OPPOSITION No B 2 518 424

Rueber, S.L., Gran Via de Les Corts Catalanes, 581, pral. A, 08011 Barcelona, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Zhejiang Meizhiyuan Cosmetics Co., Ltd, No.11 Wuyan North Road, Yidong Industrial Area, Yiwu, Zhejiang, People’s Republic of China (applicant), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe – Terhulpen, Belgium (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 518 424 is partially upheld, namely for the following contested goods:

Class 3: Facial cleansers; lipsticks; cosmetics; perfumes; dentifrices; cosmetics for animals.

2.        European Union trade mark application No 13 703 046 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 3: Cleaning preparations; polishing preparations; scouring preparations; abrasive preparations; fumigation preparations [perfumes].

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 703 046. The opposition is based on inter alia, Spanish trade mark registration No 2 558 236. The opponent invoked Article 8(1)(b) EUTMR.

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 Spanish trade mark registration No 2 558 236 .

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PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, that is, Spanish trade mark registration No 2 558 236.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 06/02/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 06/02/2010 to 05/02/2015, inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Perfumery, essential oils, hair lotions, soaps and cosmetics.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 02/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 07/02/2016 to submit evidence of use of the earlier trade mark. This deadline was extended by two months and expired on 07/04/2016, which was a day on which the Office was closed. On 08/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A screenshot, dated 07/04/2016, from the opponent’s web page, in English, showing its products, which range from cosmetics to hair prostheses, and indicating that the company started its business in 1982. The goods on display are shampoo and hair and skin lotions. The signs  and  depicted in blue, green, grey or gold, are visible on the products that are offered for sale and in other places on the web pages.

• Screenshots, dated 08/04/2016, from chemists’ web pages, in Spanish, selling shampoo, and hair and skin lotions supplied by the opponent under the same marks as described above.

• Approximately 100 invoices, dated 01/02/2010 to 13/11/2015, for the sale of the opponent’s goods, such as shampoo and hair and skin lotions.

• An advertisement on a telephone directory web page, dated 2011.

• Press clippings from the Spanish local press, dated between 2011 and 2015.

• A photograph of a stand at a fair, undated.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices and the press clippings show that the place of use is Spain. This can be inferred from the language of the documents, Spanish, the currency mentioned, euros, and the addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the applicant states that the screenshots of web pages that are dated 07/04/2016 and 08/04/2016 do not fall within the relevant period. The Opposition Division is of the opinion that this evidence nevertheless confirms use of the opponent’s mark within the relevant period, because the goods on sale would have had to be produced before being offered in the market. Therefore, this evidence refers to use of the trade mark within a period that is very close to the relevant period.

The invoices that were submitted, which list the same products as those listed in the screenshots of the opponent’s web page, where the earlier sign is also clearly visible on the products, provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration and frequency of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the registered mark is ; the evidence depicts the same sign in blue, green or gold, the sign  and the word ‘RUEBER’. None of these forms alters the distinctive character of the mark as registered because they do not add anything to its word element, delete anything from it or alter it in any way.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered: … if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories. (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for shampoo and hair and skin lotions. Shampoo and skin lotions can be considered to form an objective subcategory of cosmetics. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for hair lotions and cosmetics.

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: hair lotions and cosmetics.

The contested goods are the following:

Class 3: Facial cleansers; cleaning preparations; polishing preparations; scouring preparations; abrasive preparations; fumigation preparations [perfumes]; lipsticks; cosmetics; perfumes; dentifrices; cosmetics for animals.

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 are identically contained in both lists of goods.

The contested facial cleansers; lipsticks and cosmetics for animals are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested perfumes are similar to a high degree to the opponent’s cosmetics, as they have the same purpose. They can have the same producers, end users and distribution channels.

The contested dentifrices are similar to a low degree to the opponent’s cosmetics, as they have the same relevant public. They can have the same distribution channels.

