OPPOSITION No B 2 648 296

Binella AG, Dorfstr. 17, 6052 Hergiswil, Switzerland (opponent), represented by Dr. Eikelau, Masberg und Kollegen Rechtsanwälte, Poststr. 24, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

KMS Plastik Makine Kagit Tekstil Ambalaj Sanayi Ve Ticaret Anonim Sirketi, 2. Organize Sanayi Bölgesi, Celal Dogan Bulvari No:20, Sehitkamil-Gaziantep, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 648 296 is partially upheld, namely for the following contested goods:

Class 3:        Perfumery; cosmetics; fragrances; deodorants for personal use and animals; soaps; bath herbs, not for medical purposes; dental care preparations, dentifrices, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes; pumice stone.

Class 5:        Pharmaceutical and veterinary preparations for medical purposes; chemical preparations for medical and veterinary purposes; herbal creams for medical purposes; herbal creams for medical use; sanitary preparations for medical use; preparations for destroying vermin; fungicides.

2.        European Union trade mark application No 14 584 932 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 some of the goods of European Union trade mark application No 14 584 932, namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 7 416 183 and international trade mark registration No 319 585 designating Germany and Austria. The opponent invoked Article 8(1)(a), 8(1)(b) EUTMR in relation to the European Union trade mark registration and Article 8(1)(a), 8(1)(b) and 8(5) EUTMR in relation to the international trade mark registration.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration No 319 585, for which the opponent claimed repute in Germany.

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 will 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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the opponent claimed that its earlier right IR No  319 585 is reputed in Germany for cosmetic products in Class 3 and invoked Article 8(5) EUTMR as basis of its opposition against the contested sign. The notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 03/02/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 08/06/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Pursuant to the applicant’s request, the opponent submitted proof of use of its earlier right on 23/12/2016. The Opposition Division cannot take into account the evidence filed to prove use as  evidence of reputation because it was submitted after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade marks were registered for more than five years prior to the relevant date mentioned above.

The contested application was published on 30/10/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (in relation to the earlier EUTM) and, in relation to IR No 319 585, in Germany and Austria from 30/10/2010 to 29/10/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 7 416 183, ‘BINELLA MEDICAL BEAUTY’:

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic bath preparations, deodorants for personal use, hair dyeing and conditioning preparations, sunscreens.

Class 5:        Dietetic substances adapted for medical use, food supplements for medical purposes, vitamin preparations, mineral food supplements, bath salts for medical purposes, therapeutic preparations for the bath. 

Class 44:        Hygienic and beauty care for human beings, beauty salons, hairdressing services, manicure services, pedicure services.

International trade mark registration No 319 585, ‘BINELLA’:

Class 3:        Cosmetic products; perfumery; essential oils; soaps.

Class 5:        Chemical products for the hygiene.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 15/08/2016 according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/10/2016 to submit evidence of use of the earlier trade marks. After an agreed extension of time, on 23/12/2016, within the time limit, the opponent submitted evidence of use.

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 to be taken into account is the following:

• Catalogues: Two catalogues dated 01/01/2014 and 01/01/2015. On their cover page the mark ‘BINELLA MEDICAL BEAUTY’ is clearly visible. The catalogues contain a list of products. Although they are in German, the product descriptions contain English words which indicate that the products are cosmetics and personal hygiene products such as ‘lift express’, ‘multiaction cream’, ‘rich cream’, ‘eye fluid’, ‘shampoo’, ‘balsam’, ‘make-up’, etc. However, the marks ‘BINELLA’ and ‘BINELLA MEDICAL BEAUTY’ do not appear in the list of products. The products are grouped under other trade marks such as ‘SIVA BABYLIKE®’ or ‘ULTRAMESO®’, together with reference numbers.
• Invoices: More than a hundred invoices for the year 2015, issued to clients in Germany by an import-export company which according to the opponent is the only distributor for ‘BINELLA’ products in Europe. The invoices contain reference numbers and names of products. None of the products on the invoices is referred as ‘BINELLA’. The only references to ‘BINELLA’ in 8 of the invoices correspond to travel bags, flyers, seasonal catalogues and other promotional materials.
• Samples of products and packaging: 98 pictures of cosmetic products. The mark ‘BINELLA MEDICAL BEAUTY’ or ‘BINELLA OF SWITZERLAND’ is visible on their packaging. None of the pictures is dated nor is the place where they were taken indicated.
• Internet screenshots: 10 screenshots from German websites on which cosmetic products are offered for sale. The marks ‘BINELLA’, ‘BINELLA MEDICAL BEAUTY’ and ‘BINELLA OF SWITZERLAND’ are visible. They are dated 21/12/2016.
• Turnover and sales figures: The opponent indicates that it makes a significant turnover each year for cosmetics and dietetic products since the 1960’s.

