OPPOSITION No B 2 707 142
Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)
a g a i n s t
Berganso Ltd, 44-45 Tamworth Road, Croydon, Surrey CR0 1XU, United Kingdom (applicant).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 707 142 is upheld for all the contested goods.
2. European Union trade mark application No 15 071 624 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 15 071 624. The opposition is based on European Union trade mark registration No 1 769 421. 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 goods
The goods on which the opposition is based are, inter alia, 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.
The contested goods are the following:
Class 3: Laundry liquids; Spray cleaners for household use; Cleaning fluids.
The contested laundry liquids are included in the opponent’s broader category of bleaching preparations and other substances for laundry use. Therefore, these goods are identical.
The contested spray cleaners for household use; cleaning fluids are included in the opponent’s broader category of cleaning preparations. Therefore, these goods are identical.
- 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.
- The signs
| MISTER FRESH
|
Miss Fresha
|
|
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. As three out of the total of four words in the signs are English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark contains the verbal element ‘MISTER’, which has an average degree of distinctiveness in relation to the relevant goods and which will be understood as a title of address for a man. The sign’s other element is the adjective ‘FRESH’, meaning, inter alia, bright and clean in appearance. The relevant public will understand the mark as a whole as referring to a fresh person or to a man who makes things fresh. The adjective is directly related to the relevant goods, since one of the purposes of the relevant goods – cleaning products, bleaching preparations and other substances for laundry use – is to create freshness. Therefore, this element is non-distinctive.
The contested sign contains the verbal element ‘MISS’, which has an average degree of distinctiveness in relation to the relevant goods and which will be understood by the relevant public as a title prefixed to the name of an unmarried woman. The sign’s other element, ‘FRESHA’, does not exist as a word in English. Nevertheless, given its proximity to the word ‘fresh’, the English-speaking public is likely to associate it with the concept of freshness or perceive is as a misspelling of ‘fresher’, and the public will, therefore, view the sign as referring to a woman who makes things fresh. As a consequence, the conclusions reached in the preceding paragraph on the degree of distinctiveness of the word ‘FRESH’ apply here too.
Visually, the signs coincide in the first three letters of their first word elements and in that the earlier sign’s second word element is entirely included in the contested sign’s second word element. They differ in their first elements’ endings, ‘TER’ versus ‘S’, and in the contested sign’s final letter, ‘A’. All these coincidences mean that 8 out of the earlier sign’s 11 letters are reproduced in the contested sign, in the same order. The signs’ structures, as well as their beginnings, are identical, and this, in combination with the near-identical second elements, is counteracted to only a limited extent by the different endings of the first elements. Therefore, and bearing in mind the impact of the elements ‘FRESH’ and ‘FRESHA,’ they are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of letters [MIS-] and [FRESH-] and differs in the sound of the additional letters [-TER] in the earlier sign and [-A] in the contested sign. Even with these differences, the signs’ rhythms and intonations are rather similar, bearing in mind the aural impact of the elements ‘FRESH’ and ‘FRESHA’ and the coincidence in the first parts of the signs. Overall, the signs must be considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. It must be emphasised that the mere fact that the first element of both signs is a title is not sufficient to find a conceptual link between them, since the earlier mark refers to a man while the contested sign refers to an unmarried woman. Bearing in mind also the non-distinctive character of the elements ‘FRESH’ and ‘FRESHA, it must be concluded that the signs are conceptually not similar.
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 average for all of the goods in question, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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.
In the present case, the goods are identical and the signs are visually and aurally similar to various degrees. The differences between them lie in the final letters/sounds of their verbal elements, which is not sufficient to counteract the similarities. Despite the differences, the public with an average degree of attention would perceive the marks as a whole as referring to a person making things fresh, which could lead them to believe that the contested sign was a sub-brand of the earlier mark.
A global assessment of the likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This is particularly relevant in the present case, as the conflicting goods are identical.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking 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 Division finds that the opposition is well founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected in its entirety.
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
| Marianna KONDÁS | Ferenc GAZDA | Oana-Alina STURZA
|
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.