OPPOSITION No B 3 057 697

Jose Oriol Polo Ribas, Ticià, 43, 08035 Barcelona, Spain (opponent), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

The Camel Soap Factory LLC, PO Box 391584, Dubai, United Arab Emirates (applicant), represented by Oakleigh IP Services Limited, 7 Paynes Park, Hitchin SG5 1EH, United Kingdom (professional representative)

On 11/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 697 is upheld for all the contested goods.

2. European Union trade mark application No 17 878 113 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 17 878 113 for the figurative mark . The opposition is based on the following earlier rights:

- Spanish trade mark registration No 90 090 for the word mark ‘KAMEL’.

- European Union trade mark registration No 11 630 548 for the word mark ‘KAMEL’

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK - THE SUBSTANTIATION OF THE OPPOSITION

The applicant claims that the opposition is non-substantiated, as far as based in the earlier Spanish trade mark. The arguments are the following:

‘the Opponent has not provided copies of any registration certificates or renewal certificates as appropriate confirming that either earlier right relied upon is presently in force and as such a valid basis for opposition. Nor has the Opponent confirmed via separate statements within their supporting evidence which relevant online official databases should be accessed to qualify these rights as part of their obligation to substantiate these rights.

Nor has the Opponent qualified their right to file the opposition as no evidence of any entitlement was submitted by the Opponent.

The entitlement point is a key and requires substantiation in these proceedings as it is noted that the print-out presumably from the Spanish Trademark Office provided by the Opponent attached to the Notice of Opposition relating to the Opponent’s Spanish National trade mark was filed some eighty years ago by a different and unnamed Applicant/Owner yet is currently listed as being held by an individual, Jose Oriol Polo Ribas, the Opponent, following an assignment linked to the Spanish National trademark dated 30th September 1991.

The Opponent provides no executed Witness Statement to qualify his entitlement to mark being KAMEL, no details of the extent of this assignment or what rights flow from it to the Opponent especially in relation to the later filed EUTM which makes a claim to seniority to the earlier Spanish National mark nor any other evidence on this point whatsoever.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition. In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the evidence submitted by the opponent on 06/07/2018, together with the Notice of Opposition, and therefore within the substantiation period, consists of a registration certificate from the Spanish official data base, accompanied by the corresponding English translation. The documents submitted show all the relevant information necessary to substantiate the earlier right, including the name of the opponent as the owner of the earlier mark, the status of the trade mark being renewed and valid, a representation of the mark and the goods and services for which it is registered, inter alia. In addition, the opponent relied on the online substantiation, which is the most updated source of information available, and this source also shows the relevant information as descried before.

The fact that the earlier mark was registered years ago is irrelevant, since according to the certificate it has been renewed and it is in status registered at the time of filing the opposition. Any previous owner/s that the earlier mark could have had before the current owner are irrelevant, since the owner and the opponent coincide at the time of filing the opposition. Therefore, contrary to the applicant´s arguments, the evidence submitted by the opponent and mentioned above, as well as the online substantiation, represent complete and sufficient evidence to substantiate the opponent’s earlier Spanish trade mark. The applicant´s claim is set aside.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. In fact, it was submitted as part of its observations, together with other claims and arguments.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 Spanish trade mark registration No 90 090 for the word mark ‘KAMEL’, since the other earlier mark is currently challenged under cancellation proceedings.

a) The goods

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

Class 3: Perfumery products, toiletries, hygiene and beauty products.

The contested goods are the following:

Class 3: Soaps; creams; balms; scrubs; lotions; cleansing creams; cleansing balms; cleansing scrubs; cleansing milks; cosmetics; hair care products; shampoos; perfumery; body care products; products for cleansing the skin; products for moisturising the skin; lip balm.

All the contested goods in Class 3 fall in the opponent´s broad category of toiletries, and are therefore considered identical.

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 are directed at the public at large and at professionals. The degree of attention paid by them during the purchase of the goods is deemed to be average.

c) The signs

KAMEL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 does not exist as such in Spanish. Therefore, it cannot be disregarded that part of the pubic perceives it as meaningless. However, a significant part of the public will see it as having the concept of the English word ‘camel’ (i.e. a large animal that lives in deserts and has one or two humps on their backs) for which the Spanish equivalent is ‘camello’. This conceptual perception is likely to occur, either due to the close spelling and pronunciation between ‘kamel’ and the Spanish word ‘camello’, or because they are aware of the English term ‘camel’ itself.

The Opposition Division will focus on the part of the public perceiving the earlier mark as having the concept of ‘camel’, since from this perspective the signs present more coincidences (i.e. conceptual), as it will be explained below, being therefore the best light in which the case can be examined.