In the context of Rule 22(3) EUTMIR the proof of use must consist of indications concerning the place, time, extent and nature of the use. In this regard, the opponent should have shown genuine use of its EUTM in the European Union and, in relation to IR No 319 585, in Germany and Austria. The submitted evidence shows that the place of use is Germany. This can be inferred from some addresses in Germany and the language of the documents (German). Therefore, the evidence relates to, at least, part of the relevant territory. However, there is no evidence in relation to Austria; therefore, the opposition fails as far as it is based on IR No 319 585 designating Austria.

In addition, evidence must concern the relevant period indicated above (from 30/10/2010 to 29/10/2015). Only part of the evidence falls in its entirety within the relevant timeframe, namely the catalogue from 2014 and most of the invoices. The second catalogue would be partially out of the timeframe as it covers the year 2015 in full; the same occurs with some invoices which were issued after the relevant period. This evidence will not be disregarded because it is very close in time to the relevant period.

Although the remaining evidence is undated (product samples) or is dated more than a year after the end of the relevant period (internet screenshots), it is settled case-law that evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the undated evidence or referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because a link can be made between the products shown in the undated pictures with those indicated in the catalogues whose reference numbers correspond to those indicated in the invoices.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

The documents filed, namely catalogues and invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Although actual figures were blacked out in the invoices, taking into account their number (more than a hundred invoices filed), they show use of the EUTM and the IR in Germany.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The evidence filed by the opponent shows use of the marks in accordance with their function and as registered. However, it does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for body and skin care creams, belonging to the following categories in the specification: Cosmetics, sunscreens and cosmetic products. As the opponent is not required to prove all the conceivable variations of the category of goods and services for which the earlier marks are registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the EUTM for cosmetics and sunscreens and of the IR for cosmetic products.

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 7 416 183, ‘BINELLA MEDICAL BEAUTY’.

1. The goods

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

Class 3:        Cosmetics; sunscreens.

The contested goods are the following:

Class 3:        Bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, dishwasher detergents; perfumery; cosmetics; fragrances; deodorants for personal use and animals; soaps; bath herbs, not for medical purposes; dental care preparations, dentifrices, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes; abrasive preparations; emery cloth; sandpaper; pumice stone; abrasive pastes; polishing preparations for leather, vinyl, metal and wood, polishes and creams for leather, vinyl, metal and wood, wax for polishing.

Class 5:        Pharmaceutical and veterinary preparations for medical purposes; chemical preparations for medical and veterinary purposes, chemical reagents for pharmaceutical and veterinary purposes; dietary supplements for pharmaceutical and veterinary purposes; dietary supplements; nutritional supplements; medical preparations for slimming purposes; food for babies; herbs and herbal beverages adapted for medicinal purposes; herbal supplements; herbal creams for medical purposes; herbal creams for medical use; herbal teas for medicinal purposes; liquid herbal supplements; teeth filling material, dental impression material, dental adhesives and material for repairing teeth; sanitary preparations for medical use; hygienic pads; hygienic tampons; plasters; materials for dressings; diapers, including those made of paper and textiles; preparations for destroying vermin; fungicides, herbicides; deodorants, other than for human beings or for animals; air deodorising preparations; disinfectants; antiseptics; detergents for medical purposes.

