BLOOMS | Decision 2775685
Date Published: Sep 25, 2017
OPPOSITION No B 2 775 685
Navson Ltd, Navson House, Crabtree Office Village, Egham, Surrey TW20 8RY, United Kingdom (opponent), represented by Clarke Willmott, Burlington House, Botleigh Grange Business Park, Hedge End, Southampton, Hampshire SO30 2AF, United Kingdom (professional representative)
a g a i n s t
Momentum Sarl, 6 Boulevard des Moulins, Le Montaigne, 98000 MC Monaco, Monaco (applicant), represented by Con Lor SPA, Via Renato Fucini 5, 20133 Milan, Italy (professional representative).
On 20/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 775 685 is partially upheld, namely for the following contested goods:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Lotions for cosmetic purposes; Baths (Cosmetic preparations for -); Sun creams; Shaving preparations.
2. European Union trade mark application No 15 520 448 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 520 448, namely against all the goods in Classes 3 and 24. The opposition is based on European Union trade mark registration No 15 444 516. The opponent invoked Article 8(1)(a) and (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 the following:
Class 3: Pre-moistened or impregnated cloths, pads, tissues and wipes; cosmetic pads, tissues and wipes; pads, tissues and wipes impregnated with cosmetic lotions; cloths, pads, tissues and wipes impregnated with a cleansing agent; cotton wool, swabs and sticks; cotton swabs for cosmetic purposes / cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; tissues impregnated with make-up removing preparations; sanitary preparations being toiletries; soaps; anti-bacterial gel; hand sanitizers; anti-bacterial cloths, pads, tissues and wipes; adhesives for cosmetic purposes; almond milk for cosmetic purposes; aloe vera preparations for cosmetic purposes; antiperspirant soap; antiperspirants [toiletries]; astringents for cosmetic purposes; balms other than for medical purposes; cosmetic preparations for baths; cosmetic preparations for eyelashes; cosmetic kits; cosmetic creams; cosmetic preparations for skin care; cosmetics; depilatory preparations / depilatories; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry-cleaning preparations; greases for cosmetic purposes; lotions for cosmetic purposes; make-up preparations; oils for cosmetic purposes, for cleaning purposes, for perfumes and scents and for toilet purposes; make-up removing preparations; soap.
Class 5: Sanitary preparations for personal hygiene, other than toiletries; sanitary panties/menstruation knickers/sanitary knickers/sanitary pants; panty liners [sanitary]; sanitary towels/sanitary napkins; sanitary tampons/menstruation tampons; menstruation bandages/sanitary pads; disposable diapers.
Class 16: Paper products; cardboard; printed matter; absorbent paper and tissue products; towels of paper; face towels of paper; facial tissue; table linen of paper; table napkins of paper; tablecloths of paper; tablemats of paper; bibs of paper; tissues of paper for removing make-up; toilet paper / hygienic paper; toilet tissue; paper toilet seat covers; paper toilet bowl liners; kitchen roll; paper handkerchiefs, paper napkins; handkerchiefs of paper.
Class 21: Wipes or cloths of non-woven fabric, including cleaning cloths and drying cloths; cloth for washing floors; dispensers for paper products; toilet paper dispensers; toilet paper holders; toilet brushes; toilet cases / fitted vanity cases; toilet sponges; toilet utensils; kitchen paper holders; sponge holders; sponges for household purposes; toilet sponges; boxes for dispensing paper towels; napkin rings; napkin holders; soap boxes; soap dispensers; soap holders / dishes for soap; soup bowls.
The contested goods are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; lotions for cosmetic purposes; baths (cosmetic preparations for -); sun creams; shaving preparations.
Class 24: Textiles and substitutes therefor; bed covers; table covers; bed clothes; face towels [made of textile materials]; towels of textile; bath linen, except clothing; linens; bed linen; furniture coverings of textile.
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
Soaps; cosmetics; lotions for cosmetic purposes; baths (cosmetic preparations for -) are identically contained in both lists of goods.
The contested substances for laundry use other than bleaching preparations include, as a broader category, the opponent’s dry-cleaning preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cleaning preparations 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.
The contested essential oils include, as a broader category, the opponent’s oils for perfumes and scents. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested hair lotions; sun creams; shaving preparations are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.
The contested perfumery is highly similar to the opponent’s oils for perfumes and scents, which are essential oils. These goods have the same purpose and nature, since they are fragrant liquids used for their pleasant smell. They can have the same producers, end users and distribution channels.
