OPPOSITION No B 2 720 244

Bros Brand di Laura e Gianluca Cerasoli s.n.c., Via Degli Olmetti, 30, 00060 Formello (RM), Italy (opponent), represented by Consulmarchi SRL, Via Napoli n. 41, 65121 Pescara, Italy (professional representative)

a g a i n s t

Angela Frommer, Buchenstr. 24 A, 85716 Unterschleißheim, Germany (applicant), represented by Ratnerprestia, Altheimer Eck 2, 80331 München, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 244 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 and services of European Union trade mark application No 15 088 776. The opposition is based on European Union trade mark registrations No 10 368 405 and No 10 780 741 and Italian trade mark registrations No 1 492 311, ‘NIYO & CO.’, and No 1 513 089, ‘’.  The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

Furthermore, according to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier Italian trade mark registrations on which the opposition is, inter alia, based, namely Italian trade mark registrations No 1 492 311 and No 1 513 089.

On 06/07/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/11/2016.

On 23/02/2017, which is after the expiry of the abovementioned time limit, the opponent submitted some of the required evidence (that is, excerpts from an Italian trade mark database, http://www.uibm.gov.it, in Italian). No translation was submitted.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

Furthermore, according to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier Italian marks.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 368 405.

1. The goods and services

The goods and services on which the opposition is based 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.

Class 35:        Advertising; Business management; Business administration; Office functions.

The contested goods and services are the following:

Class 3:        Soaps; Perfumery; essential oils and oils for cosmetic purposes; Cosmetics, skin care products, In particular skin cream; Creams for cellulite reduction; Lotions for cosmetic purposes.

Class 5:        Nutritional supplements, In particular collagen beverages.

Class 44:        Medical services; Human hygiene and beauty care; Cosmetic services; Beauty salons.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods in Classes 3 and 5, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

Contested goods in Class 3

The contested soaps; perfumery; essential oils; cosmetics are identically contained in both lists of goods.

The contested oils for cosmetic purposes; skin care products, in particular skin cream; creams for cellulite reduction; lotions for cosmetic purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

Contested goods in Class 5

Nutritional supplements include vitamins, minerals, herbs, meal supplements, sports nutrition products, natural food supplements, and other related products used to boost the nutritional content of the diet. Nutritional supplements are used for many purposes. They can be added to the diet to boost overall health and energy; to provide immune system support and reduce the risks of illness and age-related conditions; to improve performance in athletic and mental activities; and to support the healing process during illness and disease.

When comparing the contested nutritional supplements, in particular collagen beverages with the opponent’s goods and services in Classes 3 and 35, they are considered dissimilar. More specifically, in relation to the opponent’s goods in Class 3, even if some of these may have the same distribution channels (for example, pharmacies), this is not enough to find similarity. They differ in their nature, purpose, methods of use and producers/providers. Further, they are not in competition. In relation to the opponent’s services in Class 35, they differ in nature, purposes, and methods of use, distribution channels, relevant public and producers/providers. Neither are they in competition, nor complementary.

Contested services in Class 44

The contested human hygiene and beauty care; cosmetic services; beauty salons are similar to the opponent’s cosmetics. These goods and services, although different in nature, have the same purpose, namely to improve people’s appearance. They target the same public and they can also have the same distribution channels, as beauty salons often also offer cosmetic products. These goods and services can also be complementary, as it may be necessary to use the opponent’s goods to perform the contested services.

The contested medical services are services related to the maintenance or improvement of health via the diagnosis, treatment and prevention of disease, illness, injury and other physical and mental impairments in human beings. These services are dissimilar to all the opponent’s goods and services in Classes 3 and 35. They differ in their natures, methods of use, producers/providers and distribution channels. They are neither complementary, nor in competition.

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 and services found to be identical or similar are directed at the public at large.

The degree of attention may vary from average to high (for example, concerning beauty salons, which may include advanced treatments) depending on the price, sophistication, terms and conditions of the purchased goods and services.

3. The signs

NIYO & CO.	N’YOU
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 element ‘NIYO’ of the earlier mark has no meaning for the relevant public and has, therefore, a normal degree of distinctiveness.

