premium SMILE DENTAL WHITENING | Decision 2719592
Date Published: Sep 25, 2017
OPPOSITION No B 2 719 592
SC Euro Estate Consulting Srl, str. Alexandru Moruzzi, nr. 9, bl. V54B, sc. C, ap. 38, sector 3, Bucharest, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative)
a g a i n s t
AK engineering GmbH, Auf der Ohmer 21, 51381 Leverkusen, Germany (applicant), represented by Angela Erwin, Mütze Korsch Rechtsanwaltsgesellschaft MBH, Trinkausstraße 7, 40213 Düsseldorf, Germany (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 719 592 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 141 971 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 and services of European Union trade mark application No 15 141 971. The opposition is based on, inter alia, Romanian trade mark registration No 107 401. 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 Romanian trade mark registration No 107 401.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
As regards the translation of the list of goods in Class 10 submitted by the opponent, namely devices and surgical instruments, medical, dental and veterinary, limbs, eyes and artificial teeth; orthopedic; suture materials, the Opposition Division notes some obvious mistakes in the original version and proceeds hereby to replace the clearly incorrect translation with a correct translation (Part C, Section 2, Chapter 2, point 1.5.1.2 of the Guidelines):
Class 10: Surgical, medical, dental and veterinary devices and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Class 44: Medical services; veterinary services; hygiene and beauty care for human beings or animals; services for agriculture, horticulture and forestry.
The contested goods and services are the following:
Class 3: Cosmetics; cosmetic preparations for the care of mouth and teeth; bleaching preparations for cosmetic purposes, in particular bleaching preparations for teeth; tooth care preparations; mouth rinse; dental bleaching gels; dentifrices; teeth whitening strips; cosmetic preparations for body care; cosmetic preparations for whitening teeth; dentifrices.
Class 10: Lamps for medical purposes; medical apparatus and instruments; dental apparatus and instruments; mirrors for dentists; teeth protectors for dental purposes; lamps for cosmetic teeth whitening.
Class 44: Dentistry; cosmetic dental services; human hygiene and beauty care; information about oral hygiene; bleaching; cosmetic dentistry; cosmetic body care services; cosmetics consultancy services; cosmetic treatment for the body; cosmetic treatment; cosmetic analysis; consultancy services relating to cosmetics; cosmetic treatment consultancy and advisory services.
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’s list of goods and services, indicates that the specific goods and services 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).
Contested goods in Class 3
Cosmetics; dentifrices (listed twice in the applicant’s list of goods) are identically contained in both lists of goods.
The contested cosmetic preparations for body care are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.
The contested cosmetic preparations for the care of mouth and teeth; bleaching preparations for cosmetic purposes, in particular bleaching preparations for teeth; tooth care preparations; mouth rinse; dental bleaching gels; teeth whitening strips; cosmetic preparations for whitening teeth are included in the broad category of, or overlap with, the opponent’s dentifrices. Therefore, they are identical.
Contested goods in Class 10
Medical apparatus and instruments; dental apparatus and instruments are identically contained in both lists of goods (including synonyms).
The contested lamps for medical purposes are included in the broad category of the opponent’s medical devices and instruments. Therefore, they are identical.
The contested mirrors for dentists; teeth protectors for dental purposes; lamps for cosmetic teeth whitening are included in the broad category of the opponent’s dental devices and instruments. Therefore, they are identical.
Contested services in Class 44
The contested dentistry is included in the broad category of the opponent’s medical services. Therefore, they are identical.
The contested cosmetic dental services; human hygiene and beauty care; information about oral hygiene; bleaching; cosmetic dentistry; cosmetic body care services; cosmetics consultancy services; cosmetic treatment for the body; cosmetic treatment; cosmetic analysis; consultancy services relating to cosmetics; cosmetic treatment consultancy and advisory services are included in the broad category of the opponent’s hygiene and beauty care for human beings or animals. Therefore, 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 and services found to be identical are directed at the public at large (Classes 3 and 44) and at a professional public with specific professional knowledge or expertise in the medical and dentistry fields (Class 10).
The degree of attention will vary from average to high, depending on the expected impact on one’s health, the price, the specialised nature, or the terms and conditions of the purchased goods and services.
- The signs
JUST SMILE | |
Earlier trade mark | Contested sign |
The relevant territory is Romania.
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).
With regard to the contested sign, it can 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). This is particularly true in the present case, as the figurative element in the contested sign consists of a black rectangular background and a curved blue line of a purely decorative nature (which for part of the relevant public may reinforce the concept of the word ‘SMILE’, as explained below). Therefore, this figurative element has limited distinctiveness.
The word ‘premium’ in the contested sign will be perceived by the entire relevant Romanian public as referring to something of a better or superior quality, as it is commonly used in trade. It is laudatory and therefore non-distinctive. The words ‘DENTAL WHITENING’ will also be understood as ‘making teeth white’ by the entire relevant public, as the word ‘dental’ is very close to the Romanian equivalent and the word ‘whitening’ is commonly used in trade. As these words indicate a characteristic of the goods and services, namely their nature and purpose, they are non-distinctive. Moreover, these words are also less dominant than the words ‘premiumSMILE’, as they are depicted in much smaller characters.
