The opponent, Magnolia Partner Ltd., represented by the team of IP Consulting filed an opposition against international registration designating the European Union No 1 371 263 for the word mark Kalide. The opposition is against all the goods and services in Classes 3 and 44. It is based on the earlier European Union trade mark registration No 14 752 621 for the figurative trade mark:
The opponent invoked Article 8(1)(b) EUTMR.
Contested goods in Class 3
The contested cosmetics, toiletries, soap, antiperspirants, perfumes are at least similar to the opponent’s human hygiene and beauty care as they have the same purpose and coincide in the relevant public and distribution channels. Furthermore, they are complementary.
Contested services in Class 44
The contested visagist’s services and beauty salon services are included in the broader category human hygiene and beauty care on which the opposition is based and are, therefore, identical.
The relevant territory is the European Union.
Visually, the signs coincide in the word ‘KALIDE’, which is a distinctive element of both signs. As the similarity relies on the earlier sign’s distinctive part, which reproduces in its entirety the contested sign and will have the biggest impact on its overall impression, the Opposition Division considers the signs visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the word ‘KALIDE’, present identically in both signs and being a distinctive element of the signs. The pronunciation differs in the weak element ‘AQUA’ of the earlier sign, which has no counterpart in the contested mark. Therefore, the signs are phonetically highly similar.
Taking into account the (at least) average degree of visual and aural similarity, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods and services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.
There is a likelihood of confusion and what is more, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier trade 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).