OPPOSITION No B 2 737 164

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte Part gMbb, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Laperva L.L.C., Dubai Mall, Dubai, United Arab Emirates (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 737 164 is partially upheld, namely for the following contested goods:

Class 3:        Skin whitening preparations; cosmetic preparations for slimming purposes; deodorant for personal use; soap; collagen preparations for cosmetic purposes. 

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; food supplements of plant origin; food supplements (not for medical purposes) containing in particular coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, bread, pastry and confectionery, ices, honey; food supplements not for medical purposes based on carbohydrates and fibre with the addition of vitamins, minerals, and trace elements, either alone or in combination; nutritional supplement meal replacement bars for boosting energy; by-products of the processing of cereals for dietetic or medical purposes; dietetic beverages adapted for medical purposes; dietetic foods for medicinal purposes; herbal teas for medicinal purposes; diet capsules; dietary supplements; slimming pills; dietetic foods adapted for medical use; dietary supplements for humans. 

Class 30:        Tea, herbal teas; tea based beverages; tea extracts; artificial tea; tea infusions; infusions, not medicinal. 

2.        European Union trade mark application No 15 133 507 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 15 133 507. The opposition is based on European Union trade mark registration No 4 098 679. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 3: Perfumery goods; essential oils; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lipstick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms; deodorants; products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

Class 5: Pharmaceutical products and health-care products; medicated lubricants; dietetic substances and sanitary preparations, dietetic substances adapted for medical use; nutritional supplements; vitamin preparations; disinfectants; royal jelly (for medical purposes); herbal tea; corn remedies; headache pencils; lactose; milking grease; except foodstuffs, dietetic substances and beverages especially for babies, infants and children, included in this class.

Class 10: Massage apparatus, gloves for massage, massage articles; physical exercise apparatus, for medical purposes; spelt cushions (for medical purposes), cherry stone cushions (for medical purposes); feeding bottles; maternity belts. 

Class 21: Brushes, in particular eyebrow brushes; cosmetics brushes; toothbrushes; nail brushes; sponges, combs, hair combs; oils and foot spa containers. 

Class 44: Hygienic and beauty care; beauty-salon services; health consultancy; manicuring; operating of wellness facilities, consultancy in the field of hygenic, cosmetic and beauty care, in particular in the field of decorative cosmetics and anti-ageing; nutrition consultation.

The contested goods are the following:

Class 3: Skin whitening preparations; cosmetic preparations for slimming purposes; deodorant for personal use; soap; collagen preparations for cosmetic purposes.  

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; food supplements of plant origin; food supplements (not for medical purposes) containing in particular coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, bread, pastry and confectionery, ices, honey; food supplements not for medical purposes based on carbohydrates and fibre with the addition of vitamins, minerals, and trace elements, either alone or in combination; nutritional supplement meal replacement bars for boosting energy; by-products of the processing of cereals for dietetic or medical purposes; dietetic beverages adapted for medical purposes; dietetic foods for medicinal purposes; herbal teas for medicinal purposes; diet capsules; dietary supplements; slimming pills; dietetic foods adapted for medical use; dietary supplements for humans. 

Class 30: Coffee, cocoa, tea, herbal teas; tea based beverages; tea extracts; artificial tea; tea infusions; infusions, not medicinal; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; biscuits; honey. 

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

The contested skin whitening preparations; cosmetic preparations for slimming purposes; collagen preparations for cosmetic purposes are contained in the opponent’s broad category of cosmetics. These goods are, therefore, identical.

The contested deodorant for personal use are contained in the opponent’s broad category of deodorants. These goods are, therefore, identical.

The contested soap is used for personal hygiene whereas the opponent’s cosmetics include preparations intended to beautify the hair, skin or complexion. Even though there is certain difference in their purpose, these goods are usually sold at the same outlets or sections of large stores, produced by the same undertakings and target the same customers. These goods are, therefore, similar.

Contested goods in Class 5

The contested dietetic substances adapted for medical use are identically included in the opponent’s list of goods.

The contested herbal teas for medicinal purposes are contained in the opponent’s broader category of herbal tea. These goods are, therefore, identical.

The contested pharmaceutical preparations are contained in the opponent’s broader category of pharmaceutical products. These goods are, therefore, identical.

The contested sanitary preparations for medical purposes are contained in the opponent’s broad category of sanitary preparations. These goods are, therefore, identical.

