OPPOSITION No B 2 709 940

I.C.O.N. Europe, S.L., rúa Amor Ruibal, N° 11 Entlo., 36203 Vigo (Pontevedra), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

emoji company GmbH, Necklenbroicher Strasse 52-54, 40667 Meerbusch, Germany (applicant), represented by Hucke & Schubert, Waidmarkt 11, 50676 Köln, Germany (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 940 is partially upheld, namely for the following contested goods:

Class 3:        Toiletries; Shampoos for pets; Shampoo; Soaps; Cosmetic masks; Make-up; Oils for toilet purposes; Make-up; Powder for make-up; Oils for perfumes and scents; Perfumery; Perfumery; Lipstick; False nails; Eyelashes (False -); Dry shampoos; Cosmetics; Eyebrow pencils; Creams (Cosmetic -); Skincare cosmetics; Henna [cosmetic dye]; Hair spray; Shampoo; Hair lotions; Depilatories; Wax (Depilatory -); Perfume water; Deodorants for human beings or for animals; Bath salts, not for medical purposes; Baths (Cosmetic preparations for); Antiperspirants [toiletries]; Eyebrow pencils; Eyebrow cosmetics; Essential oils; Transfers (Decorative -) for cosmetic purposes; Aftershave; Dentifrices breath freshening strips; breath freshening sprays; dental bleaching gels.

2.        European Union trade mark application No 14 414 551 is rejected for all the above goods. It may proceed for the remaining goods in Class 3, as well as for all non-contested 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 14 414 551, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 12 349 122. The opponent invoked Article 8(1)(b) EUTMR.

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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 European Union trade mark registration No 12 349 122.

1. The goods

The goods on which the opposition is based are the following:

Class 3:        Hair products, essential oils only for hair care and cosmetics only for hair care.

The contested goods are the following:

Class 3:        Toiletries; Shampoos for pets; Shampoo; Soaps; Shoe polish; Laundry preparations; Cosmetic masks; Make-up; Oils for toilet purposes; Make-up; Powder for make-up; Oils for perfumes and scents; Perfumery; Perfumery; Lipstick; False nails; Eyelashes (False -); Dry shampoos; Cosmetics; Eyebrow pencils; Creams (Cosmetic -); Skincare cosmetics; Henna [cosmetic dye]; Hair spray; Shampoo; Hair lotions; Depilatories; Wax (Depilatory -); Scale removing preparations for household purposes; Perfume water; Javelle water; Deodorants for human beings or for animals; Bath salts, not for medical purposes; Baths (Cosmetic preparations for); Antiperspirants [toiletries]; Eyebrow pencils; Eyebrow cosmetics; Breath freshening strips; Breath freshening sprays; Essential oils; Transfers (Decorative -) for cosmetic purposes; Aftershave; Polishing preparations; Dentifrices; Dental bleaching gels; Parquet floor wax; Shoe wax.

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.

The contested toiletries; shampoos for pets; shampoo; cosmetic masks; dry shampoos; cosmetics; creams (cosmetic -); henna [cosmetic dye]; hair spray; shampoo; hair lotions are identical to the opponent’s hair products because the opponent’s goods include or are included in, or overlap with, the contested goods.

The contested oils for toilet purposes; oils for perfumes and scents; essential oils are identical to the opponent’s essential oils only for hair care because the opponent’s goods are included in, or overlap with, the contested goods.

The contested soaps; make-up; make-up; powder for make-up; perfumery; perfumery; lipstick; false nails; eyelashes (false -); perfume water; deodorants for human beings or for animals; bath salts, not for medical purposes; baths (cosmetic preparations for); antiperspirants [toiletries]; transfers (decorative -) for cosmetic purposes; aftershave; eyebrow pencils; skincare cosmetics; eyebrow pencils; dentifrices; breath freshening strips; breath freshening sprays; dental bleaching gels; depilatories; wax (depilatory -); eyebrow cosmetics are similar to the opponent’s goods. The similarity varies from low to high, as they can have the same producers, distribution channels and end users. Moreover, some of the goods are often used in combination.

