OPPOSITION No B 2 494 659

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

Sundus Yousef Mubarak Almazer, P.O. Box 4086, Salmiya 22041, Kuwait (applicant) represented by Isern Patentes y Marcas, S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 494 659 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 530 852 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 and services of European Union trade mark application (EUTM) No 13 530 852. The opponent invoked a number of earlier rights under Article 8(1)(b) and 8(5) EUTMR. However, the Opposition Division finds it appropriate to first examine the opposition in relation to the marks listed below for which only Article 8(1)(b) EUTMR was invoked:

• EUTM No 12 428 074
• EUTM No  9 352 378
• EUTM No  9 279 456

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 and services

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

 

EUTM No 12 428 074        

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

EUTM No 9 352 378

Class 11:          Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

        

EUTM No 9 279 456

Class 44:         Medical services; veterinary services: hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

The contested goods and services 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 11:         Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 44:         Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

All of the contested goods and services are equally designated by the three earlier rights as is clear from the listing, as such 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 and services found to be identical are directed at the general public and specialists such as in the case of medical services.

The degree of attention may vary from average to high; in the case of medical services the degree of attention will be rather high considering the implications on health.

3. The signs

(No 9 352 378) O2 (No 12 428 074 & No 9 279 456)
Earlier trade marks	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.

‘Oxygen Technology’ will be understood by English speakers as referring to the concept of machinery or equipment that has been developed from the practical application of scientific and technical knowledge (see oed.com) for oxygen or perhaps even using oxygen. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

In relation to the verbal element referred to above, ‘Oxygen’ has many applications in industry such as being used in cleaning products to lift stains and clean or its use in cosmetics, particularly skin creams, to increase skin hydration. Oxygen is also used in conjunction with medical and beauty treatments, for example. English speakers will perceive the terms as merely relating to characteristics of the goods and services or that they have been produced or provided on the basis of such technology. Even if there is no apparent connection for some of the goods in Class 11 such as lighting apparatus, the fact that this part of the sign may be distinctive in that regard is offset by its secondary position. Indeed signs are read from top to bottom and left to right, thus its positioning at the bottom of the sign means it will be the last part of the sign to be grasped. Additionally, it is depicted in small writing and is the least dominant part of the sign.

‘Sundus I mazer’ has no meaning for the public in question and will be perceived as foreign words. As such, there is no association to the goods and services rendering this element distinctive.

Though at first glance, the figurative device of the contested sign may be seen as an abstract circular element, the fact that a number ‘2’ is positioned within the device and the word ‘oxygen’ appears below, will lead consumers to perceive this as ‘O2’ given that this is a commonly known chemical formula for ‘oxygen’ and the relevant public will be well aware of this concept. On this point, it is necessary to revert to the applicant’s arguments as it disputes the opponent’s assertions that the circular element will be seen as a letter ‘O’ but rather as reminiscent of the ‘connection between the sun and the moon’. The Opposition Division finds that to actually see such a depiction requires a significant mental effort and it is also artificial, given that consumers will see the sign as a whole and all the elements in combination. It is due to this that they will make the aforesaid connections thus perceiving the reference to the chemical formula.

Concerning the previous assertions regarding ‘oxygen’, it is worth noting that using the chemical formula as such is not customary on the market given that the prefix ‘oxy’ is usually used. Therefore, the distinctive character of ‘O2’ is only slightly reduced.

The Opposition Division also opines that it is this part of the contested sign that is dominant given its size and bold print in comparison with the smaller and fainter elements below. Also worth mentioning is the previously indicated premise concerning signs being read from top to bottom, which makes this part of the sign the most important as it will be the first to be grasped upon.

The aforementioned considerations concerning the distinctiveness of ‘O2’ equally apply to the earlier marks meaning that their distinctive character is just below average.

Visually, despite its figurative rendition in the contested sign, the signs coincide in ‘O2’, thus the whole of the earlier marks is entirely incorporated in the most dominant element of the contested sign which also has more impact on the consumer given its positioning. Though the contested sign features additional wording, this is less prominent and in the case of ‘OXYGEN TECHNOLOGY’ largely weak. As such, the signs are similar to an average degree.

Aurally, the signs coincide in the sound ‘O2’. Whether or not ‘Sundus I mazer’ is referred to aurally is questionable, as it may be perceived as difficult to utter foreign wording. Given that ‘OXYGEN TECHNOLOGY’ will be understood as referring to the goods and services, combined with its secondary positioning, it is also not probable that will be referred to aurally. Taking into account all the indicated points, at least a low degree of similarity can be sustained.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the distinctive issues rendering the marks similar to an average degree.

In view of the similarities, the examination will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks are ‘well known in the European Union’.   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 marks will rest on their distinctiveness per se. Regarding what has been stated above in section c), the distinctive character of the earlier marks is just below average.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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). In this respect, the goods and services are identical and target both professionals and the general public with a degree of attention from average to high.

The earlier marks’ ‘O2’ is wholly incorporated in the contested mark where it plays an independent and dominant role. The additional elements described in the comparison of signs are confined to weak or secondary elements, as outlined previously.

In this regard, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

It should also be recalled that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this sense, 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 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 the opponent’s EUTMs used as a basis for comparison. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Given the success of the opposition and to the rejection of the contested trade mark for all the  goods and services 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

Marta GARCÍA COLLADO

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.