OPPOSITION No B 2 704 305
Environ Skin Care (Proprietary) Limited, 14 Jan Smuts Road, Beaconvale, Parow, Cape Town 7500, South Africa (opponent), represented by Fieldfisher (Germany) LLP, Am Sandtorkai 68, 20457 Hamburg, Germany (professional representative)
a g a i n s t
Essentia Lauri S.R.L., Viale Duca D'Aosta, 3, 21052 Busto Arsizio (VA), Italy, (applicant), represented by Giambrocono & C. S.p.A., Via Rosolino Pilo, 19/b, 20129 Milano, Italy (professional representative).
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 704 305 is upheld for all the contested goods.
2. European Union trade mark application No 15 095 235 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 095 235. The opposition is based on European Union trade mark registration No 9 336 819. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
In the present case, the date of filing of the contested trade mark is 10/02/2016.
Earlier European Union trade mark No 9 336 819 was registered on 03/03/2011. Therefore, the request for proof of use is inadmissible.
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: Soaps; essential oils, cosmetics, hair lotions; dentifrices.
The contested goods are the following:
Class 3: Essential oils for use in air fresheners; Room fragrances; Room perfumes in spray form; Household fragrances; Non-electric fragrance diffusers for indoor use; Fragrance refills for non-electric room fragrance dispensers; Aromatics (essential oils); Aromatics for fragrances; Fragrance preparations; Deodorants for personal use [perfumery].
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 essential oils for use in air fresheners; aromatics (essential oils) fall under the earlier broader term essential oils. These goods are therefore identical.
The contested deodorants for personal use [perfumery] are highly similar to the earlier cosmetics. All of the goods at issue are used for personal hygiene and beautification or to give the body a pleasant smell. They may derive from the same companies, serve similar purposes, are aimed at the same consumers and distributed through the same channels.
The remaining contested goods room fragrances; room perfumes in spray form; household fragrances; non-electric fragrance diffusers for indoor use; fragrance refills for non-electric room fragrance dispensers; aromatics for fragrances; fragrance preparations are similar to the earlier essential oils. The contested goods are all products used for perfuming buildings and freshening the air. The earlier goods are also used for perfuming, whether it be for houses or people. Indeed, the earlier goods may be used as an ingredient when producing the contested goods. Therefore, the goods at issue serve a similar purpose, may derive from the same manufacturers, and are distributed through the same 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 and similar to varying 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 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 is a word mark consisting of ‘EssentiA’. While it is true that the last letter in the earlier mark is a capital letter and this is somewhat unusual, the earlier mark is actually a word mark. This means that protection has been granted for the word as such and not for the manner in which it is depicted.
The contested sign is a figurative mark consisting of the word ‘ESSENTIA’ in light brown, uppercase letters. The two letter ‘E’s are slightly stylised. The word ‘Lauri’ is superimposed on the word ‘ESSENTIA’, written in a darker colour and in a font which imitates a handwritten style. It is quite hard to make out the word ‘Lauri’ due to the fact that it does not stand out in comparison with the word ‘ESSENTIA’, which is written in bolder, larger letters. At the top of the sign, there is a device element consisting of a highly stylised letter ‘E’ and darker letter ‘L’, again superimposed on the other letter. At a visual level, the word ‘ESSENTIA’ is the most dominant element in the sign, due to its size, position and typeface.
The applicant claims that the word ‘ESSENTIA’ should be seen as having a lower than average degree of distinctiveness for goods such as essential oils since it brings to mind the word ‘essential’ or ‘essence’ in English. While it may be true that the word ‘ESSENTIA’ somehow alludes to these ideas, the Opposition Division is nevertheless of the opinion that the fact that the letter ‘L’ is missing at the end makes a great deal of difference when assessing the distinctiveness of the word. ‘ESSENTIA’ comes across as an invented word for English speakers, containing a mere allusion to the ideas mentioned by the applicant. The absence of the letter ‘L’ is crucial, transforming the word into a fanciful term which almost appears as a foreign word in English. The Opposition Division, therefore, dismisses the applicant’s argument in this regard. The element ‘ESSENTIA’ of the earlier mark and the contested sign has no meaning as such for any members of the relevant public and is, therefore, distinctive.
The word ‘Lauri’ in the contested sign may be perceived as a name by some consumers. It is considered to be distinctive. The other letters and elements contained in the contested sign do not convey any meaning for the relevant public and are considered to be distinctive.
Visually, the signs coincide in the word ‘ESSENTIA’, which is also the most dominant element in the contested sign. They differ in the word ‘Lauri’ in the contested sign, which is somewhat difficult to read for the reasons explained above. They also differ in the other elements contained in the contested sign and its stylisation.
Therefore, the signs are visually similar to an average degree.
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 ‘ESSENTIA’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Lauri’ of the contested mark and the stylised letters ‘E’ and ‘L’. However, the Opposition Division considers that these differing elements are less likely to be noticed or pronounced within the contested sign, due to their stylisation and position, as explained in detail above.
Therefore, following what has been explained above, the signs are aurally highly similar, or even identical if the other elements are not pronounced in the contested sign.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘ESSENTIA’, included in both signs, alludes to the meaning explained above for some members of the relevant public, such as the English speakers. To that extent, the signs are conceptually similar to an average degree. Where the relevant public sees ‘Lauri’ as a name, this represents a conceptual difference, along with the anagram ‘EL’, with regard to the earlier mark. For other members of the relevant public, no meaning is conveyed by the signs, except for the anagram ‘EL’ in the contested sign.
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
The marks at issue are visually similar to an average degree, aurally highly similar or identical and conceptually similar to an average degree where ‘ESSENTIA’ brings to mind the idea described above. The goods at issue have been found identical and similar to varying degrees.
The earlier mark is contained entirely in the contested sign. It is also worth noting that ‘ESSENTIA’ is the visually dominant element in the contested sign, with the word ‘Lauri’ being very difficult to read and unlikely to be pronounced. The other letters contained in the contested sign are also less likely to be pronounced and have less weight visually, appearing merely as a sort of anagram at the head of the sign.
It is highly conceivable that the relevant consumer will see the contested sign and simply assume that it is a figurative version of the opponent’s mark, with some embellishment. ‘Lauri’, if noticed at all, will probably just be seen as the name of a product line belonging to the opponent.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. All of the cases mentioned concern marks which either consist of or contain the word ‘ESSENCE’ or ‘ESSENTIAL’. In the cases indicated by the applicant, the Opposition Division generally did not rule that there was a likelihood of confusion owing to the lower degree of distinctiveness of these words in connection with the goods. However, this is not the same as the case at hand, which involves the word ‘ESSENTIA’, which has been deemed inherently distinctive, as explained above.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 336 819. It follows that the contested trade mark must be rejected for all the contested 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 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
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.