OPPOSITION No B 3 062 693

A.S. Watson TM Limited, P.O. Box 957, Offshore Incorporations Centre, Road Town, Tortola, Virgin Islands (British) (opponent), represented by A.A. Thornton & CO., 10 Old Bailey, EC4M 7NG, London, United Kingdom (professional representative)

a g a i n s t

Tweed Inc., 1 Hershey Drive, K7A 0A8, Smiths Falls, Canada (applicant), represented by Plougmann Vingtoft A/S, Strandvejen 70, 2900, Hellerup, Denmark (professional representative).

On 02/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 693 is partially upheld, namely for the following contested goods:

Class 31: Live plants other than those of botanical genera Hordeum, Lactuca, Cichorium and Rubus; live cannabis plants.

2. European Union trade mark application No 17 874 802 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 874 802 for the word mark WATSON. The opposition is based on European trade mark registration No  11 525 623 for the word mark WATSONS. The opponent invoked Article 8(1) EUTMR and the exact provision will be discussed below.

PRELIMINARY REMARK

In the notice of opposition the opponent invoked Article 8(1)(a) and (b) EUTMR. However, on 11/01/2019 in its submission of further facts and arguments the opponent withdraw Article 8(1)(b) as ground of opposition.

Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

Therefore, the Opposition Division will examine the opposition under 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.

a) The goods

Article 2(2)(g) EUTMDR stipulates that the notice of opposition must contain an indication of the goods and services on which the opposition is based in the language of the proceedings for each of the grounds. This applies to all types of earlier rights.

The indication of the goods and services on which the opposition is based is an admissibility requirement which has to be provided within the opposition period.

In the notice of opposition the opponent indicated that the opposition is based on part of the goods and services, namely on some of the goods and services in Classes 5, 35 and all the services in Classes 42 and 44.

However, in its observations filed on 11/01/2019 (this is after the opposition period that ended on 24/08/2018) the opponent indicated all the goods and services covered by the earlier mark.

As the observations have been submitted after the opposition period, the Opposition Division will only take into consideration the goods as indicated in the notice of opposition.

Therefore, the goods and services on which the opposition is based are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; health food supplements made principally of vitamins; preparations of vitamin; evening primrose oil for medical uses; enzyme dietary supplements; dietary and nutritional supplements; remedies for foot perspiration; eye drops; eye lotions for medical use; eye moisturisers for medical use; eye ointment for medical use; capsules for medicines; medicines for dental purposes; medicines for human use; medicines in tablet form.

Class 35: Retail chemists services; retail pharmacy services; retail services relating to healthcare products, pharmaceuticals, perfumery beauty products and toiletries, cleansing preparations for personal use, cosmetics, skin care preparations, pharmaceuticals and sanitary preparations, first-aid kits, dentifrices, healthcare preparations for personal care, key chains, locks, shavers, electronic shavers, razors, toothbrushes, electronic toothbrushes, combs, sponges, picture frames, mirrors, household utensils and containers, glassware, porcelain, crystals and earthenware, cutlery and tableware, jewellery, horological and chronometric instruments, stationery, writing instruments, playing cards, goods made of leather and imitation of leather, trunks and travelling bags, luggages, umbrellas, walking sticks, sacks and bags, textile goods, clothing, headgear and footwear, games and playthings, gymnastic and sporting articles, food and beverages, preserved food, snack food, confectionery, alcoholic and/or non-alcoholic drinks, beer; information and advisory services relating to all the aforesaid services.

Class 42: Chemists services; information and advisory services relating to all the aforesaid services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; pharmacy services; information and advisory services relating to all the aforesaid services.

Following a limitation the contested goods are the following:

Class 31: Live plants other than those of botanical genera Hordeum, Lactuca, Cichorium and Rubus; live cannabis plants.

Class 34: Dried marijuana and cannabis.

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 31

The contested Live plants other than those of botanical genera Hordeum, Lactuca, Cichorium and Rubus; live cannabis plants are similar to a low degree to the opponent’s agriculture services in Class 44. Although the nature, purpose and method of use of these products and services are not the same, the products and services have some similarities, since they are complementary, can be provided by the same companies in the same points of sale, and can target the same relevant public.

Contested goods in Class 34

The contested dried marijuana and cannabis are herbs for smoking. These goods are dissimilar to the opponent’s goods and services in Class 5 (drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries for human beings; substances used for treating, preventing or alleviating the symptoms of diseases or injuries for animals; special hygienic substances prepared to treat or prevent a disease; substances prepared for special dietary requirements with the purpose of treating or preventing a disease), Class 35 (retail services relating to healthcare products, chemical products, pharmaceuticals and sanitary preparations, perfumery, beauty products, cosmetics and toiletries, first-aid kits, dentifrices, cleaning preparations for personal use, key chains, locks, shavers, razors, toothbrushes, combs, sponges, picture frames, mirrors, household utensils and containers, glassware, porcelain, crystals and earthenware, cutlery and tableware, jewellery, horological and chronometric instruments, stationery, writing instruments, playing cards, goods made of leather and imitation of leather, trunks and travelling bags, luggages, umbrellas, walking sticks, sacks and bags, textile goods, clothing, headgear and footwear, games and playthings, gymnastic and sporting articles, food and beverages and advisory services relating to all the aforesaid services), in Class 42 (chemical services) and Class 44 (Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; pharmacy services; information and advisory services relating to all the aforesaid services). The contested goods and services have different nature, purpose and method use. Furthermore, they differ in commercial origin, relevant public and distribution channels, and neither they are complementary nor in competition. Especially, the goods in Class 5 have a different purpose, distribution channel, sales point and might be sold under prescription (13/10/2017, R 2377/2016-2, Artemisa (fig.) / ARTEMIS (fig.) et al., para 16). The submitted document does not prove the contrary. Therefore, they are dissimilar.

b) 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 similar to a low degree are directed at the public at large as at business customers with specific professional knowledge or expertise in the field of agriculture.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

WATSONS	WATSON
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks will be perceived by the English-speaking part of the public as variations of a common English surname. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both marks are distinctive because they have no direct and immediate relation with the relevant goods and services.

Visually and aurally, the signs coincide in in the letters ‘WATSON’. On the other hand, they differ in the final ‘S’ at the end of the earlier mark.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually 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.

d) 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.

e) Global assessment, other arguments and conclusion

The goods and services are partly similar to a low degree and partly dissimilar. The public’s degree of attentiveness may vary from average to high.

The distinctiveness of the earlier mark is normal.

The marks are visually, aurally and conceptually highly similar in that they share their first six letters and are almost identical, the only difference being the final ‘S’ in the contested sign. In other words, the earlier trade mark is almost fully reproduced in the contested sign.

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).

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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 sign must be rejected for the goods found to be similar to a low degree to the services of the earlier trade mark because it is considered that the significant similarities between the marks are sufficient to compensate the low degree of similarity of some of the goods.

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.

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 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

Irena LYUDMILOVA LECHEVA

Francesca CANGERI

Edith Elisabeth VAN DEN EEDE

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.