OPPOSITION No B 2 779 877

Kaufland Česká Republika, v.o.s., Bělohorská 2428/203, 169 00  Praha 6, the Czech Republic, (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Paul Freeman, The Mill, Steam Mill Lanes, St. Martin's  GY4 6XE, Guernsey and Catherine Freeman, The Mill, Stearn Mill Lanes, St. Martin's  GY4 6XE, Guernsey (applicants), represented by IP Lab, 20-22 Wedlock Road, London, London City of N1 7GU, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 779 877 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 460 371 for the word mark ‘Catherine Best’, namely against all the goods in Class 3. The opposition is based on international trade mark registration No 1 202 749 designating the European Union for the word mark ‘CATERINE’. 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, inter alia, the following:

Class 3: Soaps, shampoos, shower gels, perfumery, essential oils, cosmetics, body cleaning and beauty care preparations, cotton wool pads, cotton wool for cosmetic purposes, cotton sticks, cosmetic tissues.

The contested goods are the following:

Class 3: Perfume; non-medicated toilet preparations; cosmetics and cosmetic treatments; preparations for removing cosmetics; soaps; essential oils, massage oils; beauty care products; preparations for the care of the hair, skin, scalp and the body; body shampoos; body scrubs; bath salts; bath gels; bath oils; dentifrices; suntanning and after sun preparations; preparations for use in the bath; oil, gel and foam preparations for use in the shower and the bath; preparations for toning the body; milks, oils, creams, gels, powders and lotions; shampoos; hair conditioners; beauty masks; skin treatments; cleansers; exfoliants; face and body moisturisers; skin moisturisers; facial and body creams and lotions; bronzers; hair and nail treatments; aromatherapy preparations; footcare preparations; anti-ageing cream; anti-wrinkle cream; lip protection balms, creams and lotions; eye gel; eye cream.

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

Perfume; cosmetics; soaps; essential oils and shampoos are identically contained in both lists (including synonyms).

The contested beauty care products are included in, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested non-medicated toilet preparations include preparations for beautification and personal hygiene and thus overlap with the opponent’s cosmetics. Therefore, they are identical.

The contested preparations for removing cosmetics are included in, or overlap with, the broad category of the opponent’s body cleaning preparations. Therefore, they are identical.

The contested cosmetic treatments; preparations for the care of the hair, skin, scalp and the body; body shampoos; body scrubs; bath salts; bath gels; bath oils; suntanning and after sun preparations; preparations for use in the bath; oil, gel and foam preparations for use in the shower and the bath; preparations for toning the body; milks, oils, creams, gels, powders and lotions; hair conditioners; skin treatments; cleansers; exfoliants; face and body moisturisers; skin moisturisers; facial and body creams and lotions; bronzers; hair and nail treatments; footcare preparations; anti-ageing cream; anti-wrinkle cream; lip protection balms, creams and lotions; eye gel; eye cream are included in, or overlap with, the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested beauty masks are included in the broad category of the opponent’s beauty care preparations. Therefore, they are identical.

The contested aromatherapy preparations are included in, or overlap with, the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested massage oils are similar to the opponent’s essential oils which consist of any of various volatile organic oils present in plants, having the odour or flavour of the plant from which they are extracted. These goods can form part of the contested massage oils or be their only main component. Being oils, these goods can have the same purpose and they can be in competition. Furthermore, they can also have the same producers and share the same distribution channels.

The contested dentifrices are similar to a low degree to the opponent’s cosmetics since they can share the same distribution channels and target the same relevant public.

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 to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

CATERINE	Catherine Best
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 earlier mark is the word mark ‘CATERINE’ and the contested sign is the word mark ‘Catherine Best’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the earlier mark is depicted in upper case letters whereas the contested sign is depicted in capitalized letters.

The word ‘Caterine’ is a variation of the common female given name ‘Catherine’ and also close to the equivalent female name in the Member States of the European Union (e.g. ‘Caterina/Catherina/Katerina/Katerine/Katarina/Katharina/Katherine’). Therefore, the earlier mark, ‘Caterine’, and the first element of the contested sign, ‘Catherine’, albeit with a slightly different spelling, will be perceived as referring to the same female given name, which is distinctive per se, by the relevant public throughout the European Union.

As regards the second element of the contested sign, ‘Best’, the opponent argues that the English-speaking public will perceive it as a laudatory and non-distinctive reference to the superlative form of ‘good’ and thus as merely indicating the most excellent of a particular group or category. However, the Opposition Division notes that ‘Best’ is also an Anglo-Saxon surname that will be known, at least by part of the relevant public, such as in the United Kingdom and Ireland, as being a rare surname. It should also be taken into account that in relation to the fashion industry and goods such as cosmetics and perfumes, it is very common with trade marks consisting of given names and/or surnames. Therefore, the relevant coinciding public of the goods concerned is accustomed to seeing trade marks made up of a first name together with a surname and it will thus generally expect the word following a first name to be a surname. Moreover, as regards the English-speaking public who understands the meaning of the word ‘best’, it will also know that the use of ‘best’ as the superlative of good in conjunction with the name ‘Catherine’ would, in accordance with basic English grammar rules, rather be expressed as ‘Catherine’s Best’. Consequently, the Opposition Division considers that the relevant public throughout the European Union will perceive the contested sign as consisting of a first name together with a surname and not as a first name together with the superlative form of good as argued by the opponent. As a result, the element ‘Best’ in the contested sign will also be perceived as distinctive.

