PROFESSIONAL AMOS | Decision 2779109
Date Published: Sep 25, 2017
OPPOSITION No B 2 779 109
JBD Distributions Ltd, 9 Ivylea Road, Manchester M19 1WT, United Kingdom (opponent), represented by TR Intellectual Property Ltd, Ground Floor, Adamson House, Towers Business Park, Wilmslow Road, Didsbury, Manchester M20 2YY, United Kingdom (professional representative)
a g a i n s t
Amos C. Harp Jr., 2901 Plough Street, Pittsburgh, Pennsylvania 15212, United States of America (applicant), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative).
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 779 109 is upheld for all the contested goods.
2. European Union trade mark application No 15 438 492 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 15 438 492. The opposition is based on European Union trade mark registration No 13 427 778. The opponent invoked Article 8(1)(a) and (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, inter alia, the following:
Class 3: Bleaching preparations and other substances for laundry use; household cleaning, polishing, scouring and abrasive preparations.
The contested goods are the following:
Class 3: All purpose cleaning preparations; Automotive cleaning preparations; Carpet cleaning preparations; Cleaning preparations for household purposes; Floor stripping/cleaning preparation; Glass cleaning preparations; Household cleaning preparations; Impregnated cleaning cloths; Preparations for cleaning, protecting and preserving vehicle surfaces; cleaning, polishing, scouring and abrasive preparations.
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.
The contested cleaning preparations for household purposes; household cleaning preparations; polishing, scouring and abrasive preparations are identically contained in both lists of goods (including synonyms).
The contested all purpose cleaning preparations; carpet cleaning preparations; floor stripping/cleaning preparation; glass cleaning preparations are all cleaning preparations and are included in, or overlap with, the opponent’s household cleaning preparations. Therefore, they are identical.
The contested cleaning preparations include, as a broader category, the opponent’s household cleaning preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested automotive cleaning preparations are highly similar to the opponent’s household cleaning preparations. They have the same nature, purpose, methods of use, producers, distribution channels and relevant public.
The contested preparations for cleaning vehicle surfaces are highly similar to the opponent’s household cleaning preparations. They have the same nature, purpose, methods of use, producers, distribution channels and relevant public.
The contested impregnated cleaning cloths are cleaning articles and, as such, similar to the opponent’s household cleaning preparations. They have the same purpose, producers, distribution channels and relevant public and they are complementary.
The contested preparations for protecting and preserving vehicle surfaces could be, for example, polishing waxes, and are therefore considered similar to the opponent’s household polishing preparations. They have the same producers, distribution channels and relevant public.
- 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 different degrees are directed at the public at large. The degree of attention is average.
- The signs
AMOS | PROFESSIONAL AMOS |
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 mark is a word mark, ‘AMOS’.
The contested mark is also a word mark, ‘PROFESSIONAL AMOS’.
The element ‘AMOS’ in both marks will, at least by part of the public, be perceived as the male given name Amos, originally a Hebrew name. It is also the name of a mountain in Hungary. However, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘PROFESSIONAL’ of the contested sign will be associated with the adjective ‘professional’, meaning, for example, ‘extremely competent in a job; produced or performed with competence and skill’ (information extracted from Collins English Dictionary on 30/06/2017 at https://www.collinsdictionary.com/Dictionary/english/professional). Bearing in mind that the relevant goods are related to cleaning, this element is non-distinctive for all these goods, because it could easily be perceived as simply descriptive (laudatory) of the producer or the goods themselves. The relevant public will understand this foreign word, since it is a basic English word that will be understood in most Member States and it is also very similar to the equivalent word in the official languages of many countries in the European Union, for example ‘profesional’ in Spanish, ‘professionale’ in Italian, ‘professional’ in German, ‘professionnel’ in French, ‘professionell’ in Swedish, ‘profesionálny’ in Slovakian and ‘Professionaalne’ in Estonian. As a whole, the mark will be perceived as ‘professional Amos’, a person/product who is good at what he or it does.
The contested mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘AMOS’, which is distinctive for the relevant goods. However, they differ in the verbal element ‘PROFESSIONAL’ of the contested sign, which is non-distinctive, as described above.
Therefore, the signs are visually similar to a high degree.
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 ‛AMOS’, present identically in both signs. This element is distinctive. The pronunciation differs in the sound of the letters ‛PROFESSIONAL’ in the contested mark, which have no counterparts in the earlier sign. This element is non-distinctive.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs, for part of the public, will be associated with the same meaning in the distinctive word/name ‘AMOS’, which the signs have in common, the signs are conceptually highly similar.
For the part of the public that will not perceive any meaning in the word ‘AMOS’, but will perceive the meaning of the word ‘PROFESSIONAL’, the signs are not conceptually 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.
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
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.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and 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 identical or similar to various degrees. They target the public at large. The degree of attention is average.
The signs are visually and aurally highly similar, and conceptually highly similar for the part of the public that perceives a meaning in the verbal element ‘AMOS’. The distinctiveness of the earlier mark is normal.
The earlier mark, ‘AMOS’, is reproduced in its entirety in the contested sign and can be identified clearly as an individual element within the structure of the contested mark, even though it is placed second in the mark. What matters is whether or not the coinciding element (the entire earlier mark) is recognisable as a separate element with an independent distinctive role in the composition of the mark applied for.
Taking into account all the relevant circumstances of the case, the difference between the marks, which results from the non-distinctive word ‘PROFESSIONAL’ of the contested mark, is not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods come from the same undertaking or at least 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).
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 13 427 778. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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
Irina SOTIROVA | Lena FRANKENBERG GLANTZ | Plamen IVANOV |
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.