MELACYN | Decision 2693441
Date Published: Oct 1, 2017
OPPOSITION No B 2 693 441
Gynea Laboratorios, S.L., Calle Colon, 5, 08184 Palau- Solita i Plegamans (Barcelona), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative).
a g a i n s t
Robert Illingworth Veghte and Rosanna Valla, 42, Avenue du Peymian, 13600 La Ciotat, France (applicants), represented by Veghte Jacques Kauffmann, 42 avenue du Peymian, 13600 La Ciotat, France (employee representative).
On 13/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 693 441 is upheld for all the contested goods.
2. European Union trade mark application No 15 059 637 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 15 059 637. The opposition is based on, inter alia, Spanish trade mark registration No 3 583 244. 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 Spanish trade mark registration No 3 583 244.
- The goods
The goods on which the opposition is based are the following:
Class 3: Soaps; toiletries; essential oils; cosmetics; hair lotions; wipes impregnated with cosmetic lotions; wipes for feminine hygiene; wipes impregnated with essential oils for cosmetic use; spray cosmetics; spray soaps; cosmetic moisturizing gels; deodorants; feminine deodorants spray.
Class 5: Probiotic supplements; dietetic substances adapted for medical use; food supplements for people; disinfectants; sanitary preparations for medical use; products for destroying vermin; fungicides; products antiseptics.
The contested goods are the following:
Class 3: Cosmetics and cosmetic preparations.
Class 5: Food supplements.
Contested goods in Class 3
Cosmetics and cosmetic preparations are identically contained in both lists of goods (including synonyms).
Contested goods in Class 5
The contested food supplements include, as a broader category, the opponent’s food supplements for people. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 may vary between average and higher than average (for example, for some of the goods in Class 5 which can have an impact on the health).
- The signs
MELAGYN | MELACYN |
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).
Both marks are word marks with no apparent meaning in the relevant territory.
It should be noted 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. Consequently, the fact that the signs share, amongst others, the fourth first letters, ‘MELA’, should be taken into account in the assessment of the overall impression of the signs.
Visually, the signs coincide in the sequence of the letters ‘MELA*YN’, presenting six out of seven letters of both signs. However, the signs differ in their respective fifth letter, namely ‛G’ in the earlier mark and ‛C’ in the contested sign. In addition, these two letters are visually quite similar since they both consist of half a circle, open on the right side.
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 ‛MELA*YN’, present identically in both signs. However, the pronunciation of the signs differs in their respective fifth letter, namely ‛G’ in the earlier mark and ‛C’ in the contested sign. Each mark will be pronounced in three syllables, and the marks therefore have the same rhythm.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the 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.
- 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found identical to those of the earlier mark and are directed at the public at large with an average and, for some goods, higher than average degree of attention. The marks in dispute have been found to be visually and aurally similar to a high degree. Since none of the marks have a meaning a conceptual comparison is not possible.
As stated above, the signs coincide in the sequence of the letters ‘MELA*YN’, presenting six out of seven letters of both signs. However, the signs differ in their respective fifth letter, namely ‛G’ in the earlier mark and ‛C’ in the contested sign. On the other hand, given that the differences between the marks are one letter in the middle of each word, this difference is likely to go unnoticed by the consumers.
Considering all the above, there is a likelihood of confusion on the part of the public (even for those with a higher level of attention).
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 583 244. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right, Spanish trade mark registration No 3 583 244, 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
Boyana NAYDENOVA | Benjamin Erik WINSNER | Begoña URIARTE VALIENTE |
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.