OPPOSITION No B 2 766 635

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Sirius s.r.l., via Cesare Battisti 23, Milano, Italy (applicant), represented by Gianluca De Cristofaro, Via della Moscova 18, 20121 Milano (MI), Italy (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 635 is upheld for all the contested goods.

2.        European Union trade mark application No 15 459 134 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 459 134. The opposition is based on European Union trade mark registration No 984 245. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 3: Preparations for treating, dyeing, colouring, bleaching and styling hair.

The contested goods are the following:

Class 3: Cosmetic preparations for face and body care.

Contested goods in Class 3

The contested cosmetic preparations for body care include, as a broader category, the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cosmetic preparations for face are similar to a high degree to the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair. This is because the goods have the same purpose, distribution channels, relevant public and producers.

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 or similar are directed at the public at large. The degree of attention is expected to be average.

3. The signs

LIVE
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the opponent correctly points out in its observations, in English the words ‘LIVE’ and ‘Liv’ are pronounced identically and therefore convey the same meaning when perceived aurally. The element ‘LIVE’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘Liv’ of the contested sign, written in a stylised way, has no meaning for the relevant public and is, therefore, distinctive.

The element ‘LIVE’ of the earlier mark will be perceived as a verb meaning ‘be alive’, or as an adjective meaning ‘living’ or ‘not recorded’ by the English-speaking part of the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

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 ‘LIV’, constituting the entire contested sign and the beginning of the earlier mark. However, they differ in the last letter of the earlier mark, ‘E’, and in the stylised writing of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LIV’, present identically in both signs. English-speaking consumers will, nevertheless, pronounce ‘LIV’ in the same way as ‘LIVE’, since the last letter, ‘E’, is not pronounced.

Therefore, the signs are aurally identical.

Conceptually, from the perspective of the public that will encounter the two signs visually, since the contested sign as such has no meaning in the relevant territory and, therefore, one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Nevertheless, reference is made to the previous assertions concerning the semantic content conveyed by the marks from the perspective of the relevant public that will encounter the signs aurally. As both signs will be perceived as ‘LIVE’, the signs are conceptually identical in these circumstances.

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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

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, § 22 et seq.).

Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are identical and similar. The signs are visually similar to a high degree and aurally identical. The differences reside in only the additional final letter, ‘E’, and the stylised writing of the contested sign.

In addition, account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Based on all the foregoing, it is considered that the differences are not sufficient to counteract the coincidences, which have a decisive impact.

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 984 245. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Martin EBERL

Anna POLITI

Vít MAHELKA

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.