OPPOSITION No B 2 659 129

E. M. Group Holding AG, Hettlinger Str. 9, 86637 Wertingen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

8Alpha GmbH, Hauptstrasse 70, 9042 Speicher, Switzerland (applicant), represented by Marks & Us Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 659 129 is upheld for all the contested goods, namely

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

2.        European Union trade mark application No 14 786 834 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 786 834, namely against all the goods in Class 3. The opposition is based on international trade mark registration No 694 044 designating the European Union. 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: Detergents and bleaching agents; cleaning, polishing and scouring preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods 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.

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.

Contested goods in Class 3

Cleaning, polishing, scouring preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices are identically contained in both lists of goods.

The contested bleaching preparations are synonym of the opponent’s bleaching agents and are considered identical.

The contested other substances for laundry use overlap with the opponent’s detergents. 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 abrasive preparations are similar to the opponent’s polishing preparations. They have the same purpose, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets.

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 considered to be average.

3. The signs

VEGA
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 earlier mark is a one-word mark ‘VEGA’. Thus, it has no elements which can be considered more dominant or distinctive

The contested mark is a figurative mark that can be perceived as two words ‘NU’ and ‘EGA’ separated by the figurative element of a leaf, or as the word ‘NUVEGA’ with a stylised letter ‘V’. In the latter, because of the stylisation of the letter ‘V’, the consumer is likely to break the contested mark into two elements: ‘NU’ and ‘VEGA’, particularly if there is a meaning attached to any of those word elements.

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.

The common element ‘VEGA’ (for those who perceive it in the contested sign) is meaningful in Spanish language and can be understood as flat terrain, meadow or valley. Because in Spanish it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The Opposition Division must disagree with the applicant who in its observations argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘VEGA’. In support of its argument the applicant refers to a few EU trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that it does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘VEGA’. Under these circumstances, the applicant’s claim must be set aside.

As presence of the same perceptible distinctive meaningful element in both signs makes them conceptually similar (in contrary to languages in which the element is not understood and therefore the conceptual aspect does not influence the assessment of the similarity of the signs), the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public that will perceive and understand the element ‘VEGA’ in the contested sign.

The contested sign has no elements which can be considered more dominant.

Visually and aurally, and for part of the relevant public, as explained above, the signs coincide in ‘VEGA’.  However, they differ in ‘NU’ and, visually, in the stylisation of the letters of the contested sign.

Thus, for this part of the relevant public, the signs are visually similar to an average degree and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the word ‘NUVEGA’ taken as a whole does not have any meaning in the relevant territory, it is considered that due to the presence of a leaf-like stylisation of a letter ‘V’, the sign will be broken into two elements. As such, the common element ‘VEGA’ will be understood as flat terrain, meadow or valley. To that extent, and in the absence of any meaning of the element ‘NU’, the signs are considered conceptually highly similar.

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. As explained above, the claims of the applicant regarding existence of several trade mark registrations including the element ‘VEGA’ must be set aside.  Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, it has been established that the contested goods are identical and similar to the opponent’s goods. The marks are aurally and conceptually highly similar and visually similar to an average degree, to the extent that they coincide in the word element ‘VEGA’, which is fully distinctive for the goods in question and is the only component of the earlier mark and makes up a large part of the contested sign.

Although consumers normally tend to perceive a mark as a whole, the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 29). Therefore, there may still exist a likelihood of confusion when one sign consists of one word which retains, in the other sign, its independent distinctive role without necessarily constituting the dominant element (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 30). In this case, the Opposition Division considers that the element ‘VEGA’ retains its independent position in the overall composition of the contested mark, particularly, because of the stylisation of the letter ‘V’, and the meaning that the word ‘VEGA’ has for the relevant public. The relevant consumer is, therefore, likely to naturally break the contested mark down into two elements and easily identify the word ‘VEGA’ within the applicant’s sign.

The above findings are reinforced by the high aural and conceptual similarity of the signs, and the identity and similarity of goods.

 

Although it is true, as claimed by the applicant, that the differences lie in the beginning of the marks which is the part that first catches the consumer’s attention, it must be recalled that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks.

As regards the argument of the applicant that the earlier mark is short and therefore the consumer is more likely to distinguish between the marks, it should be stated that the earlier mark consists of four letters and the contested one of six letters which does not constitute a particularly short sign. In any case, the comparison of all signs, including the short ones, must be based on the overall impression given by the marks and must follow the same rules as that for word marks comprising a word, a name or an invented term (06/10/2004, T-117/03 to T-119/03 and T-171/03, NL, EU:T:2004:293, § 47-48).

Therefore, the differences between the signs, as set out above, are not enough to counterbalance the similarities and to create such a distance between them so as to allow the public to safely distinguish between them.

The applicant refers to previous decisions 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.

The previous case referred to by the applicant (B 1 542 789) is not relevant to the present proceedings, as the mark  was considered an inseparable whole. However, in the present case, because of the stylisation of the letter ‘V’, and the perceptible meaning of the word ‘VEGA’, the consumer is likely to break the mark into two elements, one being the word ‘VEGA’ which is considered to play an independent distinctive role in the sign.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 international trade mark registration No 694 044 designating the European Union. 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.

The Opposition Division

Justyna GBYL

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.