CHELSEA BEAUTY | Decision 2672684 – CHANNEL FOUR TELEVISION CORPORATION v. CHELSEA BEAUTY LTD

OPPOSITION No B 2 672 684

Channel Four Television Corporation, 124 Horseferry Road, London SW1P 2TX, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Chelsea Beauty LTD, Unit 4, 303 Holloway Road, London, London City of N7 8HS, United Kingdom (applicant), represented by Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011 Bucharest, Romania (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 672 684 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 836 217. The opposition is based on European Union trade mark registration No 14 180 467 and European Union trade mark registration No 10 173 557. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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.

Therefore, 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.

The signs

Earlier trade marks

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

In the present case, it is reasonable to assume that the relevant public will perceive the word ‘CHELSEA’, included in both marks, as a geographical reference, namely as the name of two well-known suburbs located in London and New York City respectively. The same was concluded by the opponent. This word will be regarded as merely indicating the place of production of the goods or offering of the services and will be considered as a non-distinctive element of the marks.

The wording ‘MADE IN’ included in the earlier sign will be associated with a merchandise expression, internationally used in commerce, indicating that a product is planned, manufactured and packed a certain place (for example in this case in Chelsea). This element is therefore non-distinctive for all the goods and services because it merely informs the consumer about the place where the aforesaid goods are made or produced or the services rendered. This expression is likely to be perceived by all the relevant consumers as it is being heavily used on labels in trade and known all over the European Union.

The verbal element ‘beauty’ is a basic English word that will be understood by a significant part of the relevant public with the meaning, for example: ‘That quality of a person (esp. a woman) which is highly pleasing to the sight; perceived physical perfection; attractive harmony of features, figure, or complexion; exceptional grace, elegance, or charm in appearance.’ or ‘That quality of a physical object or animal which is highly pleasing to the sight; perceived physical perfection; exceptional harmony of form or colour.’ (see: Oxford Dictionary Online). Bearing in mind that some of the relevant goods are for example goods in Class 3, this element is non-distinctive for part of the goods and services at hand and for the part of the public that understands this element. For some of the goods and services and for the other part of the public that does not understand the word ‘BEAUTY’, it is considered to be distinctive.

The representation of a crown in the contested mark may evoke the notion of high quality or a royal standard. As it is typically used in the market to emphasise the high quality of goods or services, the relevant public will perceive the stylised crowns in both marks as at least alluding to a high quality and will not pay as much attention to this element.

As regards the contested sign, it is also composed of a black rectangular on which the verbal and figurative elements are placed. This figurative element is considered to be of a purely decorative nature. In this respect, it also has to be noted that, 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).

It should also be noted that informative indications that the mark is registered (such as the symbol ‘™’ in the contested mark) is not considered to be part of the mark.

The opponent claims that the element ‘CHELSEA’ will be considered to be the strongest element of both of the marks. The Opposition Division cannot share this opinion. The word ‘CHELSEA’, as explained above, only gives information about the geographical place where the goods are produced and the services are offered. It is considered to be a non-distinctive element (see in this relation15/01/2015, MONACO, T‑197/13, EU:T:2015:16, § 69).

Taking into account all the above, for the part of the public that understands the meaning of the word 'BEAUTY', the marks have no elements that could be considered clearly more distinctive than other elements. For the remaining part of the public, the element 'BEAUTY' is the most distinctive element of the contested mark.

In the view of the Opposition Division, the marks have no elements that could be considered clearly more dominant.

Visually, the signs coincide in the non-distinctive word ‘CHELSEA’ and to certain extent in the representation of a crown which is also considered to be weak in relation to all the goods and services. The marks differ in the black background of the contested mark (which is of a purely decorative nature), in the non-distinctive words ‘MADE IN’ included in the earlier mark and in the word ‘BEAUTY’ of the contested mark and in the different stylisation of the crowns in each sign.

The signs are considered to be visually similar to a low 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 word ‛CHELSEA’, present in both marks and which is considered to be non-distinctive. The pronunciation of the marks differs in the words ‛MADE IN’ of the earlier sign and ‘BEAUTY’ of the contested mark.

The signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

As the conceptual similarities lie only in non-distinctive (‘CHELSEA’) or weak (representation of a crown) elements, the marks are conceptually similar to a low degree.

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

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union and the United Kingdom.

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 27/11/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom and the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for the following goods and services.

