OPPOSITION No B 2 531 914

Vente-Privee.com, 249, avenue du Président Wilson, 93210 La Plaine Saint Denis, France (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative)

a g a i n s t

Nanjing Walland Techonology Co. Ltd, 8 Shanxi Rd., Rm A1301-1310, Jinshan Bld., Jiangsu 210029, People’s Republic of China (applicant), represented by Raquel Cuba Martins, Rua D. Francisco Manuel de Melo, 21, 1070-085 Lisbon, Portugal (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 531 914 is partially upheld, namely for the following contested goods:

Class 3:        Cosmetics.

Class 25:        Clothing; Footwear.

2.        European Union trade mark application No 13 633 086 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 633 086. The opposition is based on European Union trade mark registration No 6 386 197. 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 and services

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

Class 9:        Spectacles (optical goods), sunglasses, spectacles for sports, anti-glare spectacles; spectacle frames; spectacle frames; spectacle lenses; correcting lenses (optics); contact lenses; contact lenses, optical lenses; optical goods; eyewear cases; containers for contact lenses; binoculars; spotting scopes; magnifying glasses (optics); anti-dazzle shades;Scientific (apart from medical use), nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; galvanic cells; video cameras; photography screens; projection screens; fluorescent screens; video displays; monitors (computer hardware); radio, including for vehicles; audio and video receivers; television apparatus; video recorders; cassette players; compact disc players; readers (data processing equipment); DVD players; optical character readers; electronic diaries; pocket calculators; electronic pocket translators; satellite navigation equipment; navigation apparatus for vehicles (onboard computers); batteries, electric; electric batteries; magnetic data carriers; magnetic cards; smart cards with chips; compact discs (audio-video), optical discs, optical compact discs and recording discs; compact discs with read-only memory and interactive compact discs; optical and magnetic data media; audio-visual teaching apparatus; instructional and teaching material, in the form of CD-ROMs; computer software (recorded programs); downloadable software; downloadable electronic publications; cinematographic film (exposed); animated cartoons; slide projectors; photographic transparencies; data-processing apparatus and equipment; computers; computer peripheral devices; computer memories; modems; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; calculating machines; clothing and footwear for protection against accidents, irradiation and fire; protective helmets and masks; diving suits, gloves for divers and divers’ masks; pince-nez; magic lanterns; musical juke boxes; personal stereos; headphones; walkie-talkies; telephone apparatus; telephones including mobile telephones; radiopaging apparatus; video telephones; telephone answering machines; hands-free kits for telephones; telephone receivers; loudspeakers and cabinets for loudspeakers; amusement apparatus adapted for use with an independant display screen or a monitor; apparatus for games adapted for use with an external display screeen or monitor; facsimile machines; neon signs; hair curlers, electrically heated; hair-curlers, electrically heated; electric make-up removing appliances; electric irons;none of the aforesaid goods in Class 9 being in the field of finance.

Class 16:        Debit cards and credit cards (non-magnetic); printers’ type; printing blocks; typewriters (electric or non-electric); office requisites (except furniture) and except packaging materials, flexible and protective packaging, packaging for dispatch purposes, security bags, document holders, pouches for holding transport documents attached to parcels, envelopes, security envelopes; none of the aforesaid goods in Class 16 being in the field of finance.        

