OPPOSITION No B 2 642 034

Astral Health & Beauty, Inc., 3715 Northside Parkway, Suite 200, Atlanta, Georgia 30327, United States of America (opponent), represented by Freischem & Partner Patentanwälte mbB, Salierring 47 – 53, 50677 Köln, Germany (professional representative)

a g a i n s t

Tarsago Media Group SP. Z O.O., Domaniewska 41, 02-672 Warszawa, Poland (applicant) represented by Drzewiecki, Tomaszek & Wspólnicy, Belvedere Plaza, Ul. Belwederska 23, 00-761 Warszawa, Poland (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 034 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 of European Union trade mark application No 14 659 081. The opposition is based on European Union trade mark application No 7 513 906. 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 03:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; facial and body lotions; cosmetic and toiletry preparations, namely, facial cleansers, skin cleansers, body cremes, bath gel, body soaps and scrubs, body sprays, and cosmetics namely, foundation, blushes, lipsticks, eye shadows, eyeliners, mascara, and eye pencils.

The contested goods are the following:

Class 03:        Soap; Perfumery and fragrances; Essential oils; Cosmetics; Hair care lotions; Aromatic oils; Colorants for toilet purposes; Cosmetic dyes; Ethereal essences; Hair dye; Incense; Smoothing stones; Cosmetics for animals; Cosmetic preparations for slimming purposes; Make-up; Cleaning chalk; Whiting; Cosmetic creams; Extracts of flowers; Nail polish; Varnish-removing preparations; Tripoli stone for polishing; Abrasive preparations; Nail art stickers; Fumigation preparations [perfumes]; Oils for cleaning purposes; Oils for cosmetic purposes; Oils for perfumes and scents; Nail care preparations; Perfumery; Perfume; Polishing preparations; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Bath preparations; False eyelashes; Adhesives for affixing false eyelashes; Sachets for perfuming linen; Cloths impregnated with a detergent for cleaning; Bath salts, not for medical purposes; Bleaching salts; Air fragrancing preparations; Greases for cosmetic purposes; Cotton wool for cosmetic purposes; Toilet water; Hydrogen peroxide for cosmetic purposes; Bleaching preparations [decolorants] for cosmetic purposes; Massage gels other than for medical purposes; Cosmetic kits; Lotions for cosmetic purposes; Deodorants for human beings or for animals; Extracts of flowers [perfumes]; Essential oils and aromatic extracts; Color-removing preparations; Incense spray; Incense cones; Fumigating incenses (Kunko); Body masks; Facial masks; Skin masks [cosmetics]; Gel eye masks; Potpourris [fragrances]; Breath fresheners; Degreasers other than for use in manufacturing processes; Body art stickers; Cosmetic preparations for eyelashes; Windshield cleaning liquids; Glass cleaning preparations; Floor wax removers [scouring preparations]; Cleaning fluids; Cleaning preparations; Non-medicated toiletries; Cosmetic preparations for the care of mouth and teeth; Cotton balls for cosmetic purposes; Scented linen water; Oral hygiene preparations; Skin fresheners; Scented fabric refresher sprays.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large.

Given that the goods at issue are purchased fairly frequently and are not particularly expensive, the degree of attention is considered to be average. 

3. The signs

pürminerals	SAMPURE MINERALS
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘MINERALS’ is understood in most of the EU and therefore is non-distinctive for this part of the public for the relevant goods which may have a mineral content.

‘PÜR’ may be perceived by part of the public, for example the English-speaking part of the public, as allusive of ‘PURE’. ‘SAMPURE’ has no meaning as a whole but part of the public may recognise ‘PURE’. ‘PURE’ together with ‘MINERALS’ is non-distinctive for that part of the public in relation to the goods in question as it means ‘simply minerals’ or ‘nothing more than minerals’.

However, for another part of the public, such as the Greek-speaking part, ‘MINERALS’ has no meaning and is distinctive. ‘PÜR’ is also meaningless. ‘PURE’ as such means ‘purrée’ in Greek, has no relation to the goods at issue. In any case it will not be identified by the Greek-speaking part of the public as this word is integrated in the sign within a meaningless word.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘MINERALS’, ‘PÜR’ and ‘PURE’ have no meaning in relation to the goods at issue and have a normal degree of distinctiveness.

The earlier mark is the word mark ‘pürminerals’ which has no meaning and is therefore distinctive in relation to the goods in question.

The contested sign is the word mark ‘SAMPURE MINERALS’. Neither of the words that compose the mark has a meaning and so both are distinctive in relation to the goods in question. The contested sign has no elements that could be considered clearly more distinctive than other elements.

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 and aurally, the signs coincide in the distinctive element ‘MINERALS’ which appears at the end of both signs as an independent word element in the contested sign and as part of the single word element of the earlier mark. The signs coincide also in the letters ‘PUR’ at the start of the earlier mark although with ‘Ü’ and as part of the first verbal element of the contested sign. However, the signs have different beginnings and a different length and structure. The earlier sign has a single verbal element and the contested sign has two verbal elements, the first one being the distinctive ‘SAMPURE’.

Therefore, the signs are visually and aurally similar to a below average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 

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.

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case, the goods are assumed to be identical. The signs are visually and aurally similar to a below average degree, the conceptual aspect not influencing the similarity of signs. The level of attention of the relevant consumer is average and the distinctive character of the earlier mark is normal.

Although the signs coincide in the element ‘MINERALS’ at the end of the signs, this coincidence has less impact because ‘MINERALS’, which is meaningless for the relevant public, is part of the single verbal element of the earlier sign, which is equally meaningless. In this regard, the Opposition Division notes that in its observations submitted on 31/05/2016 the opponent itself argues that ‘the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details’. It follows that the consumer will not dissect the word element. The coincidence between ‘pür’ of the earlier mark and ‘PUR’ of the contested sign is also camouflaged and not so apparent as these elements are integrated into meaningless words. Consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). In this case neither of the signs contains any meaningful element in relation to the goods so the consumer will not artificially dissect the word elements of the marks but rather see them in their entirety.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). The visual differences between the signs are important in this respect.

The beginning of the signs, where the consumer’s attention will focus, are different as is the structure of the signs, the earlier mark containing a single verbal element and the contested sign containing two. The similarities between the signs concern elements which are secondary within the overall impression given by the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public for which ‘PÜR’, ‘PURE’ and ‘MINERALS’ have no meaning.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘PÜR/PURE MINERALS’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar.

Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Konstantinos MITROU

Lynn BURTCHAELL

Martin EBERL

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.