European Union trade mark registration No 14 180 467

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Liquid soaps; Bath soaps; Hand soaps; Perfumed soaps; Medicated soaps; Non-medicated soaps; Soaps in gel form; Soaps for personal use; Moisturisers [cosmetics]; Eyebrow cosmetics; Hair cosmetics; Cosmetics preparations; Cosmetics for suntanning; Suntanning oil [cosmetics]; Powder compacts [cosmetics]; Body creams [cosmetics]; Skin masks [cosmetics]; Nail paint [cosmetics]; Suntan lotion [cosmetics]; Nail tips [cosmetics]; Nail hardeners [cosmetics]; Cosmetics for personal use; Colour cosmetics for the eyes; Liners [cosmetics] for the eyes; Cosmetics in the form of creams; Cosmetics in the form of gels; Cosmetics in the form of milks; Cosmetics for use on the skin; Cosmetics in the form of powders; Cosmetics in the form of lotions; Cosmetics in the form of oils; Cosmetics for the use on the hair; Cosmetics for protecting the skin from sunburn; Cosmetics in the form of eye shadow; Powder (Make-up -); Make-up; Make-up for the face; Make-up pencils; Eye make-up; Cosmetic creams for skin care; Perfumery and fragrances; Potpourris [fragrances]; Hair preparations and treatments; Hair styling preparations; Conditioning preparations for the hair; Hair removal and shaving preparations; Shower and bath foam; Moisturizing body lotions; Lotions for face and body care; Toning lotion, for the face, body and hands; Scented body spray; Medicated hand wash; Cosmetic hand creams; Pumice stones for personal use; Perfumes; Perfumed body lotions [toilet preparations]; Perfumed potpourris; Perfumed powder [for cosmetic use]; Perfumed soaps; Perfumed talcum powder; Talcum powders; Room perfume sprays; Day creams; Night creams [cosmetics]; Household fragrances; Scented wood; Scented oils; Hair wax; Deodorants and antiperspirants; Nail glitter; Joss sticks; Incense sticks; Eye sticks; Soaps; cosmetics; perfumery; essential oils; eau de parfum; eau de toilette; cologne; fragrances and fragrance products for personal use; massage oils; hair lotions; cosmetics; cosmetic preparations for skin care; Skin care oils [cosmetic]; Skin care creams [cosmetic]; skin care preparations; astringents for cosmetic purposes; preparations for the bath and shower; shower gel; bath gels; scented body lotions and creams; Perfumed creams; Moisturising skin creams [cosmetic]; Moisturisers [cosmetics]; body lotions and creams; Moisturising skin creams [cosmetic]; Perfumed soaps; body oil; Make-up for the face; Lip liners; Blushers; Face blusher; Cheek colours; face powder; Glitter for cosmetic purposes; lipstick, lip gloss, non-medicated lip balm, lip pencils; perfumed shimmer sticks; eye shadow, eye pencils, mascara, eye make-up, eyeliners, eye creams, eye gels, eye balms; highlighters and Luminisers; Cosmetic masks; Facial masks; Cleansing masks; Skin cleansers; Facial cleansers; Hand cleansers; Skin toners; Facial toners [cosmetic]; Non medicated skin toners; Skin clarifiers; exfoliators; foundation make-up; blusher; Powder compacts [cosmetics]; Compacts containing make-up; Solid powder for compacts [cosmetics]; make-up remover; fragrance sachets; room fragrances; Body cleaning and beauty care preparations; Beauty care cosmetics; Beauty creams for body care; beauty creams; beauty tonics for application to the body; beauty tonics for application to the face; non-medicated beauty preparations; Non-medicated beauty preparations; Non-medicated skin care preparations; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions; Beauty serums; Serums for cosmetic purposes; Anti-wrinkle creams [for cosmetic use]; Anti-ageing creams [for cosmetic use]; Foundations; Make-up foundations; Hair care preparations; shampoos; hair conditioners; hair mousse; hair moulding creams; hair gel and hair spray; nail care preparations; nail polish; nail strengtheners; nail polish remover; shaving cream; shaving gel; after-shave preparations; after-shave lotions; depilatory preparations; personal deodorants; antiperspirants; potpourri; nail care preparations; nail varnish; Nail varnish remover [cosmetics]; Nail varnish removing preparations; sun tanning preparations; Sun-tanning preparations [cosmetics]; Tanning preparations; artificial tanning preparations; Bathing lotions; Scented bathing salts; Shower and bath gel; Body lotions; Body sprays; Hand washes; Hand creams; Lipstick cases; Artificial nails for cosmetic purposes; Cosmetic kits; Foot scrubs; Foot smoothing stones; Pumice stone; parts and fittings for all the aforesaid goods.

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting; Candles; Aromatherapy fragrance candles; Candles (Christmas tree -); Candles in tins; Floating candles; Fragranced candles; Fruit candles; Musk scented candles; Perfumed candles; Scented candles; Special occasion candles; Table candles; Wicks for candles; Lamp oils; Wicks for oil lamps; Wicks for candles; Tapers; Tapers for lighting; Tealights; parts and fittings for all the aforesaid goods.

Class 8: Hand tools and implements (hand-operated); Cutlery; Side arms; Razors; Hair cutting and removal implements; Hair-removing tweezers; Hair styling appliances; Nasal hair trimmers; Hand implements for hair curling; Hand-operated hair clippers; Hair clippers for personal use, electric and non-electric; Electric hair crimper; Electric hair curling irons; Electric hair cutters; Electric hair straightening irons; Electric hair trimmers; Beard clippers; Clippers for personal use [electric and non electric]; Electric hair clippers; Nail clippers, electric or non-electric; Fingernail polishers, electric or non-electric; Nail buffers, electric or non-electric; Electric nail files; Nail files, non-electric; Tweezers; Cuticle tweezers; Eyelash curlers; Electric manicure sets; Electric pedicure sets; Manicure sets; Pedicure sets; Nail scissors; Cases for razors; Blades for electric razors; Tableware [knives, forks and spoons]; Food preparation implements, kitchen knives and cutlery; forks and spoons; parts and fittings for all the aforesaid goods.

Class 14: Precious metals and their alloys namely, trophies, badges, boxes, figurines, statues, sculptures, trinkets, ring holders, key fobs, tie clasps, medallions, identity plates in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments; Personal jewellery; Fashion jewellery; Necklaces [jewellery]; Charms [jewellery]; Brooches [jewellery]; Pins [jewellery]; Jewellery watches; Rings [jewellery]; Lapel pins [jewellery]; Decorative pins [jewellery]; Bracelets; Earrings; Jewellery of precious metals; Jewellery in non-precious metals; Jewellery for the head; Jewellery pins for use on hats; Jewellery boxes and watch boxes; Costume jewellery; Paste jewellery; Watches; Jewellery watches; Bracelets for watches; Cases for watches; Clocks; Cases of precious metals for clocks; Cuff links; Key rings [trinkets or fobs]; Key charms [trinkets or fobs]; Tie bars; parts and fittings for all the aforesaid goods.

Class 20: Furniture, mirrors, picture frames; Mirrors; Mirrors for use in powder compacts; Make-up mirrors for travel use; Make-up mirrors for purses; Scented pillows; Beds, bedding, mattresses, pillows and cushions; Furniture for house, office and garden; Photograph frames; Identification bracelets, not of metal; Holders for pennants; Removable mats or covers for sinks; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Soft furnishings [cushions]; Pedestals for plant pots; Bath pillows; Personal compact mirrors; Garden furniture; parts and fittings for all the aforesaid goods.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes; Cases for toiletry articles; Toiletry cases; Sponges; Facial sponges for applying make-up; Make-up sponges; Shoe polishers (Non-electric -); Shaving brushes; Skin cleansing brushes; Washing brushes; Hair brushes; Hair combs; Wash bags; Bath sponges; Body sponges; Brushes for personal hygiene; Cosmetics brushes; Eyebrow brushes; Hair brushes; Lip brushes; Make-up brushes; Nail brushes; Exfoliating pads; Exfoliating mitts; Body scrubbing puffs; Nylon mesh body cleansing puff; Candlesticks; Glass holders for candles; Candle holders; Candle jars [holders]; Cosmetic bags [fitted]; Sponge bags; Vanity cases (Fitted -); Toilet brush sets; Scrubbing brushes; Shoe brushes; Skin cleansing brushes; Toothbrushes, electric; Toothbrushes [non-electric]; parts and fittings for all the aforesaid goods.

