OPPOSITION No B 2 567 769

Equilibra S.r.l., Via Plava 74, 10135 Torino, Italy (opponent), represented by Buzzi, Notaro & Antonielli d’Oulx, Via Maria Vittoria, 18 10123 Torino, Italy (professional representative)

a g a i n s t

Klaris, 17 rue Beffroy, 92200 Neuilly-sur-Seine, France (holder), represented by Coraline Favrel, 86 bd Carnot, 59800 Lille, France (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 567 769 is upheld for all the contested goods, namely:

Class 3: Adhesives (adhesive materials) for cosmetic use; balms other than for medical use; cosmetics; cosmetic preparations for slimming; cosmetic creams; tissues impregnated with cosmetic lotions; toiletries; cleaning preparations for the body and beauty care; soaps and gels; bath preparations; skin care preparations; astringents for cosmetic use; sun-tanning preparations (cosmetics); sunscreen preparations; cleansing milk for toilet use; lotions for cosmetic use; beauty masks; skin whitening cream; cosmetic products for skin care; hair lotions; pomades for cosmetic use; shampoos; aromatic extracts and essential oils; oils for cosmetic use; oils for toilet use.

Class 5: Food supplements for human beings; pharmaceutical products.

2.        International registration No 1 223 795 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining services.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 223 795, namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 11 980 083. 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.

1. The goods

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

Class 3: Cosmetics, in particular face, eye and body treatment creams, protective creams and sun creams, cosmetic oils; Soaps, facial and body cleansing preparations, lipsticks; Body deodorants; Hair treatment preparations, In particular, Shampoos and Lotion; Dentifrices, toothpaste and mouthwash.

Class 5: Food supplements for the health of the intestines, cardiovascular system, hepatic system, microcirculatory system and of the urinary tract; Anti-ageing and antioxidant food supplements; Food supplements for cleansing, drainage, weight loss and weight control; Food supplements for sleep, relaxation, mood and for improving the immune system; Energy food supplements, multi-vitamin and mineral supplements; Meal replacement preparations; Food supplements based on aloe vera and propolis; Food supplements for athletes, nursing mothers and children; all the above goods, excluding pharmaceutical preparations, namely, gastrointestinal preparations.

The contested goods are the following:

Class 3: Adhesives (adhesive materials) for cosmetic use; balms other than for medical use; cosmetics; cosmetic preparations for slimming; cosmetic creams; tissues impregnated with cosmetic lotions; toiletries; cleaning preparations for the body and beauty care; soaps and gels; bath preparations; skin care preparations; astringents for cosmetic use; sun-tanning preparations (cosmetics); sunscreen preparations; cleansing milk for toilet use; lotions for cosmetic use; beauty masks; skin whitening cream; cosmetic products for skin care; hair lotions; pomades for cosmetic use; shampoos; aromatic extracts and essential oils; oils for cosmetic use; oils for toilet use.

Class 5: Food supplements for human beings; pharmaceutical products.

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

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’, which appears in the opponent’s list of goods after the word ‘cosmetics’, indicates that the specific goods that follow the term ‘in particular’ 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).

The contested balms other than for medical use; cosmetic preparations for slimming; cosmetic creams; tissues impregnated with cosmetic lotions; toiletries; bath preparations; skin care preparations; astringents for cosmetic use; sun-tanning preparations (cosmetics); sunscreen preparations; cleansing milk for toilet use; lotions for cosmetic use; beauty masks; skin whitening cream; cosmetic products for skin care; hair lotions; pomades for cosmetic use; oils for cosmetic use; oils for toilet use are included in the broad category of, or overlap with, the opponent’s cosmetics, in particular face, eye and body treatment creams, protective creams and sun creams, cosmetic oils. Therefore, they are identical.

Soaps; cosmetics; shampoo are identically contained in both lists of goods.

The contested gels are included in the broad category of, or overlap with, the opponent’s soaps. Therefore, they are identical.

The contested cleaning preparations for the body and beauty care overlap with the opponent’s facial and body cleansing preparations. Therefore, they are identical.

The contested adhesives (adhesive materials) for cosmetic use are similar to the opponent’s cosmetics, in particular face, eye and body treatment creams, protective creams and sun creams, cosmetic oils, as they have the same purpose. They can have the same producers, relevant public and distribution channels. Furthermore, they are sometimes used in combination, and in some case there is also a relative complementarity.

The contested aromatic extracts and essential oils are similar to the opponent’s cosmetics, in particular face, eye and body treatment creams, protective creams and sun creams, cosmetic oils, since they have the same purpose. They can also have the same relevant public and distribution channels.

Contested goods in Class 5

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods. Therefore, the wording excluding pharmaceutical preparation, namely, gastrointestinal preparations means that only gastrointestinal preparations are excluded from the category in question.

The contested food supplements for human beings include, as a broader category, the opponent’s food supplements for athletes, nursing mothers and children; all the above goods, excluding pharmaceutical preparations, namely, gastrointestinal preparations. Therefore, they are identical.

The contested pharmaceutical products are similar to the opponent’s food supplements for athletes, nursing mothers and children; all the above goods, excluding pharmaceutical preparations, namely, gastrointestinal preparations, as they have the same purpose – namely to improve health condition – they are also distributed through the same channels and target the same relevant public.

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, some of the relevant goods, such as shampoo; soaps; cosmetics, are directed at the public at large. Others, such as pharmaceutical preparations, are directed at both the public at large and healthcare professionals. Since these goods target both the general public and specialists, the likelihood of confusion will be assessed in relation to the general public, which is generally more prone to confusion.

