household fragrances; Laundry preparations; Leather and shoe cleaning and polishing preparations; Vehicle cleaning preparations; Agents for removing wax; Air fragrance reed diffusers; Alcoholic solvents being cleaning preparations; Body cleaning and beauty care preparations; Oral hygiene preparations; Perfumery and fragrances; Abrasive preparations for use on the body; Adhesives for affixing false hair; Adhesives for cosmetic purposes; Aloe vera gel for cosmetic purposes; Aloe vera preparations for cosmetic purposes; Baby care products (Non-medicated -); Balms, other than for medical purposes; Bergamot oil; Chalk for cosmetic use; Cleaner for cosmetic brushes; Cosmetic kits; Cosmetic preparations for body care; Cosmetic preparations for slimming purposes; Cosmetic preparations for use as aids to slimming; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics containing hyaluronic acid; Cosmetics containing keratin; Cosmetics containing panthenol; Cosmetics for children; Cosmetics for personal use; Cosmetics in the form of oils; Cotton balls for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool for cosmetic purposes; Cuticle conditioners; Cuticle cream; Cuticle removers; Facial preparations; Foot smoothing stones; Greases for cosmetic purposes; Hair piece bonding glue; Henna [cosmetic dye]; Henna powders; Impregnated cleaning pads impregnated with cosmetics; Impregnated cleaning pads impregnated with toilet preparations; Impregnated cloths for cosmetic use; Lacquer for cosmetic purposes; Make-up pads of cotton wool; Lint for cosmetic purposes; Massage candles for cosmetic purposes; Massage creams, not medicated; Massage gels, other than for medical purposes; Massage oils; Massage oils and lotions; Massage oils, not medicated; Massage waxes; Mineral oils [cosmetic]; Mineral water sprays for cosmetic purposes; Moist wipes impregnated with a cosmetic lotion; Nasal cleaning preparations for personal sanitary purposes; Non-medicated cosmetics; Non-medicated massage preparations; Non-medicated toiletries; Oils for cosmetic purposes; Oils for toilet purposes; Ointments for cosmetic use; Paper hand towels impregnated with cosmetics; Pedicure preparations; Perfumed body lotions [toilet preparations]; Perfumed lotions [toilet preparations]; Pumice stone; Pumice stones for use on the body; Sanitary preparations being toiletries; Scalp treatments (Non-medicated -); Seaweed for cosmetology; Slimming aids [cosmetic], other than for medical use; Spirit gum for cosmetic use; Tissues impregnated with cosmetic lotions; Tissues impregnated with cosmetics; Bath preparations; Deodorants and antiperspirants; Hair preparations and treatments; Hair removal and shaving preparations; Make-up; Skin, eye and nail care preparations; Soaps and gels; Artificial pumice stone; Baby suncreams; Beauty balm creams; Beauty care cosmetics; Beauty lotions; Beauty milk; Beauty serums; Body cleansing foams; Body gels; Body glitters; Body mist; Body washes; Cleaning masks for the face; Cleaning preparations for personal use; Collagen preparations for cosmetic application; Collagen preparations for cosmetic purposes; Colour cosmetics for the skin; Colouring preparations for cosmetic purposes; Cosmetic breast firming preparations; Cosmetic creams and lotions; Cosmetic dyes; Cosmetic hair regrowth inhibiting preparations; Cosmetic preparations for bath and shower; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of powders; Creamy face powder; Disposable wipes impregnated with cleansing compounds for use on the face; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Face oils; Facial peel preparations for cosmetic use; Feminine hygiene cleansing towelettes; Fluid creams [cosmetics]; Foams for use in the shower; Foot scrubs; Functional cosmetics; Glitter in spray form for use as a cosmetics; Hair and body wash; Hand cleansers; Hand gels; Hand powders; Hand washes; Henna for cosmetic purposes; Herbal extracts for cosmetic purposes; Impregnated tissues for cleaning [non-medicated, for use on the person]; Lip neutralizers; Make-up preparations; Moist wipes for sanitary and cosmetic purposes; Non-medicated beauty preparations; Non-medicated body care preparations; Non-medicated douches; Non-medicated foot soaks; Oil removing papers for cosmetic purposes; Paper hand towels impregnated with