empro | Decision 2588211

Date Published: Sep 22, 2017

OPPOSITION No B 2 588 211

Hempro International GmbH & Co. KG, Münsterstr. 336, 40470 Düsseldorf, Deutschland (opponent), represented by Dipl.-Ing. P.-C. Sroka Jan Sroka, Düsseldorfer Straße 8, 40545 Düsseldorf, Germany (professional representative)

a g a i n s t

EMP Image Solution Sdn Bhd, No 24-2 Second Floor, Jalan 28/70A, Desa Sri Hartamas, Kuala Lumpur  50480, Malaysia (holder), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 Munich, Germany (professional representative)

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 588 211 is upheld for all the contested goods, namely 

Class 3 : Oils for cleaning purposes; cleaning masks for the face; cosmetic eye gels; cosmetic eye pencils; mascara; eyebrow pencils; cosmetic face powders; cosmetic preparations for skin care; cosmetics in the form of eye shadow; cosmetics in the form of powders; eye crayon; facial scrubs (cosmetic); facial and/or perfumed soaps; facial wipes impregnated with cosmetics; lip gloss; lip pencils; non-medicated creams for the lips; skin care creams (cosmetic); skin care lotions (cosmetic); skin care oils (cosmetic); skin cleaners [non-medicated]; skin cleansing cream (cosmetic); skin conditioners; skin foundation; skin toners; skin whitening creams; sun protectors for lips, namely, sun blocking lipsticks [cosmetics].

2.        International registration No 1 229 217 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining services.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 229 217  (figurative mark), namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 11 816 626 ‘Hempro’ (word mark). 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.

1. The goods and services

The services on which the opposition is based are the following:

Class 35: Procurement of goods on behalf of others; Consultancy relating to product launching, consultancy relating to market presence, design of market presence, advertising, marketing; Retailing and wholesaling of the following goods: cosmetics, dentifrices, bleaching preparations, cleaning preparations, food supplements, not for medical purposes, with a base of protein, fats and/or fatty acids, food supplements, not for medical purposes, with a base of roughage and/or carbohydrates, bags, suitcases, purses, pocket wallets, clothing, footwear, headgear, foodstuffs, meat, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, processed nuts, foods made from nuts, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, broth, yoghurt, cheese, coconut oil, marmalade, oil for food, ham, sesame oil, sunflower oil for food, soups, preparations for making bouillon, milk beverages, milk predominating, dietetic foodstuffs, not for medical purposes, with a base of protein, fats and/or fatty acids, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, coffee-based beverages, cocoa-based beverages or chocolate beverages, cereals prepared for human consumption, including oat flakes or other cereal flakes, meat pies, iced tea, spring rolls, powder for edible ices and preparations for making edible ices, fruit teas and herbal teas, not for medical purposes, chocolate, chocolate goods, confectionery, sugar products, chewing gum, not for medical purposes, beverages, products for animal litter, grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, unworked wood, unprocessed cereals, eggs for hatching, fertilised, shellfish, live, unprocessed nuts.

Class 39: Packaging and storage of goods; Distribution of goods for others.

Class 42: Brand design, product design, research and development services, for others, relating to formulae for preparations, consultancy in relation to the creation of formulae for preparations.

The contested goods are the following:

Class 3 : Oils for cleaning purposes; cleaning masks for the face; cosmetic eye gels; cosmetic eye pencils; mascara; eyebrow pencils; cosmetic face powders; cosmetic preparations for skin care; cosmetics in the form of eye shadow; cosmetics in the form of powders; eye crayon; facial scrubs (cosmetic); facial and/or perfumed soaps; facial wipes impregnated with cosmetics; lip gloss; lip pencils; non-medicated creams for the lips; skin care creams (cosmetic); skin care lotions (cosmetic); skin care oils (cosmetic); skin cleaners [non-medicated]; skin cleansing cream (cosmetic); skin conditioners; skin foundation; skin toners; skin whitening creams; sun protectors for lips, namely, sun blocking lipsticks [cosmetics].

