B-WELL | Decision 2650193
Date Published: Sep 24, 2017
OPPOSITION No B 2 650 193
Pharmadom, société anonyme coopérative à conseil d'administration, 66 rue Escudier, 92100 Boulogne-Billancourt, France (opponent), represented by Marie Paule Dauquaire, 9 rue de Montevideo, 75116 Paris, France (professional representative)
a g a i n s t
Oxalis Brands Limited, Cooper House 3p1, 2 Michael road, London SW6 2AD, United Kingdom (holder).
On 23/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 650 193 is upheld for all the contested goods.
2. International registration No 1 245 562 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 245 562 for the word mark ‘B-WELL’. The opposition is based on French trade mark registration No 12 3 929 829 for the word mark ‘WELL AND WELL’. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, disinfecting, softening, polishing, scouring and abrasive preparations; soaps; perfumes and perfumery; essential oils; cosmetics; preparations for body care including cleansing milk, creams, gels, pomades, talcum powders and oils; preparation for slimming purposes; make-up removing preparations; hair lotions and creams; shampoos; hair dyes; dentifrices; dental preparations; depilatory preparations; shaving preparations; nail care preparations including nail lacquers and varnishes.
The contested goods are the following:
Class 3: Anti-bacterial soap; cakes of toilet soap; cleaning preparations; cleaning preparations for personal use; cream cleaners (non-medicated); creams (non-medicated) for the body; creams (soap) for use in washing; detergent soap; hand cleaner; hand creams; hand lotion (non-medicated); medicated soap; non-medicated toilet soap; perfumed soap; skin care creams, other than for medical use; skin cleaners (non-medicated); skin cleansers (non-medicated); skin cleansing cream; skin cleansing cream (non-medicated); skin cleansing lotion; creams and lotions for the skin; soap; soap (antiperspirant); soap (cakes of); soap (deodorant); soap (disinfectant); soap solutions; soaps in liquid form; soapy gels; washing creams; washing liquids; washing preparations for personal use; waterless soap; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs; essential oils, massage oil; make-up; bleaching preparations and other substances for laundry use; talcum powder; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; lip care products; lip care preparations; cleansing wipes; perfumes; deodorants for personal use; antiperspirants; oral hygiene preparations; dentifrices; mouthwash; shaving preparations; pre-shave and aftershave preparations; sun-tanning and sun protection preparations; cosmetics; make-up and make-up removing preparations; petroleum jelly; depilatory preparations; depilatory waxes; toothpaste, hair care products; hair-straightening preparations; hair colorants; hair dyes; hair lotions, hair waving preparations, shampoos, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair-bleaching preparations (decolorants); hair colorants; cosmetic hair balsams; hair moisturizers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonics, hair creams.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
Cleaning preparations; soap; bleaching preparations and other substances for laundry use; perfumes; essential oils; cosmetics; dentifrices; shaving preparations; depilatory preparations; hair dyes; hair lotions; shampoos; hair creams are identically contained in both lists of goods.
The contested anti-bacterial soap; cakes of toilet soap; creams (soap) for use in washing; detergent soap; medicated soap; non-medicated toilet soap; perfumed soap; soap (antiperspirant); soap (cakes of); soap (deodorant); soap (disinfectant); soap solutions; soaps in liquid form; waterless soap are included in the broad category of the opponent’s soaps. Therefore, they are identical.
The contested cleaning preparations for personal use; cream cleaners (non-medicated); hand cleaner; skin cleaners (non-medicated); skin cleansers (non-medicated); skin cleansing cream; skin cleansing cream (non-medicated); skin cleansing lotion; soapy gels; washing creams; washing liquids; washing preparations for personal use overlap with the opponent’s soaps. Therefore, they are identical.
The contested creams (non-medicated) for the body; hand creams; hand lotion (non-medicated); skin care creams, other than for medical use; creams and lotions for the skin; beauty masks, facial packs; massage oil; talcum powder; petroleum jelly are included in or overlap with the broad category of the opponent’s preparations for body care including cleansing milk, creams, gels, pomades, talcum powders and oils. Therefore, they are identical.
The contested cosmetic pads, tissues or wipes; pre-moistened or impregnated cleansing pads, tissues or wipes; lip care products; lip care preparations; cleansing wipes; deodorants for personal use; antiperspirants; sun-tanning and sun protection preparations; make-up; make-up and make-up removing preparations; hair care products; hair-straightening preparations; hair colorants; hair waving preparations, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair-bleaching preparations (decolorants); hair colorants; cosmetic hair balsams; hair moisturizers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonics are included in, or overlap with the broad category of the opponent’s cosmetics. Therefore, they are identical.
