OPPOSITION No B 3 060 054

Logocos Naturkosmetik AG, Zur Kräuterwiese, 31020 Salzhemmendorf, Germany (opponent), represented by TBK, Bavariaring 4-6, 80336 München, Germany (professional representative)

a g a i n s t

Gino Riccardo Navarra, Via Isonzo 39, 62012 Civitanova Marche (Macerata), Italy and Simonetta Carducci, Via Isonzo 39, 62012 Civitanova Marche (Macerata), Italy (applicants).

On 25/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 054 is partially upheld, namely for the following contested goods:

Class 3: All the goods applied for in this class.

Class 5: All the goods applied for in this class, except for disinfectant dressings.

2. European Union trade mark application No 17 901 105 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 17 901 105 for the figurative mark . The opposition is based on, inter alia, German trade mark registration No 30 445 051 for the figurative mark The opponent invoked 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.

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 German trade mark registration No 30 445 051.

a) The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; decorative cosmetics, cosmetic sun-screen and suntanning preparations, shampoos and hair care preparations, cosmetic dentifrices and mouth washes, refreshing tissues soaked with cosmetic lotions.

Class 5: Nutritional supplements for non-medical purposes on the basis of proteins, fats, fatty acids, with the addition of vitamins, mineral nutrients, trace elements, either separately or in combination; nutritional supplements for non-medical purposes on the basis of carbohydrates, rough-age/dietary fibers, with the addition of vitamins, mineral nutrients, trace elements, either separately or in combination.

Class 29: Dietetic foods for non-medical purposes on the basis of proteins, fats, fatty acids, with the addition of vitamins, mineral nutrients, trace elements, either separately or in combination.

Class 30: Dietetic foods for non-medical purposes on the basis of carbohydrates, roughage/dietary fibers, with the addition of vitamins, mineral nutrients, trace elements, either separately or in combination.

The contested goods are the following:

Class 3: Cosmetics; natural cosmetics; make-up preparations; make-up preparations; cosmetic creams; dyes (cosmetic -); hair care lotions; tints for the hair; shampoo; perfumery; soaps; bar soap; moisturizers; emollients; sun creams; cleansing milks for skin care; intimate cleansers; lotions for cosmetic purposes; essential oils; natural oils for cosmetic purposes; oils for the body [cosmetics]; after-sun oils (cosmetics); massage oils; sun- tanning preparations (cosmetics); sunscreen preparations; skincare cosmetics; toiletries; dentifrices.

Class 5: Dietary supplements and dietetic preparations; health food supplement; mineral food supplements; dietary and nutritional supplements; nutritional supplements; dietary supplements with a cosmetic effect; dietary supplements consisting of vitamins; anti-oxidant food supplements; food supplements; disinfectants; antibacterial preparations; pharmaceuticals; veterinary preparations and substances; sanitary preparations for medical purposes; medicated and sanitising soaps and detergents; disinfectant soap; disinfectant dressings; preparations for destroying vermin.

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

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicants’ goods in this class include, are included in, or overlap with, the opponent’s soaps; perfumery; essential oils; cosmetics; decorative cosmetics, cosmetic sun-screen and suntanning preparations, shampoos and hair care preparations, cosmetic dentifrices and mouth washes, refreshing tissues soaked with cosmetic lotions.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations; health food supplement; mineral food supplements; dietary and nutritional supplements; nutritional supplements; dietary supplements with a cosmetic effect; dietary supplements consisting of vitamins; anti-oxidant food supplements; food supplements overlap with the opponent’s goods in this class as they all are various kinds of substances intended to supplement a normal diet or to give health benefits. Therefore, these goods are identical.

The contested pharmaceuticals; veterinary preparations and substances can include medicines in the form of pills (for humans and animals) that are intended for the treatment of medical conditions. The opponent’s nutritional supplements for non-medical purposes on the basis of proteins, fats, fatty acids, with the addition of vitamins, mineral nutrients, trace elements, either separately or in combination in the same class can be for humans or animals, as they are not specified, and one of their main purposes is almost the same as that of pharmaceuticals, namely to improve the health of the individual. Therefore, the opponent’s goods can have the same purpose, effect and method of use as the respective contested goods. Moreover, the goods in question can share the same distribution channels since they can be found in pharmacies or other specialised chemists; they target the same public. Therefore, they are similar.

The contested disinfectants; antibacterial preparations; sanitary preparations for medical purposes are goods that have the same purpose and nature as the opponent’s cleaning preparations in Class 3. They usually coincide in producer, relevant public and distribution channels. Therefore, these goods are similar.

