OPPOSITION No B 2 707 860

Kelemata S.r.l., Corso Re Umberto, 20, 10128 Torino, Italy (opponent), represented by Odra Papaleo, Via Pietro Palmieri, 14, 10138 Turin, Italy (professional representative)

a g a i n s t

Mohammed Ibrahim Al-Shamasy Trading Est., P.O. Box 5067, Riyadh 11422, Saudi Arabia (applicant), represented by Bourgeois Rezac Mignon, 17, boulevard Malesherbes, 75008 Paris, France (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 707 860 is upheld for all the contested goods in Class 3, namely Cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

2.        European Union trade mark application No 14 907 257 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponents filed an opposition against some of the goods of European Union trade mark application No 14 907 257 (figurative mark:
“”), namely against some of the goods in Class 3. The opposition is based on, inter alia, Italian trade mark registration No 70 060 (word mark: “VICTOR”). 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 Italian trade mark registration No 70 060.

1. The goods

The goods in Class 3 on which the opposition is based are the following:

Soaps; perfumery; essential oils; cosmetics; hair lotions.

The contested goods in Class 3 are the following:

Class 3: Cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Soaps; perfumery; essential oils, cosmetics, hair lotions are identically contained in both lists of goods.

The contested Cleaning preparations include, as a broader category, the opponent’s Soaps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested polishing, scouring and abrasive preparations have the same nature, purpose, distribution channels and public as the opponent´s Soaps. Therefore, they are similar.

The contested dentifrices have the same distribution channels and public as the opponent´s cosmetics. Therefore, they are similar to a low degree.

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 different degrees are directed at the public at large. The degree of attention is between average and low because some of the goods are fairly cheap and will be consumed on a daily basis.

3. The signs

VICTOR
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 trade mark is a word mark, which is protected in all typefaces.

The contested sign is a figurative mark with a square background, comprising a large letter ‘V’ at the top and the word ‘VICTORIA’ in smaller letters beneath.

The element ‘VICTORIA’ (including the letter ‘V’ as its first letter) of the contested sign will be understood as a female first name. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the earlier trade mark is completely included in the contested sign (although it is depicted slightly differently). The large letter ‘V’ of the contested sign is repeated as the first letter of the word ‘VICTORIA’ below it. The figurative element and the letters ‘IA’ are the only parts of the contested sign that are different from the earlier sign. Taking into account the identical element ‘Victor’, the signs are visually similar to an above average degree.

Aurally, the figurative elements will not be taken into account. The letter ‘V’ on its own is only part of the contested sign. If it is pronounced, the signs are aurally similar to an average degree because they have the element ‘Victor’ in common. If it is not pronounced, the signs are aurally similar to an above average degree.

Conceptually, the letter ‘V’ in the contested sign will be recognised within the context of the following word, ‘Victoria’, and not as a separate letter. Consumers would recognise ‘Victoria’ and ‘VICTOR’ as both first names, female and male respectively. Therefore, the signs are conceptually similar to an average degree (judgment of the General Court in Case T‑204/14 of 07/09/2016, “VICTOR/victoria”, p. 129-133).

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 opponent, 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 opponent 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 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical and partly similar to different degrees. The signs are visually and aurally similar to at least an average degree and conceptually similar to an average degree.

Taking into account the (at least) average degree of similarity between the signs, the normal degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the consumers, and the fact that the goods are partly identical and partly similar, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This is also applicable for the goods which are only similar to a low degree, because of the relevant visual, aural and conceptual similarities between the signs. There is an increased likelihood of confusion when consumers’ degree of attention is low.

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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The applicant has not submitted any observations. Therefore, its arguments cannot be examined.

The opposition is well founded under Article 8(1)(b) EUTMR.

As the earlier right “VICTOR” 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 right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Magnus ABRAMSSON

Peter QUAY

Claudia MARTINI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.