OPPOSITION No B 2 766 627
Henkel AG & Co. KGaA, Henkelstr. 67, 40589, Düsseldorf, Germany (opponent)
a g a i n s t
P&G SRL, Via Pietro Maraschin 77, 36015, Schio (Vicenza), Italy (applicant)
On 25/09/2017, the Opposition Division takes the following
1. Opposition No B 2 766 627 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 483 555 namely against some of the Class 3 goods. The opposition is based on European Union trade mark registration No 984 245, ‘LIVE’. 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 goods
The goods on which the opposition is based are the following:
Class 3: Preparations for treating, dyeing, colouring, bleaching and styling hair.
The contested goods are the following:
Class 3: Cosmetics; hair care lotions
Contested goods in Class 3
The contested cosmetics include as a broader category as the opponent’s preparations for dyeing hair. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested hair care lotions are used to treat, beautify and maintain hair quality. They are identical to the opponent’s preparations for treating hair.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
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LIVE
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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 a word mark. In the case of word marks, it is the word that is protected not its written form. For those who understand at least basic English, the word ‘LIVE’ would be understood to mean either 1) remain alive, 2) be alive at a specified time or 3) make one’s home in a particular place or with a particular person. Since it has no relation to the goods in question then it is considered to be of normal distinctive character for the goods in question. For the other part of the public, namely the non-English speaking part of the public, ‘LIVE’ has no meaning.
The contested sign is a figurative mark containing the numeral ‘12’, followed by the word ‘LIFE’. Below these elements there is a banal oval device which is merely decorative. Above the word ‘LIFE’ is a device of two curved lines. This is also rather banal and does not denote trade origin. The numeral 12 will be understood throughout the relevant territory as referring to the numeral, though it has no meaning for the goods in question. For those with a basic understanding of English, the word LIFE will be understood to mean either 1) the state or quality that distinguishes living beings or organisms from dead ones and from inorganic matter, characterized chiefly by metabolism, growth, and the ability to reproduce and respond to stimuli, 2) the period between birth and death or 3) a living person or being (information extracted from Collins English dictionary on https://www.collinsdictionary.com/dictionary/english/life 06/09/2017). For the non-English speaking part of the public, ‘LIFE’ will have no meaning.
The combination of the numeral 12 and the word ‘LIFE’ has no meaning in relation to the relevant goods. Therefore, they are both considered to be of equal distinctiveness in relation to the goods.
Visually, the signs coincide in the letters ‘LI*E’. However, they differ in the numeral ‘12’ and the typeface and figurative elements.
The signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the ‘L’. Additionally, the letter ‘I’ in the word ‘LIVE’ may be pronounced as /I/ or /AI/ and in the word ‘LIFE’ as ‘AI’. There is also a certain similarity in the pronunciation of the letters ‘V’ and ‘F’. For part of the relevant public (e.g. Spanish, French- or Polish-speaking consumers who do not know these words), the pronunciation of the signs coincides in the sound of the letters ‘LI*E’, present identically in both signs, and there is also a certain similarity in the pronunciation of the letters ‘V’ and ‘F’.
The opponent argues that the numeral 12 in the contested sign will not be pronounced. The Opposition Division disagrees. The numerals 12 will be pronounced in the respective languages of the relevant public and since it is at the beginning of the mark, it will be enunciated before ‘LIFE’.
In view of the above, the aural similarity is considered to be low.
Conceptually, for those who speak English they would know the conceptual difference between the words LIFE and LIVE. Notwithstanding this, since the contested sign conveys the concept of the numeral ‘12’ the signs are dissimilar. For the non-English speaking members of the public the respective marks would still be conceptually distinct since whilst they would not understand ‘LIFE’ and ‘LIVE’ respectively, they would conceptually distinguish the marks by virtue of the numeral ‘12’. Therefore, to these members of the relevant public the signs are not conceptually similar.
- 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.
The goods have been found to be identical. The marks have been found to be visually and aurally similar to a low degree. To some members of the relevant public the marks are conceptually dissimilar and to the remaining members (the non-English speaking part) they are not conceptually similar.
The inherent distinctive character of the earlier mark is considered to be normal. The degree of attention upon purchasing the goods is also normal.
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 addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).
Whilst taking into account the principle of imperfect recollection, it is considered that the similarities between the signs are not sufficient to cause at least part of the public in the relevant territory to believe that the conflicting goods, which are identical, come from the same undertaking or economically linked undertakings. Regardless of the language spoken by the various members of the relevant public, the inclusion of the numeral 12 in the contested sign and the visual, aural and conceptual differences between the respective word elements LIFE and LIVE are sufficient for reasonably observant and circumspect consumers not to be confused.
Considering all the above, even though the goods have been found to be identical, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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Ioana MOISESCU
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Mark KING |
Marianna KONDAS
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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.