The contested bleaching preparations are substances used to whiten materials and wash clothes and linen, respectively. These goods are similar to the opponent’s soaps, as they can be manufactured by the same undertakings and can have the same end users. Moreover, they have the same distribution channels.
The contested polishing, scouring and abrasive preparations are substances used to clean and buff surfaces by rubbing or grinding them. These goods are similar to the opponent’s soaps, as they have the same purpose, namely cleaning surfaces. They can also have the same end users and be sold through the same outlets.
The contested dentifrices are pastes or powders for cleaning the teeth. They are similar to a low degree to the opponent’s soaps, as they have the same purpose and can have the same distribution channels.
Contested goods in Class 24
The contested textiles and substitutes therefor; bed covers; table covers; bed clothes; face towels [made of textile materials]; towels of textile; bath linen, except clothing; linens; bed linen; furniture coverings of textile are fabric, linen and textile covers. These goods are dissimilar to the opponent’s goods in Classes 3, 5, 16 and 21. In particular, the opponent’s goods in Class 3 consist of cleaning and cosmetic preparations; the goods in Class 5 are pharmaceuticals and sanitary preparations. The opponent’s goods in Class 16 are paper products, cardboard and printed matter, while the opponent’s goods in Class 21 are household articles. When compared with the textile goods in Class 24, it is clear that these goods have different natures, purposes and methods of use. They do not have the same producers. They are not complementary to or in competition with each other. Furthermore, they are not sold through the same outlets. Admittedly, some of the opponent’s goods in Class 21 (e.g. boxes for dispensing paper towels) may be sold through the same outlets as those of the contested goods (e.g. face towels [made of textile materials]; towels of textile), namely household shops; however, they are not placed in the same sectors or departments of the abovementioned outlets. It is noted that the contested textiles and substitutes therefor can be used as raw materials for the opponent’s wipes or cloths of non-woven fabric, including cleaning cloths and drying cloths; cloth for washing floors in Class 21. Nevertheless, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their natures, purposes, relevant publics and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).
- 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 to various degrees are directed at the public at large. The degree of attention is average.
- The signs
BLOOM | |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The verbal elements of the marks (i.e. ‘BLOOM’/’BLOOMS’) are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.
The earlier mark is a word mark, ‘BLOOM’, which will be understood as ‘flower’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The contested sign is a stylised depiction of the word ‘BLOOMS’, which will be perceived as the plural form of the word ‘BLOOM’, meaning ‘flowers’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Regarding the stylisation of the mark, it will have a limited relevance in the present comparison. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
The marks have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘BLOOM*’ and they differ in the last letter of the contested sign. They also differ in the stylisation of the contested sign, which is however less relevant for the reasons already explained above.
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 additional letter ‘S’ in the final part of the contested sign has less impact than the commonality in the other letters of the signs.
In view of the above and given that the earlier mark is entirely included in the contested mark, which differs from the former in only one letter, placed in its ending part, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in in the sound of the letters ‘BLOOM*’, present identically in both signs and differs in the sound of the letter ‘S’ of the contested sign, which has no counterpart in the earlier sign. Given that the earlier mark is entirely included in the contested mark, which differs from the former in only one letter, placed in its ending part, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning (i.e. the very same concept it its singular and plural form), the signs are conceptually similar to a high 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.
- Global assessment, other arguments and conclusion
The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods. These goods target the public at large, whose degree of attention is considered average. Furthermore, the earlier mark enjoys an average degree of distinctiveness in connection with the relevant goods.
The signs are visually similar to an average degree and aurally similar to a high degree, as they coincide in the string of letters ‘BLOOM’, which constitute the entire earlier mark and five out of the six letters of the contested sign. The marks are also conceptually similar to a high degree to the extent that they have the same meaning, in its singular or plural form.
The differences between the signs are confined to aspects that may either pass unnoticed or have a limited impact on the overall impression of the sign concerned, namely the letter ‘S’ at the end of the contested sign (where consumers do not tend focus their attention) and the stylisation of said sign.
Account must be 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).
Considering all of the above, the Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities, which result in the similar overall impressions given by the signs.
In view of the foregoing, there is a likelihood of confusion on the part of the English-speaking parts of the public in the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 444 516.
It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
This conclusion also stands for the contested goods and services that have been found to be similar to a low degree. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods 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). In the present case, it is considered that the similarity between the signs is sufficient to lead to a likelihood of confusion even in relation to the goods and services that have only a low degree of similarity.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Michele M. BENEDETTI-ALOISI | Orsola LAMBERTI | Francesca CANGERI SERRANO |
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.