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.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 3

Cosmetics are identically contained in both lists of goods.

The contested bath herbs, not for medical purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested perfumery; fragrances; deodorants for personal use and animals are fragrant preparations used to impart a pleasant long-lasting scent to the body and/or suppress or mask body odours. Since they have the same purpose as the opponent’s cosmetics and they can coincide in producer, end user and distribution channels, they are highly similar.

The contested soaps; pumice stone are cleaning or emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide and light volcanic rocks used to clean the skin or make it smoother by rubbing them over the skin. Besides their cleaning purposes, soaps and pumice stones also have a beautifying function. They can coincide in producer, end user and distribution channels with the opponent’s cosmetics; therefore, they are similar.

The contested dental care preparations, dentifrices, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes are preparations whose main function is to improve the health and beauty of teeth and mouth. They can coincide in end user and distribution channels with those of the opponent’s cosmetics; therefore, they are similar to a low degree.

The contested bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, dishwasher detergents; abrasive preparations; emery cloth; sandpaper; abrasive pastes; polishing preparations for leather, vinyl, metal and wood, polishes and creams for leather, vinyl, metal and wood, wax for polishing are cleaning and abrasive preparations and agents used for cleaning, whitening, grinding, smoothing, or polishing other products or objects. To that extent, their nature and purpose are different to those of cosmetics or sunscreens. Furthermore, they target different consumers and are not sold in the same outlets or in the same section in supermarkets. Therefore, these goods are considered dissimilar.

Contested goods in Class 5

The contested pharmaceutical preparations for medical purposes; chemical preparations for medical purposes, herbal creams for medical purposes; herbal creams for medical use; sanitary preparations for medical use are similar to the opponent’s cosmetics in Class 3. The opponent’s goods comprise preparations used to enhance or protect the appearance or odour of the body. Pharmaceuticals on the other hand comprise products, such as skin care preparations or other toiletries, with medical properties. They may coincide in purpose with cosmetics. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies.

The contested veterinary preparations for medical purposes; chemical preparations for veterinary purposes, include body care preparations or other toiletries to be used with animals for veterinary purposes. They can coincide in producer, end user and distribution channels with the opponent’s cosmetics in Class 3. Therefore, they are similar to a low degree. 

The contested preparations for destroying vermin; fungicides are preparations aimed at destroying harmful animals such as lice and also may include substances or agents that destroy or are capable of destroying fungi (or prevent them from growing). Apart from their prevention or eradication purposes, they can also have a toiletry function that would be the case of, for example, anti-lice shampoo or antifungal nail polish. They have a similar purpose and can coincide in producer, end user and distribution channels with the opponent’s cosmetics in Class 3. Therefore, they are similar to a low degree.

The contested chemical reagents for pharmaceutical and veterinary purposes are substances used to indicate the presence of other substances in humans or animals, for example substances used to detect the presence of drugs, poisons or bacteria. These goods do not have any a toiletry or beautifying purpose. They are dissimilar to the opponent’s cosmetics; sunscreens in Class 3, as they are not of the same nature, do not have the same purposes and do not coincide in producers, end users and distribution channels.

The contested dietary supplements for pharmaceutical and veterinary purposes; dietary supplements; nutritional supplements; medical preparations for slimming purposes; food for babies; herbs and herbal beverages adapted for medicinal purposes; herbal supplements; herbal teas for medicinal purposes; liquid herbal supplements are dietetic and nutritional substances that serve a specific medical requirement, for example to augment or supplement the nutritional value of a normal diet, or are specially indicated to satisfy the needs of a given physical condition, for example food for babies, and usually are taken under the supervision of a doctor or adult as it is recommended that babies follow a very specific diet. Therefore these goods are dissimilar to the opponent’s cosmetics; sunscreens in Class 3, as they are not of the same nature, do not have the same purposes and do not coincide in producers, end users and distribution channels.