cleaning agents; Phytocosmetic preparations; Pre-moistened cosmetic wipes; Pumice stones for personal use; Refill packs for cosmetics dispensers; Serums for cosmetic purposes; Shower and bath foam; Shower and bath gel; Shower preparations; Skin care preparations; Skin cleansing foams; Soap free washing emulsions for the body; Sponges impregnated with toiletries; Tissues impregnated with essential oils, for cosmetic use; Tissues impregnated with make-up removing preparations; Washing creams; Washing preparations for personal use; Warming creams, other than for medical use; warming lotions, other than for medical use; Babies' creams [non-medicated]; Baby body milks; Baby lotions; Baby oils; Baby powder; Bath lotion; Baby wipes; Barrier creams; Bath salts; Beauty masks; Beauty tonics for application to the body; Beauty tonics for application to the face; Blemish balm creams; Body butter; Body cream; Body emulsions; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milks; Body moisturisers; Body oil spray; Body oils [for cosmetic use]; Body powder; Body powder (Non-medicated -); Body scrub; Body soufflé; Body talcum powder; Clay skin masks; Cleansers for intimate personal hygiene purposes, non medicated; Cleansing balm; Cleansing creams; Cleansing foam; Cleansing gels; Cleansing lotions; Cleansing masks; Cleansing milk for toilet purposes; Cleansing oil; Cleansing milks for skin care; Cleansing mousse; Cocoa butter for cosmetic purposes; Cold cream; Compounds for skin care after exposure to the suns rays; Cosmetic body scrubs; Cosmetic creams for firming skin around eyes; Cosmetic eye gels; Cosmetic facial lotions; Cosmetic foams containing sunscreens; Cosmetic hand creams; Cosmetic moisturisers; Cosmetic nail care preparations; Cosmetic nourishing creams; Cosmetic oils for the epidermis; Cosmetic preparations for dry skin during pregnancy; Cosmetic preparations for nail drying; Cosmetic preparations for skin care; Cosmetic preparations for skin firming; Cosmetic preparations for skin renewal; Cosmetic products for the shower; Cosmetic products in the form of aerosols for skincare; Cosmetic sun-protecting preparations; Cosmetic suntan lotions; Cosmetics for protecting the skin from sunburn; Cosmetics for the treatment of dry skin; Cosmetics for use in the treatment of wrinkled skin; Cosmetics in the form of lotions; Cosmetics in the form of milks; Creams (Non-medicated -) for the body; Creams (Non-medicated -) for the eyes; Creams for cellulite reduction; Creams for firming the skin; Creams for tanning the skin; Cuticle softeners; Day creams; Day lotion; Dermatological creams [other than medicated]; Double eyelid tapes; Dusting powder; Emollients; Essences for skin care; Essential oils for the care of the skin; Essential oils for use in air fresheners; Eucalyptus oil for cosmetic use; Exfoliant creams; Exfoliants; Exfoliants for the care of the skin; Exfoliants for the cleansing of the skin; Exfoliating scrubs for cosmetic purposes; Exfoliating scrubs for the body; Exfoliating scrubs for the face; Hand and body butter; Hand creams; Hand lotion (Non-medicated -); Hand lotions; Hand masks for skin care; Hand milks; Hand oils (Non-medicated -); Hydrating masks; Lip balms [non-medicated]; Lip coatings (Non-medicated -); Lotions for cellulite reduction; Lotions for cosmetic purposes; Lotions for face and body care; Lotions for strengthening the nails; Make-up removing creams; Microdermabrasion polish; Milky lotions for skin care; Moisturising body lotion [cosmetic]; Moisturising concentrates [cosmetic]; Moisturising creams, lotions and gels; Moisturising gels [cosmetic]; Moisturising preparations; Moisturising skin creams [cosmetic]; Moisturising skin lotions [cosmetic]; Moisturizers; Moisturizing milk; Nail art stickers; Nail care preparations; Night cream; Night creams [cosmetics]; Nappy cream [non-medicated]; Non-medicated cleansing creams; Non-medicated creams; Non-medicated diaper rash cream; Non-medicated face care preparations; Non medicated skin toners; Non-medicated foot cream; Non-medicated foot lotions; Non-medicated moisturisers; Non-medicated scalp treatment cream; Non-medicated skin clarifying lotions; Non-medicated skin creams; Non-medicated skin serums; Non-medicated stimulating lotions for the skin; Nutritional creams (Non-medicated -).

