EUROCEL | Decision 2344615 - CEL TECHNOLOGIES & SYSTEMS, S.L. v. Lenzing Aktiengesellschaft

Date Published: Oct 1, 2017

OPPOSITION No B 2 344 615

Cel Technologies & Systems, S.L., Barrio Barretaguren s/n, 01474 Artziniega, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Lenzing Aktiengesellschaft, Werkstr. 2, 4860 Lenzing, Austria (applicant), represented by Binder Grösswang Rechtsanwälte GmbH, Kaiserjägerstr. 1/B9, 6020 Innsbruck, Austria (professional representative)

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 344 615 is partially upheld, namely for the following contested goods:

Class 5:         Feminine hygiene products, namely menstruation tampons, sanitary towels, panty liners, breast-nursing pads; absorbent articles for personal hygiene; incontinence diapers; baby diapers and napkins, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; medicated diaper rash ointments and lotions; disposable pads for diaper changing; disposable sanitizing wipes and wipes for medical use; antiseptic preparations for wound care; laboratory swabs, swabs for medical use; moisturised disinfectant wipes, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose.

Class 21: Cleaning cloths made from cellulose; cleaning sponges.

Class 24: Non-woven fabrics, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; mattress slips [other than incontinence]; tissues of textile, napkins of textile, cloth of textile, pads of textile for removing make-up; make-up removal wipes [textile] other than impregnated with toilet preparations or cosmetics.

2.        European Union trade mark application No 12 427 001 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 all the goods and services of European Union trade mark application No 12 427 001. The opposition is based on European Union trade mark registration No 10 695 914 ‘CEL TECHNOLOGIES & SYSTEMS’, Spanish trade mark registration No 270 267 ‘CEL’ and Spanish trade mark registration No 2 523 242 ‘CEL’. 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 No 10 695 914.

1. The goods and services

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

Class 3: Premoistened or impregnated cleansing tissues or wipes; Cosmetic pads, tissues or wipes; Skin-care products, Liquid soaps and Powder; Cosmetic soaps; Hair shampoo and Body and Creams and Hand lotion and Body; Bubble bath; Preparations for perfuming the atmosphere; Deodorants for personal care; Essentials oils; Perfume; Chemical preparations for the care and treatment of the hair; Dentifrices, mouth elixirs not for medical purposes; Disposable dispensers filled with soaps, lotions, shampoos, creams.

Class 5: Sanitary preparations; Disinfectants; Antibacterial preparations; Sanitary napkins, towels, pads, tampons, knickers and panty-liners, all the aforesaid being for sanitary or menstruation purposes; Absorbent pads, shields and undergarments for incontinence purposes; Pads and wipes impregnated with medicinal lotions; Incontinence pads or napkins, absorbent sanitary shields and underclothing, protective chair and bed pads, all for incontinence purposes; Protective undergarments for personal absorbency needs; Room air fresheners; Deodorants and deodorisers (other than for personal use); Disinfectants; Preparations for destroying vermin; Fungicides, Weedkillers and Insect repellents, Chemical sanitary preparations; Clothing made primarily of paper, namely disposable napkins.

Class 16: Goods of absorbent paper for sanitary, cleaning or drying purposes, including tissues of paper, towels of paper, rolls of paper and table napkins of paper; Disposable wipes and tissues; Clothing made primarily of paper, namely disposable bibs; Disposable napkins; Printing and writing paper; Disposable dispensers filled with paper.

Class 21: Absorbent articles for cleaning purposes; polishing wipes; drying cloths; Towels and wiping cloths of nonwoven fabric; Dispensers for hand towels, toilet tissue, paper tissue, sanitary napkins, handkerchiefs, wipers, soaps and lotions; Dispensers; Room perfume sprays.

Class 35: Advertising; Business management; Business administration; Office functions; Wholesaling and retailing in shops and via global computer networks of all kinds of goods of paper, soaps, perfumery, cosmetics and dispensers for soaps and paper.

After partial refusals in parallel cases the contested goods are the following:

Class 1: Chemical products for use in the manufacture of cosmetics and cosmetics ingredients; cellulose.

Class 5: Feminine hygiene products, namely menstruation tampons, sanitary towels, panty liners, breast-nursing pads; absorbent articles for personal hygiene; incontinence diapers; baby diapers and napkins, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; medicated diaper rash ointments and lotions; disposable pads for diaper changing; disposable sanitizing wipes and wipes for medical use; antiseptic preparations for wound care; laboratory swabs, swabs for medical use; moisturised disinfectant wipes, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose.

