OPPOSITION No B 2 729 252

Unilever N.V., Weena 455, 3013 AL Rotterdam, Netherlands (opponent), represented by Baker & McKenzie LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom (professional representative)

a g a i n s t

E.U.D. Group a.s., J. Palacha 121/8, 690 02 Břeclav, Czech Republic (applicant), represented by Zdeněk Kučera, Dlouhá 207, 763 15 Slušovice, Czech Republic (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 729 252 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 986 831. The opposition is based on European Union trade mark registrations No 5 180 229, No 10 065 761 and No 10 065 852. The opponent invoked Article 8(1)(b) and 8(5) 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:

European Union trade mark registration No 5 180 229

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

European Union trade mark registrations No 10 065 761 and No 10 065 852

Class 3: Soaps; detergents; bleaching preparations, cleaning preparations; perfumery, toilet water, aftershave, cologne; essential oils; deodorants and antiperspirants; preparations for the care of the scalp and hair; shampoos and conditioners; hair colourants; hair styling products; toothpaste; mouthwash, not for medical use; preparations for the care of the mouth and teeth; non-medicated toilet preparations; bath and shower preparations; skin care preparations; oils, creams and lotions for the skin; shaving preparations; pre-shave and aftershave preparations; depilatory preparations; sun-tanning and sun protection preparations; cosmetics; make-up and make-up removing preparations; petroleum jelly; lip care preparations; talcum powder; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs.

Class 21: Toilet cases and vanity cases; small domestic utensils and containers; wash-bags; brushes; combs; sponges; powder puffs; powder compacts; toilet utensils; toothbrushes; dental floss and tape; dental sticks; cloths for cleaning; dusting and polishing cloths; pads for cleaning or scouring; containers and dispensing devices for toilet preparations..

The contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use, cleaning preparations of all kinds, polishing, scouring and abrasive preparations, fabric conditioners, perfumery, body care and beautification preparations, soaps, liquid soaps, hair shampoos and body washes, bath foams and salts, women’s and men’s cosmetics, skin care and body care cleaning preparations.

Class 5: Sanitary preparations for medical purposes, feminine hygiene products, in particular sanitary napkins (towels), panty liners and tampons, sanitary pads and pants, interlabial pads for feminine hygiene, pants for feminine hygiene, napkins and absorbent pants for incontinents, including disposable napkins of paper and/or cellulose, babies’ napkin-pants of paper, sanitary pads and pants and napkins and absorbent pants for incontinents.

Class 16: Goods of paper or cellulose for hygiene purposes.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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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 assumed to be identical are directed at the public at large.

The degree of attention is considered average.

3. The signs

LUX EUTM No 5 180 229 and EUTM No 10 065 761 EUTM No 10 065 852
Earlier trade marks	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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘LUX’ in the earlier marks is understood in part of the EU as ‘luxe’ (in Bulgarian, Czech, Dutch, and Romanian) or as evoking ‘luxury’ (in English, French, Hungarian and Latvian) and therefore is weak for part of the public for the relevant goods.

However, for another part of the public, such as the German-, Lithuanian- and Polish-speaking parts of the public, it has no meaning and is therefore distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘LUX’ has no meaning and has a normal degree of distinctiveness.

The earlier marks under 1) are the single word ‘LUX’ and the earlier mark under 2) is a figurative mark comprising the single word ‘LUX’ written in a stylised typescript characterised by the joining of the lower stroke of the first letter, ‘L’, with a stroke of the last letter, ‘X’.

The contested sign is figurative and consists of the word ‘LAX’, written in thick black upper case letters in a large font. The lower stroke of the first letter is elongated and becomes the central stroke of the second letter.

Neither of the marks has any element that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs have in common the letters ‘L’ and ‘X’, which appear in the same positions. However, they differ in their central letter, ‘U’ in the earlier marks and ‘A’ in the contested sign, and in the stylisation of the letters in the contested sign and one of the earlier marks.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually similar to a low 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 consonants ‛L’ and ‘X’, present identically in both signs, and in the fact that each sign will be pronounced as one syllable. The pronunciation differs in the sound of the signs’ only vowels, ‛U’ in the earlier marks and ‘A’ in the contested sign, which have completely different sounds in all languages.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the verbal elements of all the signs are meaningless for the relevant public, and the stylisations of the letters do not have a semantic content. Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of the similarity of the marks.