Class 35:        Advertising, including online advertising on a computer network; Mail advertising (including by electronic means); Radio advertising; Television advertising; Arranging newspaper subscriptions for others; Business management; Business appraisals; Commercial information agencies; Market studies; Economic forecasting; Statistical information; Market research; Advertising management; Rental of advertising equipment, space and media (including online on a global communications network such as the Internet); Business consultancy, information or enquiries; Assistance in management of business activities; Business management and organisation consultancy; Efficiency experts; Business research; Commercial administration of the licensing of the goods and services of others; Organisation of exhibitions and trade fairs for commercial or advertising purposes; Bill-posting; Publication of publicity texts; Business management consultations; Professional consultancy relating to advertising and promotion; Computerised file management; Consultancy relating to the administrative management of Internet websites; Collection and systematic ordering of data in a central file; Dissemination of advertising matter, direct mail advertising; Publicity columns preparation; Updating of advertising material; Sales promotion (for others); Opinion poll; Providing facilities for exhibitions (administrative); Business management of hotels; Shop window dressing; Demonstration of goods; Sample distribution; Auctioneering services; Import-export agencies; Rental of advertising time on communication media; Business management of performing artists; Professional management of models, celebrities, artistes, athletes, comedians and fashion designers; Modelling agencies, namely selection, recruitment and placement of models; Modelling for advertising or sales promotion; Public relations services; News clipping services; Management of the careers of models, celebrities, artistes, athletes, comedians and fashion designers; Negotiating contracts for models, celebrities, artistes, athletes, comedians and fashion designers; Document reproduction; Administrative management of promotional gifts; Organisation of promotional and advertising operations to obtain customer and personnel loyalty; Presentation of goods on communications media, in particular on a sales website, for retail purposes, namely, on the one hand, chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manures, fire-extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, fuel additives, engine-decarbonising chemicals, fuel-saving preparations, water softening preparations, chemicals for use in cleaning chimneys, radiator flushing chemicals, chemical preparations for use in photography, paper and films for use in photography, adhesives, ungluing preparations, flower preservatives, corrosive preparations, anti-corrosive preparations, disincrustants, solvents, thinners, compositions for repairing inner tubes of tyres, paints, varnishes, coatings, lacquers, turpentine, preservatives against rust and against deterioration of wood, anti-corrosion preparations, colorants, mordants, raw natural resins, metals in foil, paste and powder form for use in painting, decorating, printing and art, binding preparations for paints, thickeners for paints, food dyes, printing inks, mothproofing preparations, bleaching preparations and products and other substances for laundry use, cleaning, furbishing, polishing, waxing, buffing, scouring, stripping and abrasive preparations and products, leather care preparations, soaps, products and preparations for the bath, shaving preparations, hair removal preparations, perfumery, essential oils, incense, indoor fragrances, cosmetics, hair lotions, dentifrices, adhesives for cosmetic purposes, breath fresheners, sharpening preparations, preparations for personal and intimate hygiene, false eyelashes, non-slip preparations, hair colorants and dyes, skin tanning cosmetics, cosmetics for slimming purposes, skin care preparations, make-up removing preparations, deodorants, henna, oils for cosmetic purposes, oils for toilet purposes, potpourris (fragrances), drying agents for dishwashing machines, hair care preparations, hand and nail care preparations, antistatic preparations for household purposes, lipstick cases, massage preparations, decorative transfers for cosmetic purposes, cosmetic kits, permanent wave preparations, false nails, eyelashes and hair, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting, fragranced candles, methylated spirit, firelighters, dust binding compositions for sweeping, dust removing preparations, gas for lighting, fuel gas, grease for leather, pharmaceuticals and veterinary preparations, medicines, contraceptive substances, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, products, preparations and materials for dental use, fly catching paper, belts for sanitary napkins, chemical preparations for medical purposes, tobacco-free cigarettes for medical purposes, babies’ nappies, nappies for pets, sanitary pants and towels, deodorants, filled portable medicine cases, medicinal herbs, sexual lubricants, dressings, filled first-aid boxes, medicinal preparations for hair growth, tanning pills, slimming pills, semen for artificial insemination, sterilising preparations, contraceptive preparations, common metals and their alloys, metal building materials, transportable buildings of metal, swimming pools, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of metal (namely badges, brooches, toolboxes (empty), works of art, decorative objects, statues, statuettes, sculptures, figurines, furniture, decorative mobiles, goods for framing purposes, shutters, fences, doors, windows, clothes hooks, handles for doors and drawers, blinds, cookery moulds, nails, screws), ores, chains and locks for doors, window casement bolts, peepholes for doors, anchors, bars for metal railings, preserve tins of metal, boxes of common metal, bungs of metal, bottles of metal, padlocks, safety cashboxes, safety chains, frames of metal for windows and doors, chimneys of metal, keys, reels for flexible hoses, scaffolding and ladders, staircases, handles for doors and windows, blinds, ironwork for doors, door chimes, machines (namely vacuum cleaners, laundry washing machines, dishwashers, electric kitchen beaters, electric food processors, blenders, juice extractors, pasta-making machines, mixing machines for household purposes, sewing machines, knitting machines, cleaning appliances utilising steam, high-pressure cleaning appliances, agricultural