OPPOSITION No B 2 665 480

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Grupo Viveplus S.L., Av. M-40 nº 19 – Ofi. 11 P.G. Ventorro del Cano, 28925 Madrid

Spain (applicant), represented by Kapler, Calle Orense 10 1º Of. 12, 28020 Madrid, Spain (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 480 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 695 597, namely against some of the goods in Class 3. The opposition is based on European Union trade mark registration No 984 245. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The earlier mark is subject to proof of use requirement however for reasons of procedural economy that will become apparent below, there is no need to assess the evidence of use submitted by the opponent.

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

Further to a partial cancellation, the goods on which the opposition is based are the following:

Class 3:         Preparations for treating, dyeing, colouring, bleaching and styling hair.

The contested goods are the following:

Class 3:        Cosmetics; hair lotions.

The contested cosmetics; hair lotions include, as broader categories, or overlap with, the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair. Since the Opposition Division cannot dissect ex officio the broad or overlapping categories of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

LIVE
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 earlier mark is the word mark ‘LIVE’, which is an English word and will be perceived by the English-speaking part of the public as meaning ‘to be alive; to reside or dwell; to continue or last; to pass or spend one's life’ (information extracted from Collins Dictionary on 30/06/2017 at www.collinsdictionary.com/dictionary/english/live). For the rest of the public, it has no meaning.

Because the word ‘LIVE’ lacks meaning or its meaning has no connection with the relevant goods, it has a normal degree of distinctive character.

The contested sign is a figurative mark ‘Vive+’. Both the letters and the mathematical symbol ‘+’ are highly stylised. The letters are in various shades of green, except for the dot over the letter ‘i’ which is in purple. The sign ‘+’ is also in purple. The word ‘vive’ derives from Latin (i.e. the verb ‘vivere’) and in Ancient times meant ‘to live’ (information extracted from Latin Dictionary on 30/06/2017 at www.latin-dictionary.net/search/latin/vivere). Nowadays it is used in various forms in the Neo-Latin languages, for example in French the word ‘vive’ stands for wishes of long life, admiration or approbation (information extracted from Larousse Dictionary on 30/06/2017 at www.larousse.fr/dictionnaires/francais/vive_/82306?q=vive#81336). According to Collins Dictionary the word ‘vive’ comes from French and means ‘long live; up with (a specified person or thing)’ (information extracted from Collins Dictionary on 30/06/2017 at www.collinsdictionary.com/dictionary/english/vive). However, as ‘vive’ comes from a foreign language, for some part of the English-speaking public it will be meaningless.

Likewise, as the meaning of the word ‘vive’ has no connection with the relevant goods or it lacks meaning, it is distinctive. By contrast the mathematical symbol ‘+’ of the contested sign implies a concept of increase or added value, so it enjoys only a weak distinctive character.

Neither of the signs has elements that could be considered clearly more dominant than other elements.

The Opposition Division is of the opinion that there are four likely scenarios with regard to how the marks under comparison can be associated by the relevant public. First, a part of the public will understand both verbal elements, that is, ‘live’ and ‘vive’. Second, a part of the public will understand only the word ‘live’. Third, a part of the public will understand only the word ‘vive’. Fourth, a part of the public will understand none of the words. All these potential scenarios have to be taken into account.

Visually, the signs coincide in their second, third and fourth letters, that is, ‘ive’. However, they differ in their first letters, namely ‘L’ (earlier mark) and ‘V’ (contested sign). Furthermore, the signs differ in the sign ‘+’ and fanciful stylisation of the contested sign. Bearing in mind that the word elements which compose the signs are quite short, consisting only of four letters, and their first letters are different, the signs are visually similar to a low degree. It is usually the beginning of a sign that catches consumers’ attention.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ive’, present identically in both signs. The pronunciation differs in the sound of their first letters, that is, ‘L’ (earlier mark) and ‘V’ (contested sign). Furthermore, the signs differ in the mathematical sign ‘+’ that will be pronounced in a different manner depending on the language which is used (e.g. ‘más’ in Spanish or ‘plus’ in French or Polish). Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. When both signs will be understood by the public as explained above, that is, ‘to be alive’ (earlier mark) and ‘long live’ (contested sign), the meanings are different and, consequently, the signs are not similar. The mathematical symbol ‘+’ will not influence the conceptual comparison of the signs. Therefore, the signs are not similar for those who do not understand one of these words ‘LIVE’ or ‘VIVE’, whereas the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public for which or none of these words has a meaning.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical, whereas the conflicting marks have only a low degree of visual and aural similarity. There are no conceptual similarities between the signs. The relevant public, as explained above, will have an average degree of attention. In addition, the distinctiveness of the earlier mark is average.

The signs in dispute both have four letters; both are, consequently, rather short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

Therefore, the Opposition Division is of the opinion that the differences resulting from the different letters at the beginning of the signs under comparison are clearly perceptible and outweigh the similarities in the present case. These differences are, therefore, sufficient to exclude any likelihood of confusion between the marks. This is the case in particular as regards the contested figurative sign, which contains additional figurative elements, that is, the symbol ‘+’ and stylisation which is not banal.

Considering all of the above, even taking into account that the goods are identical, there is no likelihood of confusion on the part of the relevant public.

Therefore, the opposition must be rejected under Article 8(1)(b) EUTMR.

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

Jessica LEWIS

Michal KRUK

Ana MUÑIZ RODRÍGUEZ

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.