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers; Duvets; Duvet covers; Mattress covers; Pillow covers; Cushion covers; Furniture (Loose covers for -); Blankets for outdoor use; Face flannels in the form of gloves; Face flannels of textile; Wash gloves; Exfoliating gloves; Face cloths; Travelling blankets; parts and fittings for all the aforesaid goods.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers; Hair ornaments, hair rollers, hair fastening articles, and false hair; Decorative articles for the hair; Hair colouring caps; Hair curlers; Hair extensions; Hair scrunchies; Hair wraps; Non-electric hair curlers; Non-electric hair rollers; Ornaments for the hair; Snap clips [hair accessories]; Twisters [hair accessories]; Waving pins for the hair; Synthetic hair; Embroidered badges; Badges for wear, not of precious metal; Ornamental novelty badges [buttons]; Sticks for use in styling the hair; Sticks for use in decorating the hair; Hair ornaments in the form of combs; barrettes; bows for the hair; braids; false hair; hair bands; hair clips; hair fasteners; hair grips; hair slides; hair nets; hair ornaments; hair pins; plaited hair; tresses of hair; Ponytail holders and hair ribbons; parts and fittings for all the aforesaid goods.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile); Textile wallpaper; Wallpaper with a textile covering; Ceiling paper; Floor coverings and artificial ground coverings; Wall and ceiling coverings; Bathroom mats; Bath mats; Non-slip mats for showers; Non-slip mats for baths; Wallpaper; parts and fittings for all the aforesaid goods.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Baked goods, confectionery, chocolate and desserts; Pancakes; Snacks manufactured from cereals; Snacks manufactured from muesli; Sesame snacks; Tortilla snacks; Cereal snacks; Rice snacks; Crackers; Tea bags; Iced tea; Breakfast cereals, porridge and grits; Oat flakes.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Soft drinks; Flavoured carbonated beverages; Cordials [non-alcoholic]; Cocktails, non-alcoholic; Cider, non-alcoholic; Squashes [non-alcoholic beverages]; Smoothies [non-alcoholic fruit beverages]; Flavoured beers; Shandy; De-alcoholised drinks; Non-alcoholic wines; Non-alcoholic beer.

Class 33: Alcoholic beverages (except beers); White wines; Red wines; Rose wines; Sparkling wines; Spirits [beverages]; Distilled spirits; Prepared wine cocktails; Flavoured tonic liquors; Low alcoholic drinks; Alcoholic energy drinks; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic beverages containing fruit; Wines; Spirits and liquors; Alcopops; Cocktails.

European Union trade mark registration No 10 173 557

Class 9: Electronic games; apparatus for recording, transmission or reproduction of sound or images; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of radio and television programmes, and other audio, video and image data; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of digital media content; magnetic data carriers, recording disks; videos, CDs, CD roms, DVDs, mini-disks, CD-Is; audio, video and audio-visual recordings; cinematographical films; computer software; computer software supplied from the Internet; downloadable software; computer software downloadable for use with mobile telecommunication handsets, smart phones, MP3s, PDAs (Personal Digital Assistants), pocket PCs, laptop computers and tablet personal computers; computer games software; handheld computer games for use with television receivers; electronic publications provided on-line from databases or the Internet; e-books; computer software and telecommunications apparatus to enable connection to databases and the Internet; digital music provided from the Internet; digital music provided from MP3 Internet websites; parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; printed publications; books; magazines; magazine supplements; stickers; posters; photographs; calendars; guides; carrier bags; paper bags; printed programmes; instructional and teaching material; writing instruments; pens, pencils, crayons; erasers; rulers; pencil sharpeners; pencil boxes and cases; pencil holders; photograph albums; ring binders; folders; notebooks; notepads; diaries; postcards; drawings (graphic); stickers; transfers (decalcomanias); stencils.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery; belts; belts made of leather; bags; backpacks.

Class 25: Clothing, footwear; headgear; T-shirts; printed T-shirts; trousers; jogging trousers; shorts; jeans; sweatshirts; hooded tops; cardigans; skirts; dresses; scarves; gloves; aprons; hats; caps; trainers.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; board games relating to television programmes; parts and fittings for all the aforesaid goods.

Class 36: Financial affairs; monetary affairs; financial services relating to sporting, cultural and entertainment projects; arranging of finance for sporting, cultural and entertainment projects; arranging finance for the production of audio, video and image data; arranging finance for the production of digital media content; arranging finance for television programs; arranging finance for films; financial sponsorship; sponsorship and funding of television programmes; sponsorship and funding of films; sponsorship and funding of the production of audio, video and image data; sponsorship and funding of the production of digital media content; credit services; provision of credit services; financial services relating to the funding of broadcasting; financial services related to the subsidising of broadcasting, television programme, film and digital media content production through on-air advertising, programme sponsorship, the sale of content, merchandising, subscription fees; information and advisory services relating to the aforesaid.

