Aether | Decision 2723537
Date Published: Sep 28, 2017
OPPOSITION No B 2 723 537
Biorganic Pharma, S.L., Carrer Jaume Piquet, N° 22, 08017 Barcelona, Spain (opponent), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Aether Parfums Sarl and Nicolas Chabot, 16 rue Vieille du Temple, 75004 Paris, France, (applicants).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 537 is upheld for all the contested goods.
2. European Union trade mark application No 15 309 776 is rejected in its entirety.
3. The applicants bear the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 309 776. The opposition is based on, inter alia, Spanish trade mark registration No 3 085 969. 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 Spanish trade mark registration No 3 085 969.
- The goods
The goods on which the opposition is based are the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions; perfumery products, shampoos, colognes, deodorants; dentifrices.
Class 5: Pharmaceutical products; medicinal teas; medicinal herbs; medicinal herbal teas; laxatives; mineral food supplements; sanitary products for medical purposes; dietetic substances for medical use; dietetic foods for medical use; dietetic beverages for medical use; nutritional supplements for medical use; food for babies; plasters; materials for dressings; disinfectants.
The contested goods are the following:
Class 3: Fragrances; Fragrances for personal use; Perfume; Perfumes; Toiletries.
Class 4: Fragranced candles; Candles; Special occasion candles.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 fragrances; fragrances for personal use; perfume; perfumes are included in the broad category of the opponent’s perfumery products. Therefore, they are identical.
The contested toiletries include, as a broader category, the opponent’s soaps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 4
The contested fragranced candles; candles; special occasion candles in Class 4 are similar to the opponent’s essential oils in Class 3. The applicants’ goods consist of or comprise scented candles, which are often scented by means of the opponent’s essential oils. In any case, candles, in particular scented candles, serve, as essential oils also do, the purpose of releasing pleasing smells which create a pleasant atmosphere. In addition, their end consumers and points of sale generally coincide (25/07/2013, R 882/2012-4, Tales of London (FIG) / TAYLOR OF LONDON et al. §14).
- 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 and similar are directed at the public at large. The degree of attention is average.
- The signs
AETHERN | Aether |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 signs have no meaning for the relevant public and are, therefore, distinctive.
Visually, the signs coincide in the sequence of letters ‘AETHER*’. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether the conflicting word marks are depicted in lower or upper case letters or in a combination thereof. The signs differ only in the additional last letter of the earlier mark, namely the letter ‘N’. 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. Therefore, the difference in this last letter may go unnoticed by consumers.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘aether*’, present identically in both signs. The signs have the same number of syllables, coinciding in the first two (/a-e-tern/ vs /a-e-ter/), and the same vowel structure (‘a-e-e’), and, therefore, their rhythm and intonation is highly similar. The pronunciation differs in the sound of the additional last letter of the earlier mark, namely ‛n’. However, despite this minor difference, their last syllable is still highly similar as the difference in pronunciation of the ultimate consonant ‘n’ in the earlier mark is not particularly striking.
Therefore, the signs are aurally highly similar.
Conceptually, since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and, therefore, 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
It has been established in the previous sections of this decision that the contested goods are considered partly identical and partly similar to the opponent’s goods. They target the public at large with an average degree of attention.
It has also been concluded that the signs are visually and aurally highly similar, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.
Additionally, 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).
Therefore, the Opposition Division considers that the only difference between the signs found in the last letter of the earlier mark is not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant public may believe that the identical or similar goods come from the same undertaking or, at least, economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 085 969. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 3 085 969 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicants are the losing party, they 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
Marta GARCÍA COLLADO | Alexandra APOSTOLAKIS | Vanessa PAGE |
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.