OPPOSITION No B 2 744 798

Nanu-Nana Joachim Hoepp GmbH & Co. KG, Sögestr. 45, 28195 Bremen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Batterjee Holding Company, P.O. Box 10667, Jeddah 21443, Kingdom of Saudi Arabia (applicant), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 744 798 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 426 208. The opposition is based on German trade mark registration No 39 647 710. 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.

1. The goods

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

Class 3:

Cosmetics products, scented oils and perfume oils, hair lotions.

The contested goods are the following:

Class 3:

Shampoos; soap (cakes of-); soap (deodorant-); medicated soap; foot perspiration (soap for-); soap; soap (antiperspirant-); soap (disinfectant-).

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.

Cosmetics are preparations intended to beautify the hair, skin, etc. Therefore, the contested shampoos are included in the broad category of the opponent’s cosmetics products. Therefore, they are identical.

The contested soap (deodorant-); medicated soap; foot perspiration (soap for-); soap; soap (antiperspirant-); soap (cakes of-) are body cleaning and beauty care preparations; the contested soap (disinfectant-) is an antibacterial soap that contains chemical ingredients to assist in killing bacteria, used generally for body (typically hand) cleaning but also in healthcare settings and sanitary environments. These goods fall within the broad category of toiletries and are generally distributed through the same channels and target the same public as the opponent’s cosmetics products. Although their purposes are not the same, since cosmetics are intended to beautify the hair, skin or complexion and soaps are used for personal hygiene, they can have the same producers. Therefore, they 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 and similar are directed at the public at large. The degree of attention of the public when purchasing these goods is deemed to be average.

3. The signs

NANU	NUNU TEARS FREE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is the word ‘NANU’, which will be understood in the relevant territory as an exclamation of surprise (information extracted from Duden on 17/07/2017 at http://www.duden.de/rechtschreibung/nanu). As it is not descriptive or allusive for the relevant goods, it is distinctive.

The contested sign is the word mark ‘NUNU TEARS FREE’. The last word, ‘FREE’, does not exist as such in German  but is commonly used in words and expressions in the language of the relevant territory, such as ‘Free TV’, ‘Freelance’, ‘Duty-Free-Shop’, ‘Free Call’, etc. As a result, it will be understood by the relevant public with the meaning that the word ‘free’ has in English: without something, without cost, without restrictions. As it is not descriptive or allusive for the relevant goods, it is distinctive. The other two words, ‘NUNU’ and ‘TEARS’, do not exist in German, will not be generally understood by the great majority of the relevant public and are, therefore, distinctive.

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.

Visually, the signs coincide in the letters ‘N*NU’ of their first or only word. However, they differ in the second letter of this word, ‘A’ in the earlier mark and ‘U’ in the contested mark, and in the additional words ‘TEARS’ and ‘FREE’, which are present only in the contested sign and have no counterparts in the earlier mark. The signs also differ significantly in their lengths (4 letters versus 13 letters) and structures (one word versus three words).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘N*NU’, present identically in both signs. The pronunciation differs in the sound of their second letters, ‛A’ in the earlier mark and ‘U’ in the contested sign. They differ in the pronunciation of the additional words ‘TEARS’ and ‘FREE’, present only in the contested sign. The fact that consumers tend to focus on the beginnings of signs has a two-fold effect in the present case, as the first syllable is different, ‘NA’ versus ‘NU’, despite the coincidence in the first letter, ‘N’. Moreover, the word ‘NANU’ will be stressed on its second syllable (http://www.duden.de/rechtschreibung/nanu), whereas it can be reasonably assumed that the meaningless word ‘NUNU’, in accordance with German pronunciation rules, will be stressed on its first syllable. The abovementioned differences between the signs in their lengths and structures result in very different rhythms and intonations.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the words of the signs. The earlier mark will be associated with an expression of surprise, and in the contested sign, although as a whole the sign does not have any meaning, the element ‘FREE’ will be associated with the meaning explained above. To that extent, the signs are not conceptually 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness ‘due to its continuous presence in German everyday life’ and that ‘the Opponent’s trade mark is widely known and respected’. The opponent, however, did not file any evidence in order to prove such a claim.

Furthermore, the opponent states that the earlier mark does not have a descriptive meaning in relation to the goods for which it is registered and that the mark has at least a normal degree, if not a higher than average degree, of distinctiveness.

In this regard, when an earlier mark is not descriptive (or is not otherwise non-distinctive), it is the Office’s practice to consider it to have no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be enhanced if appropriate evidence is submitted showing that the earlier mark has acquired a higher degree of distinctiveness through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB, EU:T:2015:192, § 49, last alternative). However, a mark will not necessarily have a higher degree of distinctive character just because it has no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H.Eich, EU:C:2013:317, § 71).

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 relevant goods are partly identical and partly similar. The goods target the general public, which will have an average degree of attention when purchasing them. The earlier mark has a normal degree of distinctiveness.

The signs will be associated with different meanings by the relevant public, as explained above. As the General Court has stated, it can happen that conceptual differences may be such as to counteract to a large extent the visual and aural similarities between marks. For this to happen, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other trade mark must not have such a meaning or mean something completely different (22/06/2004, T-185/02, PICARO, EU:T:2004:189, § 56 and the case-law cited therein). In the present case, the German consumers will grasp the different meanings of at least the earlier mark immediately, because it evokes a concept in itself. The contested sign will be perceived as having a different meaning due to one of its words. These differences will help consumers to distinguish between the signs on a conceptual level and consequently prevent them from mistakenly believing that the goods have the same origin.

Considering all the circumstances, in spite of the coincidence in three letters of their first or only word, the aural and visual similarities are limited and are not, per se, sufficient to lead to a likelihood of confusion on the part of the public, even considering that the coinciding elements are at the beginnings of the signs, as explained in section c). The additional differing elements, namely the words ‘TEARS’ and ‘FREE’, are clearly perceptible and are sufficient, because of their normal degree of distinctiveness, to exclude any likelihood of confusion between the marks.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rasa BARAKAUSKIENE

Fabián GARCIA QUINTO

Natascha GALPERIN

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.