machines, clippers, compressed air machines, compressors, electric drills, power saws, electric planing machines, welding units, electric hammers, electric screwdrivers) and machine tools, motors and engines, machine coupling and transmission components, agricultural implements, incubators for eggs, automatic vending machines, doors for lifts, equipment and apparatus for agriculture, gardening and forestry, conveyors, lifts, link rods for machines, motors and engines, sparking plugs for internal combustion engines, cables for controlling machines, motors and engines, electricity generators, filtering machines, cartridges for filtering machines, gas-operated cutting blow pipes, soldering irons, goods for soldering purposes, aerated water making apparatus, electromechanical apparatus for the preparation of beverages or foodstuffs, readers, electric door or window openers, air pumps, rolling mills, hand tools and implements (hand-operated), cutlery, side arms, razors, agricultural tools, gardening tools, ladles, cutting dies, sharpening instruments, clamps, saws, pliers, shears, lawn clippers, beard clippers, manicure sets, razor blades, files (tools), irons, steamers, trouser presses, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including parts therefor), apparatus for recording, transmission or reproduction of sound or images (including parts therefor), magnetic data carriers, recording discs, compact discs, DVDs and other recording media, mechanisms for coin-operated apparatus (including parts therefor), cash registers (including parts therefor), calculating machines, data processing equipment, computers (including parts and peripheral devices therefor), computer software, fire-extinguishing apparatus, computer hardware, electronic organisers, magnets, accumulators for vehicles, alidades, amplifiers, bulbs, testing apparatus not for medical purposes, calibrating rings, anodes, downloadable computer software applications, hemline markers, audio and video devices for monitoring babies, musical juke boxes, safety tarpaulins, rods for water diviners, personal stereos, betatrons, electric coils, riding helmets, lens hoods, pressure indicator plugs for valves, connected bracelets and watches, covers for electric outlets, digital photo frames, cameras, magnetic cards, video games, protective helmets, headphones, video cassettes, photovoltaic cells, battery chargers, shoes for protection against accidents, radiation and fire, electronic collars to train animals, USB flash drives, diving suits, counters, covers for smartphones, cords for spectacles, electronic pens for visual display units, cartoons, detectors, dictating machines, ticket dispensers, telephone receivers, video screens, transmitters (telecommunication), luminous signs, electronic tags tor goods, spectacle cases, cases for smartphones, optical fibres (light conducting filaments), downloadable music and image files, protective films for computer screens, for tablets and for smartphones, gloves for protection against accidents, satellite navigation apparatus, clothing for protection against fire, automated teller machines, speakers, binoculars, optical lenses, contact lenses, electronic readers, optical goods, video recorders, microphones, egg candlers, modems, photocopiers, printers, electric batteries, pince-nez, pedometers, mouth guards, downloadable electronic publications, answering machines, electric locks, dog whistles, bells (warning devices), door bells, digital tablets, electrified fences, spectacles, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, apparatus and products for sexual stimulation, sex toys, contraceptives, babies’ bottles, acupuncture instruments and apparatus, nursing appliances, stockings for varices, bed pans, ear plugs, abdominal belts, maternity belts, commode chairs, hearing aids, corn knives, menstrual cups, incubators for babies, invalids’ hoists, incontinence sheets, feeding bottle valves, childbirth mattresses, microdermabrasion apparatus, furniture especially made for surgical, medical, dental and veterinary purposes, soporific pillows for insomnia, orthodontic appliances, combs for removing lice, physiotherapy apparatus, balling guns, condoms, erotic dolls, hair prostheses, artificial breasts, teats, breast pumps, apparatus for acne treatment, special clothing for operating theatres, vibromassage apparatus, massage apparatus, instruments and devices for sexual stimulation, apparatus, instruments and devices for stimulating sexual arousal, boosting sexual performance and satisfying sexual needs, imitations of adult sexual organs, apparatus (and parts therefor) for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, aerating, air conditioning and water supply purposes, sanitary installations and equipment (and parts therefor), bulbs (including parts therefor), lamps for lighting (including parts therefor), strings of electric lights, neon lights, luminous decorations, chimneys (and parts therefor), air conditioners, ventilators, fans, hairdryers, bathtubs, sinks, washbasins, showers (and parts therefor), toilets, bidets, taps, apparatus and installations for filtering air and water (and parts therefor), irrigation apparatus and devices, extractor hoods for cookers, hydromassage apparatus (and parts therefor), sauna installations (and parts therefor), Turkish bath installations (and parts therefor), fountains (and parts therefor), plumbing goods, tap fittings, pipework goods, barbecues, lava rocks for use in barbecue grills, coal stoves, carbon for arc lamps, vehicles, apparatus for locomotion by land, air or water (including parts therefor), motors, two-wheeled trolleys, wheelbarrows, coupling and transmission components for land vehicles, aeronautical apparatus, machines and devices, anti-theft devices for vehicles, trailer hitches for vehicles, pushchair covers, pushchair hoods, handling carts, cleaning trolleys, carts, panniers adapted for bicycles and motorcycles, disengaging gear for boats, reduction gears for land vehicles, drones, wheelchairs, luggage nets for vehicles, funiculars, vehicle covers, seat covers for vehicles, pushchairs, paddles for canoes, baskets adapted for cycles, parachutes, tyres, air pumps, luggage carriers for vehicles, ski carriers for motor vehicles, strollers, safety seats for children, for vehicles, chairlifts, oarlocks, tilting-carts, cable transport apparatus and installations, scooters, golf carts, motor vehicle roof racks, luggage carriers and storage boxes for land vehicle roof racks, devices for transporting objects, for vehicles, transport