Sophia | Decision 2752098
Date Published: Sep 28, 2017
OPPOSITION No B 2 752 098
Netto Marken-Discount AG & Co. KG, Industriepark Ponholz 1, 93142 Maxhütte-Haidhof, Germany (opponent), represented by Dr. Rauscher & Partner, Ludwig-Eckert-Str. 10, 93049 Regensburg, Germany (professional representative)
a g a i n s t
France New Resplendence Inte Home Furnishing Industry Limited, Room 5,7/F Ho King Commercial Centre,2-16 Fa Yuen Street, Mongkok, Kowloon, Hong Kong People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 26/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 098 is upheld for all the contested goods, namely
Class 5: Belts for sanitary napkins [towels].
2. European Union trade mark application No 15 378 111 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 378 111, namely against some of the goods in Class 5. The opposition is based on, inter alia, German trade mark registration No 307 77 862. 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 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 German trade mark registration No 307 77 862.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 5: Belts for sanitary napkins [towels].
The contested goods are the following:
Class 5: Belts for sanitary napkins [towels].
The contested goods 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
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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 figurative mark consisting of the female first name ‘Sophie’ depicted in a fanciful capitalized case letters. The dot on the top of the letter ‘i’ is replaced by what can be interpreted as a leaf or a feather. All of the elements are represented in blue.
The contested sign is a figurative mark as well consisting of the female first name ‘Sophia’ represented in standard capitalized black case letters.
Both ‘Sophia’ and ‘Sophie’ are variations of the same well-known female first name which are both widely used in the relevant territory. In any event, neither the first names nor the leaf or feather, depending on how it is perceived, have any meaning in relation to the goods in question. Therefore, they are all distinctive.
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).
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.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same female first name, the signs are conceptually similar.
Visually and aurally, the signs coincide in the letters ‘Sophi*’ and in their corresponding sound. They differ in their last letter, and in their respective sound, namely ‘e’ in the earlier mark and ‘a’ in the contested sign. Although the additional figurative element, the colour and the fanciful typeface of the earlier mark find no counterpart in the contested sign, the signs are still visually similar to a degree above than the average degree on account of the coincidences existing. Aurally, taking into consideration that the only difference between the signs lays in a vowel placed at the very end of the first names, they are highly 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
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
In the present case, the goods are identical and the signs are visually similar to a degree above than the average, aurally similar to a high degree and conceptually similar. This is not only because both signs refer to a variation of the same well-known female first name written and pronounced almost identically, but also because there is no striking difference that would allow the consumer to clearly differentiate them.
Account should be taken of the fact 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 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
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 German trade mark registration No 307 77 862. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 307 77 862 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).
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 grounds 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
Benoit VLEMINCQ | Sandra IBAÑEZ | 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.