OPPOSITION DIVISION
OPPOSITION No B 2 653 874
Mixer & Pack, S.L., Ctra. de Azuqueca, 9, 28880 Meco, Madrid, Spain (opponent),
represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain
(professional representative)
a g a i n s t
L'Oréal, 14 rue Royale, 75008 Paris, France (applicant), represented by Carlos
Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional
representative).
On 13/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 653 874 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 990 329, . The opposition is based on
European Union trade mark registration No 3 460 813, . The opponent
invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 653 874 page: 2 of 6
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this
point, the Opposition Division does not consider it appropriate to undertake an
assessment of the evidence of use submitted. The examination of the opposition will
proceed as if genuine use of the earlier mark had been proven for all the goods
invoked, which is the best light in which the opponent’s case can be considered.
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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
The contested goods are the following:
Class 3: Cosmetics and make-up products.
The contested cosmetics are identically protected by both marks, whereas make-up
products are included in the opponent’s broad category of cosmetics. The goods are
therefore identical.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at
large. The degree of attention is deemed average.
Decision on Opposition No B 2 653 874 page: 3 of 6
c) 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 element ‘MIXER’ present in both marks will be associated by part of the public,
such as the English-speaking public, with ‘a machine that mixes substances’. This
element is not particularly distinctive for the relevant goods (cosmetics) since it
alludes to a characteristic or the way the products are to be used. For another part of
the public, this element is meaningless and therefore distinctive for the relevant
goods.
The earlier mark also includes a figurative element above ‘MIXER’. There are no
elements which are dominant (visually outstanding).
The element ‘NYX’ of the contested mark does not have any meaning and it is
therefore distinctive. This element is also the dominant element as it is the most eye-
catching and it is placed at the beginning of the mark.
The expression ‘PROFESSIONAL MAKEUP’ is likely to be understood throughout the
relevant territory due to the basic English words and the linguistic equivalences. This
expression is non-distinctive for the relevant goods. Furthermore, ‘FOUNDATION’ will
be associated by the English-speaking public to ‘a type of make-up that is spread
over the skin of the face, usually before other make-up is put on, giving it a better and
more even colour and hiding unwanted marks’, whereas ‘PRO’ is often used as an
abbreviation for ‘professional’. Therefore, the expression ‘PRO FOUNDATION
MIXER’ as a whole is non-distinctive for the relevant goods (cosmetics and make up)
because it refers to the goods themselves and their way of application. For another
part of the public, the expression is meaningless or only some of the elements, such
as ‘PRO’ will be associated with any meaning. Therefore, for this part of the public,
these elements are distinctive.
In view of the above, the Opposition Division will first examine the opposition in
relation to the part of the public for which the common element ‘MIXER’ is
meaningless and is distinctive, since this is the best case scenario for the opponent.
Decision on Opposition No B 2 653 874 page: 4 of 6
It is important to note that consumers generally tend to focus on the beginning of a
sign when they encounter a trade mark. This is because the public reads from left to
right, and from top to bottom, which makes the part placed at the top of the sign (the
initial part) the one that first catches the attention of the reader. Therefore, in the
contested mark, consumers will primarily focus their attention in the element ‘NYX’.
Visually, the signs coincide in the element ‘MIXER’ present in both marks. However,
they differ in all the additional elements, namely the figurative element of the earlier
mark and all the other verbal elements of the contested mark (‘NYX
PROFESSIONAL MAKEUP PRO FOUNDATION’). The presence of these additional
elements in the contested sign, preceding the word ‘MIXER’, contributes to minimise
the impact of the similarity.
Therefore, the signs are visually similar only to a low degree.
Aurally, it is very likely that consumers will refer to the contested mark as ‘NYX’.
Indeed, this is the most eye catching element; it is distinctive and is placed at the
beginning of a long sign. Therefore, the signs are aurally dissimilar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. 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, albeit
only to a low degree, the examination of likelihood of confusion will proceed.
d) 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.
e) 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 registered 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).
The goods are identical and target the public at large whose degree of attention is
average.
Decision on Opposition No B 2 653 874 page: 5 of 6
As concluded above, the signs are visually similar only to a low degree and they are
aurally and conceptually not similar. The common element ‘MIXER’ plays a
secondary role in the contested sign, which includes many additional elements.
These additional elements are clearly perceivable and sufficient to exclude any
likelihood of confusion between the marks.
Even taking into account that the relevant public does not always has the possibility
to compare marks side by side, and that they must place trust in the imperfect picture
that they have kept in mind, there are no reasons to consider that the consumer
would establish a link between the earlier mark and the contested mark and would
think that the relevant goods bearing the marks are offered by the same undertaking
or economically linked undertakings.
The absence of likelihood of confusion even more so applies to the part of the public
for which ‘MIXER’ is weak. This is because consumers will attach to this element less
attention and therefore will perceive the signs as less similar.
In view of the above, the Opposition Division concludes that the above analysed
differences between the marks safely counteract the similarities and the identity of
the goods and are sufficient to exclude likelihood of confusion. Therefore, the
opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR, it is
unnecessary to examine the evidence of use filed by the opponent.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Martina GALLE Begoña URIARTE
VALIENTE
Boyana NAYDENOVA
Decision on Opposition No B 2 653 874 page: 6 of 6
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.