The contested teeth filling material, dental impression material, dental adhesives and material for repairing teeth; hygienic pads; hygienic tampons; plasters; materials for dressings; diapers, including those made of paper and textiles are dissimilar to the opponent’s cosmetics; sunscreens in Class 3. These goods are dental materials to be used by dentists in the treatment of dental conditions; hygienic and sanitary goods including women’s menstrual products and diapers for babies or adults; and bandages or tapes to cover a part of the body while it is healing. None of these goods have a toiletry or beautifying purpose beyond their medical, sanitary or curative purposes. They are not of the same nature and do not coincide in producers, end users and distribution channels.

The contested herbicides; deodorants, other than for human beings or for animals; air deodorising preparations; disinfectants; antiseptics; detergents for medical purposes do not have a toiletry purpose as they are not to be used directly on the body (deodorants) or go beyond the mere cleaning purpose (eradication of microorganisms, fungus, harmful plants and disinfection) . They also do not coincide in producers, end users and distribution channels. Therefore, they are dissimilar to the opponent’s cosmetics; sunscreens 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 found to be identical or similar to various degrees are specialised goods directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. professional of medicine, pharmacists or vets).

The degree of attention depends, among other facts, on the specialised nature of the goods, the frequency of purchase and their price. In the present case, the degree of attention would vary from average to high taking into account that some of the goods also have a healing or medical function and, whether or not sold on prescription, the public’s degree of attentiveness, general and professional, will be high in relation to those goods (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).

3. The signs

BINELLA MEDICAL BEAUTY	BIDELLA
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 elements ‘MEDICAL BEAUTY’ are meaningful in certain territories, for example, in those countries 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 such as the Republic of Ireland, the Republic of Malta and the United Kingdom.

Both signs are word marks. In the case of word marks, it is the word as such that is protected, regardless of the way in which it is depicted.

The element ‘BINELLA’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The elements ‘MEDICAL BEAUTY’ of the earlier mark will be associated with medicine-based beauty treatments. Bearing in mind that the relevant goods are cosmetics, these elements are non-distinctive for these goods.

Therefore, the element ‘BINELLA’ is clearly its most distinctive element.

The only element the contested sign consists of, ‘BIDELLA’, has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the letter sequence ‘BI*ELLA’ of the sign’s distinctive elements. However, they differ in the letters ‘N’ and ‘D’ of the distinctive elements. The non-distinctive elements of the earlier mark constitute a further visual difference.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛B-I*E-L-L-A’, present identically in the distinctive element of both signs. The pronunciation differs in the sound of the letters ‛N’ and ‘D’ of the distinctive element of both signs. The signs also differ in the sound of the non-distinctive elements of the earlier mark, ‘MEDICAL BEAUTY’.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the earlier mark’s elements ‘MEDICAL BEAUTY’ will evoke a concept, these elements are non-distinctive and cannot indicate the commercial origin of the goods. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.

Therefore, the conceptual comparison is neutral and will not influence the assessment of the similarity.

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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). 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 goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods at issue are identical and some are similar to various degrees. The remaining contested goods are dissimilar to the goods covered by the earlier mark. They target the general and professional public, whose degree of attention may vary from average to high.

The high similarity between the signs, taking into account all the relevant factors and despite the presence of non-distinctive elements in the earlier mark, results from the visual and aural coincidences in the distinctive elements of the signs.

The differences in the third letter of the signs’ distinctive elements, ‘BIDELLA-BINELLA’, are likely to have a limited impact for the public, taking into account that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Therefore, although the earlier mark contains additional elements, these elements are non-distinctive in relation to the goods in question and cannot overshadow the visual and aural coincidences between the earlier mark and the contested sign, especially taking into account that the distinctive element of the earlier mark is almost fully contained in the contested sign. Therefore, as the goods in question are identical or similar, a likelihood of confusion exists, even for those goods whose similarity to the invoked goods is deemed to be low.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 7 416 183. 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 and services 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.

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

IR No 319 585, ‘BINELLA’, designating Germany.

Since this mark was shown to cover a narrower scope of goods, than the one already examined, 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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

Sigrid DICKMANNS

Octavio MONGE GONZALVO

Denitza STOYANOVA-VALCHANOVA

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.