The contested dietetic beverages adapted for medical purposes; dietetic foods for medicinal purposes; diet capsules; slimming pills; dietary supplements; dietetic foods adapted for medical use; dietary supplements for humans; by-products of the processing of cereals for dietetic or medical purposes are all products that are aimed to control one’s diet, predominantly for medical or health-preserving purposes. As such, these contested goods belong to the opponent’s broad category of health-care products. These goods are, therefore, identical.  

The contested food supplements of plant origin; food supplements (not for medical purposes) containing in particular coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, bread, pastry and confectionery, ices, honey; food supplements not for medical purposes based on carbohydrates and fibre with the addition of vitamins, minerals, and trace elements, either alone or in combination; nutritional supplement meal replacement bars for boosting energy are contained in the opponent’s broad category of nutritional supplements. These goods are, therefore, identical.

The contested food for babies essentially includes foods that must be eaten by babies because they are physically incapable of eating any other type of food or it is medically required that they eat this particular type of food. For this reason, they may share the same purpose and distribution channels as the opponent’s dietetic substances adapted for medical use. Furthermore, these goods are often manufactured by the same undertakings. Overall, these goods are similar.

The contested plasters, materials for dressings are products used in medicine or, in general, for health-related purposes, namely, to cover wounds and avoid infections. These goods and the opponent’s sanitary preparations are often available at the same outlets, produced by the same undertakings and targeted at the same customers. As a result, these goods are similar. 

Contested goods in Class 30

The contested tea, herbal teas, tea based beverages; tea extracts; artificial tea, tea infusions; infusions, not medicinal share the same nature, distribution channels, customers and method of use with the opponent’s herbal tea in Class 5.  These goods are, therefore, similar.

The remaining contested goods, namely coffee, cocoa, snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; biscuits; honey are everyday products that are not usually consumed for medical or health-related purposes even though some of these goods may be considered to have beneficial effects on health. However, this is not a sufficiently close link to any of the opponent’s goods for there to be similarity between them. It is to be noted here that the Board of Appeal decision cited by the opponent (27/11/2015, R 3120/2014-4, MOVIFLORA / FLORA (FIG.) et al.) is irrelevant here since in that case both the applicant’s and the opponent’s list covered identical goods in Class 30. On the basis of all the foregoing, these contested goods are dissimilar to any of the opponent’s goods and services.

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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 or similar are directed both at the public at large and at professionals with specific knowledge or expertise.

The degree of attention is considered to be average for most of the relevant products. However, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

Lavera
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 earlier mark is a word mark and, in French, it is the third person singular of the verb ‘wash’ in future tense. It lacks any meaning in the remaining territory. This means that for the part of the public that does not speak French, the mark is distinctive to an average degree in relation to the relevant goods while the French-speaking public may perceive it as alluding to some of the goods in Class 3 such as cosmetics. For this, French-speaking public, the earlier mark has, thus, below average distinctiveness.

In its observations, the applicant claims that the earlier mark could have a meaning in Spanish (la vera = the shore) and also that ‘VERA’ is a female name. It is noted that even if these assertions were to be accepted, this would not change the conclusions drawn below, in the detailed comparison of the signs. In addition, it would be very unusual to refer to a female person with a definite article preceding it, and even more so if written together as one word.

The contested mark is composed of the word ‘laperva’ with some stylization of the letter ‘e’. While, as the applicant claims, the inside of the stylized ‘e’ may represent a leaf, it is rather difficult to make out this element and, at most, it would only be perceptible upon closer inspection. In any event, the said element is of a decorative nature and consumers would immediately recognize the letter ‘e’ and they would read the mark as a word. Since the contested sign lacks any meaning, it is distinctive to an average degree in relation to the relevant goods.

Visually, the signs coincide in their two initial letters ‘LA-’ and they also share the letters ‘E’ and the final ‘A’ in the same sequence, as well the letters ‘R’ and ‘V’ albeit in different positions. The signs differ in the slight stylization of the letter ‘E’ in the contested sign as well as its grey colour. Since the signs coincide in their first two initial letters and their final letter, it has an important visual impact that is only to some extent counteracted by the differing letters and the other, decorative elements. In fact, all the letters of the earlier mark is reproduced in the contested sign albeit not all of them in the same order. In summary, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LA-E-A’, present identically in both signs in the same sequence. This coincidence and the fact that they have the same number of syllables mean they also have a similar rhythm and intonation. The signs differ in their central part, ‘-VE-’ vs ‘-PER-’ but even here they share the vowel ‘E’. Since the differences between the signs are considered incapable of offsetting the impact of the coincidences, they must be found to be similar to an average degree.

Conceptually, the earlier mark has a meaning in French while the contested sign does not. As a result, the signs are not conceptually similar to the French-speaking public.