Class 38: Telecommunications services; broadcasting services; telecommunication of information, computer programs, digital media content and any other audio, video or image data; computer aided transmission of messages, audio, video and image data; electronic communication services; television, cable television, satellite television and subscription television broadcasting services; video text and television screen based information and broadcasting and retrieval services; news agency services; texting; sms services; texting services; audio relay services; operating chat rooms; information and advisory services relating to the aforesaid.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; entertainment services; live entertainment services; musical entertainment services; club services; club entertainment services; discotheques, cabaret clubs, comedy clubs, dance clubs, heath, golf, gymnasium and fitness clubs, sports and social clubs, night clubs; production, presentation, syndication, reviewing, editing, networking and rental of material with a visual and/or audio element, including television and radio programmes, films, sound and video recordings, interactive entertainment, CDIs, CD-Roms, computer games, live shows, stage plays, exhibitions and concerts; production, presentation, syndication, reviewing, editing, networking and rental of digital media content; music concerts; organisation, production and performance of music; electronic games services provided by means of the Internet or any other communications network; publication services; information relating to education or entertainment, provided on line from a computer database or the Internet or by means of television or radio programmes; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; provision of news information; providing digital music from the Internet (not downloadable); information and advisory services relating to the aforesaid.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; computer services; weather forecasting; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining websites; design services; hosting the websites of others; information relating to all the aforesaid provided on-line from a computer database or from the Internet; information and advisory services relating to the aforesaid.

Class 43: Services for providing food and drink; Temporary accommodation; restaurant services; bar services; snack and salad bar services; wine bars; cocktail bars; cafeteria services; the provision of food and drink in night clubs; information and advisory services relating to the aforesaid.

Class 45: Protection and exploitation of copyright relating to films, television, theatre and to music; personal introduction services; personal networking services; information and advisory services relating to the aforesaid.

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.

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. On 23/09/2016 the opponent submitted the following evidence:

Witness Statement of Ms. Emma Derrick, Commercial Development Lead, employed by Channel Four Television Corporation Limited in England. According to the declaration, ‘Made in Chelsea’ is a structured reality drama television programme following the lives and loves of London’s young social elite. The TV series are broadcasted in a large number of countries and have a considerable audience.
Exhibit 1-8: extracts from different websites, for example www.amazon.co.uk, www.look.co.uk, www.channel4.com, www.instagram.com, www.uk.businessinsider.com, www.dailymail.com, www.instyle.co.uk, showing the internet hits for ‘Made in Chelsea’ TV series and availability of DVD box sets of the TV show for purchase on the Internet.
Exhibit 9: an extract from the website www.birminghammail.co.uk, showing an article of 07/11/2014 about the male star of ‘Made in Chelsea’ who attended NEC’s Clothes Show Live in December 2014.
Exhibit 10: an extract from Google Play, showing the availability of ‘Made in Chelsea’ game, which was launched in October 2013.
Exhibit 11-14: extracts from the website www.amazon.co.uk,showing the availability and the price of the TV series and its soundtrack ‘Made in Chelsea’.
Exhibit 16: an extract from www.channel4.com showing made in Chelsea’ Episodes.
Exhibit 17: an extract showing that the show ‘Made in Chelsea’ ran a competition for viewers to win a weekend in Chelsea with a makeover from Rimmel London.
Exhibit 18: an example of Rimmel product featuring the ‘Made in Chelsea’ star Binky Felstead on the packaging and an article with an interview with the same person.
Exhibit 19: picture of a website, on which a reference to ‘Rimmel’ and ‘Made in Chelsea‘ appears.
Exhibit 20: a picture of a perfume depicting the trade mark ‘Made in Chelsea’.
Exhibit 21-24: extracts from Facebook, Twitter, YouGov, Instagram social websites, showing the profile page of ‘Made in Chelsea’ TV series.
Exhibit 25: an extract from You Tube website, showing the hits for ‘Made in Chelsea’.
Exhibit 26: extracts and screenshots of some internet pages, namely www.mirror.co.uk (article of 20/09/2016), www.theguardian.com (of 13/04/2015) which is referring to the earlier mark as 'TV's ultimate gilt-y pleasure Made in Chelsea…' , www.dailystar.co.uk (of 22/09/2015), www.ok.co.uk (article of 11/08/2015), www.simply-woman.co.uk (article of 22/08/2015), www.cosmopolitan.co.uk (article of 12/06/2012), www.look.com.uk (article of 07/05/2015 and 13/06/2015), www.dailymail.co.uk (article of 02/06/2015). The articles and excerpts all show references to the TV show MADE IN CHELSEA or show interviews with the characters of the TV series ‘Made in Chelsea’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the earlier EUTM 10 173 557 acquired some level of enhanced distinctiveness through its use, but it is not sufficiently convincing, with regard to the extent of the relevant public’s awareness, for the earlier marks also to prove reputation.

All or virtually all of the evidence of the opponent mentions the trade mark ‘MADE IN CHELSEA’ in relation to a TV Show run by Channel Four Television Corporation and do not mention any of the other goods and services for which the earlier marks are registered.

As regards the witness statement signed by Commercial Development Lead of the opponent, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary, since such statements have to be considered as having less probative value than evidence originating from independent sources. In the present case, the declaration refers to very high sales figures and significant promotional expenses in the European Union. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the content of the declaration is supported by the other items of evidence.

The Opposition Division notes that the evidence does not include direct indications regarding the public’s awareness of the earlier mark (e.g. surveys or opinion polls) and that no information about the share in the European Union or United Kingdom market that the mark holds is provided, either. The declaration states that ‘MADE IN CHELSEA’ is a structured reality drama television programme which was first broadcasted on 09/05/2011 on E4 and Channel 4. The declaration also provides a table with indication of considerable number of visits or views of the show in the United Kingdom. However, the statement is drawn up by an employee of the opponent and cannot be given too much weight. No other official accounting documents or annual reports confirming the statements of the opponent were submitted.

A large proportion of the remaining documents are printouts from different websites (Annexes 1-24) showing that DVDs with TV show Made in Chelsea are available for online sale. However, these documents do not give any indication of the level of recognition, or even of any actual outward use, of the mark. The same is valid for the document attached to Annex 25, which consists of YouTube search results regarding ‘Made in Chelsea’ from which moreover it is not even possible to ascertain that the viewers are EU consumers. Of more relevance are the articles from the UK press (Exhibit 3, Part 1 and Exhibit 24) which are mostly dated some months before the filing date of the contested mark. These articles are from independent websites and make various direct and indirect references to the popular TV reality show ‘MADE IN CHELSEA’, at least in the United Kingdom. They show that publicity was given to TV show ‘Made in Chelsea’ and that many websites and newspapers reported on it. This is considered sufficient to accept the claim that at least the earlier EUTM No 10 173 557 enjoys some recognition in United Kingdom, and that the inherent distinctiveness of this mark has been enhanced to some degree through its use for the Production of television programmes and entertainment in the form of TV shows in Class 41.

