VISTA | Decision 2805813
Date Published: Sep 26, 2017
OPPOSITION No B 2 805 813
Labud d.o.o., Radnička cesta 173 r, Zagreb 10000, Croatia (opponent), represented by Davor Bošković, Zinke Kunc 3A, Zagreb 10000, Croatia (professional representative)
a g a i n s t
Thurn Produkte GmbH, Hennefer Straße 2, 53819 Neunkirchen-Seelscheid, Germany (applicant), represented by Engemann Jörg-Berten Rechtsanwälte, Brandstr. 10, 53721 Siegburg, Germany (professional representative).
On 25/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 805 813 is upheld for all the contested goods.
2. European Union trade mark application No 15 693 021 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 15 693 021 for the figurative mark . The opposition is based on Croatian trade mark registration No 20070997 and Slovenian trade mark registration No 200770815, both 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 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 Croatian trade mark registration No 20070997.
- The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; detergents; laundry soaking preparations; fabric softeners.
The contested goods are the following:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Fabric softener for laundry; Dishwashing detergents; stain removal eraser; Fabric care products; Cleaning preparations, namely all-purpose cleaning preparations, glass cleaners, toilet and bath cleaners.
An interpretation of the wording of the applicant’s list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
Bleaching preparations and other substances for laundry use are identically contained in both lists of goods.
The contested fabric softener for laundry is included in the broad category of the opponent’s fabric softeners. The contested dishwashing detergents are included in the broad category of the opponent’s detergents. Therefore, they are identical.
The contested fabric care products include, as a broader category, the opponent’s fabric softeners. 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 cleaning preparations; cleaning preparations, namely all-purpose cleaning preparations, glass cleaners, toilet and bath cleaners include, as a broader category, the opponent’s detergents. 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 polishing, scouring and abrasive preparations; stain removal eraser; are similar to the opponent’s bleaching preparations and other substances for laundry use as they can have the same producer and are distributed through the same channels. Furthermore, they target the same 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 are directed at the public at large.
The degree of attention is considered average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Croatia.
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 element ‘VISTA’, included in both signs, has no meaning for the relevant public and is, therefore, distinctive.
The element ‘COMPACT’ of the earlier mark, since it is very similar to the equivalent word in the language of the relevant territory, ‘kompaktan’, will be understood as ‘closely and nearly packed together’. Bearing in mind that the relevant goods are bleaching preparations and other substances for laundry use and fabric softeners, this element is weak, since it may refer to the way these preparations are presented.
The figurative elements of the earlier mark will be perceived as water and bubbles in rotary movement, as in the case of the washing machine process, and they are non-distinctive in connection with the relevant opponent’s goods. Similarly, the circles of the contested sign are likely to be perceived as bubbles and are, therefore, non-distinctive at least in relation to some of the contested goods, namely bleaching preparations and other substances for laundry use; cleaning; fabric softener for laundry; dishwashing detergents; fabric care products; cleaning preparations, namely all-purpose cleaning preparations, glass cleaners, toilet and bath cleaners. The black badge in the contested sign is commonplace and cannot serve to identify a commercial origin. In any case, it has to be considered 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).
The element ‘VISTA’ and the surrounding figurative elements (water and bubbles) are the co-dominant elements of the contested sign, as they are the most eye-catching compared to the tiny element ‘COMPACT’, appearing in a secondary position within the sign.
Visually, the signs coincide in the element ‘VISTA’, written in a fairly standard typeface in both signs. However, they differ in the secondary and weak element ‘COMPACT’ of the earlier mark, the colours used in this sign, as well as in the figurative elements of the respective signs, as described above, with a lower impact.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛VIS-TA’, present identically in both signs. The pronunciation of the signs differ in the sound of the letters that form the element ‘COMPACT’ of the earlier mark, which is, however, not likely to be pronounced because of its small size and weak character, as explained above.
Therefore, the signs are aurally highly similar, if not identical.
Conceptually, although the element ‘COMPACT’ of the earlier mark will evoke a concept, this element is weak. Similarly, the figurative elements perceived as bubbles in both signs are non-distinctive and cannot indicate the commercial origin of the marks. The attention of the relevant public will be attracted by the common fanciful verbal element, ‘VISTA’, which has no meaning. Therefore, the signs 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.
The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.
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, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.
- 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).
Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods are partly identical and partly similar. The relevant public has a normal degree of attention and the distinctiveness of the earlier mark is normal.
The signs are visually similar to an average degree and aurally highly similar, if not identical, since they coincide in their most distinctive element, ‘VISTA’, whereas the remaining figurative and verbal elements present in the signs are either weak or non-distinctive, as explained above. Furthermore, from a conceptual perspective, the common element ‘VISTA’ has no meaning for the relevant public and the figurative elements perceived as bubbles in both signs are non-distinctive.
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).
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, in the present case, 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 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 Croatian trade mark registration No 20070997. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right 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 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
Eva Inés PÉREZ SANTONJA | Marta GARCÍA COLLADO | Richard BIANCHI |
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.