Class 5: Medicated warming lotions for skin; Warming cream for medical use; Medicinal ointments; Pain relieving creams; Pain relieving lotions; Medicated creams; Medicated lotions; Pharmaceutical creams; Analgesics; Pain relief preparations; Pharmaceuticals; Pharmaceuticals and natural remedies.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Opposition Division considers more appropriate to begin the comparison of the goods by those found to be dissimilar.

The contested Cleaning and fragrancing preparations; Perfumery; Perfumes; Fragrances; Cleaning preparations for use in livestock farming; Abrasives; Tailors' and cobblers' wax; Abraders; Household fragrances; Laundry preparations; Leather and shoe cleaning and polishing preparations; Vehicle cleaning preparations; Agents for removing wax; Air fragrance reed diffusers; Alcoholic solvents being cleaning preparations; Perfumery and fragrances; Adhesives for affixing false hair; Adhesives for cosmetic purposes; Cleaner for cosmetic brushes; Cotton balls for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool for cosmetic purposes; Hair piece bonding glue; Make-up pads of cotton wool; Lint for cosmetic purposes; Oil removing papers for cosmetic purposes; Double eyelid tapes; Essential oils for use in air fresheners are dissimilar to the opponent’s goods in Class 5. The goods under comparison differ in their natures, purposes and method of use. They are neither in competition, nor complementary to each other. Furthermore, their origin of production usually is different.

The contested Herbal extracts for cosmetic purposes are similar to a high degree to the opponent’s herbal remedies in Class 5 as they have the same nature and method of use. They may coincide in producer, relevant public and distribution channels.

The contested Aromatic oils for the bath; Essential oils and aromatic extracts; Bergamot oil; Tissues impregnated with essential oils, for cosmetic use; Essences for skin care; Essential oils for the care of the skin are similar to the opponent’s oils for pharmaceutical purposes in Class 5 as they have the same nature. They may coincide in producers, relevant public and distribution channels.

The contested Dentifrices; Denture polishes; Non-medicated dentifrices; Non-medicated toothpaste; Non-medicated mouth sprays; Mouthwashes, not for medical purposes; Preparations for cleaning dentures; Sets of cosmetic oral care products; Solid toothpaste tablets; Teeth cleaning lotions; Teeth whitening strips; Throat sprays [non-medicated]; Tooth care preparations; Tooth cleaning preparations; Tooth gel; Tooth polish; Tooth powder; Tooth whitening creams; Toothpaste; Breath fresheners; Breath freshening preparations for personal hygiene; Dental care preparations for animals; Breath fresheners for animals; Oral hygiene preparations; Nasal cleaning preparations for personal sanitary purposes; Spirit gum for cosmetic use; Feminine hygiene cleansing towelettes; Baby wipes; Cleansers for intimate personal hygiene purposes, non medicated are oral, nasal, child’s and feminine hygiene products and are similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested Massage candles for cosmetic purposes; Massage creams, not medicated; Massage gels, other than for medical purposes; Massage oils; Massage oils and lotions; Massage oils, not medicated; Massage waxes; Non-medicated massage preparations are similar to the opponent’s medicated massage oils in Class 5 as they have the same method of use. They may coincide in producer, relevant public and distribution channels.

