OPPOSITION No B 2 378 126

O2 Worldwide Limited, 20 Air Street, London  W1B 5AN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge  CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Herma Productos De Limpieza S.A., Ctra. Santiago del Campo a Garrovillas S/N, 10191 Santiago del Campo (Cáceres), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative)

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 378 126 is upheld for all the contested goods.

2.        European Union trade mark application No 12 668 331 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 668 331.The opposition is based on, inter alia, European Union trade mark registration No 9 352 337 for which the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(5) EUTMR in conjunction with other earlier rights.

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 EUTM No 9 352 337.

1. The goods

The goods on which the opposition is based, inter alia, are the following:

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

The contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; Fabric softeners for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Detergents; Dishwashing detergents; Dishwashing detergents.

        

The contested goods are all identical since bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps are equally designated by the earlier right. The contested fabric softeners for laundry use are included in the broader ‘and other substances for laundry use’ whilst the remaining contested detergents; Dishwashing detergents; Dishwashing detergents are included in the broader cleaning preparations of the earlier right.

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 and professionals such as those working in the laundry or cleaning sectors.

The degree of attention will be average.

3. The signs

02
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal component that differentiates the sign is ‘power’ as found in the contested sign. This will be understood by English-speakers as referring to the strong, vigorous or energetic properties of the goods. As such, it will be seen as rendering the element weak and considering that it describes the power of oxygen, it is the weakest part of the contested mark.

Also considering  that English speakers often refer to the numeral ‘0’ as the letter ‘O’ rather than referring to it as ‘Zero’, the Opposition Division finds it appropriate to focus the comparison of signs on the English speaking part of the public.

Following from the above, the earlier trade mark and the contested sign will both be perceived as ‘O2’ which is the chemical formula for oxygen. This formula is commonly known and as such the relevant public will be aware of this concept. It is true that oxygen bubbles are used in cleaning products such as bleach to lift stains and clean. However, it is also true that using the chemical formula as such is not customary on the market given that the prefix ‘oxy’ is usually used in this context. Therefore in view of this, the distinctive character is only slightly reduced.

Though the letter ‘O’ is dominant in the contested mark due to its size in comparison with the other elements it is also true that it is not likely to be separated from ‘2’ given the overall meaning as described above. Thus the fact that it is more visually outstanding is mitigated in this regard. On the other hand, the element ‘power’ is featured in small writing and is far less prominent.

Visually, the signs only differ in the very minimal figurative nature of the contested mark, the colour blue as well as the numeral ‘2’ being featured slightly below the ‘O’, as well as  the word ‘power’. In view of the weak distinctive character of this word and its less prominent positioning in the sign and the fact that the figurative elements will not mark a substantial difference between the signs, given that consumers tend to place more importance on verbal aspects rather than figurative aspects, the signs are visually highly similar.

Aurally, the signs coincide in the pronunciation of ‘O-TWO’. Indeed, the presence of ‘power’ in the contested mark does not interfere with this since these two syllables will not be split, despite their depiction in the contested mark, due to the meaning. Also, ‘power’ is less likely to be pronounced due to its smaller size. Additionally, in view of the fact that consumers tend to pay more attention to the beginnings of signs rather than the endings, as well as taking into account the weak character of ‘POWER’ the signs are highly similar.

Conceptually, in view of the foregoing, the signs are highly similar.

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. Regarding what has been stated above in section c), the distinctive character of the earlier mark is just below average.

5. Global assessment, other arguments and conclusion

The goods are identical and are directed at both the public at large and professionals. The degree of attentiveness is average and the signs have been found highly similar on all levels.

A likelihood of confusion (including a likelihood of association) 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.

In the case at hand there is a clear risk that the signs will be confused, since the mere figurative rendition combined with a weak element in the contested sign is not sufficient to distance the marks and consumers will merely perceive the contested mark as a sub-brand used to denote a more ‘powerful’ line of goods.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 EUTM No 9 352 337.

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 opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Martin MITURA

Vanessa PAGE

Lucinda CARNEY

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.