Jean&Len Philosphie | Decision 2459876 - Jean & Len GmbH v. LORD BERNIER INC.
Date Published: Sep 25, 2017
OPPOSITION No B 2 459 876
Jean & Len GmbH, Brunnenstr. 31, 72505 Krauchenwies, Germany (opponent), represented by Wallach Koch Haibach Feldkamp, Garmischer Str. 4, 80339 München, Germany (professional representative)
a g a i n s t
Lord Bernier Inc., 5605 de Gaspé, suite 401, Montréal, Quebec H2T 2A4, Canada (applicant), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 459 876 is upheld for all the contested goods.
2. European Union trade mark application No 13 270 921 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of the European Union trade mark application No 13 270 921 (figurative mark ), namely against all the goods in Class 3. The opposition is based on, inter alia, the European Union trade mark registration No 13 126 883 (word mark ‘JEAN & LEN Philosophy’). 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 13 126 883 (word mark ‘JEAN & LEN Philosophy’).
- The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; Biological laundry detergents; Cleaning, polishing, and scouring preparations; Soaps; Medicated soap; Perfumery; Essential oils; Cosmetics; Sun tan lotion; Hair care product; Hair preparations and treatments; Hair lotions; Dentifrices.
Class 5: Pharmaceutical and veterinary preparations; Medicated creams for treating the skin; Paediatric preparations; Medicated powders for treating the skin; Sunscreen preparations for medical purposes; Sunburn ointments; Plasters, materials for dressings; Disinfectants; Preparations for controlling vermin; Creams (Medicated -) for the lips.
Class 35: Advertising; Business management; Retailing and wholesaling of washing preparations, cosmetics and sanitary products.
The contested goods are the following:
Class 3: Laundry preparations, Fabric conditioners, Stain removing preparations; Cleaning preparations for household purposes, Wipes incorporating cleaning preparations, Dishwashing preparations; Shampoos and hair conditioners; Oils, gels, mousses, masks and balms for hair care and hair styling; hair color and color removers; Hair-waving preparations; Hair lotions; Hair straightening preparations; Soaps, soaps and gels for the shower and bath; Bath foam; Hand, face and body washing preparations; Dentifrice; Dental rinses, non medicated; Lotions and wipes for removing make-up; Nail polish remover; Shave creams; Non-medicated bath salts; Face and body scrubs; Massage oils; Cosmetics, in particular creams, milks, lotions, oils, gels and powders for the care of the face, body, feet and hands; Make-up; Sunscreen and after-sun preparations; personal deodorants; Cosmetic preparations and goods for pregnant women, cosmetic beauty preparations for the breasts, cosmetic preparations and goods for heavy legs, cosmetic preparations and goods for preventing pregnancy spots, cosmetic preparations and goods for preventing dry skin in pregnancy, cosmetic preparations and goods for preventing pregnancy masks; Cosmetic preparations and goods for preventing stretch marks; Preparations, not for medical purposes, for caring for babies’ skin, namely shampoos, sunscreen and after-sun preparations, moisturising creams for the face, moisturising creams and soaps for the body; Cleaning wipes for baby changing purposes, cleansing solutions, with or without soap, for the body and hair, superfatted soaps, foam baths for babies, creams and milks for the face, creams and milks for the body, creams and milks for the bottom (not for medical purposes), changing creams (not for medical purposes).
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’ used in the applicant’s 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).
However, the term ‘namely’, used in the applicant 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.
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 laundry preparations, fabric conditioners, stain removing preparations are included in the broad category of the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are identical.
The contested cleaning preparations for household purposes, wipes incorporating cleaning preparations, dishwashing preparations are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.
The contested shampoos and hair conditioners; oils, gels, mousses, masks and balms for hair care and hair styling; hair color and color removers; hair-waving preparations; hair lotions; hair straightening preparations; gels for the shower and bath; bath foam; hand, face and body washing preparations; lotions and wipes for removing make-up; nail polish remover; shave creams; non-medicated bath salts; face and body scrubs; cosmetics, in particular creams, milks, lotions, oils, gels and powders for the care of the face, body, feet and hands; make-up; sunscreen and after-sun preparations; personal deodorants; cosmetic preparations and goods for pregnant women, cosmetic beauty preparations for the breasts, cosmetic preparations and goods for heavy legs, cosmetic preparations and goods for preventing pregnancy spots, cosmetic preparations and goods for preventing dry skin in pregnancy, cosmetic preparations and goods for preventing pregnancy masks; cosmetic preparations and goods for preventing stretch marks; preparations, not for medical purposes, for caring for babies’ skin, namely shampoos, sunscreen and after-sun preparations, moisturising creams for the face, moisturising creams for the body; cleaning wipes for baby changing purposes, cleansing solutions, with or without soap, for the body and hair, foam baths for babies, creams and milks for the face, creams and milks for the body, creams and milks for the bottom (not for medical purposes), changing creams (not for medical purposes) are included in or overlap with the broad category of the opponent’s cosmetics. Therefore, they are identical.