According to the Opposition Division’s practice explained in the Guidelines Part C, Opposition, Section 2 Double identity and likelihood of confusion, Chapter 2 Comparison of Goods and Services, the general categories of pharmaceuticals and cosmetics are considered to be similar. Cosmetics include various preparations used to enhance or protect the appearance or odour of the human body. Pharmaceuticals on the other hand comprise products, such as skin or haircare preparations, mouthwashes, body oils, gels etc. with medical properties. Moreover, in many cases classification of a product as a pharmaceutical or a cosmetic product depends on the concentration of the same active substance. Therefore, pharmaceuticals may coincide in purpose with cosmetics. Furthermore, they share the same distribution channels since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies.

The remaining contested goods such as Skin care creams [cosmetic] or Cosmetic preparations for baths are cosmetics. Consequently, these goods are similar to the opponent’s pharmaceutical preparations in Class 5 as they may have the same purpose. They usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 5

The contested Medicated warming lotions for skin; Warming cream for medical use; Medicinal ointments; Pain relieving creams; Pain relieving lotions; Medicated creams; Medicated lotions; Pharmaceutical creams; Analgesics; Pain relief preparations; Pharmaceuticals; Pharmaceuticals are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested natural remedies overlap with the opponent’s herbal remedies. Therefore, they are identical.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the pharmaceutical and medical fields, as well as in the beauty care industry The degree of attention may vary from average to high depending on the nature of the goods. In the case of goods in Class 3 such as dentifrices, the degree of attention will be average while it will be higher in the case of pharmaceuticals.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, 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 when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

POWEROLL
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 element ‘POWEROLL’ of the earlier mark and the verbal element ‘POWER ROLL’ in the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public for which these are meaningless and distinctive elements are, therefore, the similarity of the signs is greatest.

The figurative element representing a bear of the contested sign does not have any meaning in relation to the relevant goods and is, therefore, distinctive.

As far as the background in different grades of pink is concerned, it is a less distinctive element of a purely decorative nature.

Although the verbal element ‘POWER ROLL’ in the contested sign is relatively smaller than the figurative element representing a bear in the contested sign, where a trade mark is composed of both verbal and figurative elements, which is the case of the contested sign, the former usually has a stronger impact on the consumer than the latter. This is because the average consumer will more readily refer to the goods in question by quoting their name than by describing their figurative elements.

Visually, the signs coincide in the letters ‘POWER*OLL’. However, they differ in the letter ‘R’ at the beginning of the word ‘ROLL’, in the typeface and colours as well as, in the figurative element in the contested sign. Moreover, the signs differ in the fact that the earlier mark is composed of one word, namely ‘POWEROLL’ while the verbal element of the contested sign is composed by two words, namely ‘POWER’ and ‘ROLL’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛POWER*OLL’, present identically in both signs. The pronunciation differs in the sound of the letter ‘R’ at the beginning of the word ‘ROLL’ in the contested sing which has not counterpart in the earlier mark. However, this additional letter in the contested sign merely reinforces the sound of the same letter ‘R’ before and does not affect to the number of syllables.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign 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 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 (including a likelihood of association) 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.

The contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. They are directed at the public at large and at professionals. The level of attention is considered to vary from average to high. The earlier mark, as a whole, has a normal degree of distinctiveness.

The marks are visually similar to an average degree and aurally similar to a very high degree on account that all the letters of the earlier mark are reproduced in the verbal elements of the contested sign. Regarding the conceptual aspect, the marks are not conceptually similar.

Bearing in mind all of the above, it is considered that the differences between the signs are not sufficient to counteract the similarities. Furthermore, while it is possible that the public may not directly confuse the signs in question, the Opposition Division deems it likely that indirect confusion in the form of likelihood of association may occur. Indirect confusion results when the relevant public is able to distinguish between the marks, but may still believe that the goods or services they cover originate from the same undertaking or from economically-linked undertakings. Therefore, the contested sign could be perceived as a new line of goods of the opponent, even for goods for which a higher degree of attention will be paid.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international registration designating the European Union. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Victoria DAFAUCE MENÉNDEZ

Manuela RUSEVA

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.