The contested medicated and sanitising soaps and detergents; disinfectant soap and the opponent’s soap from Class 3 have the same nature and method of use. Moreover, their intended purpose is to clean parts of the human body or disinfect surfaces. They can coincide in their producer, distribution channels and relevant public; furthermore, they can be in competition. Therefore, these goods are similar.

The contested preparations for destroying vermin have a low degree of similarity to the opponent’s soap in Class 3. The compared goods can be used for the prevention or eradication of lice. They can have the same producer, distribution channel and relevant public, therefore, they are similar to a low degree.

The contested disinfectant dressings are items mostly used in the medicine in connection with the treatment of humans and animals to protect or compress a wound. The opponent’s goods in this class, although they can have the same distribution channel as the contested goods, are of a different nature. The opponent’s goods also have another purpose, namely, to supplement the diet of humans or animals with healthy elements and ingredients. The compared goods are neither in competition nor complementary; they target different publics and therefore are dissimilar.

The contested goods are also dissimilar to the remaining opponent’s goods in Classes 3, 29 and 30. Disinfectant dressings, being for specific medical purpose, differ from the opponent’s goods which are mainly for cleaning, personal hygiene and beautification purposes (Class 3) or are dietetic foods of a different character (Classes 29 and 30). Therefore, the goods in question are of a different nature, target different public and are not in competition or complementary, 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 found to be identical and similar to varying degrees are directed at the public at large and at medical or pharmaceutical professionals. Depending on the nature or price of the goods, the degree of attention is likely to vary from average (e.g. for cosmetics in Class 3) to higher than average for all goods in Class 5 as they affect health and to reach the maximum effect of their use they should be chosen considering various individual needs and requirements.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark composed of the word ‘SANTE’ depicted in fairly stylised upper-case letters, placed in the centre of the sign. Below it the word ‘NATURKOSMETIK’ is depicted in smaller upper-case letters . At the bottom of the sign there is a figurative element depicting a stylised human silhouette with the arms and legs apart, which is inside a geometrical shape in a position similar to that of the Vitruvian Man (drawing made by Leonardo da Vinci).

The verbal element ‘NATURKOSMETIK’, means in German ‘natural cosmetics’ and will be understood as such by the relevant public. It is therefore non-distinctive in relation to the goods in Class 3. Although the goods in Class 5 are not cosmetics products, very often they can produce a cosmetic effect, to improve the condition of the nails, and they are also products that can be based on natural substances. Therefore, for those goods this verbal element is of a weak distinctive character.

The verbal element ‘SANTE’ (French for ‘health’) will be perceived as meaningless (27/03/2017, R 1774/2016-4, Laboratoires santé verte (fig.) / Santaverde). It is consequently distinctive to an average degree.

Finally, the figurative element representing a human silhouette will be seen as an allusion to the fact that the goods have a healthy or hygienic function; moreover, it is of a purely decorative nature and reduced size. It has therefore a limited degree of distinctiveness.

Taking into account its size and position, the word ‘SANTE’ is the more dominant element (eye-catching) within the earlier sign.

The contested sign is a figurative mark containing figurative and verbal elements.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal element, they may perceive a verbal element as being composed of different components, in particular in cases where the parts, or at least one of the parts, have a clear and evident meaning, as is true in the present case. 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the verbal elements ‘Santé’ and ‘Naturels’ are visually clearly distinguishable as each of them begins with capital letter. Moreover, the element ‘Naturels’ is close to the German words Natur and natürlich (nature and natural in English) and therefore the public can assume that it bears the same or similar meaning as its German equivalents and consequently describes some characteristics of the goods. This understanding of the element is very likely for the majority of the public; more so, considering that the goods in question are often advertised as ‘natural’, without chemical substances added to them and therefore thought to be healthy. Therefore, this element has a low degree of distinctiveness for the relevant public.

The other word ‘Santé’, although with an accent, will be perceived in the same way as in the earlier mark, namely meaningless.

It follows that from the relevant public’s perspective, the word ‘Santé’ is meaningless and distinctive to an average degree as in the earlier sign while the second word ‘Naturels’ has a low degree of distinctiveness.

The figurative element in the contested sign can be seen as a depiction of a black sun or kind of flower. However, it has rather a decorative character as does the type font of the verbal element.

Visually, the signs coincide in the string of letters ‘SANTE’, that is, the dominant element in the earlier mark and the initial one in the contested sign. This element is also the (most) distinctive one in both signs as detailed above. However, neither the accent on the ‘é’ in the contested sign, nor the use of capital and regular letter, would prevent consumers from seeing them as a string of identical letters, since in this case the accent or the size of the letters does not change the meaning of the words and it is possible they will not even be remembered.

