OPPOSITION No B 2 550 948

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, 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

M.G.A. S.r.l., Via Cerciabella, 3 – zona Industriale, 04012 Cisterna Di Latina (Latina), Italy (applicant), represented by Lexico SRL, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 550 948 is partially upheld, namely for the following contested goods:

Class 3: Soaps; perfumary; Essential oils; Cosmetics; Hair care lotions; Dentifrices.

Class 5: Pharmaceutical preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Disinfectants.

2.        European Union trade mark application No 13 874 342 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 874 342. The opposition is based on European Union trade mark registration No 1 764 174. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 1 764 174.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 06/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 06/05/2010 to 05/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely 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; sun care preparations; dentifrices.  

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 08/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/09/2016 to submit evidence of use of the earlier trade mark. On 26/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Invoices: 43 invoices from the suppliers to the opponent’s sale outlets in Germany. These invoices cover a time period from 2010 until 2015 for many thousand items and cover the following goods sold under the name of Ombia: sun protection cream, after sun milk, foot care lotion, sole lotion, blister protection gel, solar protection lipstick, footcare balsam, deodorant, body lotion, hair conditioner, shower gel and shower creams, shampoos, washing lotion, bath creams or bath salts.
• Affidavit: signed by Ms Katrin Krukenberg on 08/08/2016, Purchase Director at the opponent’s company. The author indicates the following: The mark “Ombia” has been used for many different goods such as soap, deodorants, razors, etc. Sale numbers are given for the years 2010-2015 for the German market. Additionally, the affidavit adds that the mark was advertised through leaflets which were distributed thorugh many German newspapers in the relevant time period.
• Samples of packaging: They show several different packages which relate to many different of the goods mentioned in the invoices and advertisement leaflets. The representation of the sign is following the same pattern and some examples look like this: , ,
• Advertisements: sale leaflets from the years 2010-205 showing that many different Ombia products were offered in Germany, namely the following goods: bath salts, bath products, insect repellent spray, après insect bite gel or fluid, foot care lotion, disposable razors, muscle refreshing balsam, washing lotion, body butter, lotion, ladies razors, care soap, milking grease, washing lotion, care shampoo, facial care cream, lip or eye care cream, sunprotection cream/spray/sticks, after sun milk, after sun gel, tea tree oil, body lotion.

The invoices and leaflets show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (Euro) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

According to Article 15(1) EUTMR, the evidence must show that the European Union trade mark has been genuinely used in the European Union.

Following the Court judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether or not a EUTM has been put to ‘genuine use’ in the European Union.

In territorial terms, and in view of the unitary character of the EUTM, the appropriate approach is to consider not political boundaries but market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in the judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, it is impossible to determine, a priori, and in the abstract, the territorial scope that should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58).

Consequently, use of the earlier EUTM only in Germany is sufficient to prove genuine use in the European Union.

Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In the case at hand, the signs used in the course of trade follow the same pattern, some examples were given in the listing of evidence. It is clear that the additional figurative elements and non-distinctive words such as “bath” or “med” do not alter the distinctive character of the sign; this logic also applies to the little circle in front of the letter “O”. Therefore the sign has been used as registered.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence proves use only for bath salts, bath products, foot care lotion, muscle refreshing balsam, washing lotion, body butter, lotion, ladies razors, care soap, milking grease, washing lotion, care shampoo, facial care cream, lip or eye care cream, sunprotection cream/spray/sticks, after sun milk, after sun gel, tea tree oil, body lotion, sole lotion, blister protection gel, solar protection lipstick, footcare balsam, deodorants, body lotions, hair conditioners, belonging to the following categories in the specification: soaps; cosmetics; essential oils; hair lotions; sun care preparations. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for soaps; cosmetics; essential oils; hair lotions; sun care preparations.

The opponent also used its mark for further goods such as razor blades, insect repellents, etc., which are however not part of the list of goods as protected by the earlier EUTM. The use for these goods can therefore not be taken into account.

The opponent did not prove that it used the mark for the remaining goods in Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, dentifrices. 

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: Soaps; cosmetics; essential oils; hair lotions; sun care preparations.

