OPPOSITION No B 2 687 070

Maria José Ramon Ros, Juan Enrique Ramon Ros and Carmen Consuelo Ramon Ros, Cdad. de Sevilla, 5 y 7 Fte. Jarro, 46988 Paterna (Valencia), Spain (opponents), represented by Sanz Bermell International, Calle Jativa, 4, 46002 Valencia, Spain (professional representative)

a g a i n s t

Aquinelle LLC, 926 RXR Plaza, Uniondale NY 11556, United States of America (holder), represented by Riccardo Ciullo, Carrer de Calaf 27, 1-1, 08021 Barcelona, Spain (professional representative)

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 070 is upheld for all the contested goods.

2.        International registration No 1 258 978 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponents filed an opposition against all the goods of international registration designating the European Union No 1 258 978. The opposition is based on European Union trade mark registration No 6 408 355. The opponents invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

By letter of 14/04/2016, that is after the opposition period, the opponent also invoked earlier Spanish trade mark registration No 2 416 591 for the word mark ‘AQUA NELLY’ as another basis for the opposition.

 

According to Rule 17(2) EUTMIR, if the notice of opposition has not been filed within the opposition period, or if the notice of opposition does not clearly identify the application against which opposition is entered or the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(a) and (b) EUTMIR, or does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

It follows that since the earlier Spanish trade mark registration No 2 416 591 was not invoked by the opponent during the opposition period, pursuant to Rule 15(2)(b) and (c) and Rule 17(2) EUTMIR, the opposition must be rejected as inadmissible with respect to this earlier mark.

Considering all the above, the examination of the opposition will be carried out in respect of Article 8(1)(b) and earlier European Union trade mark registration No  6 408 355.

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, inter alia, the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.  

The contested goods are the following:

Class 3: Body deodorants; body spray used as a personal deodorant and as a fragrance; deodorants for body care; feminine deodorant sprays; feminine hygiene cleansing towelettes; fragranced skin care preparations, namely, skin moisturizers for application to toilet tissue; cleaning pads impregnated with toilet preparations; moisturizing solutions for the skin; non-medicated skin care preparation, namely, body mist; scented body spray; soaps for toilet purposes; wipes impregnated with a cleaning preparation.

It should be remembered that the term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested body deodorants; body spray used as a personal deodorant and as a fragrance; deodorants for body care; feminine deodorant sprays; feminine hygiene cleansing towelettes; fragranced skin care preparations, namely, skin moisturizers for application to toilet tissue; cleaning pads impregnated with toilet preparations; moisturizing solutions for the skin; non-medicated skin care preparation, namely, body mist; scented body spray; wipes impregnated with a cleaning preparation are all products or substances intended to be applied to the human body for cleansing, beautifying, promoting attractiveness or altering the appearance or fragrance. They are consequently all included in the opponents’ broad category of cosmetics. It follows that these goods are identical.

The contested soaps for toilet purposes are included in the opponents’ category of soaps. They are therefore 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 are directed at the public at large. The degree of attention is considered average.

3. The signs

AQUANELLY	AQUINELLE
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.

Both signs are word marks, each formed of a verbal element that as a whole has no meaning for the public in the relevant territory.  However, for example, the public in those countries where Latin-based languages, such as Italian or Spanish, are being spoken will perceive the term ‘AQUA’ at the beginning of the earlier mark, given that this term is widely understood in the sense of ‘water’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Hungarian- and Polish-speaking part of the public, who will not associate any concept with the term ‘AQUA’ in the context of the relevant goods in Class 3, and therefore will not dissect the earlier mark and will perceive both marks as meaningless single words without any identifiable components.

Visually and aurally, the signs coincide in seven out of nine letters and their sound ‘AQU*NELL*’. However, they differ, both from a visual point of view and in their pronunciation in the third letters ‘A’ and ‘I’ and the ninth letters ‘Y’ and ‘E’.

Account must be taken on the fact that the signs share the same structure, the first part of the conflicting marks is identical, and thus the small differences in the middle and at the end of the words are insufficient to produce a different global visual and aural impression.

This is because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In fact the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponents, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponents to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C-251/95, „Sabèl‟, paragraph 22 et seq.).

The goods, which are directed at the public at large, have been found identical. The degree of attention of the public is average.

The signs are visually and aurally similar to a high degree to the extent that they coincide in seven of nine letters and sounds in the same order and structure ‘AQU*NELL*’ and ‘AQU*NELL*’. Therefore, in the Opposition Division’s view, the small differences in third and last position are not sufficient to exclude likelihood of confusion since the public is less aware of disparities between long signs, and a fortiori in case they are placed in the middle and at the end of the signs, for the reasons seen above in in section c) of the present decision.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Hungarian-, and Polish-speaking part of the relevant public. 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.

Therefore, the opposition is well founded on the basis of the opponents’ European Union trade mark registration No 6 408 355. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponents. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponents in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponents 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.