Class 17: Chemical fibers, not for textile use, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; regenerated cellulose for use in manufacture; industrial insulation; synthetic padding to be used for filtration in filters.

Class 21: Cleaning cloths made from cellulose; cleaning sponges.

Class 24: Non-woven fabrics, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; fabrics for use in making diapers and incontinence pads; fabric diaper stackers; mattress slips [other than incontinence]; tissues of textile, napkins of textile, cloth of textile, pads of textile for removing make-up; textile material for use in filtration; make-up removal wipes [textile] other than impregnated with toilet preparations or cosmetics; drapes.

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

The term ‘in particular’, used in the applicant 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 term ‘namely’, used in the applicant and opponent’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 1

The contested chemical products for use in the manufacture of cosmetics and cosmetics ingredients; cellulose are raw materials, in their unfinished state and not yet mixed with other chemicals and inert carriers into a final product. They are directed at those undertakings that produce the opponent’s goods, thus, a different public. They differ in sales channels, producers and nature from the opponent’s goods. They are neither complementary nor in competition. These goods are dissimilar. They are even less similar to the opponent’s services in Class 35, as goods and services are different in nature, since services are intangible whereas goods are tangible. Furthermore, they differ in purpose, methods of use and are neither in competition nor complementary.

Contested goods in Class 5

The contested feminine hygiene products, namely menstruation tampons, sanitary towels, panty liners, breast-nursing pads; absorbent articles for personal hygiene; incontinence diapers; baby diapers and napkins, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; disposable pads for diaper changing fall under the general term of the opponent’s sanitary preparations. They are identical.

The contested antiseptic preparations for wound care; moisturised disinfectant wipes, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose fall under the general term of the opponent’s disinfectants. They are identical.

The contested disposable sanitizing wipes and wipes for medical use overlap with the opponent’s pads and wipes impregnated with medicinal lotions. Therefore, they are identical.

The contested laboratory swabs, swabs for medical use; medicated diaper rash ointments and lotions are highly similar to the pads and wipes impregnated with medicinal lotions as they can coincide in nature, purpose, end user, producer and distribution channels. They can even be interchangeable.

Contested goods in Class 17

The contested chemical fibers, not for textile use, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; regenerated cellulose for use in manufacture; industrial insulation; synthetic padding to be used for filtration in filters are electrical, thermal and acoustic insulating materials and plastics for use in manufacture and industrial sector. They are usually in an interim state between a raw material and a final product. They are directed at a professional public, while the opponent’s goods are directed partly at the general public and partly at a professional public. They differ in sales channels, producers and nature from the opponent’s goods and services. They are neither complementary nor in competition. They are even less similar to the opponent’s services in Class 35, as goods and services are different in nature, since services are intangible whereas goods are tangible. Furthermore, they differ in purpose, methods of use and are neither in competition nor complementary. These goods are dissimilar.

Contested goods in Class 21

The contested cleaning cloths made from cellulose; cleaning sponges overlap with the opponent’s absorbent articles for cleaning purposes. They are identical. 

Contested goods in Class 24

The contested non-woven fabrics, in particular made of cellulose, specifically regenerated and/or non-derivatised man-made cellulose; tissues of textile, cloth of textile can be finished products and are highly similar to the opponent’s goods of absorbent paper for sanitary, cleaning or drying purposes, including tissues of paper, towels of paper, rolls of paper and table napkins of paper in Class 16 as they can coincide in nature, purpose, public and are in competition with each other.

The contested napkins of textile are highly similar to the opponent’s sanitary napkins, all the aforesaid being for sanitary or menstruation purposes; Incontinence pads or napkins in Class 5 as they coincide in purpose, public and are in competition with each other.

The contested mattress slips [other than incontinence] are highly similar to the opponent’s protective bed pads, all for incontinence purposes in Class 5 as their purpose is to protect the bed, even if this from different situations. Furthermore, they coincide in public and might be in competition with each other.

The contested pads of textile for removing make-up; make-up removal wipes [textile] other than impregnated with toilet preparations or cosmetics are highly similar to the opponent’s premoistened or impregnated cleansing tissues or wipes; cosmetic pads, tissues or wipes in Class 3 as they coincide in purpose, public and are in competition with each other.