However, without providing any information from independent sources such as opinion polls and market surveys to demonstrate knowledge of the earlier marks, the evidence submitted by the opponent does not allow the Opposition Division to reach a positive finding that the earlier marks have acquired a reputation in the European Union in relation to the mentioned services.

Moreover, for the rest of the goods and services, besides a picture of a perfume, the opponent has not submitted any material specifically addressing the relevant goods and services, any evidence relating to turnovers, market shares, sales figures or advertising activities, or any declarations from independent sources, such as professional associations that could prove the reputation. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks enjoy a reputation or an enhanced degree of distinctiveness.

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

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 goods and services

As seen above, the opponent proved that its earlier EUTM 10 173 557 enjoys enhanced distinctiveness only in relation to some of the services in Class 41. Due to the fact that this might have an impact on the outcome of the decision, the Opposition Division will first compare the contested goods and services to the earlier services of the earlier EUTM 10 173 557 for which enhanced distinctiveness was proven, namely the following services

Class 41: Production of television programmes; entertainment in the form of TV shows.

The contested goods and services are the following:

Class 3: Abrasive paper for use on the fingernails; Abrasive preparations for use on the body; Abrasive strips; Abrasives; Adhesive removers; Adhesives for affixing artificial eyelashes; Adhesives for affixing artificial fingernails; Adhesives for affixing false hair; Adhesives for affixing false eyelashes; Adhesives for cosmetic purposes; Adhesives for cosmetic use; Adhesives for fixing false nails; After-shave; After-shave emulsions; After-shave lotions; After-sun lotions [for cosmetic use]; After-sun milk [cosmetics]; After-sun milk for cosmetic use; After sun moisturisers; After-sun oils [cosmetics]; Aftershave balms; Aftershave creams; Aftershave gels; Aftershave milk; Aftershave moisturising cream; Aftershave preparations; Age retardant gel; Age retardant lotion; Age spot reducing creams; Air fragrancing preparations; Almond milk for cosmetic purposes; Almond oil; Almond soaps; Aloe vera gel for cosmetic purposes; Aloe vera preparations for cosmetic purposes; Alum stones [astringents]; Amber [perfume]; Anti-ageing creams; Anti-ageing creams [for cosmetic use]; Anti-aging skincare preparations; Anti-bacterial face washes (Non-medicated -); Anti-freckle creams; Anti-perspirant deodorants; Anti-perspirant preparations; Anti-perspirants in the form of sprays; Anti-wrinkle cream [for cosmetic use]; Anti-wrinkle creams; Anti-wrinkle creams [for cosmetic use]; Antibacterial soap; Antiperspirants; Antiperspirants for personal use; Antiperspirants [toiletries]; Antistatic preparations for household purposes; Antistatic sprays for clothing; Aromatherapy creams; Aromatherapy lotions; Aromatherapy oil; Aromatherapy pillows comprising potpourri in fabric containers; Aromatherapy preparations; Aromatic essential oils; Aromatic oils; Aromatic oils for the bath; Aromatics; Aromatics [essential oils]; Aromatics for fragrances; Aromatics for perfumes; Artificial eyelashes; Artificial fingernails; Artificial fingernails of precious metal; Artificial nails; Artificial nails for cosmetic purposes; Artificial pumice stone; Artificial tanning preparations; Astringents for cosmetic purposes; Auto-tanning creams; Balms (Non-medicated); Balms other than for medical purposes; Bark (Quillaia -) for washing; Barrier creams; Bars of soap; Base cream; Bases for flower perfumes; Bath and shower gels, not for medical purposes; Bath beads; Bath bombs; Bath concentrates (Non-medicated -); Bath creams; Bath creams (Non-medicated -); Bath crystals, not for medical use; Bath foams; Bath foams (Non-medicated); Bath gels; Bath gels (Non-medicated -); Bath herbs; Bath lotions (Non-medicated -); Bath oils for cosmetic purposes; Bath oils (Non-medicated -); Bath pearls; Bath pearls (Non-medicated -); Bath powder [cosmetics]; Bath powders (Non-medicated -); Bath preparations; Bath preparations, not for medical purposes; Bath salts; Bath salts, not for medical purposes; Bath soaps; Bathing lotions; Baths (Cosmetic preparations for -); Bay rums; Beard dyes; Beauty balm creams; Beauty care cosmetics; Beauty creams; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks; Beauty milks; Beauty serums; Beauty soap; Beauty tonics for application to the body; Beauty tonics for application to the face; Bergamot oil; Bleaches for use on the hair; Bleaching preparations [decolorants] for cosmetic purposes; Bleaching preparations for the hair; Bleaching preparations for cosmetic purposes; Bleaching preparations for laundry use; Bleaching preparations for household use; Blended essential oils; Blush; Blush pencils; Blushers; Body cream; Body cream for cosmetic use; Body cream soap; Body creams; Body creams [cosmetics]; Body deodorants [perfumery]; Body emulsions; Body emulsions for cosmetic use; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body moisturisers; Body oil [for cosmetic use]; Body oil spray; Body oils; Body oils [for cosmetic use]; Body paint (cosmetic); Body powder; Body powder (Non-medicated -); Body scrub; Body shampoos; Body sprays; Body sprays [non-medicated]; Body talcum powder; Boot cream; Boot polish; Boot wax; Breath freshener; Brilliantine; Bubble bath [for cosmetic use]; Bubble bath preparations; Bubble bath preparations [for cosmetic use]; Cakes of soap; Cakes of soap for body washing; Cleaner for cosmetic brushes; Children's play cosmetics; Cleaning masks for the face; Cleansing creams; Cleansing creams [cosmetic]; Cleansing foam; Cleansing gels; Cleansing lotions; Cleansing masks; Cleansing milk; Cleansing milk for cosmetic purposes; Cleansing milk for toilet purposes; Cleansing milks for skin care; Collagen preparations for cosmetic application; Collagen preparations for cosmetic purposes; Cologne; Cologne impregnated disposable wipes; Cologne water; Cobblers' wax; Cocoa butter for cosmetic purposes; Cold cream, other than for medical use; Cold waving solutions; Colognes; Color-removing preparations; Color-removing preparations for hair; Colour cosmetics for the eyes; Colour cosmetics for the skin; Colour-removing preparations; Colouring lotions for the hair; Colouring preparations for cosmetic purposes; Combing oil; Conditioners for use on the hair; Conditioners in the form of sprays for the scalp; Conditioning balsam; Conditioning creams; Conditioning preparations for the hair; Cosmetic breast firming preparations; Cosmetic cotton wool; Cosmetic creams and lotions; Cosmetic creams for firming skin around eyes; Cosmetic creams for skin care; Cosmetic dyes; Cosmetic eye gels; Cosmetic eye pencils; Cosmetic face powders; Cosmetic facial lotions; Cosmetic facial masks; Cosmetic facial packs; Cosmetic foams containing sunscreens; Cosmetic hair care preparations; Cosmetic hair dressing preparations; Cosmetic hair lotions; Cosmetic hair regrowth inhibiting preparations; Cosmetic hand creams; Cosmetic kits; Cosmetic masks; Cosmetic massage creams; Cosmetic moisturisers; Cosmetic nail care preparations; Cosmetic nourishing creams; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic paste for application to the face to counteract glare; Cosmetic pencils; Cosmetic powder; Cosmetic preparations; Cosmetic preparations against sunburn; Cosmetic preparations for slimming purposes; Cosmetic preparations for use as aids to slimming; Cosmetic preparations for baths; Cosmetic preparations for eye lashes; Cosmetic preparations for the hair and scalp; Cosmetic preparations for body care; Cosmetic preparations for skin renewal; Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations for the care of mouth and teeth; Cosmetic preparations for nail drying; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic preparations for dry skin during pregnancy; Cosmetic products in the form of aerosols for skincare; Cosmetic products in the form of aerosols for skin care; Cosmetic rouges; Cosmetic skin fresheners; Cosmetic soaps; Cosmetic sun milk lotions; Cosmetic sun oils; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations; Cosmetic sunscreen preparations; Cosmetic suntan lotions; Cosmetic suntan preparations; Cosmetic tanning preparations; Cosmetic white face powder; Cosmetics; Cosmetics all for sale in kit form; Cosmetics and cosmetic preparations; Cosmetics for animals; Cosmetics for eye-brows; Cosmetics for eye-lashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use in the treatment of wrinkled skin; Cosmetics for use on the skin; Cosmetics in the form of powders; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of milks; Cosmetics in the form of oils; Cosmetics in the form of rouge; Cosmetics preparations; Cotton balls for cosmetic purposes; Cotton buds for cosmetic purposes; Cotton for cosmetic purposes; Cotton puffs for cosmetic purposes; Cotton sticks for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool balls for cosmetic use; Cotton wool buds for cosmetic use; Cotton wool for cosmetic purposes; Cream cleaners (Non-medicated -); Cream for whitening the skin; Cream soaps; Creams (Cosmetic -); Creams for cellulite reduction; Creams for firming the skin; Creams for tanning the skin; Creams (Non-medicated -) for the body; Creams (Non-medicated -) for the eyes; Creams (Skin whitening -); Creams (Soap -) for use