OPPOSITION No B 2 752 460

Primeros Prague a.s., Římská 103/12, 12000 Praha 2, Czech Republic (opponent), represented by Patentcentrum Sedlák & Partners s.r.o., Husova 5, 370 01, České Budějovice, Czech Republic (professional representative)

a g a i n s t

Werner & Mertz GmbH, Rheinallee 96, 55120 Mainz, Germany (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 460 is partially upheld, namely for the following contested goods:

Class 3:        Soaps; hand soaps.

2.        European Union trade mark application No 14 337 414 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 337 414, for the word mark ‘PRIMER’, namely against all the goods in Class 3. The opposition is based on, inter alia, international trade mark registration No 1 183 435 designating the European Union, for the word mark ‘PRIMEROS’. 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 international trade mark registration No 1 183 435.

1. The goods

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

Class 3:        Cosmetics; cosmetics in the form of liquid dispersions, emulsions and gels; all these goods not for medical use.

The contested goods, after a limitation made by the applicant on 06/09/2016, are the following:

Class 3:        Soaps, potpourris (fragances); hand soaps.

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 soaps; hand soap are cleaning or emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide used to clean the skin or make it smoother by rubbing . In addition to their cleaning purposes, soaps and pumice stones also have a beautifying function. They can have the same producers, end users and distribution channels as the opponent’s cosmetics. Therefore, they are similar.

The contested potpourris (fragances) have nothing relevant in common with the opponent’s cosmetics; cosmetics in the form of liquid dispersions, emulsions and gels; all these goods not for medical use. Cosmetics are ‘preparations applied to the body, especially the face, with the intention of beautifying it’ (information extracted from Collins English Dictionary on 10/08/2017 at https://www.collinsdictionary.com/dictionary/english/cosmetic). Potpourri is a ‘collection of mixed flower petals dried and preserved in a pot to scent the air’ (information extracted from Collins English Dictionary on 10/08/2017 at https://www.collinsdictionary.com/dictionary/english/potpourri). Although the applicant argues that they are similar because they have the same nature and purpose and are distributed through identical channels and target the same users, the Opposition Division finds that their natures and methods of use are different. They target the public at large, but the needs they meet are different (beautifying the human body in the case of cosmetics and perfuming the home in the case of potpourris (fragances)). Although the opponent’s goods and the contested goods are usually sold in the same supermarkets and outlets, they are usually placed not next to each other but in different sections. They are not in competition or complementary. Therefore, they are dissimilar.

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 similar are directed at the public at large. The degree of attention is considered average.

3. The signs

PRIMEROS	PRIMER
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs do not possess or evoke any concept, such as the German-, Lithuanian- and Polish- speaking parts of the relevant public.

Both signs are word marks. The earlier mark is composed of the word ‘PRIMEROS’ and the contested sign is composed of the word ‘PRIMER’. Neither of the words has a meaning for the relevant public and they are, therefore, distinctive.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the string of letters ‘PRIMER’, which forms the entire contested sign. However, they differ, both from a visual point of view and in their pronunciation, in the additional letters ‘OS’ at the end of the earlier mark.

Furthermore, the fact that the first part of the earlier mark is the same as the entire contested sign is influential, as generally the first part is the one that primarily catches the consumer’s attention and, therefore, it will be remembered more clearly than the rest of the sign (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually and aurally 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 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 (recital 8 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).

The goods are partly similar and partly dissimilar. They target the public at large and the degree of attention is average. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to a high degree because the entirety of the contested sign coincides with the first part of the earlier mark. The small difference at the end of the earlier mark (‘PRIMEROS’) is insufficient to produce a different overall impression. As seen above, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Furthermore, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-, Lithuanian- and Polish-speaking parts of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s international trade mark registration. 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.

It follows from the above that the contested sign must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

– International trade mark registration No 1 183 436 designating the European Union for the word mark ‘PRIMEROS ENJOY’;

– Czech trade mark registration No 330 488 for the word mark ‘PRIMEROS’;

– Czech trade mark registration No 290 835 for the figurative mark ;

        

– Czech trade mark registration No 330 489 for the word mark ‘PRIMEROS ENJOY’.

Since these marks cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.