OPPOSITION No B 2 709 510

DM-drogerie markt GmbH + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft MBB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Ebin New York, Inc., 479 South Dean Street, Englewood New Jersey 07631, United States of America (applicant), represented by HGF Limited, 4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West, Manchester  M1 5WG, United Kingdom (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 510 is upheld for all the contested goods.

2.        European Union trade mark application No 15 143 381 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 15 143 381 for the word mark ´EBIN NEW YORK´. The opposition is based on, inter alia, German trade mark registration No 302 013 033 015 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 German trade mark registration No 302 013 033 015 (not subject to the proof of use requirement).

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, in particular make-up removing preparations, eyebrow cosmetics, eyebrow pencils, depilatories, colorants for toilet purposes, adhesives for affixing false eyelashes, cosmetic pencils, false nails, false eyelashes, nail varnish removing preparations, lipsticks, nail care preparations, nail polishing aids for spreading toes, cold compresses for cooling eyes; cosmetic kits, shaving preparations; beauty masks, tissues, impregnated with cosmetic preparations, cotton wool for cosmetic purposes, cotton sticks for cosmetic purposes; cosmetic preparations for baths.

Class 26: Artificial flowers, hair bands; brooches [clothing accessories]; hair colouring caps; hair grips [slides]; hair pins; hair nets; bows for the hair; hair ornaments; barrettes [hair-slides]; false hair; hair nets; hair curlers.

The contested goods are the following:

Class 3: Artificial eyelashes; cosmetic preparations; cosmetics; false eyelashes; hair care preparations; hair cleaning preparations; hair styling preparations; non-medicated hair treatment preparations for cosmetic purposes; nail polish remover.

Class 26: Hair extensions; wigs, hairpieces, and add-in and add-on hair accessories constructed primarily of synthetic and/or human hair.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 3

The contested artificial eyelashes; cosmetics; false eyelashes; nail polish remover are identically contained in both lists of goods (including synonyms).

The contested cosmetic preparations form a broad category including the opponent’s cosmetic preparations for baths in Class 3. The Opposition Division cannot ex officio dissect the applicant’s broad category and, therefore, the goods are identical. The contested hair care preparations; hair cleaning preparations; hair styling preparations; non-medicated hair treatment preparations for cosmetic purposes are included in the broad category of the opponent’s cosmetics in Class 3. Therefore, these goods are identical.

Contested goods in Class 26

The contested hair extensions; wigs, hairpieces; add-in and add-on hair accessories constructed primarily of synthetic and/or human hair are included in the broad category of the opponent’s false hair. Therefore, they are identical.

2. 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 average

3. The signs

	EBIN NEW YORK
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 formed by the word ´ebelin`, written in white lower case letters against a black rectangular background. The figurative element in the form of a frame in the earlier mark is not such an uncommon element and more of a decorative nature. The public will not pay as much attention to this weak element, as to the other more distinctive element of the mark, namely the verbal element ‘ebelin’. This word has no meaning in the relevant territory. It is distinctive in relation to the goods in Classes 3 and 26.

The contested mark is formed by the words `EBIN NEW YORK`. `EBIN´ has no meaning in German. It is distinctive for the goods in Classes 3 and 26. The remaining elements, ‘NEW YORK’, of the contested sign are likely to be associated with the geographical origin of the goods and they are considered weaker than normal for all the contested goods.

Visually and aurally, the signs coincide in ‘EB-IN’, the first two letters placed at the beginning of the signs. The sound of the word EBELIN vs EBIN is very similar in German, also because the differentiating element falls in the middle of the earlier mark and is surrounded by the same letters as in the contested sign. They differ in the weak elements ‘NEW YORK’ of the contested sign and visually in the black rectangle of the earlier mark that do not have any correspondents in the signs and it has furthermore low distinctive character.

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. Although the public in the relevant territory will perceive the meaning of ´NEW YORK´ in the contested sign and even though this part is considered weak, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical. The earlier mark enjoys a normal degree of distinctiveness. The signs have been found to be visually and aurally similar to an average degree and conceptually the marks are not similar.

The contested sign also contains the verbal elements ‘NEW YORK’, but this part has been found to be weaker than normal for all the relevant goods. The public understands the meaning of the elements ‘NEW YORK‘ and will not pay as much attention to this weaker parts to the other more distinctive element of the mark. The same is applicable with respect to the black rectangular frame in the earlier mark, which is also weak. Consequently, the impact of this weaker than normal elements is limited when assessing the likelihood of confusion between the marks at issue. Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 302 013 033 015. It follows that the contested trade mark must be rejected for all the contested goods.

As this 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). It is also unnecessary to examine the evidence of use filed by the opponent in relation to this other earlier right.

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

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Saida CRABBE

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.