The contested oral hygiene preparations; mouthwash are included in, or overlap with the broad category of the opponent’s dental preparations. Therefore, they are identical.
The contested toothpaste is included in the broad category of the opponent’s dentifrices. Therefore, they are identical
The contested depilatory waxes are included in the broad category of the opponent’s depilatory preparations. Therefore, they are identical.
The contested pre-shave and aftershave preparations are included in the broad category of the opponent’s shaving preparations. Therefore, they are identical.
The contested cotton wool, cotton sticks; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes are similar to the opponent’s cosmetics since they can have the same producer, end user and distribution channels.
- 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 are directed at the public at large. The degree of attention is average.
- The signs
WELL AND WELL | B-WELL |
Earlier trade mark | Contested sign |
The relevant territory is France.
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).
Both signs are word marks. In case of word marks, it is the word as such that it is protected, regardless of the way in which it is depicted, for example lower or upper case.
The element ‘WELL’ identically present in both signs is an English adverb that has no meaning in French. Therefore, this word is meaningless for the relevant public. Therefore, it is distinctive.
The element ‘AND’, ‘et’ in French, is a basic English word and will be understood as a connector between the other words of the mark by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive; however, as it will be perceived as the conjunction ‘et’, it has a lesser impact in the public’s mind than the verbal elements ‘WELL – WELL’.
The element ‘B’ of the contested sign will be understood as representing the letter ‘B’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Regarding the holder’s argument that this element will be perceived by the public as an abbreviation for the verb ‘to be’, it has to be noted that, in the present case, the relevant territory is France as the earlier mark is registered in France; therefore, it is unlikely that the French-speaking public perceives such abbreviation from a foreign language.
Despite the arguments of the parties, neither of the signs has elements that could be considered clearly more dominant (visually outstanding) than other elements.
Visually, the signs coincide in the distinctive word ‘WELL’, identically present in both signs. However, they differ in the duplication of the word ‘WELL’ and the word ‘AND’ in the earlier sign, which make the earlier sign visually longer than the contested sign. The letter ‘B’, followed by a hyphen, at the beginning of the contested sign, which has no counterpart in the earlier mark, constitutes a further visual difference between the signs.
Therefore, the signs are similar to a lower than average degree.
Aurally, the pronunciation of the signs coincides in the syllable ‘WELL’, present identically in the end of both signs. The pronunciation differs in the syllables ‘WELL-AND’ at the beginning of the earlier mark and in the sound of the letter ‘B’ at the beginning of the contested sign. The signs also differ in the number of syllables, which creates a different rhythm and intonation between the signs. Therefore, the signs are aurally similar to a lower than average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AND’ included in the earlier sign, and the element ‘B’ of the contested sign, will be associated with the meaning explained above. To that extent, the signs are conceptually not similar.
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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, some of the goods at issue are identical and some are similar. They target the general public, whose degree of attention is average.
The similarity between the signs results from the visual and aural commonalities in the distinctive verbal element ‘WELL’ identically contained at the end of the signs.
The differences in the remaining verbal elements of both signs are likely to have a limited impact on the public’s perception, taking into account that 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Therefore, although the signs differ in their additional initial elements and generally a consumer normally attaches more importance to the first part of the signs, that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32) and these elements cannot outweigh the visual and aural similarities between the earlier mark and the contested sign, especially taking into account that both signs finish with the same verbal element. Taking into account all the relevant factors of the case, as well as the interdependence principle mentioned above, it is considered that the similarities between the signs in addition to the identity and similarity between the goods, could lead the relevant public to believe that the goods found to be identical and similar come from the same undertaking or economically linked undertakings (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Therefore, as the goods in question are identical and similar, a likelihood of confusion exists.
Regarding the holder’s argument that its sign has been already registered in the UK and in other trade mark offices, it has to be noted that the right to an International Registration designating the EU begins on the date when the IR is filed and not before, and from that date on the IR has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the International Registration designating the EU falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the IR are irrelevant because the rights of the opponent, insofar as they predate the IR, are earlier than the holder’s IR.
The holder also claims that the term ‘WELL’ lacks distinctive character in relation to personal care goods given that it is commonly used and there are many trade marks that include it.
The Opposition Division notes that the opposition is based on a French registration; therefore, the distinctive character of the signs must be assessed in relation with the public in which the earlier mark is registered. Moreover, the holder did not provide any example of the referred use or registrations. Nevertheless, the existence of several trade mark registrations would not be per se particularly conclusive, as it would not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the holder’s argument that consulting trade mark registers would be enough to demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘WELL’ must be set aside.
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 French trade mark registration No 12 3 929 829. 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 holder 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
Lynn BURTCHAELL | Octavio MONGE GONZALVO | Denitza STOYANOVA-VALCHANOVA |
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.