The contested shoe polish; laundry preparations; scale removing preparations for household purposes; Javelle water; polishing preparations; parquet floor wax; shoe wax are dissimilar to all the opponent’s goods, as they do not coincide in any of the criteria relating to the comparison of goods specified above that, taken alone or in combination, can result in a finding of similarity.

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 to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

I.C.O.N.	ICONZ
Earlier trade mark	Contested sign

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. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is composed of the letters ‘I’, ‘C’, ‘O’ and ‘N’, each of which is followed by a dot. Normally, a dot after a particular letter or a combination of letters suggests that it is an abbreviation for a particular word or words, especially when this letter or combination of letters cannot be pronounced as a word, for instance a combination of two or more consonants. However, when a sequence of letters, even when the letters are separated by punctuation marks, can be pronounced without any difficulty and particularly when the sequence of letters forms a word, it is very likely that this sequence of letters will be pronounced as a word. This is because the human brain will more readily recognise a meaningful sequence of letters than look for the meanings of the abbreviated words for which the letters stand. In the present case, this means that the English-speaking part of the public, for which the word ‘ICON’ can have several clear meanings, will perceive it as such and not merely as an abbreviation that is made up of individual letters.

The word ‘icon’ is perceived by the English-speaking part of the public with one of three meanings, namely (1) when describing someone or something as an icon, it means that they are important as a symbol of a particular thing: a fashion icon, an icon of modernism, etc.; (2) a picture of Christ, his mother or a saint painted on a wooden panel; and (3) a picture on a computer screen representing a particular computer function.

The contested sign is composed of the verbal element ‘ICONZ’. It is now common for trade mark owners to distort letters or replace them with other letters or symbols to create an effect that will attract the consumer’s (especially the younger generation of consumers’) attention. A popular example is the replacement of the letter ‘S’ with the letter ‘Z’, as in the present case. For the reasons explained above, the English-speaking consumer is very likely to perceive the contested sign as the plural form of the word ‘icon’.

In relation to the goods in question, the word ‘icon’ is most likely to be perceived with the first meaning listed above, namely as a symbol of the latest fashion trends, which gives to it a certain degree of laudatory character. Nevertheless, the Opposition Division finds its distinctiveness normal.

The marks have no elements which can be described as dominant or more/less distinctive than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘I’, ‘C’, ‘O’ and ‘N’ and differ in the dots of the earlier sign and the letter ‘Z’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of /ICON/ and differs only in the last letter ‘Z’ of the contested sign, which, bearing in mind the considerations described above, is likely to be pronounced as ‘S’ rather than ‘Z’, or with a pronunciation that is between these two. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The present case concerns the semantic content of the word ‘icon’ and its plural form. The signs are similar to a high degree.

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 English-speaking part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite some possible laudatory connotations.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to various degrees and partly dissimilar.

The signs are visually similar and aurally and conceptually similar to a high degree.

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).

Bearing in mind that the earlier mark has an average degree of distinctiveness and that the degree of attention of the relevant public is not higher than average, the Opposition Division finds that the differences between the signs are not sufficient to counteract the significant similarities between them.

Considering the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the above principle means that, taking into account the visual similarities and, in particular, the high aural and conceptual similarities between the signs, the finding regarding the likelihood of confusion is also valid in relation to the goods that are similar only to a low degree.

It follows from the above that the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 349 122. Therefore, the contested trade mark must be rejected for the goods found to be identical or similar (including those similar to a low degree) to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 9 268 541 for the following goods in Class 3: hair preparations, essential oils exclusively for hair care and cosmetics exclusively for hair care.

2. European Union trade mark registration No 10 160 406 for the following goods in Class 3: hair preparations; essential oils exclusively for hair care use; cosmetics exclusively for hair care use.

3. European Union trade mark registration No 10 913 978 for the following goods in Class 3: products for the hair, essential oils only for hair care and cosmetics only for hair care.

Despite the slightly different wording of the specifications of these other earlier rights, they cover the same scope of goods as earlier European Union trade mark registration No 12 349 122, on which the above assessment was based. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods.

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

Irina SOTIROVA

Plamen IVANOV

Natascha GALPERIN

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.