OPPOSITION No B 2 748 484

Michael Kors (Switzerland) International GmbH, Via Cantonale 18, 6928 Manno, Switzerland (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

A g a i n s t

Tecna Italia, Via Ardeatina 2479, 00071 Roma, Italy (applicant).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 484 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 385 537 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 385 537, . The opposition is based on, inter alia, international trade mark registration No 1 297 894 designating the European Union. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 297 894 designating the European Union.

1. The goods and services

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

Class 3:        Soaps; perfumery; essential oils, cosmetics for body care and beauty care, hair lotions; cosmetics; non-medicated skin care preparations; perfumes for personal use.

The applicant states that ‘[I]in the unlikely event the Office does not accept, in whole or in part’, his observations, he is willing ‘to reduce the claims of the Trademark in only few categories of Class 3’ and refers to ‘balms, other than for medical purposes (30222), and/or massage gels, other than for medical purposes (30220)’ as a possible limitation. The Office does not find this to be a clear and unconditional limitation of the goods covered by the application and will not take these observations into account in the comparison of goods and services.

Therefore, the contested goods and services are the following:

Class 3:        Body cleaning and beauty care preparations; cosmetic preparations for body care; cosmetic soaps; moisturising concentrates [cosmetic]; sun care preparations; cosmetic kits; cosmetics for use on the skin; body cream; cosmetic hair dressing preparations; sun protectors for lips; cosmetic preparations for skin care; cosmetics for protecting the skin from sunburn; cosmetic preparations for the hair and scalp.

Class 35:        Online retail store services relating to cosmetic and beauty products.

The applicant argues that ‘[I]t is hard to believe that a consumer interested in buying a skin cream to be applied on tattoos (…), may be confused with purchasing feminine scents’. The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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

Cosmetic preparations for body care are identically contained in both lists of goods (including synonyms).

The contested body cleaning and beauty care preparations include, as a broader category, or overlap with, the opponent’s cosmetics for beauty care. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cosmetic soaps are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested moisturising concentrates [cosmetic]; sun care preparations; cosmetic kits; cosmetics for use on the skin; body cream; cosmetic hair dressing preparations; sun protectors for lips; cosmetic preparations for skin care; cosmetics for protecting the skin from sunburn; cosmetic preparations for the hair and scalp are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

Contested services in Class 35

Online retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary, and the particular goods are generally offered in the same websites as where the online retail store services take place. Furthermore, they target the same public.

Therefore, the contested online retail store services relating to cosmetic and beauty products in Class 35 are similar to a low degree to the opponent’s cosmetics for beauty care in Class 3.  

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 identical or similar to a low degree are directed at the public at large.

The degree of attention is considered average.  

3. The signs

WONDERLUST
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.

The signs’ verbal elements are meaningful where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part of the public the signs are more similar overall.  

The signs’ common element ‘WONDERLUST’ is composed of the words ‘wonder’ and ‘lust’, and although it does not exists as such, the word will be perceived as ‘a lust of/for wonder’ by the public under analysis. Such a meaning is distinctive for goods such as cosmetics, creams and lotions and sale of such products, since no clear and direct associations can be made between ‘lust of wonder’ and these goods and services. Therefore, the Opposition Division cannot share the applicant’s view of ‘WONDERLUST’ being ‘descriptive and evocative’. Although depicted as ‘WON-DER-LUST’ in the contested sign, with the verbal elements placed on top of each other, the public will naturally read these elements from left to right and from top to bottom (hence, as ‘WONDERLUST’).

The contested sign also contains the word element ‘TATTOO’, depicted in upper case on an arched shaped crest, or as the applicant points out; ‘a flaming piece of paper’. For example, for body creams and sun protective preparations ‘TATTOO’ is weak, since it merely indicates that such products are suitable for use before and after getting a tattoo. ‘TATTOO’ may also be weak for cosmetic hair preparations (e.g. when getting a tattoo on the scalp) and it can indicate the kinds of cosmetics sold online. The remaining figurative elements of the contested sign, the black squared background and the fonts used in the verbal elements of the sign, are decorative and weak elements in the sign. Finally, none of the elements of the contested sign can be considered to be more dominant than others.

Visually, the signs coincide in the verbal element ‘WONDERLUST’, although depicted as ‘WON-DER-LUST’ in the contested sign, as described above. They differ in the word element ‘TATTOO’ and the graphical representation of the contested sign. However, ‘TATTOO’ is weak for at least a part of the goods and is depicted below the other verbal element of the contested sign; while the sign’s figurative elements are weak (as explained above). Moreover, consumers generally tend to focus on the word elements of signs. Indeed, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the signs are at least visually similar to an average degree.

Aurally, both signs will be referred to and pronounced as ‘WONDERLUST’, since ‘WON-DER-LUST’ in the contested sign will be pronounced identically to the earlier mark, despite it being depicted in three parts placed on top of each other (as explained above). Since ‘TATTOO’ is weak at least for a part of the goods, it may not be pronounced in the contested sign, whereas ‘WONDERLUST’ is the sole element to be pronounced in the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks; the signs coincide in the distinctive concept of ‘a lust of wonder’ and differ in the weak (at least for a part of the goods) concept of ‘TATTOO’ and the decorative and weak figurative elements of the contested sign. Therefore, these differing elements have less impact on the comparison of signs. Bearing this in mind, the signs are conceptually highly similar for the public taken into account.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods and services are partly identical and partly similar to a low degree. The signs are at least visually similar to an average degree, while they are aurally and conceptually highly similar for the public taken into account. Bearing this in mind, and also taking into account the principle of interdependence (as explained above), the similarity is such that it leads to a likelihood of confusion also in relation to the services that are similar to a low degree to the opponent’s goods. Moreover, the earlier mark is distinctive and the relevant public’s degree of attention is average. Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 297 894 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Boyana NAYDENOVA

Christian RUUD

Pedro JURADO MONTEJANO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.