NALLY | Decision 2702119
Date Published: Sep 28, 2017
OPPOSITION No B 2 702 119
Maria José Ramon Ros, Juan Enrique Ramon Ros, Carmen Consuelo Ramon Ros, Cdad. de Sevilla, 5 y 7 Fte. Jarro, 46988 Paterna (Valencia), Spain (opponents), represented by Sanz Bermell International, Calle Jativa, 4, 46002 Valencia, Spain (professional representative)
a g a i n s t
Sociedade de Perfumarias Nally, LDA, Campo Grande 189, 1700-090 Lisboa, Portugal (holder).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 702 119 is upheld for all the contested goods.
2. International registration No 1 272 839 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponents filed an opposition against all the goods of international registration designating the European Union No 1 272 839. The opposition is based on, inter alia, European Union trade mark registration No 5 704 481. The opponents 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 opponents’ European Union trade mark registration No 5 704 481.
- The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
The contested goods are the following:
Class 3: Cosmetics.
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
NELLY | NALLY |
Earlier trade mark | Contested sign |
The relevant territory is 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 trade mark.
The contested sign consist of the word ‘NALLY’ which lacks any clear meaning and is distinctive in relation to the goods in question.
The earlier mark consists of the word ‘NELLY’. A part of the relevant public, for instance in the Anglophone or French-speaking territories, will perceive it as a female given name, or a nickname, derived from the names Eleanor, Helen etc. However, outside those language areas, such as in the perception of the Spanish-speaking public, this word has no meaning for a significant part of the public. Irrespective of whether it is understood or not, it is distinctive.
In the present case, the Opposition Davison finds it appropriate to focus the comparison of signs on the part of the public, for which ‘NELLY’ has no meaning.
Conceptually, since a comparison on this level is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Visually and aurally, the signs coincide in the sequence of letters/sounds ‘N*LLY’. They differ in the letter/sound ‘E’ of the earlier mark and ‘A’ of the contested sign. Neither of the signs has any identifiable components. Therefore, the signs are similar to a high degree.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case.
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 has no meaning for 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 global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, since he/she only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
In the present case, the goods are identical. The marks are visually and aurally highly similar and the conceptual comparison, as explained in section c) of this decision, does not affect the assessment of likelihood of confusion. In particular the signs coincide in four out of five letters/sounds and the only difference results from the letters/sounds ‘E’ and ‘A’ which are in the middle parts of the respective words. It is, therefore considered that the differences between the marks are clearly insufficient to overcome the overwhelming similarities.
Considering all the above, there is a likelihood of confusion on the part of the public for which the earlier mark lacks any meaning. 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 opponents’ European Union trade mark registration No 5 704 481. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier European Union trade mark registration No 5 704 481 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 opponents (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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponents 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 opponents 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
Solveiga BIEZA | Arkadiusz GORNY | Judit NÉMETH |
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.