trailers, firearms (including parts therefor), ammunition and projectiles, explosives, fireworks, firecrackers, signal rockets, pyrotechnic products, pyrophoric substances, sprays for personal defence purposes, firing platforms, sights for weapons, precious metals, alloys of precious metals, goods in precious metals, in alloys of precious metals or coated therewith (namely: costume jewellery, brooches, works of art, decorative objects, statues, statuettes, sculptures, figurines, decorative mobiles, goods for framing purposes, clothes hooks, handles for doors and drawers, keyrings, boxes, cases for watches and jewellery, cufflinks, ingots), jewellery (and parts therefor), precious and semi-precious stones, horological instruments (and parts therefor), chronometric instruments (and parts therefor), medals, coins, rhinestones, jewellery rolls, copper tokens, badges of precious metal, tie clips, tie pins, cabochons for making jewellery, jewellery findings, cuff-links, charms (jewellery), busts of precious metal, musical instruments (including parts therefor), music rolls, music boxes, plectrums, music stands, turning apparatus for sheet music, babies’ nappies, baby bibs, portable lanterns of paper, badges of paper, boxes of paper, flags of paper, shields of paper, signs of paper, labels of paper, figurines, works of art, decorative objects, table linen of paper, filters of paper, gift wrap, toilet paper, table covers of paper or plastic, place mats of paper or plastic, tablemats, coasters, garlands, photograph frames of paper or cardboard, flower-pot covers, cups of cardboard or plastic, twine of paper, hats of paper (clothing), artificial flowers, mats, party favours, dolls, bedding for animals, printed matter, photographs, adhesives for stationery or household purposes, artists’ materials, paintbrushes, typewriters, office requisites, except furniture, instructional and teaching material, printers’ type, printing blocks, cooking bags, rubber, gutta-percha, gum, asbestos, mica, goods of rubber, gutta-percha, gum, asbestos or mica (namely stoppers, insulation materials for building construction, sealing materials for building construction, soundproofing materials for building construction, works of art, decorative objects, statues, statuettes, sculptures, figurines), plastics in extruded form for use in manufacture, packing, stopping and insulating materials, goods for insulation purposes, watering hoses, pipes for use in plumbing, pipes for use in heating, ducts, elbow bends for pipes or ducts, collars and fastening elements for pipes or ducts, connectors for pipes or ducts, seals for use in plumbing, leather and imitations of leather, goods of leather or imitations of leather (namely: cases for mobile telephones, boxes, cases, chests, wrist straps, key cases, bags, photograph or picture frames, coasters, belts, decorative objects, coverings and trimmings for furniture), animal skins, hides, trunks and travelling bags (including parts therefor), walking sticks (including parts therefor), umbrellas and parasols (including parts therefor), whips, harness and saddlery, mountaineering sticks, purses, walking stick seats, handbags, collars for animals, clothing for animals, slings for carrying infants, key cases, net bags for shopping, leather thread, umbrella covers, leads for animals, straps of leather, suitcases, chin straps (straps of leather), muzzles, nose bags (feed bags), parasols, pocket wallets, music cases, backpacks, empty tool bags, bags, sachets (envelopes, pouches) of leather for packaging, baby carriers, garment bags for travel, satchels, valves of leather, building materials, pipes for building, asphalt, pitch and bitumen, transportable buildings, monuments, doors, windows, gates, tiling, joinery goods for use in buildings, mortar for building, plaster, wood, wainscotting, plates of plaster for building, reinforcing materials of metal for building, tiles, wood panelling, letter boxes, partitions for buildings, fences, water pipes, ventilation ducts, aquarium gravel, furniture (including parts therefor), kitchen furniture, modular bathroom furniture, lounge furniture, bedroom furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (namely curtain rings, curtain holders, curtain rails, fastening elements for curtains, works of art, decorative objects, furniture, boxes, chests for storage purposes, storage lockers, statues, statuettes, sculptures, figurines, stoppers, lids, stopper caps, goods for framing purposes, tool handles, dressmakers’ dummies, busts, decorative mobiles, clothes hooks, clothes hangers, handles for doors and drawers, baskets, blinds, curtains, goods for packaging and storage, containers, storage boxes, trimmings for furniture, door fittings, window fittings, locks, bells, house numbers, towel holders, umbrella holders, plant racks, trays), cupboard doors, wardrobes, cushions, pillows, mattresses, armchairs, sofas, chairs, easy chairs, tables, worktops, furniture partitions, storage furniture, tea trolleys, support bars enabling people with reduced mobility to use sanitary installations, attachments for towels, hot water bottles, kettles, stoves, attachments for curtains, bedding, framing goods, household or kitchen utensils, apparatus and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, glassware, porcelain and earthenware, drinking vessels and holders therefor, isothermic bottles, bags and containers for foodstuffs or beverages, bottles, stoppers for bottles and for carafes, bread baskets, breadboards, serving trays, egg cups, jars for foodstuffs, boxes for transporting or preserving foodstuffs, strainers, coasters, coffee or tea services, coffee filters, tea strainers, tea balls, coffee grinders, pepper mills, salt mills, sugar basins, cocktail shakers, cocktail sticks, drinking glasses, cocktail glasses, fitted picnic baskets, including dishes, drying racks for laundry, ironing boards, laundry baskets, ceramics for household purposes, flowerpots, gardening gloves, cosmetic and toilet utensils, bathroom mirrors, bathroom stools, bathroom cup holders, dishes, table mats, coasters (tableware), indoor aquaria, cages for pets, oven gloves, watering cans, watering devices (and parts therefor), tableware, carboys, electric devices for attracting and destroying insects, pressure cookers, stew-pans, cooking pots, litter trays for pets, window-boxes, brooms, towel holders, candle rings, boxes for dispensing paper towels, lunch boxes, perfume burners, candelabra, electric brushes, toothbrushes (electric and non-electric), cruets, serving platters, coffee pots, candlesticks, heaters (electric and non-electric) for feeding bottles, baby baths, shoe horns, apparatus for wax-polishing, toothpicks, soap dispensers, soap boxes, spice sets, candle extinguishers, currycombs, shoe trees, mess-tins, gardening gloves, portable cold boxes (electric and non-electric), ironing board covers, tie presses, toiletries kits, brooms, artificial nest eggs, bottle openers, glove stretchers, drinking straws, washing boards, cutting boards, stands for shaving brushes, menu card holders, knife rests for the table, sponge holders, toilet paper holders, soap dispensers, soap holders, pottery, pots, refuse bins, serviette rings, flat-iron stands, candle jars, holders for flowers and plants (flower arranging), epergnes, wine-tasters (pipettes), carafes, clothing stretchers, indoor terrariums, boot jacks, shoe horns, buttonhooks, piggy banks, cooking utensils (electric and non-electric), vases, moulds (kitchen utensils), spray bottles, perfume sprayers, cream jugs, flower pots, mustard jars, glue-pots, children’s potties, cotton ball jars, lids for pots, bathtub shelves of plastic, tool handles, broom handles, brush goods, tableware, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing materials, raw fibrous textile materials, eiderdowns, hammocks, braid, sacks for the transport and storage of goods, rigging, yarns and threads, for textile use, sewing thread and yarn, textiles and textile goods, bed covers, table covers, sheets, duvets, blankets, mattress covers, pillowcases, cushion covers, duvet covers, protective covers for furniture, bath linen, bed linen, table linen, household linen, cloths, curtains, net curtains, curtain holders, shower curtains, fittings for curtains, curtain rails, napkins, tablecloths, place mats, banners, printers’ blankets of textile, canvas for tapestry or embroidery, hat linings, of textile, in the piece, blankets for pets, flags, bolting cloth, toilet lid covers, plastic material (substitute for fabrics), furniture coverings of textile or plastic, wipes for make-up removal, billiard cloth, clothing, footwear, headgear, underwear, slippers, socks, gloves, spats, belts, suspenders, muffs, sleep masks, mitres, gaiter straps, garment pockets, shirt fronts, pocket squares, heels for shoes, heel pieces, welts for footwear, boot uppers, ready-made linings (parts of clothing), dress shields, masquerade costumes, foot muffs (electrically heated or not), shower caps, lace boots, swimming caps, tips for footwear, necklets, non-slipping devices for footwear, fittings of metal for footwear, sock suspenders, lace and embroidery, ribbons and braid, buttons, hooks and eyes (haberdashery), pins and needles, artificial flowers, plants and fruits, garlands, carpets, rugs, mats and matting, linoleum, materials for covering existing floors, wall hangings, wallpaper, games and playthings, party favours, firecrackers, gymnastic and sporting articles, Christmas trees and decorations for Christmas trees, articles for use in fishing, confetti, articles and equipment for playing sport, foodstuffs, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, syrups, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, grains, agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters, non-alcoholic beverages, fruit beverages and fruit juices, preparations for making beverages, alcoholic beverages, packaging goods, goods for protection during transport, envelopes, gift boxes, gift vouchers, vouchers to be exchanged for goods or services, vouchers for the purchase of goods or services, money-off coupons, gift certificates, gift cards, promotional codes, promotional cards, loyalty cards, membership cards, tickets, debit and credit cards, payment cards, magnetic cards, and, on the other hand, goods relating to the fields of care, beauty, hairdressing, shaving, hygiene, hair removal, dietetics and health for human beings and animals, parapharmaceuticals, relaxation, sexuality, massage, perfumery and cosmetics, childcare, games and playthings, modelling, pyrotechnics, clothing and fashion accessories, textiles, dressmaking, ironing, haberdashery, leatherware, footwear, headgear, jewellery, horological instruments, optical goods, interior and exterior decoration, lighting, heating, drying, ventilating, air-conditioning, refrigerating, furniture, bedding, tableware (including cutlery and crockery), household linen, table linen, bed linen, bath towels and linen, gastronomy, foodstuffs, delicatessen goods, beverages (including alcoholic beverages), oenology, cookery (including kitchen utensils, containers and accessories, cooking apparatus and instruments), household furnishings and fittings (interior and exterior), cleaning, gardening, horticulture, forestry, seeds (grains), animals (including pets), DIY, tools, ironmongery, plumbing, locksmithing, home automation, security against theft and fire, weighing, measuring, photography, cinema, theatre, shows, entertainment, leisure, sporting and cultural activities, fishing, travel, satellite navigation, printed matter, the press and publishing, music, art, sound or image recording, sound or image transmission, sound or image reproduction, stationery, household electrical appliances, audio-visuals, telecommunications, telephony (including mobile telephony), information technology, data processing equipment, electricity (namely, apparatus, and parts and fittings therefor, for conducting, switching, transforming, accumulating, regulating and controlling electricity), motor vehicles, apparatus for locomotion and transport (by land, air or water); Grouping together (except transport) for others of goods, namely care, beauty and hygiene products for people and animals, perfumery and cosmetics, clothing and fashion accessories, textiles, haberdashery, leather goods, jewellery, clocks and watches, optical goods, furniture, luxury tableware items, household linen, garden equipment, DIY goods, tools, sports equipment and games, photographic apparatus, cinema apparatus, printing and publishing apparatus, musical instruments, stationery, household electrical goods, audiovisual goods, telecommunications apparatus, telephony apparatus (including mobile phones) and computer equipment, enabling customers to conveniently view and purchase those goods by any means, in particular on a trading website; Employment agencies; Personnel recruitment; Clerical services; Accounting; Leasing of typewriters; Office machines and equipment rental; Rental of photocopying machines; Rental of vending machines; None of the aforesaid services in Class 35 being in the field of finance.

