OPPOSITION No B 2 746 561

Jaime Alfonso Gil Lozano, San Vicente, 8 PTA. 12, 48001 Bilbao (Vizcaya), Spain (opponent), represented by Arochi & Lindner, S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)

a g a i n s t

Kerafiber Europe, KF Beauty 24th floor 32 London Bridge Street, London SE1 9SG, United Kingdom (applicant)

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 561 is upheld for all the contested goods.

2.        European Union trade mark application No 15 497 761 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 15 497 761. The opposition is based on Spanish trade mark registration No 2 506 729. 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.

1. The goods

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

Class 3:        Preparations for cleaning and polishing dentures; dentifrices and products for teeth whitening.

Class 5:        Teeth filing material and dental etching material, adhesives for dentures; preparations for teeth.

Class 21:        Toothbrush and electric toothbrush.

The contested goods are the following:

Class 3:        Tooth polish; Tooth gel; Tooth paste; Tooth care preparations; Tooth powder [for cosmetic use]; Toothpaste in soft cake form; Teeth whitening strips; Teeth cleaning lotions; Teeth cleaning (Preparations for -); Preparations for cleaning teeth; Teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; Cosmetic preparations for the care of mouth and teeth; Bleaching preparations; Gels (Dental bleaching -); Dental bleaching gels; Dental bleaching gel; Bleaching preparations for cosmetic purposes; Bleaching preparations [decolorants] for cosmetic purposes.

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.

The contested teeth whitening strips; teeth whitening strips impregnated with teeth whitening preparations [cosmetics] are included in the broad category of the opponent’s products for teeth whitening in Class 3. Therefore, they are identical.

The contested tooth polish; tooth gel; tooth powder [for cosmetic use]; teeth cleaning lotions; bleaching preparations; gels (dental bleaching -); dental bleaching gels; dental bleaching gel; bleaching preparations for cosmetic purposes; bleaching preparations [decolorants] for cosmetic purposes; tooth care preparations; teeth cleaning (preparations for -); preparations for cleaning teeth; tooth paste; toothpaste in soft cake form; cosmetic preparations for the care of mouth and teeth are related to the opponent’s dentifrices and products for teeth whitening in Class 3. All these goods can be used for the sake of the care of teeth and dental upkeep, a part of improving the appearance of teeth. As regards the opponent’s bleaching preparations; bleaching gel; bleaching preparations for cosmetic purposes; bleaching preparations [decolorants] for cosmetic purposes, account must be taken on the fact that they also include preparations for the tooth bleaching, which is either restoration of natural tooth shade or whitening beyond natural tooth shade. These goods are distributed through the same channels and they target the same customers. They also have the same purpose and might be in competition when, for instance, consumers want to whiten their teeth. Finally, it is not unusual for these goods to be produced by the same manufacturers. For these reasons, these goods are deemed to be similar.

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 are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is expected to be average.

3. The signs

WONDERSMILE	WUNDERSMILE
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).

Both marks are word mark being the earlier mark the word ‘WONDERSMILE’ and the contested mark the word ‘WUNDERSMILE’. None of them has a meaning for the public in the relevant territory; therefore, they are distinctive.

Visually and aurally, the signs coincide in all of their elements with the exception of their second letters, namely the letter ‘O’ in the case of the earlier mark and the letter ‘U’ in the case of the contested sign.

Therefore, the signs are, both from a visual and an aural perspective, highly similar.

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.

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.

5. Global assessment, other arguments and conclusion

The goods covered by the trade mark sin dispute have been found partly identical and partly similar. They are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is expected to be average. The distinctiveness of both marks is deemed to be normal, in particular considering that none of them has a meaning.  The marks ‘WONDERSMILE’ on one hand and ‘WUNDERSMILE’ on the other share ten out eleven letters. For this reasons, they are deemed to be highly similar both from a visual and aural point of view. The conceptual aspect does not influence the present comparison.

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).

Due to the visual and aural high similarity and the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 506 729. It follows that the contested trade mark must be rejected for all the contested goods.

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

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.