in washing; Creamy face powder; Creamy foundation; Creamy rouges; Cuticle conditioners; Cuticle cream; Cuticle oil; Cuticle removing preparations; Dandruff shampoos, not for medical purposes; Day creams; Dental bleaching gels; Deodorant for personal use; Deodorants and antiperspirants; Deodorants, for personal use in the form of sticks; Deodorants for personal use [perfumery]; Deodorants for the feet; Depilatories; Depilatory creams; Depilatory lotions; Depilatory preparations; Depilatory waxes; Dermatological creams [other than medicated]; Dyes (Cosmetic -); Dyes for the hair; Eau de cologne [cologne water]; Eau de toilette; Epilating waxes; Essences for skin care; Essential oils; Essential oils for cosmetic purposes; Exfoliant creams; Exfoliants; Exfoliants for the care of the skin; Exfoliants for the cleansing of the skin; Extracts of perfumes; Eye compresses for cosmetic purposes; Eye cream; Eye gels; Eye liner; Eye lotions; Eye make-up; Eye make-up removers; Eye pencils; Eye shadows; Eye sticks; Eye stylers; Eye wrinkle lotions; Eyebrow colors; Eyebrow cosmetics; Eyebrow pencils; Eyebrows [false]; Eyeglass lens cleaning solutions; Eyelash dye; Eyelash tint; Eyelashes; Eyelashes (Adhesives for affixing false -); Eyelashes (Cosmetic preparations for -); Eyelashes (False -); Eyelid doubling makeup; Eyelid shadow; Eyeliner pencils; Eyeliners; Eyeshadows; Face and body glitter; Face blusher; Face cream (Non-medicated -); Face creams; Face creams for cosmetic use; Face packs [cosmetic]; Face powders; Face scrubs (Non-medicated -); Facial beauty masks; Facial care preparations; Facial cleansers; Facial cleansers [cosmetic]; Facial creams; Facial creams [cosmetic]; Facial emulsions; Facial lotions; Facial makeup; Facial masks [cosmetic]; Facial packs [cosmetic]; Facial preparations; Facial scrubs; Facial soaps; Facial toners [cosmetic]; False eyelashes; False fingernails; False hair (Adhesives for affixing -); False nails; False toenails; Feminine deodorant sprays; Feminine hygiene cleansing towelettes; Foam bath preparations; Foam for use in shaving; Foams for use in shaving; Foams for use in the shower; Foot deodorant spray; Foot balms (Non-medicated -); Foot care preparations (Non-medicated -); Foot perspiration (Soap for -); Foundation make-up; Foundations; Fragrances; Gels for cosmetic purposes; Gels for cosmetic use; Gels for use on the hair; Gel eye masks; Gel nail removers; Gels for cosmetic purposes; Glitter for cosmetic purposes; Glitter in spray form for use as a cosmetics; Glue for strengthening nails; Granulated soaps; Greases for cosmetic purposes; Hair balm; Hair balsam; Hair bleaching preparations; Hair care agents; Hair care creams [for cosmetic use]; Hair care lotions [for cosmetic use]; Hair care preparations, not for medical purposes; Hair cleaning preparations; Hair color; Hair color removers; Hair colorants; Hair coloring preparations; Hair colouring and dyes; Hair conditioners; Hair conditioners for babies; Hair cosmetics; Hair creams; Hair curling preparations; Hair decolorant preparations; Hair dressings for men; Hair dye; Hair dyeing preparations; Hair emollients; Hair fixers; Hair frosts; Hair gels; Hair glaze; Hair lacquers; Hair lighteners; Hair lotions; Hair mascara; Hair moisturisers; Hair moisturising conditioners; Hair moisturizers; Hair mousses; Hair nourishers; Hair oils; Hair permanent treatments; Hair permanent wave kit; Hair piece bonding glue; Hair pomades; Hair preparations and treatments; Hair protection creams; Hair protection gels; Hair protection lotions; Hair protection mousse; Hair relaxers; Hair relaxing preparations; Hair removal and shaving preparations; Hair removing cream; Hair rinses [for cosmetic use]; Hair rinses [shampoo-conditioners]; Hair shampoos; Hair sprays; Hair straightening preparations; Hair strengthening treatment lotions; Hair styling gels; Hair styling lotions; Hair styling preparations; Hair styling spray; Hair styling waxes; Hair texturizers; Hair tinting preparations; Hair tonics; Hair tonics [for cosmetic use]; Hair-washing powder; Hair waving preparations; Hair wax; Hairspray; Henna for cosmetic purposes; Impregnated cleaning pads impregnated with cosmetics; Kits (Cosmetic -); Jelly (Petroleum -) for cosmetic purposes; Lacquer for cosmetic purposes; Lacquer removing compositions; Lacquer-removing preparations; Lint for cosmetic purposes; Lip balm; Lip balm [non-medicated]; Lip balms; Lip balms [non-medicated]; Lip coatings [cosmetic]; Lip coatings (Non-medicated); Lip conditioners; Lip cream; Lip gloss; Lip gloss palettes; Lip glosses; Lip liner; Lip liners; Lip neutralizers; Lip pencils; Lip polisher; Lip pomades; Lip protectors [cosmetic]; Lip protectors (Non-medicated -); Lipstick; Lipstick cases; Lipsticks; Liquid bath soaps; Liquid dentifrice; Liquid eyeliners; Liquid floor polishes; Liquid foundation (mizu-oshiroi); Liquid perfumes; Liquid rouge; Liquid soap; Liquid soap used in foot bath; Liquid soaps; Liquid soaps for hands and face; Liquids for floors (Non-slipping -); Litter tray cleaners incorporating a deodorizer; Loofah soaps; Loose face powder; Lotions for beards; Lotions for cellulite reduction; Lotions for cosmetic purposes; Lotions for face and body care; Lotions (Tissues impregnated with cosmetic -); Make-up; Make-up bases in the form of pastes; Make-up for compacts; Make-up for the face and body; Make-up foundations; Make-up pads of cotton wool; Make-up pencils; Make-up powder; Make-up preparations; Make-up preparations for the face and body; Make-up primer; Make-up remover; Make-up removing milks; Make-up removing preparations; Mascaras; Mask pack for cosmetic purposes; Masks (Beauty -); Massage creams, not medicated; Massage gels other than for medical purposes; Massage oils; Massage oils and lotions; Massage waxes; Milk for cosmetic purposes; Milks [cosmetics]; Milky lotions for skin care; Mineral oils [cosmetic]; Mineral water sprays for cosmetic purposes; Moist paper hand towels impregnated with a cosmetic lotion; Moist wipes for sanitary and cosmetic purposes; Moisturisers [cosmetics]; Moisturising body lotion [cosmetic]; Moisturising preparations; Moisturizers; Moisturizing milk; Mould removing preparations; Mousses being hair styling aids; Mousses [cosmetics]; Mousses [toiletries] for use in styling the hair; Moustache wax; Nail art stickers; Nail base coat [cosmetics]; Nail care preparations; Nail cream; Nail decolorants; Nail enamel; Nail enamel removers; Nail enamels; Nail gel; Nail glitter; Nail hardeners; Nail hardeners [cosmetics]; Nail paint [cosmetics]; Nail polish; Nail polish base coat; Nail polish pens; Nail polish removers; Nail primer [cosmetics]; Nail repair preparations; Nail strengtheners; Nail tips; Nail tips [cosmetics]; Nail varnish; Nail varnish for cosmetic purposes; Nail varnish remover [cosmetics]; Nail varnish removing preparations; Nutritional creams (Non-medicated -); Oils for perfumes and scents; Paper hand towels impregnated with cosmetics; Pedicure preparations; Pencils (Cosmetic -); Perfume; Perfume oils; Perfume oils for the manufacture of cosmetic preparations; Perfumed soaps; Perfumed powders [for cosmetic use]; Pomades for cosmetic purposes; Pre-moistened cosmetic tissues; Pre-moistened cosmetic towelettes; Preparations for permanent hair waves; Preparations for protecting the hair from the sun; Preparations for reinforcing the nails; Preparations for setting hair; Roll-on deodorants [toiletries]; Self-tanning creams [cosmetic]; Self-tanning lotions [cosmetic]; Self-tanning preparations [cosmetics]; Serums for cosmetic purposes; Shampoo; Shampoo-conditioners; Shave creams; Shaving balms; Shaving creams; Shaving gels; Shaving lotions; Shaving mousse; Shaving preparations; Shaving preparations in liquid form; Shaving soaps; Shaving sprays; Shaving sticks [preparations]; Shaving stones [astringents]; Shower and bath gel; Skin care creams [cosmetic]; Skin care creams, other than for medical use; Skin care lotions [cosmetic]; Skin care mousse; Skin care oils [cosmetic]; Skin care preparations; Skin cleansers [cosmetic]; Skin cleansing cream [non-medicated]; Skin cleansing foams; Skin cleansing lotion; Skin conditioning creams for cosmetic purposes; Skin cream [for cosmetic use]; Skin creams; Skin emollients [non-medicated]; Skin foundation; Skin fresheners; Skin lighteners; Skin lotions; Skin make-up; Skin masks [cosmetics]; Skin moisturisers; Skin moisturizers; Skin polishing rice bran (arai-nuka); Skin texturizers; Skin toners; Skin tonics [non-medicated]; Skin whitening creams; Skin whitening preparations; Skin whitening preparations [cosmetic]; Skincare cosmetics; Slimming aids [cosmetic], other than for medical use; Slimming purposes (Cosmetic preparations for -); Smoothing preparations [starching]; Soaps; Soaps and gels; Sun blocking preparations [cosmetics]; Sun bronzers; Sun care lotions; Sun screen preparations; Sun tan oil; Talcum powders [for cosmetic use]; Tanning gels [cosmetics]; Tanning milks [cosmetics]; Tanning preparations [cosmetics]; Tints for the beard; Tints for the hair; Toilet soaps; Toilet waters; Tonics [cosmetic]; Tooth powder [for cosmetic use]; Topical skin sprays for cosmetic purposes; Under-eye enhancers; Wipes impregnated with a cleaning preparation; Wipes incorporating cleaning preparations; Wiping cloth impregnated with a cleaning preparation for cleaning eye glasses; Wood treatment preparations for polishing; Wrinkle-minimizing cosmetic preparations for topical facial use; Wrinkle removing skin care preparations; Wrinkle resistant cream; Wrinkle resistant creams; Wrinkle resistant creams [for cosmetic use], all the above-mentioned products being professional products designated to beauty salons.

