OPPOSITION No B 2 616 228
Funline International, 149 East 36th Street, New York 10016, United States of America (opponent), represented by Marks & Us, Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative)
a g a i n s t
Skyline Handels GmbH, Mariahilfer Strasse 72/1, 1070 Wien, Austria (holder), represented by Franz Galla, Margaretenstrasse 22, 1040 Wien, Austria (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 616 228 is partially upheld, namely for the following contested goods:
Class 3: Perfumery, essential oils, cosmetics, soaps.
Class 5: Pharmaceutical preparations, sanitary products for personal use; hygienic lubricants in powder form.
2. International registration No 1 248 335 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 248 335. The opposition is based on European Union trade mark registration No 8 633 893. 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 the following:
Class 1: Chemicals for use in the manufacture of aphrodisiacs; chemical preparations for stimulating sexual activity; these goods not for medical or pharmaceutical use.
Class 3: Soaps; perfumery; cosmetics.
The contested goods are the following:
Class 3: Perfumery, essential oils, cosmetics, soaps.
Class 4: Lubricants.
Class 5: Pharmaceutical preparations, sanitary products for personal use; hygienic lubricants in powder form.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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. Nevertheless, once the wording of the goods and/or services to be considered has been identified, their meaning must be determined. In cases of doubt about the exact meaning of the terms used in the list of goods and/or services, these terms have to be interpreted both in the light of the Nice Classification and from a commercial perspective.
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
Perfumery, cosmetics, soaps are identically included in both lists.
The contested essential oils are highly similar to the opponent’s perfumery. They have the same nature, purpose and distribution channels. Furthermore, these goods target the same relevant public and have the same producers.
Contested goods in Class 4
As mentioned above, the exact meaning of the terms used in the list of goods and/or services has to be interpreted in the light of the Nice Classification. Therefore, the meaning of the contested lubricants in Class 4 has to be interpreted in the context of this class. Lubricants in Class 4 are for industrial purposes; if they were for cosmetic purposes they would be in Class 3 and if they were for medical or sexual purposes they would be in Class 5. Considering that the contested lubricants are classified in Class 4, they are clearly for industrial use and, therefore, these goods cannot be intended for sexual purposes as argued by the opponent. It follows that they are not similar to any of the opponent’s goods in Classes 1 or 3, which are mainly chemicals and chemical preparations for use in the manufacture of aphrodisiacs and for stimulating sexual activity, and products for cosmetic purposes. Furthermore, the goods have different manufacturers and distribution channels, and they are not in competition or complementary. Therefore, the contested lubricants are dissimilar to all of the opponent’s goods.
Contested goods in Class 5
The contested pharmaceutical preparations are similar to the opponent’s cosmetics in Class 3. The opponent’s goods include preparations used to enhance or protect the appearance or odour of the human body. Pharmaceutical preparations, on the other hand, include products such as skin- or hair-care preparations with medical properties. They may, therefore, have the same purpose as the opponent’s cosmetics. Moreover, they have the same distribution channels, since they can be found in pharmacies and other specialised shops. They target the same public and are often manufactured by the same companies.
The contested hygienic lubricants in powder form in Class 5 are dry or solid lubricants for medical use. The most common dry lubricant is talcum powder. The contested goods show relevant connections with the opponent’s cosmetics in Class 3, which are broadly defined and can include talcum powders for cosmetic use or talc toiletries. The goods may have the same purpose. Moreover, they have the same distribution channels, since they can be found in pharmacies, drugstores and other specialised shops. They target the same public and are often manufactured by the same companies. Therefore, they are similar.
The contested sanitary products for personal use are mainly products for incontinence and products for feminine hygiene. On the other hand, the opponent’s soaps in Class 3 can also be used for hygiene purposes. These goods have the same distribution channels and relevant public. They are therefore similar to a low degree.
- 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 to varying degrees are directed at the public at large. The degree of attention is likely to vary from average (for goods in Class 3, for instance) to higher than average (for pharmaceuticals in Class 5, whether or not issued on prescription).
- The signs
Earlier trade mark
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.
The common element ‘RUSH’ is meaningful in certain territories, namely in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier sign is a word mark consisting of the word ‘RUSH’ in upper case letters. The relevant English-speaking public will understand this word as to ‘move with urgent haste’ (information extracted from Oxford Dictionaries on 21/02/2017 at https://en.oxforddictionaries.com/definition/rush). The word ‘RUSH’ is considered distinctive, since it is neither descriptive nor allusive of the relevant goods to an extent that would materially affect its degree of distinctiveness.
The contested sign is a complex figurative mark in colour depicting several word and figurative elements placed against a circular background divided horizontally into two semi-circles, the upper part of which is in yellow and the lower part of which is in red. The yellow semi-circle features the word ‘POWDER’ written in yellow against a red brushstroke. The red semi-circle features, in its upper part, the element ‘RUSHLUBE’. The word ‘RUSH’ is written in yellow and underlined by a thick yellow line, while the word ‘LUBE’ is written in red and placed inside a yellow rectangular figure. The lower part of the red semi-circle depicts the expression ‘JUST ADD WATER’ written on a curve and in smaller script, also in yellow.