Class 38:        Telecommunications services; transmission of information (news), computer-aided communication and transmission of messages and images; press and information agencies; radio, telegraph and telephone communications; voice messaging services; transmission of information by data transmission; transmission of information by teleprinters; sending of telegrams and fax messges; paging services (radio, telephone or other means of electronic communication); services of mobile radiotelephony; optical fibre network communication services; communication by computer terminals; providing of telecommunications channels for teleshopping; television and radio broadcasting; radio and television broadcasting; transmission of data contained in data banks; providing access to information held in data banks; renting of access time for the use of data bases; provision of access to databases; transmission and dissemination of data, images and sound by computer or computer networks; access providing services to a worldwide computer network;Electronic mail, electronic messages and dissemination of information electronically, by means of worldwide communications networks (such as the Internet) or by private or restricted access networks (such as an Intranet or extranet); electronic advertising (telecommunications); providing Internet chatrooms; information about telecommunications; consultancy relating to telecommunications and electronic communications; rental of telecommunications equipment and apparatus; rental of message sending apparatus; rental of modems; rental of facsimile apparatus and telephones;none of the aforesaid services in Class 38 being in the field of finance.

Class 41:        Education; providing of training, including training in how to use the Internet; training courses via the Internet; consultancy relating to the use of Internet sites (training); academies (education); educational establishments; sporting and cultural activities; organisation of sports competitions and events; gymnastic and health clubs; providing sports facilities; provision of sports facilities; rental of stadium facilities; rental of tennis courts; publication of books, newspapers, magazines, journals, periodicals, catalogues, guides, manuals, CD-ROMs, notes, news bulletins and newsletters; micro publishing; publication of texts (except publicity texts); lending libraries; entertainment services; leisure services; club services (entertainment or education); organisation, production and presentation of performances; entertainer services; booking of seats for shows; music-halls; orchestra services; organising theatrical, musical, cinematographic and variety events; discothèque services; organization of balls; television and radio entertainment; editing of radio and television programmes; film and video tape production; modelling for artists; movie studios; providing movie theatre facilities; rental of films, video tapes, phonographic recordings, cinema film projectors and accessories for film sets and theatre sets; recording studio services; recording (filming) and editing of films and video tapes; arranging of competitions for education or entertainment; organisation of beauty contests; organisation of modelling competitions; organisation and conducting of colloquiums, conferences, congresses, seminars and symposiums; organization and holding of exhibitions for cultural or educational purposes; arranging and conducting of training workshops; modelling agencies, namely providing of training for models; practical training (demonstration); entertainment, recreation and education information; rental of sports equipment except vehicles; operating of lotteries; providing gaming house facilities; casino facilities; gambling; games offered on-line on a computer network; news reporter services; photographic reporting; provision of on-line electronic publications (not downloadable); online electronic publication of books, newspapers, journals, periodicals and catalogues (not downloadable); party planning (entertainment); amusement parks; amusement parks; camp services (holiday-) (entertainment); swimming pools (entertainment); running zoological gardens; museum facilities (providing-) presentation, exhibitions); boarding schools; translation services; bookmobile services; circuses; animal training;none of the aforesaid services in Class 41 being in the field of finance