The part of the relevant public that is familiar with English, and especially the professional public, will understand the word ‘SMILE’ in both marks as referring to a facial expression denoting happiness. For this part of the relevant public, the curved blue line in the contested sign might reinforce this concept. The earlier mark, ‘JUST SMILE’, will be understood by this part of the public as ‘simply smile’.
Bearing in mind that the relevant goods and services are mainly dental goods and services, it is considered that the coinciding element ‘SMILE’ is allusive for these goods and services, as it would be associated with the enhanced attractiveness of a facial expression denoting happiness that could result from the use of these goods and services. Therefore, it is considered that the distinctiveness of this element is limited for a part of the relevant public when assessing the likelihood of confusion between the marks at issue. For the part of the public that does not understand the element ‘SMILE’ with the above meaning, this element has a normal degree of distinctiveness.
Taking into account the above, although the element ‘SMILE’ is of weak distinctiveness for part of the relevant public, it is for the entire relevant public the most distinctive element in the contested sign, as the remaining elements are non-distinctive.
The part of the relevant public that will not associate the word ‘JUST’ in the earlier mark with its English meaning might perceive it as the Romanian word meaning ‘true, equitable, reasoned’. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
As the earlier mark as a whole will be perceived by the part of the public familiar with English as an expression meaning ‘simply smile’, and by the part of the public that is not familiar with English as two distinctive words, the earlier mark has no elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the word ‘SMILE’, which is an independent element in the earlier mark and the most distinctive element in the contested sign. The signs differ in the additional word, ‘JUST’, in the earlier mark and in the remaining elements in the contested sign, all of which are non-distinctive or secondary, as explained above. The signs further differ in the colours of the contested sign, with the word ‘SMILE’ certainly being more visually eye-catching, because it is depicted in light blue, than the remaining black and grey elements. The earlier mark is a word mark. 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 word marks are presented in upper or lower case letters, or in a combination thereof.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the element ‛SMILE’, present identically in both signs. The pronunciation differs in the sound of the letters of the first word, ‘JUST’, of the earlier mark and the first word, ‘PREMIUM’, of the contested sign. As explained above, it is very probable that the public will disregard, and therefore not pronounce, the words ‘DENTAL WHITENING’ in the contested sign because they will be perceived as non-distinctive or secondary in the sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by a part of the relevant public with a similar meaning on account of the coinciding word ‘SMILE’, which has, however, limited distinctiveness, the signs are conceptually similar to a low degree for this part of the relevant public.
The remaining part of the relevant public will grasp the meaning of only the words ‘premium’ and ‘dental whitening’ in the contested sign and the Romanian word ‘JUST’ in the earlier mark; therefore, for this part of the relevant public the marks are conceptually not similar.
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 (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.
Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for part of the relevant public (the part familiar with English). The mark has a normal degree of distinctiveness for the remaining part of the relevant public, for which it has no meaning in relation to the goods and services in question.
- 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 (recital 8 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).
The conflicting goods and services are identical.
The relevant publics are the public at large and a professional public, whose degree of attention will vary from average to higher than average.
The distinctiveness of the earlier mark as a whole is low for part of the relevant public and average for the remaining part of the relevant public.
The signs are visually and aurally similar to an average degree. For a part of the relevant public they are conceptually similar to a low degree, while for the remaining part of the relevant public they are not conceptually similar.
Despite the fact that the coinciding word ‘SMILE’ might be weak in relation to the relevant goods and services for the part of the relevant public familiar with English, it is, however, the most distinctive element in the contested sign. Furthermore, the fact that the earlier mark has an additional word has no significant conceptual impact for the part of the relevant public familiar with English, as it merely qualifies the word ‘SMILE’. These are considered important factors to be taken into account, as they counterbalance the low degree of distinctiveness of the earlier mark for part of the relevant public.
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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Consequently, even if the average consumer is capable of detecting certain visual, aural and conceptual differences between the two conflicting signs, the likelihood that he might associate the signs with each other is very real. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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, it is considered that the identity between the goods and services outweighs the somewhat lower degree of similarity between the signs. Therefore, a likelihood of confusion exists for the entire relevant Romanian public, including the professional public and the general public with a higher degree of attention.
The applicant argues that the signs have different beginnings and that this is an important factor to be taken into account. Although it is true that the beginning of signs usually attracts the primary attention of the relevant public, this argument is not applicable in the present case. As mentioned above, the first word of the contested sign, ‘premium’, is non-distinctive and will therefore not retain the consumers’ attention. Furthermore, the coinciding word ‘SMILE’ plays an independent distinctive role in both signs and is the most distinctive element in the contested sign.
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 Romanian trade mark registration No 107 401. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 Romanian trade mark registration No 107 401 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right 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
Marta GARCÍA COLLADO | Saida CRABBE | Ric WASLEY |
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.