OPPOSITION No B 2 507 575
Campomar,S.L., Avenida de España, 9, 51001 Ceuta, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Cutsplanning. Co., Ltd., Mogi building 401, 41-28, Udagawa-cho, Shibuya-ku, Tokyo 150-0042, Japan (holder), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative).
On 26/01/2017, the Opposition Division takes the following
1. Opposition No B 2 507 575 is upheld for all the contested goods.
2. International registration No 1 207 258 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 207 258. The opposition is based on European Union trade mark registration No 9 679 176. 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 goods
The goods on which the opposition is based are the following:
Class 3: Perfumery and cosmetics of all kinds; essential oils; soaps and dentifrices.
Class 25: Clothing, footwear and headgear of all kinds.
The contested goods are the following:
Class 3: Hair setting preparations; hair care preparations; cosmetics; soaps and detergents; perfumery; polishing preparations; shoe cream; shoe polish.
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.
Cosmetics; soaps and perfumery are identically contained in both lists of goods (including synonyms).
The contested hair setting preparations; hair care preparations are included in the broad category of the opponent’s cosmetics of all kinds. Therefore, they are identical.
The contested detergents overlap with the opponent’s soaps. Therefore, they are identical.
The contested polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested shoe polish is an example of polishing preparation for shoe care. The contested shoe cream is also a product for shoe care. These goods are all similar to the opponent’s soaps. Indeed, they may have the same purpose and coincide in end users and distribution channels. The contested polishing preparations may also have the same nature as that of the opponent’s soaps.
- 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
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
Both signs are word marks.
The contested sign has no element that could be considered more distinctive.
As regards the earlier mark, the French-speaking part of the relevant public will perceive that the earlier mark consists of the first name ‘GISELE’ and a surname, namely ‘DENIS’ although, in France, the latter is more often used as a first name. This is due to the fact that the public naturally associates a name following a first name as being a surname. The perception of signs made up of personal names may vary from country to country within the European Union. Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). In France, ‘DENIS’ is not as well-known as a family name and, therefore, as regards the earlier mark, is likely to focus more the consumers’ attention than the first name ‘GISELE’ which may belong to a greater number of people. Therefore, the surname ‘DENIS’ is the most distinctive element of the earlier mark.
The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide, because the most distinctive element of the earlier mark, namely the word ‘DENIS’, forms the whole contested sign. However, they differ in the first verbal element ‘GISELE’ of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables /DE-NIS/, present identically in both signs. The pronunciation differs in the syllables /GI-SE-LE/ of the first verbal element of the earlier mark which has been considered less distinctive than the second element ‘DENIS’.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the French-speaking public will perceive the words ‘GISELE’ and ‘DENIS’ of the earlier mark as being a first name and a family name, respectively. The word ‘DENIS’ is a popular French first name, but is also used as a surname. At least for part of the French-speaking public, the signs will be associated with an identical surname which, in the earlier mark, is more distinctive than the given name ‘GISELE’. Therefore, for these consumers, the signs are conceptually similar to a high degree.
For another part of the French-speaking public, the word ‘DENIS’, in common in both signs, may be perceived as a family name in the earlier mark and as a given name in the contested sign. Therefore, the perception of this name for some French-speaking consumers will not be identical. In such a case, although the Greco-Roman origin of this name is the same in both cases, the coincidence is lower and, for this reason, the signs are only conceptually similar to a low degree for these consumers.
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
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods are identical or similar. They target the public at large and the degree of attention is average. The signs are similar, visually and aurally to an average degree and, from the conceptual point of view, to a low or high degree depending on whether or not the word ‘DENIS’ will be perceived as a family name in both signs.
Likelihood of confusion also 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. In the present case, the French-speaking part of the public will give in the earlier mark a higher intrinsic value to the coinciding word ‘DENIS’ which fully forms the contested sign. Consequently, it is likely that French-speaking consumers may believe that the contested sign is a short form of the earlier mark including only its more distinctive element, namely the name ‘DENIS’.
The holder argues that the prior mark either refers to one female individual named ‘Gisele DENIS’, whereas the sign of the application only refers to a male individual. Therefore, for the holder, these marks are, conceptually, radically distinct as they convey opposite contents, since referring to individuals of different gender (female / male). However, it has been considered by the Opposition Division that the name ‘DENIS’ may also be perceived as a surname in the contested sign. Moreover, one of the conditions for the existence of a likelihood of confusion is evidently that the public must have been previously confronted to the earlier mark. In the present case, it is likely that when confronted to the contested sign, at least part of the French-speaking public could remember that the word ‘DENIS’ was used as a family name in the earlier mark. As argued by the opponent, the fact that the surname ‘DENIS’ derives from a given name does not invalidate the fact that ‘DENIS’ is also a surname, as shown in the document provided by the opponent. Therefore, the applicant’s argument must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 679 176. It follows that the contested trade mark must be rejected for all the contested goods.
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 holder 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
Chantal VAN RIEL
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.