Class 42:        Graphic arts design; architecture; design of interior decor; construction drafting; styling (industrial design); authentification of works of art; dress-design services; engineering drawing; technical project studies; surveying; research and development for others with regard to new products; computer programming; design of computer systems; consultancy in the field of computers; maintenance of computer software; duplication of computer programs; creation (design), updating, installation and rental of computer software; technical consultancy relating to the design (creation), installation, management and use of Internet sites; technical consultancy relating to telecommunications and electronic communications; Providing search engines for the internet; rental of computers and web servers; reconstruction of databases; conversion of computer data and programs (except physical conversion); conversion of data or documents from a physical storage medium to an electronic medium; creating and maintaining web sites for others; hosting computer sites (web sites); virus protection; quality control; cosmetic research; research and study relating to education and educational practices;none of the aforesaid services in Class 42 being in the field of finance.

The contested goods are the following:

Class 3:        Cosmetics; Essential oils.

Class 25:        Clothing; Footwear.

Class 26:        Hair extensions; Wigs.

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

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

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested goods in Class 3

Grouping together (except transport) is a service consisting in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Although the nature, purpose and method of use of the contested cosmetics and the service of grouping together of these particular goods are not the same, they have some similarities, as they are complementary and the service is generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested cosmetics are similar to a low degree to the opponent’s grouping together (except transport) for others of goods, namely cosmetics in Class 35.

However, this does not apply to the contested essential oils. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. The contested services consist exclusively of activities around the sale of goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the opponent’s goods. Furthermore, the method of use of these goods and services is different. They are neither in competition nor complementary. Similarity between services relating to the sale of specific goods covered by one mark and specific goods covered by the other mark can be found only where the goods offered for sale and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical. Contrary to the opponent’s arguments, essential oils do not overlap with beauty and hygiene products, perfumery and cosmetics, which are the object of some of the opponent’s services in Class 35 and are essentially toiletries and fragrancing preparations.

The opponent’s presentation of goods on communications media, in particular on a sales website, for retail purposes, namely, essential oils in Class 35 is not similar to the contested essential oils either.

Presentation of goods on communications media, in particular on a sales website, for retail purposes consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

The nature and purpose of presentation of goods on communications media, in particular on a sales website, for retail purposes are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, presentation of goods on communications media, in particular on a sales website, for retail purposes is generally dissimilar to the goods or services being advertised.