In relation to surnames, they have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). However, to date, this principle has not been established in all Member States of the European Union (03/06/2015, T-559/13, GIOVANNI GALLI, EU:T:2015:353, § 45) and the surname ‘Best’ will be perceived neither as rare nor common in parts of the relevant territory. Therefore, although the element ‘Best’ may, in principle, be perceived as more distinctive than the element ‘Catherine’ in the contested sign, it must be considered that, at least by part of the relevant public, they will be perceived as having the same degree of distinctiveness.

Visually and aurally, the signs coincide in the letters/sounds ‘C-A-T-*-E-R-I-N-E’ which constitute the earlier mark in its entirety and the first word of the contested sign almost in its entirety. However, they differ in the additional letter/sound ‘H’ in the first element of the contested sign (which will only introduce a very slight aural difference in some parts of the relevant territory) and the additional word ‘BEST’, which has no counterpart in the earlier mark.

Although the public generally pays greater attention to the beginning of a mark than to the end, that is not true in all situations and cannot, in any event, undermine the principle that an analysis of the similarity of two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In the present case, the fact that the word ‘Catherine’ appears before the word ‘Best’ in the contested sign is not very significant as it is normal, when giving the names of persons, to indicate the first name followed by the surname. Therefore, it cannot be asserted that, in the case of a trade mark consisting of a first name followed by a surname, the public will normally ascribe greater importance to the first name than to the surname (03/06/2015, T-559/13, GIOVANNI GALLI, EU:T:2015:353, § 73 and 81). It follows that the public will not pay greater attention to the first word ‘Catherine’ in the contested sign than to the second word ‘Best’.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, although both signs will be perceived as referring to the same first name, the earlier mark does not refer to any specific person, since it would be common to all persons named Caterine, whereas the contested sign refers to a specific person named Catherine, namely a member of the Best family.

Therefore, the signs are conceptually similar only to a low degree.

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 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 contested goods have been found identical or similar to varying degrees to the opponent’s goods and the level of attention of the relevant public is average.

The signs are visually and aurally similar to an average degree based on the fact that they share the same first name ‘Catherine’, albeit spelled in a slightly different way. However, the signs are only conceptually similar to a low degree as the earlier mark will not be associated with any specific person named ‘Caterine’ whereas the contested sign will be perceived as referring to a person named ‘Catherine’ of the ‘Best’ family.

As correctly pointed out by the opponent, 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).

However, there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a certain degree of similarity between the marks at issue (03/06/2015, T-559/13, GIOVANNI GALLI, EU:T:2015:353, § 132).

In the present case, although some of the goods concerned are identical, as already outlined above in section c) of this decision, they relate to a sector in which it is common that traders use names and/or surnames as trade marks and it may be assumed, as a general rule, that a very common name will appear more frequently than a rare name. Due to its close equivalence in the different languages of the relevant territory and its general popularity as a first name in the EU, the coinciding element in both signs, ‘Caterine/Catherine’, is, or is otherwise known as, a common name throughout the European Union. Therefore, consumers would, in principle, not believe that there was an economic link between all undertakings using marks containing the element ‘Caterine/Catherine’. As a result, and even if the signs are visually and aurally similar to an average degree on account of their coincidence in the same first name ‘Caterine/Catherine’, considering that they are differentiated by the additional distinctive surname ‘Best’ of the contested sign, which will either be perceived as rare or otherwise at least not as common, the Opposition Division considers that consumers, in any part of the relevant territory, will not believe that goods, even those that are identical, bearing the contested sign originate from the same, or an economically linked, undertaking to that selling goods under the earlier mark.

Finally, as regards the contested dentifrices, which may not be considered to belong to a sector in which the use of first names and/or surnames is common, these goods have only been found to be similar to a low degree to the opponent’s cosmetics, which do belong to a sector where the use of names is common. In addition, it can be seen from case-law that, even in situations involving goods for which the use of trade marks consisting of names is not regarded as common by the relevant public, it cannot be accepted that any surname which constitutes an earlier trade mark could be effectively relied on to oppose registration of a mark composed of a first name and that surname. That finding is equally valid when the earlier trade mark consists of a first name and the mark applied for consists of a combination of that first name and a surname (03/06/2015, T-559/13, GIOVANNI GALLI, EU:T:2015:353, § 124-125). In view of this and for the same reasons as those outlined above, consumers would not believe that ‘Catherine Best’ branded dentifrices originated from the same, or an economically linked, undertaking to that selling ‘CATERINE’ branded cosmetics.

Considering all the above, there is no likelihood of confusion on the part of the public in relation to any of the contested goods. 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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Sam GYLLING

Frédérique SULPICE

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.