The contested soaps are identically contained in both lists of goods.
The contested soaps for the shower and bath; moisturising soaps for the body; superfatted soaps are included the broad category of the opponent’s soaps. Therefore, they are identical.
The contested massage oils overlap with the opponent’s essential oils. Therefore, they are identical.
The contested dentifrices are identically contained in both lists of goods.
The contested dental rinses, non medicated are similar to a high degree to the opponent’s dentifrices. This is because they have the same purpose, i.e., to promote oral hygiene; similar natures; the same method of use, as both are used orally; and the same producers and distribution channels.
- 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 a high degree) are directed at the public at large.
The degree of attention is considered average.
- The signs
JEAN & LEN Philosophy | |
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 trade mark is a word mark consisting of the verbal elements ‘JEAN & LEN Philosophy’. The contested mark is figurative and consists of the verbal elements ‘Jean&Len’ and ‘PHILOSOPHIE’, both in a standard font, and two figurative elements of a grey geometric frame and a grey star.
The earlier mark and the contested mark have the verbal element ‘JEAN & LEN’ in common. This element will be understood by the relevant public as two names, which are distinctive for the relevant goods.
The English word ‘Philosophy’ of the earlier mark will be understood by the relevant public because of its similarity to the equivalent words in other languages, such as ‘filosofi’ (in Danish and Swedish), ‘filosofie’ (in Dutch), ‘philosophie’ (in French), ‘Philosophie’ (in German), ‘filosofia’ (in Finnish, Italian and Portuguese Finnish), ‘filozofia’ (in Polish and Slovak) and ‘filozofija’ (in Croatian, Lithuanian and Slovenian). The verbal element ‘PHILOSOPHIE’ of the contested mark will therefore also be understood, as it is the French and German equivalent of ‘Philosophy’. Therefore, these two verbal elements will both be perceived as referring to ‘the study of the fundamental nature of knowledge, reality, and existence, especially when considered as an academic discipline’ or to ‘a theory or attitude that acts as a guiding principle for behaviour’ (information extracted from the Oxford Dictionary).
These verbal elements as such have no meaning for the relevant goods and are not descriptive, allusive or otherwise weak. Therefore, they are distinctive.
Taking into account the other verbal elements, both marks could be understood by part of the relevant public as a reference to the ‘philosophy’ of Jean and Len, namely to their guiding principles in creating and using cosmetics and cleaning products.
The figurative elements of the contested mark, namely the frame and the star, are commonly used, banal elements. They are less distinctive than the verbal elements.
The earlier mark has no elements that could be considered clearly more dominant than other elements. In the contested sign, the element ‘Jean&Len’ is the most eye-catching, dominant element, as it is bold, larger than the other elements and positioned in the centre.
Visually, the signs coincide in the letters ‘JEAN & LEN Philosoph*’, which incorporate the distinctive elements of both signs and the dominant element of the contested sign. They differ in their endings (‘-y’ and ‘-ie’), the stylisation of these elements and the other figurative elements of the contested sign. As the difference in the ending is small, it is likely to be overlooked by the general public, while the other differences do not substantially alter the visual impact on consumers. This is because the verbal elements of the contested sign are clearly legible and consumers will identify the same words in both signs. Furthermore, the figurative elements are less distinctive and are overshadowed by the distinctive and dominant verbal elements.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛JEAN & LEN Philosoph*’, present identically in both signs. The different endings, namely the letters ‘-y’ and ‘-ie’, will also be pronounced similarly, if not identically.
Therefore, the signs are (virtually) identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
Therefore, the signs are conceptually identical.
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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
In the present case, the goods are partly identical and partly highly similar, and the signs are visually highly similar, aurally virtually identical and conceptually identical.
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).
The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).
There is a likelihood of confusion because the differences between the signs are confined to less distinctive or secondary elements, such as the ending of the long and distinctive verbal elements, which are otherwise identical, and the banal figurative elements.
Considering all the above, 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 13 126 883. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right, namely the opponent’s European Union trade mark registration No 13 126 883, 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
Denitza STOYANOVA-VALCHANOVA | Martin EBERL | 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.