The contested goods are the following:

Class 3: Soaps; perfumary; Essential oils; Cosmetics; Hair care lotions; Dentifrices.

Class 5: Pharmaceutical preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Dietary supplements and dietetic preparations; Disinfectants.

Class 25: Clothing; Footwear; Hats.

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

Soaps; Essential oils; Hair care lotions, cosmetics are identically contained in both lists of goods (including synonyms).

The contested goods perfumery are highly similar to the opponent’s goods essential oils as they coincide in producer, distribution channels, end consumer and are also in competition to each other.

The contested goods Dentifrices are lowly similar to the opponent’s goods Soaps as they coincide in their purpose. They can also coincide in the distribution channels.

Contested goods in Class 5

The contested goods disinfectants are similar to soaps as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested goods sanitary preparations for medical purposes are lowly similar to the opponent’s soaps as they can coincide in end user and distribution channels.

The contested goods pharmaceutical preparations are similar to the opponent’s cosmetics as they have the same purpose. They can also coincide in producer, end user and distribution channels.

However, the remaining contested goods Dietetic substances adapted for medical use; Dietary supplements and dietetic preparations are dissimilar to the opponent’s goods in Class 3. They are of a different nature, are directed at a different public and do not coincide in producers or end-consumers.  

Contested goods in Class 25

The contested goods in Class 25 are clothing, footwear and headgear, articles which are worn on the body. The earlier goods are soaps, cosmetics, hair lotions, oils and suncare preparations. They neither share the same distribution channels nor end-consumers nor are they in competition with each other or complementary. They are considered to be dissimilar.

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 and at specialised customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention may vary from average to high.

3. The signs

Ombia
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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France and the French-speaking parts of Benelux.

The earlier mark is a word mark. In the case of word marks, it is the word as such which is protected, and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The contested sign is a figurative mark which contains several verbal elements written in standard font. On top of the sign the verbal element “ÔMIA” is represented in thin standard font upper case letters in black. Below this word, the word “LABORATOIRES” is written in much smaller black upper case letters. Below this verbal element the word “eco” is written vertically in green standard font letters. To the right of it, the verbal elements “bio” and “Visage” follow, also written in standard font; the first word in black, the latter in green.

The elements “eco”, “bio”, “visage” and “laboratoires” of the contested sign are directly understandable throughout the relevant territories and all these terms are non-distinctive as they indicate either the ecological origin of the goods (terms eco and bio), the area on which the contested goods should be used on (visage means face in French) and that these goods have been produced by a laboratory (Laboratoires).

Visually, the signs coincide in the string of letters ‘OM*IA’. However, they differ in the additional letter “B” in the third position of the earlier mark which is not represented in the contested sign, in the minimal stylisation of the letters in the contested sign as well as the additional, non-distinctive verbal elements ¨eco¨, “bio”, “visage” and “laboratoires”.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OM*IA’, present identically in both signs. The pronunciation differs in the sound of the letter “B” of the earlier sign, which has no counterpart in the contested mark. The further verbal elements in the contested sign have less importance due to their non-distinctive character.  

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the words “eco”, “bio”, “visage” and “laboratoires” will evoke different concepts, they cannot differentiate the signs conceptually as these elements are non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted in the contested mark by the additional fanciful verbal element, which has no meaning.

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

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The goods were found to be partially identical, partially similar to various degrees and partially dissimilar.

The marks in dispute are visually similar and aurally highly similar due to the high similarity in the verbal element “Ombia/ÔMIA”. On the other hand, the differences between the signs lie in the additional verbal elements “eco”, “bio”, “visage” and “laboratoires” of the contested sign, which are considered to be non-distinctive. Consumers generally tend to focus on the first element of a sign, when being confronted with a trade mark.

Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that such similarities might lead the relevant public to think that the goods found to be identical come from the same or economically-linked undertakings.

In addition, account must be 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly 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 for the goods found to be identical or similar to those of the earlier trade mark. This includes also those goods which were found to be lowly similar because the signs are aurally highly similar and the main differences lie in the additional non-distinctive verbal elements in the contested sign.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Lars HELBERT

Sigrid DICKMANNS

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.