OPPOSITION No B 2 693 227
Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by rwzh Rechtsanwälte, Barthstrasse 4 80339 München, Germany (professional representative)
a g a i n s t
Agroecopark, Calle Cerro del Espino 4 Bº B Dcha, 28221 Majadahonda, Spain (applicant), represented by Carlos Serrano Rodríguez, Calle Fernández de la Hoz, 78 4ª, 28003 Madrid, Spain (professional representative).
On 28/03/2017, the Opposition Division takes the following
1. Opposition No B 2 693 227 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 068 646. The opposition is based on, inter alia, European Union trade mark registration No 4 098 679. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 098 679.
- The goods and services
The goods on which the opposition is based are the following:
Class 3: Perfumery goods; essential oils; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lipstick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms; deodorants; products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.
The contested goods and services are the following:
Class 3: Essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; animal grooming preparations.
Class 16: Adhesives for stationery or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; printed matter; decoration and art materials and media; paper and cardboard; stationery and educational supplies; disposable paper products.
Class 35: Wholesale services in relation to cleaning articles; wholesale services in relation to toiletries; wholesale services in relation to animal grooming preparations; wholesale services in relation to fragrancing preparations; wholesale services in relation to cleaning preparations; wholesale services in relation to hygienic implements for humans; wholesale services in relation to hygienic implements for animals; wholesale services in relation to beauty implements for humans; wholesale services in relation to beauty implements for animals; retail services in relation to cleaning preparations; retail services in relation to toiletries; retail services in relation to animal grooming preparations; retail services in relation to hygienic implements for humans; retail services in relation to beauty implements for humans; retail services in relation to beauty implements for animals; retail services in relation to hygienic implements for animals; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; online retail store services relating to cosmetic and beauty products.
Some of the contested goods and services 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 and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise (pharmaceutical representatives etc.). The degree of attention may vary from average to high, depending on the nature and type of services concerned.
- 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).
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 ‘VERA’ of the contested mark may be associated by the relevant public with the aloe vera plant, which can be an ingredient in the relevant goods in Class 3, and therefore its distinctiveness is limited. Moreover, the element ‘GREEN’ of the contested mark has several meanings in English. In relation to the goods assumed to be identical, the relevant public will understand it as meaning ‘not harmful to the environment’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/green). However, it is meaningless for the non-English-speaking part of the public. In relation to the goods in Classes 3 and 16, the English-speaking part of the public may perceive this element as indicating that the goods are eco-friendly, which would render it weak.
As regards the element ‘LAVERA’ of the earlier mark, it is highly doubtful whether the allusion to the aloe vera plant will be perceived in it. There is nothing to suggest that the public would split it into the two parts, ‘LA’ and ‘VERA’. In general, the public does not tend to dissect signs but considers them as a whole. Therefore, this element will not be understood by the relevant public.
The Opposition Division will therefore examine the opposition in relation to the part of the public for which ‘GREEN’ has a meaning and is weak, namely the English-speaking part of the public. This represents the best-case scenario for the opponent.
Both marks are word marks: the earlier mark is composed of the word ‘LAVERA’, and the contested mark is made up of the words ‘VERA’ and ‘GREEN’. Therefore, neither of the marks has any element that is more dominant than the others.
As regards the distinctiveness of the contested mark, it is composed of two weak elements, although the combination of these elements renders the mark distinctive to an average degree.
Visually, the signs coincide in the letters ‘VERA’. However, they differ in the first two letters, ‘LA’, of the earlier mark and in the last letters, ‘GREEN’, of the contested sign.
The first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Given that the similarities between the signs lie in different parts of the marks, their impact is reduced.
Moreover, the earlier mark consists of one word, while the contested mark consists of two words.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘VE-RA’, present identically in both signs. The signs differ in the pronunciation of the earlier mark’s first letters, ‘LA’, and in the pronunciation of the letters ‘GREEN’ in the contested mark. As mentioned above, consumers tend to focus on the first elements of signs, which are totally different in the present case.
Therefore, the signs are aurally similar to a low degree.
Conceptually, although the public in the relevant territory will perceive the meanings of the different elements of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to a certain extent.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
- Global assessment, other arguments and conclusion
In the present case, the conflicting goods and services have been assumed to be identical to the opponent’s goods and the degree of attention paid by the relevant public varies from average to high. Moreover, the elements ‘VERA’ and ‘GREEN’ are weak in relation to the contested goods in Class 3. The marks are visually and aurally similar to a low degree. Conceptually, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
It must be recalled that, according to well-established case-law, the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The average consumer showing an average degree of attention is not likely to make a close inspection of the composition of signs. Assuming the contrary does not reflect the market reality or the cognitive process of perception and does not comport with the principles developed by the Courts regarding the objective evaluation of similarity between signs from the perspective of the average consumer. Therefore, the different beginnings and the different compositions of the signs enable the marks to be clearly distinguished. Furthermore, the coinciding element is not an independent element in the earlier mark and therefore would not be perceived separately. Such a dissection would be artificial and indeed might occur only in the case of a side-by-side examination of the marks, which does not reflect the market reality.
Furthermore, taking into account the lack of conceptual similarity, the Opposition Division considers that the differences between the signs are sufficient to exclude the possibility that the public might believe that the goods and services in question come from the same undertaking or economically linked undertakings.
Considering all the above, there is no likelihood of confusion on the part of the English-speaking part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the rest of the public, for which the element ‘GREEN’ is distinctive. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
The opponent has also based its opposition on the following earlier trade marks:
- European Union trade mark registration No 1 158 752 for the figurative mark , registered for goods and services in Classes 3, 35 and 41.
- European Union trade mark registration No 4 339 727 for the word mark ‘LAVERA NEUTRAL’, registered for goods in Classes 3 and 16.
These other earlier rights invoked by the opponent are less similar to the contested mark. This is because the first trade mark contains further figurative elements, such as the depiction of a woman, and additional words, namely the words ‘NATURKOSMETIC’ and ‘SHOWFLOOR’, that are not present in the contested trade mark. The second mark contains the additional word ‘NEUTRAL’, which, in relation to the contested goods, has inherent distinctiveness. Therefore, the outcome cannot be different; no likelihood of confusion exists with respect to those other earlier marks.
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
Cristina CRESPO MOLTO
Loreto URRACA LUQUE
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.