OPPOSITION No B 2 519 471
Reckitt Benckiser (España), S.L., Calle Mataró 28, 08400 Granollers, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Elena Sivoldaeva, Vernadskogo prospekt, building 92 apt. 479ª, Moscow 119571, Russia (applicant), represented by Office Mediterranéen de brevets d'invention et de marques Cabinet Hautier, 20 rue de la Liberté, 06000 Nice, France (professional representative).
On 25/01/2017, the Opposition Division takes the following
1. Opposition No B 2 519 471 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 745 518, namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 1 167 480. 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 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 Spanish trade mark registration No 1 167 480.
- The goods
The goods on which the opposition is based are the following:
Class 3: Soaps of all kinds, soap substitutes; bleaching preparations and other substances for laundry, detergents, softeners and preparations for cleansing, polishing, scouring and for household cleaning in general.
The contested goods are the following:
Class 3: Perfumary; perfumery, eau de perfume, eau de cologne, eau de cologne, perfume water; deodorants for personal use; soaps; oils for perfumes and scents; air fragrancing preparations, namely scented wood, pot-pourri, incense and incense cones; room perfumes in aerosol form; products for prefuming the home, except vaporisers; preparations for perfuming linen, laundry deodorants; essential oils; cosmetics; hair lotions.
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 applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
The contested soaps are identically contained in both lists of goods (including synonyms).
The contested perfumary; perfumery, eau de perfume, eau de cologne, eau de cologne, perfume water; deodorants for personal use; oils for perfumes and scents; essential oils; cosmetics are similar to the opponent’s soaps of all kinds, since they can coincide in distribution channels, producers and consumers. Furthermore, they also have a very similar purpose, which is to improve or embellish one’s personal hygiene.
The contested air fragrancing preparations, namely scented wood, pot-pourri, incense and incense cones; room perfumes in aerosol form; products for prefuming the home, except vaporisers; preparations for perfuming linen, laundry deodorants are substances either intended to impart a pleasant scent and/or to eliminate unpleasant smells from a room or from the laundry and they all are used in connection with cleaning. To that extent, their nature and purpose are similar to that of the opponent’s preparations for cleansing, polishing, scouring and for household cleaning in general. Furthermore, they are likely to coincide in distribution channels, producers and consumers.
The contested hair lotions is similar to a low degree to the opponent’s soaps of all kinds, since they can coincide in producers and distribution channels.
- 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 or similar to several degrees are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 consisting of the word ‘ELENA’. For word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case.
The contested sign is a figurative mark consisting of the words ‘Elena’ and ‘Sivoldaeva’ underneath. Both are capitalized and written in a black stylized case. These words are surrounded by a black fanciful outline with a shape similar to a cloud. A flower with a black contour is depicted in the upper left corner and another one in the lower right corner.
As for the distinctiveness of the elements of the contested sign, it should be noted that the outline and the flowers are less distinctive than the words of the mark. This is because the former is of a purely decorative nature (a geometric shape) and the latter provides information about the type of scent the goods at issue can be made of. Consequently, these elements have only a limited impact when assessing the likelihood of confusion between the marks. Furthermore, in Spain, ‘ELENA’, present in both signs, is a first name that may belong to a great number of people who do not have anything in common. That is the reason why the degree of distinctiveness of this element is lower than the other word in the contested sign, which as a surname, has a higher intrinsic value.
The marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in the word ‘ELENA’, however they differ in the additional word ‘SIVOLDAEVA’ placed underneath and with no counterpart in the earlier mark. Visually, they also differ in the figurative elements and in the font used in the contested sign.
Account should be taken that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand, as pointed out above, as the figurative elements have a limited impact also.
Aurally, the presence of an additional word of a considerable length creates quite a significant difference between the signs.
Therefore, despite the existing coincidence, the above mentioned differentiating elements are sufficient to consider the signs visually and aurally similar only to a low degree.
Conceptually, the word ‘ELENA’, is a very well-known first name in Spain and is perceived as such by the Spanish public. The terms ‘ELENA SIVOLDAEVA’, owing to its construction, will be perceived as a combination of a forename and surname and, the Spanish consumer would not perceive the surname ‘SIVOLDAEVA’ as being a very frequent one. Surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because general experience tells that the same first name may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between those people (a family link). Therefore, consumers tend to pay more attention to family names than to first names. Furthermore, the Opposition Division is of the opinion that the first name ‘ELENA’ is one of the most frequent forenames in Spain. Therefore, the signs are conceptually lowly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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, § 23).
Even taking into account that the contested goods are identical or similar to several degrees to the opponent’s goods, the signs are visually, aurally and conceptually similar only to a low degree. This is because the additional elements in the contested sign are clearly perceivable, and in overall terms sufficient to exclude any likelihood of confusion between the marks. As thoroughly explained in part c) of the decision, the Spanish public will immediately recognize the word ‘SIVOLDAEVA’ as being a foreign surname and give it a much higher intrinsic value than the coinciding word ‘ELENA’ which is one of the most common first names in Spain. Therefore, consumers will not focus as much on the first name, but on the surname instead. This difference is increasing the conceptual gap between the signs and considerably contributes to help consumers to differentiate the signs.
Therefore, it is not likely that consumers, even with an average degree of attention, would be misled as regards the commercial origin of the identical or similar goods in question merely because of the coincidence in a first name.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on the following earlier trade marks:
Spanish trade mark registrations No 345 040 for the figurative mark, No 1 472 429 for the figurative mark and No 2 346 337 for the figurative mark.
The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements, additional words and colours which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
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
Chantal VAN RIEL
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.