patricks | Decision 2800855
Date Published: Sep 22, 2017
OPPOSITION No B 2 800 855
Fragrances of Ireland Limited, Jameson's Corner, Kilmacanogue, Bray, County Wicklow, Ireland (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)
a g a i n s t
Patrick Kidd, Andes Botallack, Penzance TR19 7QG, United Kingdom and Patricks Universal Exports Pty Ltd, 110/152 Campbell Parade Bondi Beach, Bondi Beach 2026, Australia (applicants).
On 08/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 800 855 is upheld for all the contested goods, namely:
Class 3: Toiletries.
2. European Union trade mark application No 15 718 554 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 718 554 for the word mark ‘patricks’, namely against all the goods in Class 3. The opposition is based on Irish trade mark registration No 132 355 for the figurative 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.
- The goods
The goods on which the opposition is based are the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions.
The contested goods are the following:
Class 3: Toiletries
The contested toiletries include a variety of preparations for beautification and personal hygiene. Therefore, they cannot be clearly separated from the opponent’s cosmetics, because these broad categories of goods overlap to a considerable extent. Consequently, they are identical.
- 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 relevant public’s level of attention will vary from average to higher than average, depending on the price and frequency of purchase of these goods.
- The signs
patricks | |
Earlier trade mark | Contested sign |
The relevant territory is Ireland.
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 contested sign is a word mark, composed of the verbal element ‘patricks’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters.
The earlier mark is a figurative mark which consists of the verbal element ‘PATRICK’ written in a rather standard typeface in bold upper case black letters.
The word ‘Patrick’, contained in both signs, is a popular male given name and will be perceived as such. In addition, St. Patrick (‘Christian missionary in Ireland, from the 5th century, probably born in Britain’; see Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/patrick) is the patron saint of Ireland and, bearing in mind the relevant territory at issue, this semantic content will also be evident for all the consumers.
Despite the lack of the apostrophe in the contested sign, the final letter ‘s’ contained therein is likely to be interpreted as denoting possession, i.e. of/from Patrick, Patrick’s.
The verbal elements of the marks convey no information as regards the relevant goods and are, therefore, normally distinctive.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘Patrick’, which constitutes the earlier mark and is entirely included in the contested sign. The signs differ in the final letter ‘s’ of the contested sign and in the earlier mark’s slight stylisation.
However, it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle applies fully in the present case, where the figurative component of the earlier mark will have a rather limited impact on the consumers, because it consists merely of the standard bold typeface used to depict the sign.
Therefore, it is considered that the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘Pat-rick’, present identically in both signs. The pronunciation differs solely in the sound of the final letter ‘s’ of the contested sign, which has no counterpart in the earlier mark.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same name and/or historical figure (St. Patrick). Their only semantic difference stems from the fact that the contested sign denotes possession, due to the presence of the final letter ‘s’. Therefore, the marks are conceptually 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.
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 contested goods were found to be identical to the goods covered by the opponent’s Irish trade mark registration No 132 355.
The signs under comparison were found to be visually, aurally and conceptually highly similar, on account of the common element ‘Patrick’, which constitutes the earlier mark and is fully reproduced in the contested sign. The signs differ in the final letter ‘s’ in the contested sign and in the stylisation of the earlier mark.
As regards the final letter ‘s’ of the contested sign, it will be interpreted as denoting possession, in relation to the name which precedes it, i.e. Patrick. Furthermore, this letter is portrayed in the ending of the sign, where it has a lesser impact for the public, because consumers read from left to right and, therefore, pay more attention to the initial part of verbal elements.
As for the stylisation of the earlier mark, as previously explained, the same is rather standard and will be perceived as an ordinary graphic means of bringing the verbal element in question to the attention of the public. In this regard, it should be noted that consumers will retain in their memory, and refer to the goods in question by their name, ‘Patrick’, rather than by describing the stylisation of the lettering of the mark.
Considering that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the Opposition Division considers that the visual, aural and conceptual similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory, in relation to identical goods.
Therefore, the opposition is well founded on the basis of the opponent’s Irish trade mark registration No 132 355. 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 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
Monika CISZEWSKA | Gueorgui IVANOV |
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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.