OPPOSITION No B 2 674 441

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Laboratorios Combix S.L.U., C/ Badajoz 2, Edificio 2, 28223 Pozuelo de Alarcón, Madrid, Spain (applicant), represented by Pons Consultores de Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 674 441 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 14 822 985, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 5 395 173. 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 the following:

Class 3:        Soaps; perfumery, essential oils, cosmetics, deodorants for personal use, chemical hair care and treatment preparations, non-medicated toothpaste and mouthwashes, cosmetic bath and shower foam.

The contested goods are the following:

Class 3:        Soaps; Dentifrices; Perfumery; Essential oils; Cosmetics; Hair lotion.

Soaps; perfumery; essential oils; cosmetics are reproduced in both lists and the goods are, therefore, identical.

The contested hair lotion is included in the broad category of the opponent’s chemical hair care and treatment preparations. Therefore, they are identical.

Dentifrices overlap with non-medicated toothpaste and the goods are, therefore, identical.

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 are directed at the public at large.

The degree of attention is, on the whole, average.

3. 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 earlier mark consists only of a figurative element that depicts a head and, therefore, the mark has no dominant elements. In relation to the goods at issue, the mark is distinctive, as it has no meaning in relation to the goods at issue.

The contested mark contains both verbal elements (‘Dr.line’ and ‘INNOVACIÓN FARMACÉUTICA’) and a figurative element that depicts a head. Both this figurative element and the expression ‘Dr.line’ are dominant over the expression ‘INNOVACIÓN FARMACÉUTICA’, which is depicted in much smaller and is at the bottom of the mark. These elements are also more distinctive than ‘INNOVACIÓN FARMACÉUTICA’ if account is taken of the fact that these words will be understood as ‘PHARMACEUTICAL INNOVATION’ by a very significant part of the relevant public; this is because either they are common English words in the pharmaceutical field or these words are spelt very similarly to their equivalents in some languages (e.g. ‘inovação farmacêutica’ in Portuguese, ‘innovazione farmaceutica’ in Italian, ‘innovation pharmaceutique’ in French, ‘farmatzevtíchna inovatzia’ in Bulgarian, ‘pharmazeutische Innovation’ in German, ‘farmaceutisk innovation’ in Swedish, ‘farmaceitiskā inovācija’ in Latvian and ‘farmaceutická inovace’ in Czech).

Visually, the signs are similar in that they both contain figurative elements that depict a head. However, these figurative elements have important differences, as the element in the earlier mark is depicted in solid black and depicts merely the head and neck of a person, whereas the contested mark depicts a purple head above a white neck and shoulders, and the upper part of the head and neck is surrounded by a circle. Furthermore, whereas the earlier mark does not contain any verbal elements, as described above, the contested mark contains the expressions ‘Dr.line’ and ‘INNOVACIÓN FARMACÉUTICA’. Consequently, the marks are visually similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, although the public in the relevant territory will perceive the meaning of a person’s head and neck in both signs, the majority of consumers will understand the expression ‘Dr.line’ in the contested mark as a person who is a doctor and whose name is ‘line’ and, as described above, ‘INNOVACIÓN FARMACÉUTICA’ will be understood as ‘pharmaceutical innovation’. Consequently, the marks are similar to a low 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.

According to the opponent, the earlier trade mark has a high degree of distinctiveness as result of its long-standing and intensive use in Germany and in many other European countries in connection with hair cosmetics. 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).

The opponent submitted several exhibits that contain articles from websites, samples of products, several other articles, an extract from an encyclopaedia, the results of surveys, etc.

From the evidence submitted, it is clear that the enhanced distinctiveness described above is associated with a different version of the mark, , that is, a mark in which the word ‘Schwarzkopf’ is present and is very relevant, not with a mark that includes only the figurative element described above. Therefore, the Opposition Division must conclude that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks and vice versa.

The goods are identical and target the general public with an average degree of attention.

The opponent focuses its arguments in relation to the signs on the fact that the depiction of the head is the element that mainly attracts the attention of consumers in the contested mark and argues that the circle, the mixture of white and purple and the verbal elements are irrelevant. The Opposition Division cannot agree with these arguments; as explained above, the differences between the figurative elements in the marks will not go unnoticed and the verbal elements in the contested sign contribute to the differences between the signs. It is true that, as the opponent argues, the words ‘INNOVACIÓN FARMACÉUTICA’ are less distinctive and less dominant than the other elements in the mark; however, the expression ‘Dr.line’ and the figurative element are equally dominant and equally distinctive. As a result, the marks are visually and conceptually similar to only a low degree; they cannot be compared aurally.

Consequently, even if the goods were identical, the relevant consumers would not conclude that the goods originate from the same company or from companies with economic ties; this is more relevant in the case of goods that are similar to a low degree.

Considering all the above, 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.

The Opposition Division

Orsola LAMBERTI

María Belén IBARRA DE DIEGO

Ana MUÑIZ ROGRÍGUEZ

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.