OPPOSITION No B 2 122 318

Cederroth AB, Kanalvägen 5A, S-194 27 Upplands Väsby, Sweden (opponent), represented by Carat Advokatbyrå AB, Vasagatan 44, 5th floor, 111 20 Stockholm, Sweden (professional representative)

a g a i n s t

Albatros SrL, Via Zante, 14, 20138 Milano, Italy (applicant), represented by Giambrocono & C. S.p.A., Via Rosolino Pilo 19/b, 20129 Milano, Italy (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 122 318 is upheld for all the contested goods.

2.        European Union trade mark application No 11 347 093 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 347 093. The opposition is based on European Union trade mark registration No 7 297 898. The opponent invoked Article 8(1) (a) and (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 and services

After Cancellation Proceedings No 11248C, the services on which the opposition is based are the following:

Class 44: Medical services; hygienic and beauty care for human beings.

The contested goods are the following:

Class 3:  Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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; perfumery, essential oils, cosmetics, hair lotions; dentifrices are considered to be similar to the opponent´s hygienic and beauty care for human beings in Class 44. As pointed out by the applicant in its observations, the goods and services are different in nature however, they have the same purpose. They target the same public and they can also have the same distribution channels. Furthermore, these goods and services can also be complementary, as it may be necessary to use the contested goods to perform the opponent´s services.

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 and the degree of attention is average.

3. The signs

Bioenergy
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.

The common element ‘BIOENERGY’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘BIOENERGY’ will be perceived by the relevant public as renewable energy derived from biological sources (information extracted from Collins Dictionary). The goods and services in question are not fuels or energy production services so the term is not descriptive. However, bearing in mind that the relevant goods and services are hygienic and beauty care products for humans, this element has to be considered weak since it alludes to the idea that the said products provide energy in a natural way.

The figurative element of the contested sign, namely three leaves of increasing size will be of limited distinctiveness as they can be perceived as a clear reference to the natural character of some of the ingredients of the applicant’s goods. For this reason, the applicant’s arguments related to the distinctiveness of the devices must be set aside.

As regards the applicant´s argument related to the importance of the stylisation of the word ‘BIOENERGY’ in the contested sign, the Opposition Division notes that the said stylisation of the word used in the contested sign is merely decorative and will not be perceived as an individual element of the sign, but only as a carrier of the verbal elements. This stylisation is non distinctive.

Neither of the signs have any element that could be considered clearly more dominant (eye- catching) than others.

Visually, the signs coincide in their sole verbal element ‘BIOENERGY’, and differ in the figurative element and the stylisation of the contested sign. As the difference between the signs lies in a non-distinctive element or in elements with limited distinctiveness, the signs are similar to an average degree.

Aurally, as the signs comprise the same verbal element, they are aurally identical. Contrary to the applicant´s assertion, the Opposition Division is of the opinion that the figurative devices contained in the contested sign will not be pronounced and, therefore, will not be phonetically assessed.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the additional figurative element contained in the contested sign has been found weak, the marks are conceptually similar to an average degree.

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 distinctiveness of the earlier mark must be seen as low as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are similar to the services covered by the earlier mark. As stated above in section c) of this decision, the signs are aurally identical and conceptual and visually similar to an average degree. The degree of attention of the relevant public will be average.

Even in a case involving an earlier mark of distinctive character that is somewhat below average, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered.

Although the signs differ in stylisation, they both contain the same word and they do not contain a distinctive additional differentiating component that could reduce the degree of similarity between them.

Considering all the above and taking into account the interdependence principle, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 297 898. It follows that the contested trade mark must be rejected for all the contested goods.

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(1)(a) 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

Ric WASLEY

Alexandra APOSTOLAKIS

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.