Class 5: Bath (Therapeutic preparations for the -); Sunburn ointments; Mud for baths; Salts for mineral water baths; sanitary preparations for medical purposes; Antibacterial pharmaceuticals; Acne creams [pharmaceutical preparations]; Acne cleansers [pharmaceutical preparations]; Nutritional supplements; Food supplements; Health food supplements made principally of vitamins; Health food supplements made principally of minerals; Powdered nutritional supplement drink mix; Vitamin preparations in the nature of food supplements; Health food supplements for persons with special dietary requirements; Mineral food supplements; Mineral dietary supplements for humans; Nutraceuticals for use as a dietary supplement; Anti-oxidant food supplements; Alginate dietary supplements; Albumin dietary supplements; Antioxidants; Dietary and nutritional supplements; Dietary supplemental drinks; Dietary supplements for humans; Dietary supplements for infants; Enzyme dietary supplements; Flaxseed oil dietary supplements; Flaxseed dietary supplements; Glucose dietary supplements; Health food supplements for persons with special dietary requirements; Health food supplements made principally of minerals; Health food supplements made principally of vitamins; Herbal dietary supplements for persons special dietary requirements; Wheat germ dietary supplements; Vitamin tablets; Vitamin supplements for use in renal dialysis; Vitamin supplements; Vitamin preparations in the nature of food supplements; Vitamin preparations; Vitamin drinks; Vitamin and mineral supplements; Soy protein dietary supplements; Royal jelly dietary supplements; Protein dietary supplements; Propolis dietary supplements; Pollen dietary supplements; Nutritional supplements; Multi-vitamin preparations; Mixed vitamin preparations; Mineral food supplements; Mineral dietary supplements for humans; Lecithin dietary supplements; Yeast dietary supplements; Dietary supplements; Dietary food supplements; Linseed dietary supplements; Casein dietary supplements; Mineral supplements to foodstuffs; Linseed oil dietary supplements; Food supplements for dietetic use; Pharmaceutical preparations; Dietetic substances adapted for medical use; Dietetic beverages adapted for medical purposes.

