OPPOSITION No B 2 697 483

Unilever N.V., Weena 455, 3013 AL Rotterdam, The Netherlands (opponent), represented by Baker & Mckenzie LLP, 100 New Bridge Street, London  EC4V 6JA, The United Kingdom (professional representative)

a g a i n s t

Flace Investments S.L., Venezuela 122, 08019 Barcelona, Spain (applicant), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 697 483 is upheld for all the contested goods, namely:

Class 3:         Perfumery and cosmetic products; Soaps; Preparations for the bath and skincare; Baby wipes; Essential oils; Hair lotion; Dentifrices.

Class 5:         Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Pharmaceutical preparations; Dressing pads; Materials for dressing; Diapers; Baby food; Beverages for infants; Food supplements for human beings.

2.        European Union trade mark application No 15 030 141 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 030 141, namely against all the goods in Classes 3 and 5. The opposition is based on Hungarian trade mark registration No 204 213. The opponent invoked Article 8(1)(b) and 8(5) 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: Soaps; cleaning preparations; body powder, hair and body lotion, preparations for the care of the scalp and hair; shampoos and conditioners, hair care preparations for removing knots out of hair; toothpaste; preparations for the care of the mouth and teeth; non-medicated toilet preparations; bath and shower preparations, baby bath; skin cream, skin care preparations; oils, creams and lotions for the hair, body and skin; sun protection preparations, sunscreen, sun block and after-sun lotion, oil and cream; cosmetics; petroleum jelly; lip care preparations; talcum powder; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; pre-moistened or impregnated cleansing pads, tissues or wipes; all the aforesaid goods for use on babies or infants.

Class 5: Disinfectants and antiseptics; air-freshening preparations; sanitary products and preparations; dental wax; bandages, plasters, material for dressings; medicated skin and hair preparations; medicated preparations for the lips; preparations for the treatment and/or alleviation of sunburn; Ointment and creams; all for the treatment of diaper rash; astringent skin toners; medicated skin cream and lotions; absorbent pads for personal hygiene; infant formulae; infant vitamins and infant medications; petroleum jelly for medical purposes; dietetic foodstuffs and substances for medical use; herbal preparations for medical purposes; herbal supplements and herbal extracts; medicated herbal beverages; vitamins, minerals; nutritional supplements; all the aforesaid goods for use on babies or infants.

Before starting the comparison it is important to note that all the opponent’s goods are for use on babies or infants. This limitation does not have any impact on the nature of the goods themselves.

The contested goods are the following:

Class 3: Perfumery and cosmetic products; Soaps; Preparations for the bath and skincare; Baby wipes; Essential oils; Hair lotion; Dentifrices.

Class 5: Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Pharmaceutical preparations; Dressing pads; Materials for dressing; Diapers; Baby food; Beverages for infants; Food supplements for human beings.

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.

Contested goods in Class 3

The contested soaps; preparations for the bath and skincare; hair lotion; dentifrices; baby wipes are identically contained in both lists of goods (including synonyms).

The contested essential oils and cosmetic products are included in the broader categories of oils and cosmetics, respectively, of the earlier mark in Class 3. Therefore, they are identical.

The contested perfumery is similar to all the opponent’s goods in Class 3, in particular, soaps, hair and body care lotions, etc. inasmuch as these goods target the same consumers and have the same producers and distribution channels.

Contested goods in Class 5

The contested sanitary preparations for medical purposes; dietetic substances adapted for medical use; materials for dressing are identically contained in both lists of goods (including synonyms).

The contested dressing pads and food supplements for human beings are included in the broader categories of material for dressings and nutritional supplements, respectively, of the earlier mark in Class 5. Therefore, they are identical.

The contested pharmaceutical preparations have the same purpose as the opponent’s dietetic foodstuffs and substances for medical use in Class 5. Dietetic foodstuffs and substances for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Pharmaceutical preparations (substances used to treat disease) are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested baby food; beverages for infants are similar to dietetic foodstuffs and substances for medical use in Class 5, as they have the same purpose. They can coincide in producer and distribution channels.

The contested diapers are a piece of soft towel or paper, which you fasten round a baby's bottom in order to soak up its urine and faeces. The use of diapers can sometimes provoke an area of red spots on the skin. The skin can be resumed due to the use of products like the opponent’s ointment and creams; all for the treatment of diaper rash in Class 5. The conflicting goods target the same public, they can coincide in producer and can have the same distribution channels. These goods are 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 at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

GABI
Earlier trade mark	Contested sign

The relevant territory is Hungary.

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 sole verbal component of the earlier mark “GABI” only differs in one letter with the dominant element of the contested sign “GARBI” and in its typeface and colour. None of these terms has a meaning in Hungarian and are, therefore, distinctive. The elements ‘for babys’ in the contested sign are placed in secondary position and the size of the letters is also reduced. These are furthermore basic English terms commonly used in the relevant territory and will be understood by the relevant consumers (although the correct way of writing them would be “for babies”). This element is considered non distinctive in relation to the goods in question, since it refers to the sector of the public concerned, namely babies. Therefore, it will not be perceived as an indication of the origin of the relevant goods, and as such, it has a limited impact in relation to them.

Visually and phonetically, the signs are similar to a high degree inasmuch as the difference in the letter “r” of the contested sign will be hardly perceived considering it is placed in the middle of the sign. As said above, “for babys” is a non-distinctive term with limited impact for the present comparison.

Conceptually, neither of the signs has a meaning as a whole. Although the words ‘for babys’ will evoke a concept, these elements are non-distinctive and cannot indicate the commercial origin of the contested sign. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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.

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. 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

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).

The sole element of the earlier mark is very similar to the most dominant and distinctive element in the contested sign. The degree of visual and aural similarity between the signs is high, while the conceptual aspect does not influence the assessment of the similarity of the signs from the perspective of the public in the relevant language areas. The distinctiveness of the earlier mark is normal, as explained above. The level of attention varies from average to high.

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.

Since the goods that are relevant for the assessment of likelihood of confusion are partly identical and partly similar, it is highly conceivable that the relevant consumer will perceive the contested sign 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). It constitutes a frequent practice nowadays for companies to make small variations in their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark. In the present case, the contested sign could be perceived as a sub-line for babies of the earlier mark.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. They refer to signs which are not comparable to the ones compared in the present decision.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian public, and, therefore, the opposition is well- founded on the basis of the opponent’s Hungarian trade mark registration No 204 213. Even for that part of the public that pays a higher degree of attention and is less vulnerable for confusion.

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

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 extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Chantal VAN RIEL

Inés GARCIA LLEDO

Richard BIANCHI

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.