OPPOSITION No B 2 557 919

Just Italia SPA, Via Cologne, 12, 37023 Grezzana, Fraz. Stallavena (VR), Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Mäurer & Wirtz GmbH & Co. KG, Zweifaller Str. 120, 52224 Stolberg, Germany.

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 557 919 is upheld for all the contested goods.

2.        European Union trade mark application No 13 979 273 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 13 979 273. The opposition is based on, inter alia, Italian trade mark registration No 1 432 463. 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 1 432 463.

1. 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, hair lotions; dentifrices.

Class 44:        Hygienic and beauty care for human beings.

The contested goods are the following:

Class 3:        Cakes of toilet soap; Perfumes; Essential oils; Cosmetics for personal use; Hair lotions; Dentifrices.

Perfumes; essential oils; hair lotions; dentifrices are identically contained in both lists of goods (including synonyms).

The contested cosmetics for personal use; cakes of toilet soap are included in the broad categories of the opponents cosmetics; soaps. Therefore, they are 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 to be average.

3. The signs

JUST	Just True
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). In this respect it must be mentioned that the marks have no elements which are clearly more distinctive or dominant (visually eye-catching) than others, since both are word marks consisting of one or two meaningless elements.

Indeed, conceptually, neither of the two signs has a meaning for the public in the relevant territory. The English word ‘JUST’, being the sole element of the earlier mark and the first element of the contested sign, does not belong to the category of basic English words that a significant part of the relevant public in Italy would be familiar with. The second verbal element of the contested mark ‘True’ has no meaning in Italian either. Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks.

In the present case, visually and aurally, ‘JUST’ is both the single word constituting the earlier word mark and the first of the two words (the first being ‘True’) constituting the word mark applied for. In this context, it is important to note that according to settled case-law, where one of the two words which alone constitute a word mark is identical, both visually and aurally, to the single word which constitutes an earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, are normally to be regarded as similar within the meaning of Article 8(1)(b) EUTMR (25/11/2003, T-286/02, ‘Kiap Mou’; 15/02/2005, T-169/02, ‘Negra modelo’; 16/03/2005, T-112/03, ‘Flexi Air’; 08/03/2005, T-32/03, ‘Jello Schuhpark’; 06/10/2004, T-356/02, ‘Vitakraft’; 23/10/2002, T-104/01, ‘Fifties’; and 04/05/2005, T-22/04, ‘Westlife’).Therefore, the signs are similar to an average degree.

       

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods in Class 3 were found identical to those of the earlier mark and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually and phonetically similar to an average degree, this impression not being altered by any conceptual perception.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods bearing the word mark ‘Just True’ come from the same undertaking or from economically-lined undertakings as those bearing the earlier word mark ‘JUST’.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘JUST’. In support of its argument the applicant refers to several European Union trade mark registrations.

The Opposition Division notes that that the existence of several 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 data concerning a register 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 the element ‘JUST’.

In addition it must be pointed out that the combination of the word ‘JUST’ with other words may or may not be distinctive depending on the meaning the combination creates in connection with the goods and services at issue for those consumers that understand the meaning.

In the present case the relevant territory is Italy and, as has been pointed out above, ‘JUST’ does not mean anything in Italian and is therefore distinctive. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is well founded on the basis of the Italian trade mark registration No 1 432 463. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 1 432 463 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).

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

Swetlana BRAUN

Lynn BURTCHAELL

Martin EBERL

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.