The contested cleaning preparations are emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. The contested polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, the contested abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are household products used for cleaning. The opponent’s hair lotions and cosmetics are specifically hair and body care preparations. Their nature, intended purpose and method of use are different from those of the contested goods. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

The same reasoning applies to the contested fumigation preparations [perfumes], which are substances to disinfect or purify an area affected by the fumes of certain chemicals. To that extent, their natures and purposes are not similar to those of the opponent’s hair lotions and cosmetics. Their producers, distribution channels and relevant publics are also different. Therefore, these goods are considered dissimilar.

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 and similar to varying degrees are directed at the public at large.

The degree of attention is considered average.

3. The signs

	UEVER
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).

The earlier mark is a figurative mark that contains the word ‘RUEBER’ in a grey standard upper case typeface; the first letter ‘R’ is slightly larger than the other letters. Above the word ‘RUEBER’, there is a white curved line forming a stylised letter ‘R’ on a grey oval shape.

The contested sign is the word mark ‘UEVER’.

The verbal elements of both signs are meaningless for the relevant public and the figurative element in the earlier mark does not have a meaning, apart from the repeated first letter of the verbal element. The applicant claims that the relevant public would perceive the contested sign ‘UEVER’ as the compound word ‘U-EVER’, made up of the abbreviation of the English word ‘you’ and the word ‘EVER’. Although it is true that the average consumer, perceiving a word mark, will break it down into elements which suggest a concrete meaning or resemble known words (06/10/2004, T-356/02 Vitakraft, EU:T:2004:292, § 51), in the present case, the relevant public is Spanish. Therefore, it is unreasonable to assume that consumers who speak only Spanish will easily grasp the two meanings of the mark. As both signs are devoid of any meaning, they are distinctive.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘UE*ER’, which are in the same order. However, they differ in the first letter ‘R’ and in the figurative element of the earlier mark, which have no counterparts in the contested sign, and in the letter between the two letters ‘E’, which is ‘B’ in the earlier mark and ‘V’ in the contested sign.

Because of the limited impact of the figurative element, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘UEB/VER’, present identically in both signs. It should be noted that, in Spanish, the difference between the sounds of the letters ‘B’ and ‘V’ is almost imperceptible. The pronunciation differs in the sound of the additional letter ‘R’ of the earlier mark, which most probably will not be pronounced, as it is a repetition of the first letter of the verbal element. The signs have the same vowel sequence /UE*E/. Therefore, the rhythm and intonation of the marks are the same.

Because of the imperceptible difference in the sound of the letters ‘B’ and ‘V’ and the common vowel sequence in the signs, they are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the earlier mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of 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 the 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).

The contested goods are identical or similar to various degrees or dissimilar to the opponent’s goods and they target the public at large, whose degree of attention is average. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness.

The signs under comparison are visually similar to an average degree and aurally, highly similar and, as a conceptual comparison is not possible, the conceptual aspect has no influence on their similarity.

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).

It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

This is particularly relevant when, as in the present case, the signs have no concept that could serve to deflect consumers’ attention from the letters and sounds that the marks have in common.

Likelihood of confusion 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 covered are from the same or economically linked undertakings.

In the earlier mark there is a visual distinction between the initial upper case letter ‘R’ and the rest of the letters of which the mark is composed. Therefore, the relevant consumer may see the contested sign as being the house brand of the goods protected by the earlier mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594).

The public will make a connection between the conflicting marks and assume that the goods in question come from the same undertaking or economically-linked undertakings (likelihood of association).

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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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 has to be rejected.

The opponent has also based its opposition on earlier Spanish trade mark registration No 2 809 253 for the word ‘RUEBERCLINIC’ for perfumery and cosmetics, essential oils, soaps and shampoo, hair and skin lotions and creams, capilar lotions in Class 3.

This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional letters, such as ‘CLINIC’, which are not present in the contested sign. Moreover, the result of the analysis of the proof of use has been assessed for the other earlier trade mark and the evidence is the same for both trade marks. 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 shall 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

Loreto URRACA LUQUE

Jessica LEWIS

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.