OPPOSITION No B 2 540 220

Dm-Drogerie Markt Gmbh + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft Mbb, Bismarckstr. 16, 76133 Karlsruhe, Germany (professional representative)

a g a i n s t

Marguerite Bergerioux Sizemova, 1 impasse Vuard Marchat, 74200 Thonon-les-Bains, France (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 540 220 is partially upheld, namely for the following contested goods:

Class 3:        Toiletries; essential oils and aromatic extracts.

Class 5:        Hygienic preparations and articles; medical and veterinary preparations and articles.

2.        European Union trade mark application No 13 904 925 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 904 925 namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 7 363 609. 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 3:        Cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, massage oils for cosmetic purposes, cosmetics; washing and shower gels, creams, soaps and oils; face, skin and body creams; cleaning preparations for cosmetic purposes; bath salts, not for medical purposes; deodorants for personal use (perfumery), antiperspirants (antiperspirant toiletries); beauty masks, lipstick; make-up; exfoliants; depilatory preparations; shampoos, hair care preparations, hair lotions, hair dyes, hair sprays, aftershave, toilet water, shaving preparations, pre-shave preparations, soap for shaving, aftershaves, shaving foams, shaving gels, shaving creams, shaving sticks; dentifrices, mouth washes, not for medical purposes; cosmetic kits; eyebrow cosmetics; cosmetic preparations for slimming purposes; artificial nails; nail polish; nail care products; lacquer-removing preparations; false eyelashes; tissues impregnated with cosmetic lotions; cotton wool for cosmetic purposes, cotton sticks for cosmetic purposes; all the aforesaid goods other than skincare creams and footcare balms.

The contested goods are the following:

Class 3:        Toiletries; essential oils and aromatic extracts.

Class 5:        Dietary supplements and dietetic preparations; hygienic preparations and articles; medical and veterinary preparations and articles.

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 toiletries include, as a broader category the opponent’s shampoos. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Essential oils are identically contained in both lists of goods.

The contested aromatic extracts overlap with the opponent’s essential oils to the extent that the former can be oils and the latter can be aromatic. Therefore, they are identical.

Contested goods in Class 5

The contested veterinary preparations and articles are similar to the opponent´s dentifrices since as they may have the same purpose and can coincide in producer, end user and distribution channels

The contested hygienic preparations and articles are similar to the opponent’s cleaning preparations in Class 3, since they have the same intended purpose. They are sold to the same end consumer through the same distribution channels and can be expected to come from the same manufacturers.

The contested medical preparations and articles are similar to a low degree to the opponent’s soaps since they are directed to the same end consumer and can coincide in distribution channels.

The contested dietary supplements and dietetic preparations have a different nature, purpose and method of use from the opponent’s goods in Class 3. They have different manufacturers and distribution channels. Therefore, the goods are 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 in Class 3 found to be identical are directed at the public at large whose degree of attention is considered to be average for such goods whereas the goods in Class 5 found to be similar to various degrees are not only directed at the public at large but also at business customers with specific professional knowledge or expertise. For the latter goods, the degree of attention will vary from above average to high, depending on the specialised nature of the goods. 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).

3. The signs

Savona	SAVOIA PHARMA
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.

The earlier mark, ‘Savona’, will be understood by part of the relevant public as a reference to a city in the northern Italian region of Liguria. The word ‘SAVOIA’ in the contested sign will also be understood by part of the public as the historical land of Savoy which is now shared between France, Italy, and Switzerland. However, for part of the public, for instance the English-speaking part, these words have no meaning. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs in the English-speaking parts of the relevant territory.

The second word of the contested sign ‘PHARMA’ will be perceived by the public under analysis as an abbreviation of pharmaceuticals or as indicating anything related to the pharmaceutical industry. Therefore, this element is of devoid of distinctiveness in connection with the goods in Class 5 as well as the goods in Class 3 as it is quite common, nowadays, for the pharmaceutical industry to produce goods in this class as well. Consequently, the public will not pay as much attention to this element as to the more distinctive element ‘SAVOIA’. Consequently, the impact of ‘PHARMA’ is limited when assessing the overall impression between the marks.

It is to be noted that 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 earlier mark and the first word of the contested sign coincide in their first four letters ‘SAVO’ and in their final letters ‘A’. However, they differ in the letter ‘N’ in the earlier right and ‘I’ in the contested sign and the signs differ further in the ‘PHARMA’ of the contested sign which is not distinctive in relation to the goods covered by the mark.

Therefore, the signs are similar to an average degree.

Aurally, the earlier mark and the first word of the contested sign coincide in the sounds of the letters ‛S-A-V-O-*-A’, present identically in both signs but differ in the sound of the letters ‛N’ of the earlier sign and ‛I’ of the contested mark. It is unlikely that the element 'PHARMA' of the contested sign should be pronounced at all by the public under analysis since it will consider this element as superfluous because of the nature of the goods covered by the contested sign (03/06/2015, T-544/12, PENSA PHARMA, EU:T:2015:355, § 107).

Therefore, the signs are highly similar.

Conceptually, although the word 'PHARMA' conveys a concept, it is not sufficient to have an impact on the conceptual comparison of the signs at issue as this element is non-distinctive and cannot indicate the commercial origin of the contested sign. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning and therefore, 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Nevertheless, 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).

In the present case, the goods were found partly identical or similar to different degrees and partly dissimilar. The degree of attention varies from average to high. The earlier right, ‘Savona’, as a whole is deemed distinctive for the English-speaking part of the relevant territory. Contrary to the applicant´s argument, the fact that the signs have identical beginnings is an important factor in the present case given that the letters/sounds that the signs have in common belong to the more distinctive element of the contested sign and that the element 'PHARMA' of this sign is not distinctive and perceived as superfluous, as indicated above. Therefore, the differences between the signs are not sufficient to offset their similarities even for those goods found to be similar to a low degree and even for the part of the public which displays a higher level of attention.

The applicant refers to previous decisions of the Office to support its arguments regarding the distinctiveness of the opponent´s sign. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the applicant are not relevant to the present proceedings. This is because, other factors play a decisive role on the analysis, for instance, the distinctiveness of the earlier sign, the length of the signs involved, or the different location of the coinciding letters between the signs in dispute. Such circumstances are not present in this case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various 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) 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

Steve HAUSER

Martina GALLE

Pedro JURADO MONTEJANO

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.