OPPOSITION No B 2 548 926
Top Harvest Design & Manufacture Co., Ltd., 5th Floor, Building 1, No. 3136,
Hechuan Rd., Shanghai 201103, People’s Republic of China (opponent), represented
by JTV Patentes & Marcas, Ortega y Gasset, 11-3°-D, 03600 Elda (Alicante), Spain
a g a i n s t
Jala Group Inc., N° 12 Lifeng Road, Shanghai, People’s Republic of China
(applicant), represented by AB Initio, 5, rue Daunou, 75002 Paris, France
On 12/01/2018, the Opposition Division takes the following
1. Opposition No B 2 548 926 is upheld for all the contested goods.
2. European Union trade mark application No 14 034 251 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 034 251 for the word mark ‘CHANDOR’. The opposition is based
on, inter alia, European Union trade mark registration No 12 751 707 for the
figurative mark . 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
Decision on Opposition No B 2 548 926 page: 2 of 8
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 12 751 707.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Baby shampoo; Body shampoos; Medicated shampoo; Non-medicated hair
shampoos; Shampoos; Aromatic essential oils; Essential oils; Essential oils for
cosmetic purposes; Lemon (Essential oils of -); Amber [perfume]; Aromatics for
perfumes; Extracts of flowers [perfumes]; Natural oils for perfumes; Perfume oils;
Perfumed lotions [toilet preparations]; Perfumed sachets; Perfumed soap;
Perfumery; Incense; Incense sachets; Body emulsions; Cosmetic oils; Cosmetic kits;
Class 5: Air deodorants; Household deodorants; Car deodorants; Household
deodorizers; Car deodorizers; Room deodorants; Air deodorants; Air deodorizers;
Carpet deodorizers; Air deodorisers; Fabric deodorizers; Shoe deodorizers; Urinal
deodorizer blocks; Deodorizers for automobiles; Deodorizing cleaning preparations;
Room deodorizing compositions; Air deodorizing preparations; Air deodorising
preparations; Deodorizers and air purifiers; Deodorants for clothing or textiles;
Textiles (Deodorants for clothing and -); Clothing (Deodorants for -) and textiles;
Deodorants for clothing and textiles; Preparations for deodorising the air; All purpose
disinfecting and deodorizing preparations; Deodorizers for household pet litter boxes;
Deodorizing preparations for pet litter boxes; Deodorizing products, namely, all
purpose deodorizer preparations for household, commercial and industrial use;
Deodorants, other than for human beings or for animals; Cedar wood for use as a
clothing protector and/or deodorizer; Deodorizers for, namely, automobiles, carpet,
shoes, household pet litter boxes, etc [not for personal use]; Breath-freshening
chewing gum for medicinal purposes.
Class 14: Agates; alloys of precious metal; beads for making jewellery; bracelets
[jewellery, jewelry (Am)]; brooches [jewellery, jewelry (Am)]; chains [jewellery, jewelry
(Am)]; charms [jewellery, jewelry (Am)]; clasps for jewelry; diamonds; earrings; ivory
jewellery; jewellery; necklaces [jewellery, jewelry (Am)]; ornaments [jewellery, jewelry
(Am)]; paste jewelry [costume jewelry]; precious stones; rings [jewellery, jewelry
(Am)]; trinkets [jewellery, jewelry (Am)].
As a preliminary remark it must be noted that in a parallel opposition decision
(No B 2 565 789) the contested mark was rejected for goods in Class 32. This
decision is now final and, consequently, the goods against which the present
opposition is directed are:
Class 3: Cosmetics, perfumes, soaps, dentifrices, shampoos, hair care creams, hair
care lotions, mouth washes, lipsticks, beauty masks, lotions for cosmetic purposes,
facial cleanser, eyebrow pencils, lip glosses, sunscreen preparations, anti-wrinkle
cream, skin whitening cream, anti-freckle creams, rouge, eye shadow, cosmetic kits,
Class 5: Dietary supplements, pharmaceutical preparations.
Decision on Opposition No B 2 548 926 page: 3 of 8
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
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
Cosmetics, perfumes, shampoos, cosmetic kits are identically contained in both lists
of goods (including synonyms).
