OPPOSITION No B 2 020 983

Coty Inc., 2 Park Avenue, New York 10016, United States of America (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

HCT Europe Limited, Unit 6, Pepys Court, 84-86 The Chase, Clapham, London SW4 0NF, United Kingdom, and Euromadi Iberica S.A., Laurea Miro 145, 08950 Esplugues de Llobregat (Barcelona), Spain (applicants), represented by Laudens, Blackwell House, Guildhall Yard, London EC2V 5AE, United Kingdom (professional representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 020 983 is upheld for all the contested goods, namely:

Class 3:        Cosmetics; fragrances; lipsticks; lip glosses; mascara; foundation preparations; pressed powder [cosmetics]; eyeshadow; eye and lip pencils; nail varnish; nail care preparations; make-up powder; concealer and corrector [cosmetics]; illuminator; cosmetics for bronzing the skin; crème eyeshadow; eyebrow pencils; khol pencils; lip stains; blusher; eyeliners; skin toners; skin cleansers [non-medicated]; skin primers; lip primers; moisturisers [non-medicated]; skin serums [cosmetics]; body crèmes; cheek stains.

2.        European Union trade mark application No 10 605 301 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 605 301, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 2 394 542. The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The goods

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

Class 3:         Soaps; skin and body care preparations namely, skin cleansers, skin moisturisers, skin lotions, skin soaps, sun screen preparations, cosmetics, non-medicated hair care preparations, nail care preparations, fragrant oils for personal use, non medicated bath salts, incense and tooth whitening preparations.

The contested goods are the following:

Class 3:        Cosmetics; fragrances; lipsticks; lip glosses; mascara; foundation preparations; pressed powder [cosmetics]; eyeshadow; eye and lip pencils; nail varnish; nail care preparations; make-up powder; concealer and corrector [cosmetics]; illuminator; cosmetics for bronzing the skin; crème eyeshadow; eyebrow pencils; khol pencils; lip stains; blusher; eyeliners; skin toners; skin cleansers [non-medicated]; skin primers; lip primers; moisturisers [non-medicated]; skin serums [cosmetics]; body crèmes; cheek stains.

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

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, nail care preparations are identically contained in both lists of goods.

The contested lipsticks; lip glosses; mascara; foundation preparations; pressed powder [cosmetics]; eyeshadow; eye and lip pencils; nail varnish; make-up powder; concealer and corrector [cosmetics]; illuminator; cosmetics for bronzing the skin; crème eyeshadow; eyebrow pencils; khol pencils; lip stains; blusher; eyeliners; skin toners; skin cleansers [non-medicated]; skin primers; lip primers; moisturisers [non-medicated]; skin serums [cosmetics]; body crèmes; cheek stains are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested fragrances include, as a broader category, the opponent’s fragrant oils for personal use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention varies from average to high, depending on the degree of sophistication of the goods, whether or not they are luxury goods, the frequency of purchase and their price.

3. The signs

LOLA	LOLA MAKE UP BY PERSE
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). This applies by analogy to international registrations designating the European Union. 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 marks are both word marks, being composed of the word ‘LOLA’ in the case of the earlier mark and the words ‘LOLA MAKE UP BY PERSE’ in the case of the contested mark. As word marks, they have no dominant elements.

As regards the element common to both marks ‘LOLA’, it will be understood by the relevant public as a female name. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

As regards the words ‘MAKE UP’ of the contested mark, although the hyphen between the words is missing, the relevant public will associate it with ‘make-up’ due to the relevant goods, and therefore it will be understood as ‘cosmetics such as lipstick or powder applied to the face, used to enhance or alter the appearance’ (information extracted from Oxford Dictionaries on 12/04/2017 at https://en.oxforddictionaries.com/definition/make-up). Consequently, considering the relevant goods, this combination of words is considered to be descriptive for the relevant goods. Finally, the words ‘BY PERSE’ are likely to be understood by the public as indicating that the goods at issue have been produced by someone whose surname is PERSE. Given this meaning of ‘BY PERSE’ (which will be interpreted as a reference to the designer of the goods rather than to their commercial origin), this part of the sign will have less impact than the word ‘LOLA’. Consequently, the element ‘LOLA’ can be considered the more distinctive element of the contested mark.

Visually, the signs coincide in the word ‘LOLA’. They differ in the additional words ‘MAKE UP BY PERSE’ of the contested mark, which are, however, considered secondary. Because the word ‘LOLA’ is the unique distinctive element in the contested mark in relation to the goods in question, consumers will focus on it and will remember this word. Therefore, it is considered that the signs are visually similar to an average degree, even more so when account is taken of the fact that the earlier mark is entirely contained in the contested mark.

Moreover, 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.

Aurally, the pronunciation of the signs coincides in the syllables ‘LO-LA’, present identically in both signs. They differ in the pronunciation of ‘MAKE UP BY PERSE’ of the contested mark, which has no counterpart in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the female name ‘LOLA’, they are considered conceptually highly similar. This is because the remaining elements of the contested sign are weak.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

In the present case, it has been established that the contested goods are identical to the opponent’s goods. The signs are conceptually highly similar, and aurally and visually similar to an average degree, to the extent that they coincide in the word ‘LOLA’, which is distinctive for the goods in question.

The word ‘LOLA’ is the most distinctive element of the contested mark. Moreover, the trade marks have their first elements in common, and it is the beginning of a sign that generally catches the consumer’s attention. Consequently, while it is true that the trade marks have certain differences, these are confined to secondary elements of the contested mark. Such differences do not allow the public to safely distinguish between the marks, given on the presence in each of them of the prominent word ‘LOLA’. Consumers are likely to focus more on the element that will be seen as identifying the specific product line (LOLA), rather than on the elements that would be perceived as identifying the designer who created the product line or is in some other way responsible for the product line. The presence of the element ‘LOLA’ in both marks makes it likely that the English-speaking public would believe erroneously either that the goods sold under each of the trade marks have the same commercial origin or that there is a commercial or industrial link between the two signs.

Given the similarity between the conflicting trade marks and the identity between the goods, and taking account of the principle of interdependence of the factors that determine the likelihood of confusion, 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 394 542. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicants are the losing party, they 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

Francesca DINU

Cristina CRESPO MOLTO

Janja FELC

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.