With regard to the remaining public, neither of the signs has a meaning for them, which means no conceptual comparison is possible and 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed for the purpose of Article 8(1)(b) EUTMR (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant goods from the perspective of the part of the public that does not speak French. For them, the mark has normal distinctiveness. The French-speaking part of the public will see the mark as alluding to cleaning or washing, which decreases its distinctiveness below average in relation to the goods in Class 3.

5. Global assessment, other arguments and conclusion

Some of the goods are identical or similar while some of them are dissimilar. The signs are visually and aurally similar to an average degree while the conceptual aspect plays no role to the larger part of the public (namely those not speaking French) while the impact of the conceptual aspect is limited for the French-speaking public given that the conceptual difference between the signs is due to an allusive term in the earlier mark. The differing elements in the contested sign are considered to be either of minor importance or simply decorative nature. The signs’ near-identical rhythm and intonation as well as their coinciding initial and final letters are such factors that could eventually confuse consumers whose purchasing decision relies, in any event, on their imperfect recollection. This applies to the part of the consumers who exercises a higher degree of attention as they also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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 European Union 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 cannot be successful.

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

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE  8(5) EUTMR

Since a likelihood of confusion was found and, consequently, the opposition is already upheld for some of the goods on grounds of Article 8(1)(b) EUTMR, the Opposition Division will examine the other ground invoked by the opponent only in relation to the remaining contested goods found to be dissimilar, namely coffee, cocoa, snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; biscuits; honey.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. However, in the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 22/02/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3:         Perfumery goods; essential oils; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lipstick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms; deodorants; products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 30/11/2016 the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Attachment 1: a list of the opponent’s business partners including those in various European Union Member States, as well as screenshots of the opponent’s websites available in several languages.
• Attachment 2: excerpts of websites of online stores where the opponent’s products are distributed.
• Attachment 3: a notarized affidavit by the opponent’s managing director where turnover figures are shown for the years 2010-2014. The annual sales figures can be considered to be significant.
• Attachment 4: advertising materials in German, showing the opponent’s range of goods. Most of these documents bear no date.

The abovementioned evidence indicates that the earlier trade mark had been used prior to the filing date of the contested sign. The opponent has also shown commercial activity in the relevant period, in relation to various cosmetics products.

However, the opponent has failed to meet several key requirements of applying Article 8(5) EUTMR such as providing solid proof of market share, of investment efforts and of actual recognition of its mark among the relevant public. Even the evidence on sales figures – deriving from the opponent itself and presented in simple documents instead of copies of actual invoices – is not put into the context of market share and competition, which would have been particularly important in the cosmetics sector that is a rather atomized and highly competitive market. When it comes to everyday products such as cosmetics, account must also be taken of the fact that it is much easier to achieve high sales volume for every day, mass consumption goods as it is likely that the same person has bought the same goods several times.

Furthermore, a vast majority of the evidence – 205 out of 260 pages – is in German. While some reference to the opponent’s products is in English, all the remaining text is not in the language of proceedings and, as such, cannot even serve as supporting evidence to the remaining part of the submissions.

In summary, the content of the documentation submitted does not clearly demonstrate that the earlier mark enjoys a reputation. The evidence emanates from the opponent, and contains information mostly taken from the opponent’s trade catalogues, as well advertising documents in German. There is absolutely no documentation/information from third parties to reflect clearly and objectively what the opponent’s position on the market precisely is. The Opposition Division has not been able to draw any conclusion on the opponent’s market share, degree of recognition or investment efforts in advertising and promotion.

In its submissions, the opponent made reference to Decision on Opposition No B 2301441 and claimed that its earlier mark had been found to have increased distinctiveness in that case. However, the language of the proceedings in that case was German and the opponent failed to provide any translation. Reference is made to Guidelines for Examination in the Office, Part C, Opposition; Proof of Reputation; 3.1.4.4 Means of evidence which provides that “the opponent may also refer to earlier decisions of the Office, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same. Otherwise, the opponent must also file a translation of the decision within the four-month period to file further facts, evidence and arguments, in order to allow the applicant to exercise its right of defence”.  The said claim by the opponent cannot, therefore, be taken into account for the present proceedings. In any event, the Opposition Division must examine each case on its own merits, it is not bound by previous decisions, and it certainly cannot accept a claim for reputation solely on the basis of a mere reference to previous decisions.  

Based on all the foregoing, the evidence submitted does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 will 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

Cynthia DEN DEKKER

Ferenc GAZDA

Birgit FILTENBORG

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.