The signs differ, only to some extent, in the elements ‘Naturels’ and ‘NATURKOSMETIK’ of the respective signs as the first five letters are the same. Moreover, they differ in their figurative elements and graphical depiction that, as mentioned above, have at most a limited degree of distinctiveness or a decorative nature.

Moreover, as both signs are figurative marks, it should further be noted 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).

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

Aurally, the pronunciation of the signs coincides in the word ‛SANTE’, present identically in both signs. The accent in the contested sign will have very little impact, if any, in the pronunciation of the word and this difference may easily go unnoticed. Regarding the elements ‘Naturels’ and ‘NATURKOSMETIK’ the signs differ aurally to the same extent and for the same reasons as they differ visually.

However, since the element ‘NATURKOSMETIK’ is neither (particularly) distinctive nor dominant, the relevant public will not be led to pronounce it and will refer to the mark aurally as just ‘SANTE’ which enhances the similarity between the signs (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44 and 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Considering that the differing elements are either non-distinctive or have limited distinctiveness, for the respective categories of goods, the signs are aurally similar to a high degree.

Conceptually, the common element ‘SANTE’ (regardless with or without accent) will not be understood by the German public, therefore, is meaningless.

The other verbal elements in the signs, ‘NATURKOSMETIK’ and ‘Natureles’, although of weak distinctive character (including non-distinctive), will be perceived as sharing the concept of ‘nature/natural’. The part ‘KOSMETIK’ will be seen as descriptive for most of the goods. The remaining figurative elements and stylisations of the signs will be seen as having mainly decorative functions, although they also have their own meanings.

Therefore, the signs will be perceived as conceptually similar to a low 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 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, despite the presence of the non-distinctive (for goods in Class 3) and weak (for goods in Class 5) element ‘NATURKOSMETIK’ in the mark, as stated above in section c) of this decision.

e) 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).

The goods are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public varies from average to higher than average, depending of the kind of the goods, and the distinctiveness of the earlier mark is normal, despite the presence of weak (including non-distinctive) element as explained in section c) of the decision. Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned, the non-professional public, is deemed to be reasonably well informed and reasonably observant and circumspect.

The signs are visually similar to an average degree and aurally similar to a high degree since they coincide in the sequence ‘SANTE’, which is distinctive and dominant in the earlier mark and is placed at the beginning of the contested sign. The accent on the letter ‘e’ in the contested sign has very limited impact, if any, on the perception of the sign. Conceptually the signs are similar to a low degree on the basis of their respective verbal elements ‘NATURKOSMETIK’ and ‘Natureles’.

It has to be taken into account that the differing elements in both signs are of limited impact in the signs for the reasons explained above. Therefore, the differences between the signs are insufficient to counteract the similarities between them and to allow consumers to safely distinguish between the signs.

Moreover, 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 covered are from the same undertaking or economically linked undertakings. In the present case, it is likely that the contested sign would be perceived as designating a new range of goods as it reproduces the same distinctive element ‘SANTE’ (regardless of the accent).

On account of the similarities between the signs, the relevant public is likely to believe that the goods in question found identical or similar (even those to a low degree) originate from the same undertaking or from economically linked undertakings, despite the higher than average degree of attention that the targeted consumers are likely to pay in relation to some of the goods in question.

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).

Considering all the above, the existence of likelihood of confusion cannot be safely ruled out, including a likelihood of association, on the part of the public.

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

In their observation, the applicants argued that there are many different trade marks that include the words ‘Santé Naturels’, based on information from TMview. The Opposition Division notes that the existence of other trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the 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 ‘Santé Naturels’. Under these circumstances, the applicants’ claim must be set aside. As to the statement that the opponent does not oppose all trade marks that might be similar to the earlier mark, this is outside the scope of the present proceedings.

The applicants refer to previous national decisions of the Italian courts to support their arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

The previous cases referred to by the applicants are not relevant to the present proceedings. First of all, these decisions refer to the Italian public and secondly, and more importantly, they consider the question of ‘so-called ‘weak’ trade marks’, whereas the earlier mark in the present case is examined from the perspective of the German public and it is of average distinctiveness, despite the presence of some weak (including non-distinctive) elements in it. Therefore, the findings of the courts are not relevant to the present case.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 445 051. It follows that the contested trade mark must be rejected for all goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The opponent has also based its opposition on international trade mark registration No 1 017 713 for the same figurative sign. Since this mark is identical to the one that has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Valeria ANCHINI

Maria SLAVOVA

Francesca CANGERI

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.