OPPOSITION No B 2 746 876

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, 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

Tyrrell Promotions Ltd, 2 Penhelyg Terrace, Aberdovey Gwynedd LL35 0PS, United Kingdom (applicant), represented by Wildbore & Gibbons Llp, Sycamore House, 5 Sycamore Street, London  EC1Y 0SG, United Kingdom (professional representative).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 876 is upheld for all the contested goods, namely

Class 3: Perfumes, essential oils and cosmetics.

        

2.        European Union trade mark application No 14 563 001 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 14 563 001 ‘TYRRELL’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 13 231 832 ‘Kyrell’. 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: Cosmetics, namely hair care preparations and haircare products.

        

The contested goods are the following:

Class 3: Perfumes, essential oils and cosmetics.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’ used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

The contested cosmetics include as a broader category the opponent’s cosmetics, namely hair care preparations and haircare products. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested essential oils are used for personal care and so are the opponent’s hair care preparations and haircare products. They all are used to enhance or protect the appearance or odour of the human body. The goods have the same distribution channels and are addressed to the same relevant public. They are similar.

The contested perfumes and the opponent’s hair care preparations and haircare products are similar to a low degree since they have the same distribution channels and are addressed to the same relevant public.

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 to different degres are directed at the public at large. The degree of attention is average.

3. The signs

Kyrell	TYRRELL
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 trade marks are not meaningful in certain territories, in particular in countries where English is not known. The fact, as argued by the opponent, that the marks would be perceived as names or surnames by part of the public does not suffice as another part of the public would not perceive them as such and likelihood of confusion for part of the public may be sufficient. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public, namely the part of the public that would not perceive the conflicting trade marks as referring to existing names or surnames.

Since both trade marks are word marks, it is the word itself that is protected and not the way it is presented. Therefore, case-lettering has no impact on the visual comparison.

Visually and aurally, the signs coincide in letters ‘YR(*)ELL’. However, they differ in their first letters respectively ‘K’ and ‘T and in the doubled ‘R’ in the contested sign. Therefore, the signs are similar to an 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

The goods are identical and similar to different degrees, the trade marks are visually and aurally similar to an average degree as they share almost the same sequence of almost all the letters ‘YR(*)ELL’. The degree of attention of the public is average.

The most relevant difference is the first letters respectively K and T. For the rest, the mark are almost identical as the double R in ‘TYRRELL’ goes almost unnoticed both visually and aurally compared to the single R in the earlier ‘Kyrell’. The differences are found not enough to counter balance similarities is the sequence of letters, both marks being meaningless for part of the public.

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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-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 13 231 832. It follows that the contested trade mark must be rejected for all the contested goods.

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

Keeva DOHERTY

Jessica LEWIS

Ana MUÑIZ RODRIGUEZ

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.