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 goods in Class 3 are all cosmetics.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested oils for cleaning purposes; cleaning masks for the face; cosmetic eye gels; cosmetic eye pencils; mascara; eyebrow pencils; cosmetic face powders; cosmetic preparations for skin care; cosmetics in the form of eye shadow; cosmetics in the form of powders; eye crayon; facial scrubs (cosmetic); facial and/or perfumed soaps; facial wipes impregnated with cosmetics; lip gloss; lip pencils; non-medicated creams for the lips; skin care creams (cosmetic); skin care lotions (cosmetic); skin care oils (cosmetic); skin cleaners [non-medicated]; skin cleansing cream (cosmetic); skin conditioners; skin foundation; skin toners; skin whitening creams; sun protectors for lips, namely, sun blocking lipsticks [cosmetics] are similar to a low degree to the opponent’s retail services of retailing of the following goods: cosmetics.

2. 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 and services found to be similar to a low degree are directed at the public at large. The degree of attention is low to average, as the goods concerned are cheap products for daily consumption.

3. The signs

Hempro
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested international registration.

The words ‘hempro’ and ‘empro’ are not meaningful in certain territories, for example, in those countries where German, English, Spanish, French or Italian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-, English-, Spanish-, French- and Italian-speaking part of the public.

The contested sign is a figurative trade mark in black and white, which is composed of the word ‘empro’ in standard sans serif lower case letters. The letters ‘em’ are depicted in bold, while the letters ‘pro’ not in bold. Starting from the initial letter ‘e’ a curved line bends over the whole word. The verbal component of the sign usually has a stronger impact on the consumer than the figurative component, as 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.

The earlier mark is the word mark ‘Hempro’. In the case of word marks, the word as such is protected, and not its written form. Therefore, it is immaterial whether it is represented in lower or upper case letters, title case letters or a combination of both.

The holder considers the earlier mark ‘Hempro’ to be descriptive, as it refers to the English word ‘hemp’, which is a kind of plant that can be refined into paper, textiles, clothing, biodegradable plastics, paint, insulation, biofuel, food and animal feed. The Opposition Division does not agree. The earlier sign consists of the word ‘Hempro’ and there is no reason to believe that the public will split it into ‘hemp-ro’. In any case, the examples of use of this plant do not contain the goods relevant in the present proceedings and even if the relevant public would recognize the word ‘hemp’ in the earlier mark it is not descriptive of the relevant goods.

Visually, the signs coincide in the string of letters ‘empro’. The whole string of letters of the contested sign is contained in the earlier mark. They differ in the first letter ‘H’ and the graphical presentation of the contested mark. The figurative elements (the curved line and the typeface of the contested mark) have only a minimal impact. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‛EMPRO’, present identically in both signs. In some languages, such as German, the initial letter ‘H’ of the contested sign will be pronounced in a soft hissed way; here the signs differ slightly in this sound. In some other languages, such as Spanish, the letter ‘H’ is mute and the signs are phonetically identical. Therefore, the signs are phonetically highly similar if not identical.

Conceptually, neither of the signs has a meaning for the German-, English-, French-, Spanish- and Italian-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

4. 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are similar to a low degree to the opponent’s services. The level of attention of the relevant public is low to average. The distinctiveness of the earlier mark is average.

The signs are phonetically highly similar if not identical. They are visually highly similar. On a conceptual level, neither sign has a meaning. The whole string of letters of the contested mark is contained in the earlier mark, only with the additional letter ‘H’ at its beginning, which is mute in part of the territory. The figurative elements (the curved line and the typeface of the contested mark have only a minimal impact, they are not sufficient to safely distinguish the signs.

Therefore, taking into account all the relevant factors in the present case, including the principle that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, which applies in this case, the consumers might believe that the conflicting goods and services come from the same or economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German-, English-, Spanish-, Italian- and French-speaking part of the public. 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 international registration designating the European Union.

Therefore, the opposition is well founded on the basis of the earlier European Union trade mark No 11 816 626. 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

Beatrix STELTER

Julia SCHRADER

Claudia MARTINI

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.