The element ‘& CO.’ of the earlier mark will be understood, at least in part of the EU, (for example the English, German, Swedish, Danish, Estonian, Finnish, Dutch, Greek and French-speaking part of the public) as one coherent element and an abbreviation for ‘and company’, denoting part of the name of an organisation. This element is commonly used in trade and therefore, it has little ability to indicate the commercial origin (if any) of the goods and is therefore weaker than the element ‘NIYO’ which is the most distinctive element of the mark.

For the other part of the public, ‘& CO.’ has no meaning for the relevant goods, and therefore a normal degree of distinctiveness. However, this public will understand the meaning of the ampersand and the full stop sign, as such. These are not particularly distinctive as they are basic elements used to connect two words (the ampersand) or end a sentence (the full stop sign).

Regarding the contested mark, it has no meaning, as a whole, for the relevant public. However, the relevant public is likely to perceive the verbal element ‘YOU’ in the mark, since it is a basic English word, which will be understood in all Member States. It has a normal degree of distinctiveness for the relevant goods and services.

The letter N in the contested mark has no specific meaning and is therefore also of normal distinctiveness. The apostrophe has little ability to indicate the commercial origin (if any) of the goods and services, and is therefore distinctive to a less than normal degree, for the relevant goods and services.

A part of the public (for example the English-speaking) will perceive the initial letter and the apostrophe, N’, as alluding to the English word ‘and’, and therefore perceive the whole mark as short for ‘and you’. This is because the public is used to expressions like ‘rock n’ roll’ and ‘pick ‘n’ mix’ (meaning rock and roll, pick and mix), with or without apostrophe/s.  

As the marks under comparison are word marks, none of them has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in three letters; ‘N*YO***’ in the earlier mark and ‘N*YO*’ in the contested sign. Thus, the first letter is identical and of the remaining letters and punctuation marks (the ampersand, the full stop sign and the apostrophe), two letters are identical and in the same order.

However, they differ in the letter *I** and ‘& CO.’ (which is weak for part of the relevant public) in the earlier mark, and the apostrophe and the last letter being ‘U’ in the contested sign. The signs also differ in lengths and structure.

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

Aurally, for a majority of the relevant public, the pronunciation of the signs coincides in the sound of the letters ‛N*YO***’ in the earlier mark and ‘N’YO*’ in the contested sign. The pronunciation differs in the sound of the second letter ‘I’ and in the additional element ‘& CO.’ of the earlier sign, which have no counterparts in the contested mark. The differing element ‘& CO.’ is weak for part of the public, as explained above. The pronunciation also differs in the sound of the letter ‘U’ in the contested sign, which has no counterpart in the earlier mark.

However, for a part of the public (such as the Spanish-speaking public) the earlier mark will be referred to as [nio y co] and the contested as [ene iu/iou]. The pronunciation also differs in the sound of the additional element ‘& CO.’ (which is weak for part of the public, as explained above) of the earlier sign, which have no counterpart in the contested mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, or only the contested sign is understood as having a meaning, the signs are not conceptually 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. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence (for a part of the public) of some weak elements in the mark as stated above in section c) of this decision.

5. 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 and services are partly identical, partly similar and partly dissimilar. They are directed at the public at large. The degree of attention is average to high. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a low degree and not conceptually similar. The earlier mark consists of four letters in the distinctive element ‘NIYO’ and the additional, however weak (for part of the public), element ‘& CO.’; altogether six letters and an ampersand. The contested sign consists of four letters; ‘N’YOU’ plus the apostrophe after the first letter ‘N’, as explained above. Even though some letters coincide in the marks, this is not enough for finding a similarity between them to an extent sufficient to give rise to likelihood of confusion. The fact that the verbal element ‘YOU’ will be understood throughout the EU, and its meaning, counteracts the visual and aural similarities arising from the shared three letters. Also, even if the marks are fairly short, they have different structures.

Therefore, the abovementioned differences are enough to outweigh the similarities between the signs originating from the letters they have in common. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably observant and circumspect, might believe that the goods and services, found to be identical or similar, come from the same undertaking or economically linked undertakings.

In view of the above, it is concluded that the differences between the signs are enough to dispel the risk that one sign may be mistaken for the other or perceived as a variant of the other.

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

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 10 780 741 for the figurative mark

This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements such as the shield with a wreath of leaves and a crown, which are not present in the contested trade mark. Moreover, it covers the same scope of the goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.