The contested soaps include, as a broader category the opponent’s perfumed soap.
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 creams, hair care lotions, lipsticks, beauty masks, lotions for
cosmetic purposes, eyebrow pencils, lip glosses, sunscreen preparations, anti-
wrinkle cream, skin whitening cream, anti-freckle creams, rouge, eye shadow and
toiletries are included in the broad category of the opponent’s cosmetics. Therefore,
they are identical.
The contested facial cleaner is similar to a high degree to the opponent’s perfumed
soap, as they have the same purpose and nature, can coincide in producer and end
user, share the same distribution channels and can be in competition with one
The contested mouth washes are similar to a high degree to the opponent’s
cosmetics, as they have the same purpose, can coincide in producer and end user
and share the same distribution channels.
The contested dentifrices is similar to a low degree to the opponent’s cosmetics, as
they can coincide in end user and distribution channels.
Contested goods in Class 5
The contested pharmaceutical preparations include, as a broader category the
opponent’s breath-freshening chewing gum for medicinal purposes. 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 dietary supplements are considered to be similar to the opponent’s
breath-freshening chewing gum for medicinal purposes. They have a similar purpose
with dietary supplements intended to promote health via nutritional complements
Decision on Opposition No B 2 548 926 page: 4 of 8
whilst the opponent’s breath-freshening chewing gum for medicinal purposes are
intended to cure or prevent illness. Likewise, they can be available via similar outlets,
such as pharmacies, and may be produced by the same undertakings. Finally, they
have a similar method of use as they are both intended to be taken orally.
b) 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 contested goods found to be identical or similar to various
degrees are directed at the public at large and professionals.
The degree of attention for all the goods in Class 3 will be average. However, it is
apparent from the case-law that the pharmaceutical preparations in Class 5, whether
or not issued on prescription, are concerned, the relevant public’s degree of attention
is relatively high (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). This high level of
attention is also applied to the dietetic supplements in Class 5, since these goods
have a direct effect on the proper functioning of the intestinal transit and, finally,
having a healthy physical appearance (15/12/2009, T-412/08, Trubion,
EU:T:2009:507, § 28).
c) The signs
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The verbal elements of both signs have no meaning in several languages, for
example in English and German. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on this public, namely English
speakers and German speakers.
Decision on Opposition No B 2 548 926 page: 5 of 8
The elements ‘CHANDO’ and ‘CHANDOR’ have no meaning for the relevant public
and are, therefore, distinctive.
The figurative elements and of the earlier mark will be recognised as
elements from a logographic writing system such as Chinese, Japanese or Korean,
but they will have no further meaning. As they are not descriptive, they are also of
The element ‘CHANDO’ in the earlier mark is the dominant element, as it is the most
eye-catching due to its size.
The applicant argued that because the public reads from left to right (or top to
bottom), the part placed at the left (or top) of the sign (the initial part) is the one that
first catches the attention of the reader and that consumers generally tend to focus
on the beginning of a sign when they encounter a trade mark. Therefore, the
applicant argues, the figurative elements and of the earlier mark will be where
consumers focus their attention.
However, when signs consist of both verbal and figurative components, in principle,
the verbal component of the sign usually has a stronger impact on the consumer than
the figurative component. This is because the public does not tend to analyse signs
and will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
This, coupled with the fact that the element ‘CHANDO’ is the dominant element of the
earlier mark, means that the Opposition Division disagrees with the applicant’s
arguments and instead sees the element ‘CHANDO’ as being the element where
consumers focus their attention.
Visually, the signs coincide in the letters ‘CHANDO’. However, they differ in the letter
‘R’ located at the end of the contested sign and the figurative elements and of
the earlier mark.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‛CHANDO’, present identically in both signs. The pronunciation differs in the sound of
the letter ‘R’ located at the end of the contested sign, which has no counterpart in the
earlier mark. Furthermore, the figurative elements and of the earlier mark will
not be pronounced.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. 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.