The degree of attention may vary from average (in relation to goods that do not attract a higher than average degree of purchase involvement on the part of the public, for instance shampoo; soaps; cosmetics) to relatively high (in relation to those goods that relate to consumers’ health, for instance pharmaceutical products).

3. The signs

	AQUA EQUILIBRE
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public for which the word elements ‘equilibra’ and ‘EQUILIBRE’, in the earlier and contested signs respectively, are meaningless, that is, the German-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word ‘equilibra’, depicted in slightly stylised, green, lower case characters, except for the first letter, ‘e’, which is depicted in red. This first letter overlaps with the letter ‘q’, but it is easily recognisable by the relevant public, since it is clearly depicted and is in a different colour from the other letters. As stated above, the word ‘equilibra’ has no meaning for the relevant public and is, therefore, distinctive.

Under the word ‘equilibra’ there is a curved red line. Although this figurative element is not negligible in terms of size, it has a low degree of distinctiveness, since it is likely to be perceived by consumers as essentially merely decorative and not as indicating the commercial origin of the goods. Therefore, the word ‘equilibra’ is the most distinctive element of the mark.

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

The contested sign is the word mark ‘AQUA EQUILIBRE’. Like the word ‘equilibra’ in the earlier mark, the word ‘EQUILIBRE’, being meaningless for the relevant public, has to be considered distinctive in relation to the relevant goods. Although the word ‘AQUA’ in the contested sign does not exist as such in German, it will be understood by the relevant consumers to mean ‘water’ because some German composite words, such as ‘aquakultur’ (‘aquaculture’ in English), contain the prefix ‘aqua’, which refers to ‘water’ or ‘water-related’. Moreover, account should be taken of the fact that the element ‘aqua’ is a common Latin word, ‘which the European Union consumer may be assumed to know’ (28/01/2015, T-123/14, AquaPerfect, EU:T:2015:52, § 34).

Bearing in mind that ‘AQUA’ is a meaningful word for the relevant public and that the relevant goods are cosmetics, food supplements and pharmaceutical preparations, it is considered that ‘AQUA’ is a weak element in relation to these goods, as it may be perceived as referring to the fact that they have a hydrating purpose, that they are water-soluble or that water is one of their main ingredients. Therefore, the word ‘EQUILIBRE’ is the more distinctive element of the contested mark. Being a word mark, the contested sign has no element that could be considered more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘EQUILIBR’, which constitute eight out of the nine letters of the distinctive word elements of the earlier mark and the contested sign, ‘equilibra’ and ‘EQUILIBRE’ respectively. They differ in their last letters, namely in the letter ‘A’ of the earlier mark versus the letter ‘E’ of the contested sign. They also differ in the first word of the contested sign, ‘AQUA’, which has no counterpart in the earlier mark, and in the figurative element (the curved red line) and the stylisation of the letters in the earlier mark. It is true that ‘AQUA’ is the first element of the contested sign; however, it will have a lesser impact on consumers, given that, as explained above, it has a low degree of distinctiveness.

The impact of the figurative element of the earlier mark on the evaluation of the visual similarity between the marks is minor. 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, since 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011; R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Moreover, in the present case, as explained above, the curved red line of the earlier mark is merely decorative. The stylisation of the word ‘equilibra’ in the earlier mark is not conspicuous or striking enough to prevent consumers from perceiving the letters as such. Furthermore, as consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word element. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /EQUILIBR/, present identically in both signs. The pronunciation differs in the sound of the last letters, ‛A’ and  ‘E’, of the word elements ‘equilibra’ and ‘EQUILIBRE’ of the earlier mark and the contested signs respectively. There are further differences in the sound of the word /AQUA/ of the contested sign, which has no counterpart in the earlier mark. However, since ‘AQUA’ is weak, there is a high degree of aural similarity between the signs, deriving from the coinciding letters ‘EQUILIBR’.

Conceptually, bearing in mind the above considerations regarding the meanings that will be attributed by the relevant consumers to the verbal elements of the marks, one of the signs (the earlier sign) will not be associated with any meaning, since the figurative element of the earlier mark (the curved red line) does not convey any concept that would alter the conceptual perception of the sign. The contested sign will be associated with the meaning of the word ‘AQUA’. Therefore, the signs are not conceptually similar.

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 contested goods are partly identical and partly similar to different degrees to the opponent’s goods. The degree of attention may vary from average to relatively high.

The signs are visually similar to an average degree and aurally similar to a high degree, as their distinctive word elements, ‘equilibra’ and ‘EQUILIBRE’, almost entirely coincide, differing only in their last letters, ‘A’ and ‘E’.

The differences in the ends of the signs will have little impact on the impressions that the signs will produce on consumers, who are likely to focus on the signs’ first, coinciding, elements.

The other differences, arising from the figurative element and the stylisation of the verbal element in the earlier mark and from the word ‘AQUA’ in the contested sign, also have a limited impact when assessing the likelihood of confusion, on account of their limited distinctiveness, as explained above in section c).

The fact that the signs under comparison are not conceptually similar must be considered in the context of the low degree of distinctiveness of the word ‘AQUA’, which will have only a limited impact on the overall impression of the contested mark, as explained above.

Furthermore, account must be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between them arising from the near total coincidence of the marks in their distinctive verbal elements ‘equilibra’ and ‘EQUILIBRE’. Therefore, the relevant public, when encountering the signs in relation to identical or similar goods, even that part of the public that will display a relatively high degree of attention, is likely to think that the goods come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German-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 11 980 083. It follows that the contested trade mark must be rejected for all the contested 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.

Since the holder 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

Francesca CANGERI SERRANO

Angela DI BLASIO

Michele M. BENEDETTI-ALOISI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.