OPPOSITION No B 2 444 936
Desinfección Profesional, S.L., C/ Planeta, 13, 2º 1ª, 08012 Barcelona, Spain (opponent), represented by Roper Patents, Dolors Almeda, 10, -08940 Cornella, Spain (professional representative).
a g a i n s t
Hagleitner Hygiene International GmbH, Lunastr. 5, 5700 Zell am See, Austria (applicant) represented by Torggler & Hofinger, Wilhelm-Greil-Str. 16, 6020 Innsbruck, Austria (professional representative).
On 19/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 444 936 is upheld for all the contested goods
2. European Union trade mark application No 13 149 208 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all goods of the European trade mark application No 13 149 208. The opposition is based on the European trade mark registration No 8 639 411. The opponent invoked Art. 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: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants.
The contested goods are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 5: Sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; all of the aforementioned not for use in relation to conditions of the central nervous system (CNS).
Contested goods in Class 3
The contested goods in Class 3 are identically included in the opponent’s list of goods.
Contested goods in Class 5
The contested sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; all of the aforementioned not for use in relation to conditions of the central nervous system (CNS) are included in the opponent’s broader categories sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants respectively. They are therefore, identical.
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 goods are directed partly at the public at large and partly at professionals. The degree of attention will vary form average to high. In particular, in relation to goods in Class 5 as according to case-law, the degree of attention of the relevant public is relatively high, as these goods, whether or not they are issued on prescription, affect their state of health (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).
c) The signs
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DESPRO |
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Earlier trade mark |
Contested sign |
The relevant territory is the European Union.
The global assessment of the likelihood of confusion, in relation to 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. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, “Limoncello”, EU: C:2007:333, Paragraph. 35).
The earlier sign has no meaning for the relevant public. It contains no elements which could be considered more distinctive than others. As word mark, it does not have more visually dominant elements.
As regards the contested sign, it includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.
Part of the public may perceive the word ‘DesiPro’, as including the suffix ‘Pro’ because of its representation in a different colour and use of lower and capital letters, which will be perceived as referring to ‘professional’. The green left-upper cross will be identified as an indication of a drugstore by the relevant public. Bearing in mind the nature of the relevant goods, these elements have a low distinctive character as they are laudatory or indicate the nature of the goods.
The contested sign has no element which could be considered more visually dominant than others.
Visually and aurally, the signs are similar to the extent that they coincide in the letters or phonemes “D-E-S*P-R-O”, however they differ in the letter or phoneme “I” placed in the fourth place in the contested sing, and visually, in the figurative elements of the contested sign, that in case of the green cross, it has a weak distinctive character.
Moreover, regarding the figurative elements of the contested sign, it is settled case-law, 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).
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, the earlier mark does not have any meaning for the public in the relevant territory. As regards the contested sign, the word ‘DesiPro’, does not have, as such, any meaning; however, part of the relevant public might perceive the contested sign as containing the word ‘Pro’ which refers to ‘professional’ and the figurative element will be associated by the public with the meaning as described above. The signs are not conceptually similar as only one of the signs will be associated with a meaning.
As the signs have been found similar in more than one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
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.
e) Global assessment, other arguments and conclusion
According to the settled case-law, 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 (see judgement of 11/11/2007, C-251/95, “Sabèl”, Paragraph. 23).
The contested goods are identical to the opponent’s goods and they target the public at large and professionals, whose degree of attention will vary from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.
The signs are visually and aurally highly similar as they only differ in an additional letter (or phoneme), placed in the middle of the contested sign and in the figurative elements of the contested sign.
Bearing in mind all the above, and in particular that the differences found between the earlier mark and the contested sign are not sufficient to counteract their similarities, there is a genuine risk of confusion between the marks for the identical goods in question.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 639 411. It follows from the above that the contested trade mark must be rejected for all the contested goods.
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
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Jose A. GARRIDO OTAOLA |
Ana MUÑIZ RODRÍGUEZ |
Loreto URRACA LUQUE |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.