OPPOSITION No B 2 759 317
Papoutsanis S.A., 71 kilometer, National Road Athens-Lamia, Vathi Avlidos, 34100 Halkida, Greece (opponent), represented by Karatzas & Partners, law firm, 8 Koumpari Street, 10674 Athens, Greece (professional representative)
a g a i n s t
Proionta fysikis diatrofis kai fytotherapeias AEVE, Deligianni 59, 14452 Metamorfosi Attikis, Ellada, Greece (applicant).
On 22/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 759 317 is upheld for all the contested goods, namely:
Class 3: Toiletries.
2. European Union trade mark application No 15 321 491 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 321 491, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 2 809 986. 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 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 2 809 986.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 3: Soaps, bath foam, shampoo with the exclusion of preparations to avoid stretch marks during pregnancy.
The contested goods are the following:
Class 3: Toiletries.
The contested toiletries include as a broader category the opponent’s soaps, bath foam, shampoo with the exclusion of preparations to avoid stretch marks during pregnancy. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 average.
- The signs
|
|
|
|
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the relevant public.
The earlier mark is a figurative mark composed of the dominant (visually most eye-catching) verbal element ‘Olivia’ in stylised, bold, dark green letters (with indistinct black shading on the right side of the letters), where the dots that normally appear on the lower case letters ‘i’ are replaced by droplets: a dark green droplet with black shading on top of the first letter ‘i’ and a white droplet with black shading on top of the second letter ‘i’. Above the verbal element ‘Olivia’ is the much smaller verbal element ‘PAPOUTSANIS’ on a black rectangular background. An abstract figurative element is depicted above the other elements of the earlier mark.
Although the verbal elements are not in Greek letters, the relevant public is accustomed to reading letters of the Latin alphabet and will be able to read the verbal elements. The verbal element ‘PAPOUTSANIS’ will be perceived as a Greek surname. The verbal element ‘Olivia’ may be perceived as a given name, but it is not of Greek origin and is rather uncommon for the part of the public on which the examination focuses.
It can be concluded that all the elements of the earlier mark are of average distinctiveness except for the abstract figurative element which is very small and of a purely decorative nature, so that any degree of distinctiveness can hardly be attributed to it. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Consequently, the additional figurative elements have only a limited impact when assessing the likelihood of confusion between the marks. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements.
The contested sign is also a figurative mark, consisting of the verbal element ‘Oliviotic’ in a slightly stylised green font.
The opponent claims that the suffix ‘-otic’ of the contested mark is a common adjectival suffix of Greek origin and will be associated with a specific action, process or condition. To support this statement, the opponent referred to an article in the online Merriam-Webster Dictionary. While this might be the perception of the English-speaking part of the public, the current examination focuses on the perception of the Greek-speaking part of the public. There is no evidence to show that this suffix would be perceived as having the same meaning in Greek as in English. On the contrary, the article itself states that ‘-otic’ is derived from the Greek ‘ōtikos’, which is orthographically not very similar to ‘-otic’; furthermore, in modern Greek this word (ωτικός, transliterated as ‘otikós’) would be perceived as meaning ‘relating to the ear’ (information extracted from WordReference at http://www.wordreference.com/gren/%CF%89%CF%84%CE%B9%CE%BA%CF%8C%CF%82). Therefore, it is unlikely that the average Greek-speaking consumer would perceive ‘-otic’ as having the meaning suggested by the opponent. In summary, the contested sign will be perceived as a fanciful term with no particular meaning.
Because it is composed of a single indivisible verbal element, the contested sign does not have any element that could be considered more distinctive or dominant (visually more eye-catching) than other elements.
It should also be noted in relation to the comparison of signs that in principle 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 ‘Olivi-’ and differ in the last letter, ‘-a’, of the verbal element ‘Olivia’ of the earlier mark and the last letters, ‘-otic’, of the contested sign. The signs differ also in the other elements of the earlier mark, the verbal element ‘PAPOUTSANIS’ on a black rectangular background and the abstract figurative element; the impact of these elements is, however, limited due to their size and other considerations, as explained above. It is also to be noted that although the fonts in which the verbal element ‘Olivia’ of the earlier mark and the verbal element ‘Oliviotic’ are depicted are different, both verbal elements start with a upper case letter followed by a sequence of lower case letters, which results in an additional similarity between the signs.
Therefore, the signs are visually similar to an average degree.
Aurally, even though the public normally reads from left to right and from top to bottom, it is more likely that in the present case the relevant consumer will refer to the earlier mark by pronouncing its dominant element, ‘Olivia’, first, since this is the element that immediately attracts consumers’ attention due to its size and central position. Only after that might the consumer pronounce the element ‘PAPOUTSANIS’. The verbal elements ‘Olivia’ and ‘Oliviotic’ will be pronounced in four and five syllables respectively; they coincide in their first three syllables, namely ‘O-LI-VI’, and differ in their last syllables, ‘A’ of the earlier mark and ‘O-TIC’ of the contested sign. The pronunciation further differs in the verbal element ‘PAPOUTSANIS’ of the earlier mark, if it is pronounced.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark and the lack of meaning of the contested sign. As one of the signs will not be associated with a particular meaning (the contested sign), 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.
- 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 of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods are identical and the signs are visually and aurally similar. The distinctiveness of the earlier mark is normal and the degree of attention of the relevant consumer is also average.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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.
Any of the two situations described in the previous paragraph cannot safely be excluded bearing in mind the principles and the findings referred to above, in particular regarding the similarity between the signs and the identity between the goods.
Considering all the above, there is a likelihood of confusion on the part of the Greek-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 2 809 986. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed to registration for the remaining, non-contested, goods.
As the earlier right European Union trade mark registration No 2 809 986 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
|
Michele BENEDETTI ALOISI |
Plamen IVANOV |
Judit NÉMETH
|
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.