OPPOSITION No B 2 682 238
Inmaculada Muñoz Luque, Avda. Iryda, s/n – Pol. Ind. San Pancracio, 14500 Puente Genil (Córdoba), Spain (opponent), represented by Consiangar S.L., Calle Albasanz, 72-1º 1, 28037 Madrid, Spain (professional representative)
a g a i n s t
Christophe Fostokjian, C/O Monsieur Laurent Greaux – Anse des Cayes, 97133 Saint-Barthélémy, France (applicant), represented by Elisabeth Beyney, 65 avenue Kléber, 75116 Paris, France (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 682 238 is partially upheld, namely for the following contested goods:
Class 3: Soaps.
2. European Union trade mark application No 14 996 441 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 996 441, namely against all the goods and services in Classes 3 and 44. The opposition is based on Spanish trade mark registration No 2 915 142. 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 and services
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; preparations for cleaning, polishing, scrubbing and scouring (abrasive preparations), waxes and non-slipping liquids for floors.
The contested goods and services are the following:
Class 3: Soaps; perfume; toilet water; cosmetic preparations for hair care; shampoos for the hair; gels for the hair; mousses for the hair; balms for the hair; creams for the hair; powders for the hair; waxes for the hair; serums for the hair; hair lotions; masks for the hair; preparations in aerosol form for hairdressing and hair care; hair spray; hair-colouring preparations; hair color removers; protective preparations for coloured hair; hair waving products; hair-waving preparations; essential oils; cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); personal deodorants; dentifrices; depilatories; make-up removing preparations; make-up preparations; lipstick; cosmetic masks; shaving preparations; foam bath and cosmetic preparations for baths and showers.
Class 44: Consultancy in the field of hairdressing; beauty salons; hygienic and beauty care for human beings; hairdressing; hair salon services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
Contested goods in Class 3
The contested soap is included in the broad category of the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are identical.
The contested perfume; toilet water; cosmetic preparations for hair care; shampoos for the hair; gels for the hair; mousses for the hair; balms for the hair; creams for the hair; powders for the hair; waxes for the hair; serums for the hair; hair lotions; masks for the hair; preparations in aerosol form for hairdressing and hair care; hair spray; hair-colouring preparations; hair color removers; protective preparations for coloured hair; hair waving products; hair-waving preparations; essential oils; cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); personal deodorants; dentifrices; depilatories; make-up removing preparations; make-up preparations; lipstick; cosmetic masks; shaving preparations; foam bath and cosmetic preparations for baths and showers are dissimilar to the opponent’s goods. All the above contested goods are various types of cosmetics, that is, preparations for beautifying the face, skin, hair, nails, etc., and perfumes. By contrast, the opponent’s goods are products that serve to make surfaces of clothes whiter or lighter in colour and keep clothes clean. Therefore, the nature and purpose of the goods under comparison, and their distribution channels, sales outlets, producers and methods of use, are different. Furthermore, they are neither in competition with nor complementary to each other.
Contested services in Class 44
The contested consultancy in the field of hairdressing; beauty salons; hygienic and beauty care for human beings; hairdressing; hair salon services are dissimilar to the opponent’s goods. The abovementioned services relate to beauty services, which include for instance hair services, manicure and pedicures, facial and other relaxing and beauty services. By contrast, the opponent’s goods are products that serve to make surfaces of clothes whiter or lighter in colour and keep clothes clean. Therefore, the nature and purpose of these goods and services, and their distribution channels, sales outlets, producers and methods of use, are different. Furthermore, they are neither in competition with nor complementary to each other.
- 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 average.
- The signs
| LUXE |
|
|
Earlier trade mark |
Contested sign |
The relevant territory is Spain.
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).
‘LUXE’ will be understood as a reference to ‘luxury’ (due to its similarity to ‘lujo’ in Spanish and identity with ‘luxe’ in Catalan). In view of the relevant goods, the word will therefore be understood as referring to their positive characteristics in the sense that they are first-class, luxury items or that they bestow these qualities on users. In view of the connection, the word will be perceived as weak.
At least some Spanish consumers will mentally divide the contested sign into ‘I’ (meaningless) and ‘LUXE’. This is because they may perceive the element ‘LUXE’ as a reference to something luxurious, as explained above. Therefore, for this part of the public, the word ‘LUXE’ will be perceived as a weak element in relation to the relevant goods.
The Opposition Division will focus the assessment of likelihood of confusion on that part of the public that will understand the meaning of the aforesaid element ‘LUXE’ in both signs.
The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in the weak element ‘LUXE’, which constitutes the entire earlier mark and four out of five letters/phonemes in the contested mark. They differ in the first letter, ‘I’, of the contested sign.
Visually, the signs also differ in the stylisation of the contested sign.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually similar to an average degree.
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 by saying that ‘the word LUXE contained in both signs … is the most characteristic and truly distinctive word of the conflicting signs’. However, the opponent did not file any evidence to prove that claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier trade mark as a whole alludes to positive characteristics of the goods, as indicated previously in section c) of this decision. Therefore, given its weak nature, it has a low degree of distinctiveness.
- Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods and services are identical and dissimilar, and they target the public at large, whose degree of attention is average. The signs are visually, aurally and conceptually similar to an average degree. Furthermore, the earlier mark has a low degree of distinctiveness.
According to the principle of imperfect recollection, 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). In this respect, it should also be noted that consumers generally tend to remember similarities rather than dissimilarities between signs.
In view of this, even though there is an additional graphical element in the contested sign (i.e. the stylisation of the letters and use of the golden colour), the relevant public, displaying only an average degree of attention, is still likely to believe that the relevant identical goods, sold under the at least similar signs, originate from the same undertaking or 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).
Even though the word ‘LUXE’ has been found weak, the fact remains that the only differences between the signs lie in the stylisation of the letters and the letter ‘I’, present in the contested sign, which are not sufficient to clearly distinguish the signs. The graphical elements may be perceived as merely decorative or indeed reinforcing the idea of ‘luxury’. For instance, the golden letters used in the contested sign could make consumers subconsciously believe that the goods offered by the applicant have a luxurious character, as it is a colour commonly associated with the idea of success, achievement, luxury and triumph.
Although the applicant argues that the contested sign is a neologism, still it incorporates the entire earlier mark ‘LUXE’, which can be perceived as such by at least part of the relevant public.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 915 142.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
| Jessica LEWIS | Michal KRUK | Ana MUÑIZ RODRÍGUEZ |
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.