OPPOSITION No B 2 763 178

Jean d’Arcel Cosmétique GmbH & Co. KG, Im Fuchseck 10-12, 77694 Kehl, Germany (opponent), represented by Gleiss Lutz, Lautenschlagerstraße 21, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Renova-Fábrica de Papel do Almonda S.A., Renova, Zibreira, 2354-001 Torres Novas, Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14,1249-103 Lisbon, Portugal (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 763 178 is partially upheld, namely for the following contested goods:

Class 3:                Goods and preparations for the cleaning, care, beautification and treatment of the skin; toiletries; cosmetics; perfumery.

Class 5:                Processed paper sanitary products, including sanitary wipes, sanitary towels, and sanitary protection products.

Class 16:                Processed paper goods, namely toilet paper, facial tissues and pocket tissues.

2.        European Union trade mark application No 15 163 298 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 15 163 298, , in Classes 3, 5 and 16. The opposition is based on, inter alia, European Union trade mark registration No 13 731 955, ‘RENOVAR’ (word mark). 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 European Union trade mark registration No 13 731 955.

1. The goods

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

Class 3:        Personal hygiene and beauty care products, in particular make-up, eye make-up, emulsions, powders, cleaning products, creams and lotions for the face and body; lipstick, lip rouge and lip gloss; suntan oils and lotions; moisturizing creams and lotions; nail care products and varnishes; depilatory products, body care products containing deodorizing and antiperspirant additives; perfumery goods, perfumes, fragrances, eau de Cologne, essential oils; preparations for the cleaning, care and beautification of hair, hair lotions, soaps; dentifrices.

The contested goods are the following:

Class 3:        Goods and preparations for the cleaning, care, beautification and treatment of the skin; toiletries; cosmetics; perfumery.

Class 5:        Processed paper sanitary products, including sanitary wipes, sanitary towels, and sanitary protection products.

Class 16:        Processed paper goods, namely toilet paper, kitchen rolls, napkins, facial tissues and pocket tissues.

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

Before proceeding with the comparison, an interpretation of the wording of the list of good is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used respectively in the opponent’s and in the applicant’s lists of goods, indicate that the specific goods 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 applicant’s list of goods in Class 16 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 3

The contested perfumery includes as a broader category the opponent’s perfumes. 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 toiletries overlap with the opponent’s perfumes. Therefore, they are identical.

The contested cosmetics include as a broader category the opponent’s hair lotions. 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 goods and preparations for the cleaning of the skin overlap with the opponent’s soaps. Therefore, they are identical.

The contested goods and preparations for the care, beautification and treatment of the skin are included in the broad category of the opponent’s beauty care products, in particular make-up, eye make-up, emulsions, powders, cleaning products, creams and lotions for the face and body. Therefore, they are identical.

Contested goods in Class 5

The contested processed paper sanitary products, including sanitary wipes, sanitary towels, and sanitary protection products and the opponent’s personal hygiene products may have the same purpose, that of personal hygiene. These goods can be sold through the same distribution channels, such as pharmacies or other specialised shops, and can be manufactured by the same companies. In addition, they may target the same relevant public. Therefore, they are considered similar.

Contested goods in Class 16

The contested processed paper goods, namely toilet paper, facial tissues and pocket tissues have some commonalities with the opponent’s personal hygiene and beauty care products, since they have the same purpose, namely, inter alia, personal cleanliness and hygiene. Although they may originate from different manufacturers and have different natures, these goods may target the same relevant public and be distributed through the same channels, for instance dedicated sections in supermarkets, pharmacies, ‘cash-and-carry’ outlets, etc. Therefore, the goods are similar to at least a low degree.

The contested processed paper goods, namely kitchen rolls, napkins have nothing in common with the opponent’s goods in Class 3. They have different natures and purposes (kitchen rolls and napkins are mainly intended for use in the kitchen or at the dinner table, whereas the goods in Class 3 are intended for personal hygiene and beauty care). They normally originate from different undertakings and target different publics. They have different distribution channels and they are neither in competition nor complementary. Therefore, they are dissimilar.

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 at the public at large. The degree of attention is average.

3. The signs

RENOVAR
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘RENOVAR’ is meaningful in certain territories, for example in those countries where Spanish is understood. 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 the word mark ‘RENOVAR’. The word ‘RENOVAR’ will be understood by the Spanish-speaking public as meaning, inter alia, to renew, to renovate something. For the relevant goods, as the word is not descriptive, allusive or otherwise weak, it is distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘Renova’ depicted in slightly stylised bold black letters in title case. The font is merely decorative and therefore not distinctive. The verbal element ‘Renova’ is very close to the Spanish word ‘RENOVAR’. Consequently, it is reasonable to assume that the relevant public will associate this word with ‘RENOVAR’ and understand it as having the meaning given above. Considering the goods at issue, the word has a normal degree of distinctiveness.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the contested sign is fully included in the earlier mark. The signs differ only in the earlier mark’s letter/sound ‘R’, following the coinciding letter sequence, and in the stylisation of the verbal element of the contested sign.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the coinciding six letters are at the beginnings of the signs is particularly relevant.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the signs will be associated with the same meaning, namely to renew, to renovate, by the Spanish-speaking part of the relevant public, they are conceptually similar to a high degree.

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

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).

The goods are partly identical, partly similar (to different degrees) and partly dissimilar. The striking similarity between the signs results from the fact that, from the perspective of the Spanish-speaking part of the public, the contested sign features a verbal element that is highly similar, on all levels, to the sole element of the earlier mark.

As explained in detail in section c) of this decision, the differences between the signs are confined to aspects of secondary importance, namely the graphical depiction of the contested sign and the difference in the final letter ‘R’ of the earlier mark. Account is 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).Therefore, the Opposition Division considers that the differing last letter, ‘R’, of the earlier mark is not sufficient to counteract the visual and aural similarities arising from the six letters that the signs have in common.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 731 955. 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.

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 in Class 16 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.

The opponent has also based its opposition on the following earlier trade mark:

• German trade mark registration No 1 146 174 for the word mark ‘RENOVAR’, registered for goods in Class 3.

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

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

Pierluigi M. VILLANI

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.