The contested fabrics for use in making diapers and incontinence pads are in an interim state between a raw material and a final product, they are directed at the undertakings which produce the final products of diapers and incontinence pads. The contested fabric diaper stackers are bag-like containers to hold diapers. The contested textile material for use in filtration are used to filter for example air or water. The contested drapes are finished goods of textiles or plastic that can be drawn across an opening or window. They differ in sales channels, producers and purpose from the opponent’s goods and services. They are neither complementary nor in competition. These goods are dissimilar. They are less similar to the opponent’s services in Class 35.

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 found to be identical or highly similar are directed at the public at large and at professionals for example in the health sector. The degree of attention varies from low to average.

3. The signs

CEL TECHNOLOGIES & SYSTEMS	EUROCEL
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 Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The contested sign is a word mark made up of the word ‘EUROCEL’. The earlier sign is a word mark made up of the words ‘CEL’, ‘TECHNOLOGIES’, ‘SYSTEMS’ and the sign ‘&’. Being word marks, these signs have no element that could be considered clearly more dominant than other elements.

The English word ‘TECHNOLOGIES’ denotes ‘the application of practical sciences to industry or commerce’ (18/11/2016, R 694/2016-1, Phoenix Pioneer technology (fig)/ PHOENIX, §§ 31, 38). Due to its high similarity to the German word ‘Technologien’ it will be understood also by the German public. The English word ‘SYSTEMS’ refers to a method (02/02/2016, R 846/2014-5, TORUS SYSTEMS (Bildmarke)/ TAURUS, § 28). Due to its high similarity to the German word ‘Systeme’ it will be understood also by the German public. These words on their own and together are weak in relation to the relevant goods, as they refer to technical procedures or methods. The ampersand symbol ‘&’ is used as the shorthand for the conjunction ‘and’ and is commonly used in trade (16/02/2017, R 1050/2016-1 metal&glass, § 18). Also this conjunction is weak.

The element ‘EURO’, contained in the contested sign, is perceived as the usual abbreviation of ‘European’ (‘europäisch’ in German) or ‘Europe’ (‘Europa’ in German) and indicates the European origin, or the supply throughout Europe, of the goods and services concerned (14/07/2007, T-207/06 Europig EU:T:2007:179, § 34). Consequently, that element is weak with regard to the goods and services concerned.

It cannot be excluded that the element ‘CEL’ of the contested sign will be perceived by part of the public that understands English as a reference to ‘cellulose’ (decision of 15/09/2016, R 2496/2015-1, ‘ICell (fig)/ ISOCELL’, § 24). The element ‘CEL’ of the contested sign is allusive, when perceived as a reference to ‘cellulose’ and in relation to goods which can be made of this material. Another part of the public will not relate it to ‘cellulose’, in particular, as in German the corresponding word ‘Zellulose’ is spelt with the letter ‘Z’. The Opposition Division will focus in the further examination of the case on the latter part of the public. For this part of the public the element ‘CEL’ has an average degree of distinctiveness and is the distinctive part of the contested sign.

Visually and aurally, the signs coincide in the string of letters ‘CEL’. The further coincidence in the single letters ‘E’ and ‘O’ is only incidental. The signs differ in the weak element ‘EURO’ of the contested sign and the weak elements ‘TECHNOLOGIES & SYSTEMS’ of the earlier mark. Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, for the part of the public that does not perceive ‘CEL’ as a reference to cellulose, the coinciding word ‘CEL’ is the most distinctive element of both signs, while the differentiating elements ‘EURO’ of the contested sign and ‘TECHNOLOGIES & SYSTEMS’ of the earlier mark are weak. The signs are conceptually dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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 the weak elements ‘‘TECHNOLOGIES & SYSTEMS’ in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar to a high degree and partly dissimilar to the opponent’s goods and services. The level of attention of the relevant public varies from low to average.

The signs are visually and aurally similar to a high degree. For a part of the German public the common element ‘CEL’ has no meaning and the distinctiveness of the earlier mark is average. The common element ‘CEL’ is the most distinctive element of both signs, the differentiating elements ‘EURO’ of the contested sign and ‘TECHNOLOGIES & SYSTEMS’ of the earlier mark being weak.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the earlier European Union trade mark No 10 695 914. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or highly similar to those of the earlier trade mark.

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 cannot be successful.

The opponent has also based its opposition on Spanish trade mark registration No 270 267 ‘CEL’ for cellulosic napkins, towels and handkerchiefs in Class 16 and Spanish trade mark registration No 2 523 242 ‘CEL’ for absorbent paper products such as facial tissue, toilet paper, paper table napkins, paper towels and cleaning cloth in Class 16.

Since these marks cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Beatrix STELTER

Julia SCHRADER

Swetlana BRAUN

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.