OPPOSITION DIVISION
OPPOSITION No B 2 749 847
Arne-Patrik Heinze, Gänsemarkt 50, 20354 Hamburg, Germany (opponent),
represented by AB&D Rechtsanwälte Arzbach Bystry Dauskardt
Partnerschaftsgesellschaft, Flensburger Str. 11/13, 10557 Berlin, Germany
(professional representative)
a g a i n s t
Nafine chemical industry group Co. Ltd., No. 376 Hongqi East Street, Yun Cheng
City, Shan Xi Province, People’s Republic of China (holder), represented by Abitz &
Partner Patentanwälte mbB, Arabellastraße 17, 81925 Munich, Germany
(professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 749 847 is partially upheld, namely for the following
contested goods:
Class 3: Medicated soap; scrubbing powders; breath freshening sprays.
2. International registration No 1 285 324 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 285 324. The opposition is based on,
European Union trade mark registration No 12 729 174. The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 749 847 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Creams (cosmetic -); Cosmetic preparations for skin care; Lotions for
cosmetic purposes; Oils for toilet purposes; deodorants for human
beings; Shampoo.
The contested goods are the following:
Class 3: Washing powder; laundry starch; medicated soap; scrubbing powders;
leather cleaning preparations; breath freshening sprays; rust removing
preparations; washing soda, for cleaning; stain removing preparations;
laundry soaking preparations.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
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 medicated soap as far as classified in Class 3 is included in the
opponent’s broad category of cosmetic preparations for skin care (to which also
some inherent medical characteristics cannot be denied). The goods are identical.
The contested scrubbing powders are used in cosmetics for cleaning, mainly
exfoliating purposes. They are included in the opponent’s broad category of cosmetic
preparations for skin care. The goods are identical.
The contested breath freshening sprays are similar to a high degree to the
opponent’s deodorants for human beings, as they can coincide in producer, purpose,
distribution channels and end users.
The contested washing powder; laundry starch; leather cleaning preparations; rust
removing preparations; washing soda, for cleaning; stain removing preparations;
laundry soaking preparations are dissimilar to the opponent’s goods. The goods
applied for registration are exclusive to the kitchen sink while the opponent’s goods
are for personal hygiene. Their nature, purpose and method of use are different.
They are neither in competition, nor complementary. Finally, they do not coincide in
distribution channels. Even in supermarkets they are to be found in different sections.
Decision on Opposition No B 2 749 847 page: 3 of 6
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 found to be identical or similar to a high degree are
directed at the public at large. The degree of attention is average.
c) The signs
KEON
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 Opposition Division finds it appropriate to limit the assessment to the perception
of the German-speaking part of the public for which the verbal element ‘KEON’ has
no meaning. It is therefore distinctive. The figurative elements representing Far East
characters are of limited distinctiveness since they will only be perceived as a
possible indication of the geographical origin of the designated goods.
In any case it is to be noted also 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
Decision on Opposition No B 2 749 847 page: 4 of 6
their verbal element than by describing their figurative elements (14/07/2005,
T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
It is not uncommon for trade mark owners to distort letters or replace them with
figurative elements resembling those letters in their efforts to increase the attracting
power of their marks, i.e. to enhance their marketing function. The consumers are
used to encounter such marks and in the given sequence of characters where the
red circle is placed between the letters ‘ke’ and ‘n’ in the contested mark it is highly
likely that the red circle will be seen as replacing the letter ‘O’ and will be pronounced
accordingly. The figurative elements representing Far East characters will not be
pronounced. To that extent the trade marks are aurally identical.
Visually the signs coincide in the letters ‘ke’ and ‘n’ and differ in all other elements of
the contested sign including the colours, even though for the reasons explained
above some level of similarity cannot be denied between the letter ‘O’ of the earlier
and the figurative element representing a red shiny circle of the contested sign. To
that extent the signs are visually similar to an average degree.
Some of the elements of the contested sign may be associated with vague or banal
concepts such as the vague concept of Far East characters and the banal concept of
a shiny circle. However, since the earlier sign has no meaning the signs are not
conceptually similar.
As the signs have been found visually similar and aurally identical, 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 and services 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
The goods have been found partly identical or similar to a high degree and partly
dissimilar. The signs are visually similar and aurally identical. The earlier mark is of
average distinctiveness and the degree of attention of the relevant consumers is
average.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).
Decision on Opposition No B 2 749 847 page: 5 of 6
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a variation of the earlier mark, configured in a different way according to the
type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the German-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to a high degree to those of the earlier trade
mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Judit NÉMETH Plamen IVANOV André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
Decision on Opposition No B 2 749 847 page: 6 of 6
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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.