The contested essential oils are even further removed from the opponent’s remaining goods and services in Classes 9, 16, 35, 38, 41 and 42, since they have different nature, purposes and methods of use, as well as different producers and distribution channels. They are neither complementary nor in competition.

Therefore, the contested essential oils and the opponent’s goods and services are dissimilar.

Contested goods in Class 25

The contested clothing; footwear are similar to a low degree to the opponent’s clothing and footwear for protection against accidents in Class 9, as they have the same nature and method of use, since they are items to be worn to cover and protect parts of the body. They can also have the same end users.

Contested goods in Class 26

The contested hair extensions; wigs are dissimilar to the opponent’s goods and services.

Contrary to the opponent’s arguments, presentation of goods on communications media, in particular on a sales website, for retail purposes, namely, false nails and hair are dissimilar to the contested hair extensions; wigs. Presentation of goods on communications media, in particular on a sales website, for retail purposes consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

The nature and purpose of presentation of goods on communications media, in particular on a sales website, for retail purposes are fundamentally different from those of the manufacture of goods or from the provision of many other services. Therefore, presentation of goods on communications media, in particular on a sales website, for retail purposes is generally dissimilar to the goods or services being advertised. In addition, in the present case the goods being advertised are different from the contested goods.

The contested goods and the opponent’s grouping together (except transport) for others of goods, namely fashion accessories and hair extension; wigs are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Grouping together (except transport) consists in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between grouping together (except transport) of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case because fashion accessories are worded vaguely and are not considered to include hair extensions and wigs, which are rather specific goods.

The contested hair extensions; wigs are even further removed from the opponent’s remaining goods and services in Classes 9, 16, 35, 38, 41 and 42, since they have different nature, purposes and methods of use, as well as different producers and distribution channels. They are neither complementary nor in competition.

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 and services found to be similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a figurative mark, consisting of a verbal element ‘VP’ depicted in a stylised white font on a rectangular black background. The element ‘VP’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark, consisting of two verbal elements joined together, ‘VP’ in yellow and ‘FASHION’ in white. Contrary to the applicant’s arguments, the public will perceive the contested sign as made up of two word elements because each element has a different colour and because ‘FASHION’ has a clear meaning for the relevant public. Both verbal elements are depicted between two grey lines on a square black background.

The contested sign is composed of a distinctive verbal element ‘VP’ and the verbal element ‘FASHION’, which is non-distinctive, since the relevant public will understand this foreign word as referring to the area of activity that involves styles of clothing and appearance and a style of clothing or a way of behaving that is popular at a particular time (information extracted from Collins English Dictionary on 20/03/2017 at https://www.collinsdictionary.com/dictionary/english/fashion), because it is commonly used in the relevant territory. This element is non-distinctive for all the goods that are related to the fashion industry and has, therefore, a limited impact on the assessment of the degree of similarity between the marks. Therefore, the verbal element ‘VP’ is the most distinctive element of the contested sign.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs are similar to the extent that they coincide in the letters ‘VP’, which constitute an individual element in each sign, placed on a quadrilateral black background. The signs differ in the typeface and colour of the coinciding letters and in the additional verbal element of the contested mark, ‘FASHION’, which is non-distinctive, as stated above. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VP’, present identically in both signs. The pronunciation differs in the sound of the letters of the non-distinctive element of the contested sign, ‛FASHION’, which has no counterpart in the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, the coinciding element ‘VP’ lacks any meaning for the public in the relevant territory. However, the meaning of the additional non-distinctive element of the contested sign, ‘FASHION’, will be perceived by the relevant public, as explained above. 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 and services 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

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 good/services covered are from the same or economically linked undertakings.

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 goods at issue are partly similar to a low degree and partly dissimilar. They target the public at large and the degree of attention is average.

The earlier mark and the distinctive verbal element of the contested sign are the same element, ‘VP’. However, the signs differ in the additional, non-distinctive, element of the contested sign, ‘FASHION’. Therefore, as explained in section c), the signs are considered visually and aurally similar to a high degree.

The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar goods come from the same undertaking or at least economically linked undertakings.

Considering all the above and taking into account 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), there is a likelihood of confusion, including a likelihood of association, because the differences between the signs are confined to a non-distinctive element. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, in this case the Spanish-speaking part of the public, is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 386 197. It follows that the contested trade mark must be rejected for the goods found to be similar to 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.

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

Steve HAUSER

Alexandra APOSTOLAKIS

Boyana NAYDENOVA

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.