The part of the public referred to above will also attribute the same concept of the animal to the word ‘CAMEL’ in the contested sign, being the concept reinforced in this case due to the presence of the figurative element representing a camel, described below.

Taking into account the kind of goods involved, ‘KAMEL’ and ‘CAMEL’ are of average distinctive character.

The figurative element of the contested sign is perceived as a minimalistic representation of part of a camel, inside a circle. Taking into account the kind of goods involved, it is of average distinctive character.

The word ‘THE’ in this same sign is used in English as a definitive article to introduce the word it precedes. It is likely that part of the public understands its meaning, since it is as basic English term. In this case, it is conceptually linked to the word ‘CAMEL’ following it.

The word ‘SOAP’ is the English term used to refer to a substance that, usually in combination with water, is used to wash things. Part of the public will perceive it as meaningless, and of average distinctive character. However, it is likely that professionals are aware of its English meaning, and perceive it as of low degree of distinctive character in relation to part of the goods involved (i.e. goods that could be somehow related to the act of washing/cleaning the skin of the face or body, such as body care products) or totally void of distinctive character in relation to other goods in relation to which it is descriptive (e.g. soap).

The word ‘FATORY’ is the English term used to refer to the building where a large number of goods are produced. Spanish-speaking consumers will attribute it this same meaning, due to the similar spelling and pronunciation with the Spanish equivalent ‘factoría’. This word is of, at most, a low degree of distinctive character, since it informs consumers of how and where the goods are produced.

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). However, contrary to the opponent´s argument, the depiction of the camel in the contested sign will not go unnoticed, even if the verbal elements are of greater weight for the reasons explained, and it reinforces the concept of the ‘camel’.

The contested sign does not have any elements more dominant (visually eye-catching) than others. Contrary to the opponent´s arguments, the word ‘FACTORY’, despite being of smaller font size, will not be disregarded by the relevant public, and cannot be considered a negligible element.

Visually, the signs coincide in the sequence of letters ‘AMEL’ and differ in letters ‘K’ and ‘C’ at the beginning of the coinciding sequences of letters referred to, and also in the words ‘THE’, ‘SOAP’ and ‘FACTORY’ and in the camel´s depiction.

Taking into account the weight and impact of each of the elements for the reasons explained above (e.g. their degree of distinctive character), it is considered that the signs are visually similar to a low degree.

Aurally, since the letters ‘K’ and ‘C’ are pronounced identically in Spanish, when followed by vowel ‘A’, the words ‘KAMEL’ and ‘CAMEL’ in the signs are aurally identical. Accordingly, the earlier mark is aurally entirely contained in the contested sign, as one of its distinctive elements. The signs differ in the sound of “THE”, “SOAP” and “FACTORY”.

Taking into account the weight and impact of each of the elements for the reasons explained above (e.g. their degree of distinctive character), it is considered that the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of the camel (animal) which is the only concept in the earlier mark and the concept of one of the words and the figurative element in the contested mark. The signs differ in the concepts of ‘soap’ and ‘factory’.

Taking into account the distinctive character of each of the elements forming the marks explained above, it is considered that the signs are conceptually similar to an average degree.

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 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 compared are considered identical. They are directed at the public at large and at professionals. The degree of attention paid by them during the purchase of the goods is deemed to be average.

The signs are visually similar to a low degree and aurally and conceptually similar to an average degree. the earlier mark is of average distinctive character.

The coincidences are found in the fact that the earlier mark is aurally entirely reproduced in the contested sign, in which it is a distinctive element. Although the signs differ in letters “K” and “C” of “KAMEL” and “CAMEL”, respectively, the part of the public referred to above (a significant part of the relevant public) will attribute identical concept to these two words. The differing verbal elements “SOAP” and “FACTORY” are, at least in relation to part of the goods involved, of low or no distinctive character, and the differing word “THE” merely introduces the word “CAMEL”. Lastly, the differing figurative element of the contested sign coincides in concept with the earlier mark, and reinforces the concept of the word “CAMEL” below it.

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). In this case, the identity between the goods contributes to counterbalance the differences between the signs.

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, even if perceiving the differences between the marks, will perceive the contested mark as a variation of the earlier, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public referred to in section c) above, namely those attributing the concept of “camel” to the word “KAMEL”, and which are considered to constitute a significant part of the relevant public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 90 090. It follows that the contested trade mark must be rejected for all the contested goods. As this earlier right 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).

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, 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

Inés GARCÍA LLEDO

María del Carmen SUCH SANCHEZ

Cindy BAREL

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.