bioxell | Decision 2727751
Date Published: Oct 1, 2017
OPPOSITION No B 2 727 751
Norlas Oy, Petikontie 20, 2. Kerros, 01720 Vantaa, Finland (opponent), represented by Seppo Laine Oy, Itämerenkatu 3 B, 00180 Helsinki, Finland (professional representative)
a g a i n s t
Mirosław Bryk, Sw. Wincentego 112/169, 03-291 Warsaw, Poland (applicant)
On 20/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 751 is upheld for all the contested goods.
2. European Union trade mark application No 15 272 263 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 272 263. The opposition is based on, inter alia, European Union trade mark registration No 13 176 433. 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 13 176 433.
- The goods
The goods on which the opposition is based are the following:
Class 3: Cosmetics; cosmetics for the use on the hair; cosmetic hair dressing preparations; oils for cosmetic purposes; moisturising wipes for cosmetic use; adhesives for cosmetic purposes; astringents for cosmetic purposes; cosmetic washing preparations.
The contested goods are the following:
Class 3: Cosmetics.
Contested goods in Class 3
The contested cosmetics are identically contained in both lists of goods. Therefore, these goods are identical.
- 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 will be average.
- The signs
BIOZELL | |
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 a word mark consisting of the word ‘BIOZELL’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The contested sign is a figurative mark composed of the verbal element ‘bioxell’ written in a fairly standard grey lower case typeface.
The contested sign has no element which could be considered clearly more dominant (visually eye-catching).
Neither of the marks, as a whole, has any meaning in the relevant territory and, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is likely that the element ‘BIO’ will be perceived by most of the relevant public as a commonly used abbreviation for the word ‘biological’. This element will be associated with life and living things, or with the idea of something natural and environmentally friendly. Thus, it has a rather weak distinctive character, since any beauty, body or care product can have organic constituents, and not be made of artificially produced chemical components. Hence, a part of the public will not pay as much attention to this element as to the other, more distinctive, elements of the marks, namely ‘ZELL’ and ‘xell’, respectively.
Visually, the signs coincide in the letters /BIO*ELL/ of which it can be said that the prefix ‘BIO’ is weak. However, they differ in the letters in the fourth position of each word, ‘Z’ versus ‘X’.
The first and last parts of the conflicting marks coincide and the only different letter falls in the middle, where it can be easily overlooked by the consumer.
Regarding the typeface in which the verbal element of the contested sign is depicted, this stylisation is fairly standard and will not divert the consumer’s attention away from the word.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /B-I-O-*-E-L-L/ present identically in both signs. The pronunciation differs in the sound of the letter ‘Z’ of the earlier mark, which has as a counterpart the letter ‘x’ in the contested mark. Of these letters it is important to point out that the letter ‘Z’ of the earlier mark is pronounced as a voiced alveolar fricative, as in the English word ‘zip’, while the letter ‘x’ in the contested sign sounds as the letters ‘ks’ or ‘gz’. These letters are quite similar in their pronunciation as well.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the signs evoke the concepts of ‘BIO’. Considering that the common element ‘BIO’ is weak in relation to the cosmetics in question, its impact is rather limited. Therefore, the marks are conceptually similar to a low degree.
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, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
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, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).
In the present case, the goods have been found identical and the level of attention of the public is average. The signs are visually and aurally similar to a high degree whereas from the semantic perspective the marks are similar to a low degree.
The signs differ only in the letter in the fourth position of each verbal element and the typeface of the contested sign which is fairly standard. Moreover, although ‘BIO’ has less impact, because it is rather weak in relation to the goods, it is not an independent element but forms part of an indivisible entity in each mark. Therefore, even this coinciding element contributes to the likelihood of confusion.
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).
In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the goods offsets the lesser degree of similarity between the signs.
In light of the foregoing, 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 European Union trade mark registration No 13 176 433. It follows that the contested trade mark must be rejected for all the contested goods.
For the sake of completeness it should be mentioned that as the earlier right, namely the European Union trade mark registration No 13 176 433 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 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
Chantal VAN RIEL | Klaudia MISZTAL | Lucinda CARNEY |
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.