The element ‘RUSHLUBE’ has no meaning as a whole in English. Nevertheless, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, RESPICUR, EU:T:2007:46, § 57. Therefore, the relevant English-speaking public will naturally dissect the word ‘RUSHLUBE’ into two elements ‘RUSH’ and ‘LUBE’.
The considerations stated above regarding the meaning and distinctive character of ’RUSH’ of the earlier mark also apply to this word in the contested sign.
‘LUBE’ of the contested sign may be associated with lubricants (‘a substance put on the surfaces or parts of something to make the parts move smoothly’), as ‘LUBE’ is the informal form of the word ‘lubricant’ (information extracted from Collins Dictionary on 02/03/2017 at www.collinsdictionary.com/dictionary/english/lube). Lubricants may be present in very different kinds of products with different uses. Furthermore, other products such as cream lotions or essential oils may have lubricating properties. Therefore, it is considered that this element cannot function as a badge of origin in relation to those relevant goods which are lubricants, could contain or could be used as lubricants, such as for example essential oils or cosmetics in Class 3 and hygienic lubricants in powder form in Class 5.
‘POWDER’ will be understood as meaning, inter alia, ‘many tiny particles of a solid substance’, (information extracted from Collins Dictionary on 02/03/2017 at https://www.collinsdictionary.com/dictionary/english/powder). When consideration is given to the relevant goods, it is concluded that this element has no ability to indicate commercial origin for some of them, since it merely informs consumers that the goods are or may be in powder form (e.g. cosmetics in Class 3 or pharmaceutical preparations and hygienic lubricants in powder form in Class 5).
Bearing in mind that some of the relevant goods in Classes 3 and 5 may be products that could be sold in powder form, the expression ‘JUST ADD WATER’ will be understood as conveying information on the method to prepare the products for their final use or consumption. Although the element ‘POWDER’ is not written together with ‘JUST ADD WATER’, it is likely to be connected and be perceived by the public as describing the presentation of the products. As the element ‘POWDER’ will be understood as describing the form in which the products are sold and ‘JUST ADD WATER’ as an informative message on how they should be prepared, these verbal elements will have no distinctiveness for these goods.
Finally, the coloured circular background and the remaining figurative elements included therein (the brushstroke, the yellow line and the rectangular shape) are merely decorative elements that will not hold the attention of consumers, who will instead focus on the verbal element(s) rather than the figurative ones.
To conclude, it is the element ‘RUSH’ that will be attributed most trade mark significance in the contested sign. This is not only because, in principle, the verbal component of a sign usually has a stronger impact on consumers than its figurative components, but also because ‘RUSH’ is the most distinctive and almost central verbal element of the mark and the remaining verbal and figurative elements play a limited role (if any) for (some of) the relevant goods, as explained above.
The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the earlier mark is completely included in the contested sign. The signs coincide in the word element ‘RUSH’, which is reproduced in a fairly central position in the contested sign. On the other hand, the signs differ in all the remaining verbal and figurative elements of the contested sign, as described in detail above. Although the only element in common is the word ‘RUSH’ and the contested sign is a complex figurative mark, bearing in mind the weight attributed to the differing elements in relation to the relevant goods (as detailed above) it is considered that the overall degree of visual similarity of the marks is between average and slightly below average.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RUSH’, present identically in both signs. The pronunciation differs in the sound of the letters ‘LUBE’ and the letters forming the remaining verbal components of the contested mark, ‘POWDER’ and ‘JUST ADD WATER’, which have no counterparts in the earlier mark. For the same reasons as those outlined above, the overall degree of aural similarity is also found to be between average and slightly below average.
Conceptually, there is a link between the marks, as the relevant consumers will grasp the meaning of the coinciding word ‘RUSH’ and, to that extent, the degree of conceptual similarity is average.
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 in relation to any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
Account should also 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).
The contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods.
The earlier mark has an average degree of distinctiveness and the signs are visually, aurally and conceptually similar overall due to the word ‘RUSH’, present identically in both marks. The differences between the marks lie in the additional verbal and figurative elements of the contested sign. However, as explained in detail in section c) above, these elements are not sufficient to significantly influence the overall impression of the contested sign to the extent that a likelihood of confusion on the part of the public could be excluded.
Furthermore, likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related undertakings. Indeed, it is common practice, on the relevant market, for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line or to endow their trade mark with a new, fashionable image.
In view of the foregoing, it is likely that the relevant consumers (including those with a higher than average degree of attention), when exposed to the use of both signs in relation to identical or similar goods, even those that are similar to a low degree, and having an imperfect recollection of the earlier mark, might think that the goods on which the contested sign appears are produced by the same undertaking, or an economically linked undertaking, as those sold under the earlier mark. The consumer might also perceive the mark applied for as a sub-brand of the earlier mark designating a new line of goods.
The holder argues that there is no likelihood of confusion because it is located in Vienna, whereas the opponent is located in New York. This argument cannot be upheld, as the place where the opponent or holder is located is irrelevant. What is relevant is where the earlier rights on which the opposition is based are protected, and the territory of protection of the earlier mark in this case is the EU.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in relation to all of the goods found to be identical or similar to varying degrees. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 sign.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark.
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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, as regards the dissimilar goods, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the non-English-speaking part of the public, as the outcome of the present decision would still be the same.
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 shall 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
Anunciata SEVA MICO
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.