Corallion | Decision 2741661
Date Published: Sep 25, 2017
OPPOSITION No B 2 741 661
Maspalomas Resort S.L., C/ Concepción Arenal, 20, 35006 Las Palmas de Gran Canaria, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Hans-Jürgen Menz, Walddorfer Ring 3a, 08428 Langenbernsdorf, Germany (applicant)
On 21/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 661 is upheld for all the contested goods.
2. European Union trade mark application No 15 346 273 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 15 346 273 for the word mark ‘Corallion’. The opposition is based on, inter alia, European Union trade mark registration No 9 310 533 for the word mark ‘CORALLIUM’. 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 9 310 533.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 3: Washing preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; Essentials oils, cosmetics, hair lotions; Dentifrices.
The contested goods are the following:
Class 3: Cosmetics.
Contested goods in Class 3
Cosmetics are identically contained in both lists of goods.
- 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.
- The signs
CORALLIUM | Corallion |
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 ‘CORALLIUM’, which is a Latin word meaning ‘coral’ (a hard substance formed from the bones of very small sea animals). Although some Latin words and expressions are commonly used and may therefore be generally understood, Latin is a dead language. Therefore and since the word ‘CORALLIUM’ is not a commonly used word (other than as a scientific name), the relevant public is unlikely to be aware of the exact meaning of ‘CORALLIUM’ and will rather perceive it as a fanciful word. However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, 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). In this respect, the word ‘coral’, which is also used as the name of a reddish or pinkish shade of orange, is the same, or largely equivalent, in all of the languages in the European Union, e.g. ‘coral/corail/corallo/korall/koralle/koral’. Therefore, part of the public throughout the relevant territory may associate the beginning of the earlier mark ‘CORAL’ with the meanings explained above. Taking into account that the goods concerned include cosmetics such as make-up, eye blush and lipsticks, the element ‘CORAL’ is considered to be weak as it can allude to a particular shade of colour. Nevertheless, the earlier mark as a whole will be perceived as fanciful and distinctive.
The contested sign is the word mark ‘Corallion’ which is likely to be perceived by the relevant public in Greece as a reference to ‘Κοράλλιον’ (korállion), the plural genitive of the word ‘coral’ in Greek. Nevertheless, for the remaining part of the public in the relevant territory, the contested sign will be perceived as a fanciful word. 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. In view of this, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Greek-speaking part of the public.
However, for the same reasons as those outlined above, the considerations regarding the perception and the distinctiveness of the beginning ‘CORAL’ of the earlier mark apply equally to this element of the contested sign.
Account is also to be taken of the fact that 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.
Visually, the signs coincide in the first seven letters ‘CORALLI’ and only differ in their respective last two letters ‘UM’ in the earlier mark as opposed to ‘ON’ in the contested sign. As mentioned above, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory under analysis, the pronunciation of the signs coincides in the sound of the first seven letters ‘CORALLI’ and only differ in the sound of their respective last two letters ‘UM/ON’.
Therefore, for the same reasons as those outlined above, the signs are aurally highly similar.
Conceptually, although the signs as a whole do not have any meaning for the relevant public under analysis, for part of the public throughout the relevant territory, the element ‘CORAL’, included at the beginning of both signs, will be associated with the meaning explained above. To that extent, for part of the public the signs are conceptually similar. For the part of the public who may not perceive any meaning in either of the signs, they will not be conceptually 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, despite the presence of a weak element in the mark for part of the public as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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 and 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).
Account should also 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).
In the present case, the goods at issue are identical and the degree of attention of the relevant public is average. The contested sign ‘Corallion’ is visually and aurally highly similar to the earlier mark ‘CORALLIUM’, which has a normal degree of distinctiveness as a whole. Therefore, regardless of whether or not the beginning of the signs, ‘coral’, is perceived as only weak by part of the relevant public in relation to the goods concerned for the reasons explained in section c) of this decision, in view of the overall similarity between the signs and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the part of the relevant public under analysis 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 well founded on the basis of the opponent’s European Union trade mark registration No 9 310 533. It follows that the contested trade mark must be rejected for all the contested goods.
As the examined earlier right 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 rights 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
Sandra IBAÑEZ | Sam GYLLING | Pedro JURADO MONTEJANO |
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.