OPPOSITION No B 2 791 294

Ulrich Jüstrich Holding AG, Unterdorf, 9428 Walzenhausen, Switzerland (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Domestic Perfumes Co. LLC, P.O. Box 28190, Dubai, Dubai, United Arab Emirates (applicant), represented by Cam Trade Marks and IP Services, St John’s Innovation Centre, Cowley Road, Cambridge CB4 0WS, United Kingdom (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 791 294 is upheld for all the contested goods.

2.        European Union trade mark application No 15 581 317 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 581 317. The opposition is based on, inter alia, European Union trade mark registration No 153 809. 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 European Union trade mark registration No 153 809.

1. 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 21:        Brushes (except paint brushes), materials for the manufacture of brushes.

The contested goods are the following:

Class 3:        Bleaching preparations; other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices.

        

An interpretation of the wording of the list of contested goods is required to determine the scope of protection of these goods. In Class 3, a semicolon (;) appears immediately before the wording ‘other substances for laundry use’. As the wording following this semicolon relates to the goods listed before and as this wording cannot stand alone, the Opposition Division assumes that the semicolon must be interpreted as a comma.

Bleaching preparations, other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices are identically contained in both lists of goods (including synonyms).

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 considered 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 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 coinciding element ‘Just’ is meaningful in certain territories, for example, in those countries where English is understood. The meaning of this element will lead to a certain conceptual similarity, as explained below, and, consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is a figurative sign consisting of the verbal element ‘Just’ in standard bold italic title case letters. The verbal element is within an oval, and the initial and final letters break the outline of the oval.

The verbal element ‘Just’ will be perceived as meaning, inter alia, ‘morally right and fair’, ‘exactly’, ‘very recently’ and ‘simply; only’ (Oxford Dictionaries). In relation to the goods in question, this element has no meaning and has an average degree of distinctiveness. The figurative element will be perceived as a very simple label and therefore merely as a decorative device used to embellish the verbal component of the sign. Given its low distinguishing power and secondary role, the impact of the figurative element is limited in the overall impression produced by the earlier mark.

The contested sign is a figurative sign consisting of the verbal elements ‘JUST’ and ‘GOLD’ in standard bold upper case letters. The letters ‘J’ and ‘G’ are slightly larger than the other letters in the sign. The sign also contains a figurative element emerging from the top of the letter ‘u’. However, albeit resembling a flower, this element is too stylised to convey any clear concept and has an average degree of distinctiveness.

The verbal element ‘JUST’ will have the meaning explained above and will have an average degree of distinctiveness in relation to the goods in question. However, the element ‘GOLD’, which will be understood as, inter alia, a yellow precious metal, a deep lustrous yellow or yellow-brown colour, or an indication of the most superior quality (Oxford Dictionaries), will be non-distinctive for the goods in question, as it will indicate that the soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices contain gold and that the cleaning, polishing, scouring and abrasive preparations are especially made for gold. Furthermore, the word ‘GOLD’ will be perceived merely as a non-distinctive laudatory promotional message indicating that the bleaching preparations, other substances for laundry use (as well as all the other goods mentioned above) are of a better quality than other similar products on the market.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

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).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the verbal element ‘JUST’, which is the only verbal element and the most distinctive element of the earlier mark and the most distinctive verbal element of the contested sign. Furthermore, this element also constitutes the beginning of the contested sign. The signs differ in the figurative element of the earlier mark, which has, however, a very limited impact on the overall impression of the mark. They also differ in the verbal element ‘GOLD’ in the contested sign, which is, however, non-distinctive. Finally, they differ in the figurative element of the contested sign and the very limited stylisation of the verbal elements of the signs.

Therefore, and taking into consideration that verbal elements have a stronger impact than figurative elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛JUST’, which constitute the entire earlier mark and the first verbal element of the contested sign. They differ in the sound of the letters ‘GOLD’ in the contested sign, which form, however, a non-distinctive element.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The meanings of the word ‘JUST’, in particular ‘simply; only’, will convey the same meaning in both signs, as the addition of the word ‘GOLD’ in the contested trade mark does not have the effect of creating a conceptual difference, as it can be perceived as ‘simply or only gold’. Therefore, and taking into consideration that the element conveying a differentiating concept is non-distinctive, there is a high degree of conceptual similarity.

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.

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, despite the presence of an element with a limited impact on the overall impression of the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

In the present case, the goods are identical. The earlier mark has a normal degree of distinctiveness and the relevant consumers’ degree of attention is average.

The verbal elements of the signs differ in only a non-distinctive element, as explained above under section c) of this decision. The average consumer normally pays less attention to those elements in a trade mark that are non-distinctive and, consequently, consumers will focus on the coinciding element, ‘JUST’. The figurative element of the earlier mark is weak and, although the figurative element of the contested sign has an average degree of distinctiveness, the Opposition Division has taken the stronger impact of the verbal elements into account and consequently found that the differences between the signs are clearly not sufficient to outweigh the average degree of visual similarity and the high degree of conceptual and aural similarity between them and to exclude a likelihood of confusion.

In that regard, it has to be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours or by adding verbal or figurative elements to them, to denote new product lines or to endow their trade marks with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public, which rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have the element ‘JUST’ in common and perceive the contested sign as a variation of the earlier mark or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are identical.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 153 809. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 153 809 leads to the success of the opposition 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).

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

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

Gaile SAKALAITE

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.