Decision on Opposition No B 2 548 926 page: 6 of 8
d) 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 trade mark enjoys an enhanced degree of
distinctiveness as a result of being extensively used in Germany, the Czech Republic
and the United Kingdom in connection with part of the goods for which it is
registered, namely goods in Classes 3 and 5. This claim must be properly considered
given that the distinctiveness of the earlier trade mark must be taken into account in
the assessment of likelihood of confusion. Indeed, the more distinctive the earlier
mark, the greater will be the likelihood of confusion, and therefore marks with a highly
distinctive character because of the recognition they possess on the market, enjoy
broader protection than marks with a less distinctive character (29/09/1998, C-39/97,
Canon, EU:C:1998:442, § 18).
In the present case the contested trade mark was filed on 07/05/2015. Therefore, the
opponent was required to prove that the trade mark on which the opposition is based
enjoyed an enhanced degree of distinctiveness in Germany, the Czech Republic and
the United Kingdom prior to that date.
The opponent submitted the following evidence:
Evidence I: A three page invoice of goods exported to a customer in Germany
and dated 31/03/2015. The trade mark does not appear in the document.
Evidence II: A one page commercial invoice of goods exported to a customer
in Czech Republic and dated 14/10/2015. The document states ‘SHIPPING
Evidence III: A one page packing list of the goods exported to a customer in
Czech Republic in Evidence II and dated 14/10/2015. The document states
‘SHIPPING MARKS: CHANDO’.
Evidence IV: A two page commercial invoice of goods exported to a customer
in United Kingdom and dated 16/10/2015. The document states ‘SHIPPING
Having examined the material listed above, the Opposition Division concludes that
the evidence submitted by the opponent does not demonstrate that the earlier trade
mark acquired a high degree of distinctiveness through its use.
Firstly, the sign as registered does not appear in any of the documents. Secondly, the
three pieces of evidence, which include a reference to the sign ‘CHANDO’, are all
dated after the filing date of the contested sign and, therefore, cannot be used to
show that the earlier sign enjoyed an enhanced degree of distinctiveness prior to that
date. Thirdly, the remaining item, evidence I, which is dated before the filing date of
the contested trade mark, does not contain any reference to the earlier mark.
Therefore, the Opposition Division concludes that the evidence submitted by the
opponent does not demonstrate that the earlier trade mark acquired a high degree of
distinctiveness through its use.
Decision on Opposition No B 2 548 926 page: 7 of 8
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
e) Global assessment, other arguments and conclusion
The contested goods have been found partially identical and partially similar to
various degrees. The earlier mark has a normal degree of distinctiveness.
In the present case the contested sign consists of a single seven letter word whilst
the contested sign consists of a six letter word and, above that, two figurative
logographic elements. As has already been explained above, ‘CHANDO’ will be the
element where consumers focus their attention when viewing and referring to the
Consequently, the only difference between the elements which will be most readily
used by consumers to refer to the signs, namely ‘CHANDO’ and ‘CHANDOR’, is the
presence of an ‘R’ as the last letter of the contested sign. This difference is at the end
of the signs, and this area is where consumers generally tend to focus less when
being confronted with a trade mark. The difference in this last letter does not
introduce a sufficient difference into the signs, as it does not alter greatly the visual or
aural comparison, nor does it create a conceptual difference between the signs that
could assist the public in distinguishing between them.
Account should also be taken of the fact that average consumers only rarely have the
chance to make a direct comparison between the different marks and must place
their trust in the imperfect recollection of them that they have kept in their minds.
Considering all the above the Opposition Division finds that there is a likelihood of
confusion on the part public, such as English and German speakers. Therefore, the
opposition is well founded on the basis of the opponent’s European Union trade mark
registration No 12 751 707. 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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to various degrees) to those of the earlier trade
mark. Furthermore, and bearing in mind the high degree of similarity between the
signs, this is also the case for the goods found similar only to a low degree.
As the earlier right leads to the success of the opposition on the basis of the ground
of Article 8(1)(b) EUTMR and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268), nor to further examine the other ground of the
opposition, namely Article 8(1)(a) EUTMR.
Decision on Opposition No B 2 548 926 page: 8 of 8
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Vít MAHELKA Ric WASLEY Chantal VAN RIEL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.