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 marks

The distinctiveness of the earlier marks 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 marks have a reputation in the European Union in connection with some of the goods for which they are registered, namely the goods in Class 3. This claim must be properly considered given that the distinctiveness of the earlier trade marks 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 the following evidence:

• A witness statement by Esmeralda Baron, the opponent’s Global Trade Mark Counsel, responsible for skincare products, dated 17/11/2016. It states that the opponent is an internationally recognised manufacturer of personal care products, including under the ‘LUX’ marks, which are one of their primary and most valuable brands. The statement also indicates sales figures for soap in some European countries in the financial year 2015/16.

• Exhibit EB1: advertisements for ‘LUX’ soap flakes dating from 1925 and evidence of endorsements of ‘LUX’ products by high-profile celebrities, the earliest dating from the 1930s and the latest from 2013.

• Exhibit EB2: a photograph of ‘LUX’-branded goods.

• Exhibit EB3: an undated catalogue, in German, containing photographs of ‘LUX’-branded goods; and photographs dated 2011, 2012 and 2016 showing ‘LUX’ goods on shelves.

• Exhibit EB4: undated extracts, in English, from social media platforms such as YouTube and Facebook and from the website www.houseoflux.com.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

The exhibits consist of documents that are not sufficient in themselves to confirm the information provided in the witness statement. The size and the darkness of the photographs make it impossible to see the dates or the kind of products marketed under the mark ‘LUX’. Furthermore, there is no specific information regarding the market share held by the trade marks. There is no verified information about the awareness of the trade marks, the intensity of their use or the size of the investment made by the undertaking in promoting them. All these factors have to be taken into account to determine whether or not the marks concerned enjoy a reputation from the standpoint of the consumers targeted by the opponent. The opponent could have filed more supporting documentation, for example declarations made by independent parties attesting to the reputation of the marks, verified or verifiable data on the market share held, opinion polls or market surveys, certifications or awards, invoices or other commercial documents, evidence of audits or inspections, etc. However, since the opponent did not submit any such documentation, it has not been proven that the marks have a higher than normal degree of distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are assumed to be identical to the opponent’s goods and they target the public at large, whose degree of attention is average. Furthermore, the earlier marks have a normal degree of distinctiveness.

The signs under comparison are visually and aurally similar only to a low degree and, as a conceptual comparison is not possible, the conceptual aspect has no influence on the assessment of their similarity.

The similarity of the signs is limited to the letters ‘L’ and ‘X’, which appear in the same order in the earlier marks as in the contested sign. However, the vowels in each word form the nuclei of the signs’ only syllables and they constitute a noticeable difference. Specifically, the graphemes ‘U’ and ‘A’ have no visual similarity whatsoever and, from an aural perspective, the vowel ‘U’ in ‘LUX’ is not phonetically similar to the vowel ‘A’ in ‘LAX’.

Furthermore, the signs in dispute all have three letters; they are, consequently, short marks and it is considered that the fact that they differ in one letter each, which is the nucleus of a single-syllable word, is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

The only different letter is neither visually nor aurally similar, as stated above. Consequently, the fact that the signs coincide in two letters and that the differing letters are visually and aurally not similar does not lead to a finding of likelihood of confusion (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

Furthermore, the opponent has not shown that the earlier marks enjoy enhanced distinctiveness in relation to the goods on which the opposition is based. In the absence of enhanced distinctiveness, there is no strong argument to suggest that consumers would confuse the contested sign and the opponent’s marks.

Consequently, the similarities between the signs are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to a previous decision 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.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division (B 2 551 383) is to some extent factually similar to the present case, the outcome may not be the same because the visual and aural similarities between ‘LAV’ and ‘LEV’ were considered average.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘LUX’ is weak. As stated in section c), for part of the relevant public the earlier marks convey the semantic content of ‘luxe’ or ‘luxury’. This will help those consumers to distinguish between the signs conceptually and, as a result of the weak character of this element, that part of the public will perceive the signs as being even less similar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In view of the cumulative nature of this provision and for the sake of procedural economy, the Opposition Division will proceed directly to the second point, reputation.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite showing some use of the earlier trade marks for soaps, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not demonstrate the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and 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

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Janja FELC

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.