Class 44: Advice relating to cosmetics; Advice relating to hair care; Advisory services relating to beauty treatment; Advisory services relating to slimming; Advisory services relating to weight control; Aromatherapy services; Artificial suntanning services; Barber services; Barber shop services; Barbers' services; Barbers' shops; Baths (Public -) provision of facilities for personal hygiene; Baths (Turkish -); Baths (Turkish -) provision of facilities; Beautician services; Beauticians (Services of -); Beauty care; Beauty care for human beings; Beauty care services provided by a health spa; Beauty consultancy; Beauty consultation; Beauty counselling; Beauty salon services; Beauty salons; Beauty therapy services; Beauty therapy treatments; Beauty treatment services; Beauty treatment services especially for eyelashes; Body waxing services for the human body; Body waxing services for hair removal in humans; Bodywork therapy; Cellulitis treatment services; Colour analysis [beauticians' services]; Consultancy in the field of nutrition; Consultancy in the field of body and beauty care; Consultancy provided via the Internet in the field of body and beauty care; Consultancy relating to cosmetics; Consultancy relating to farming; Consultancy relating to health care; Consultancy services relating to cosmetics; Consultancy services relating to slimming; Consultancy services relating to beauty; Consultation services in the field of make-up; Consultation services relating to beauty care; Consultation services relating to skin care; Consulting services relating to health care; Cosmetic analysis; Cosmetic and plastic surgery; Cosmetic and plastic surgery clinic services; Cosmetic body care services; Cosmetic dentistry; Cosmetic dentistry services; Cosmetic electrolysis; Cosmetic electrolysis for the removal of hair; Cosmetic facial and body treatment services; Cosmetic make-up services; Cosmetic skin tanning services for human beings; Cosmetic surgery services; Cosmetic treatment; Cosmetic treatment for the body; Cosmetic treatment for the face; Cosmetic treatment for the hair; Cosmetic treatment services for the body, face and hair; Cosmetician services; Cosmetics consultancy services; Counselling relating to diet; Counselling relating to nutrition; Depilatory treatment; Depilatory waxing; Dermatological services for treating skin conditions; Dermatology services; Electrolysis for cosmetic purposes; Food nutrition consultation; Foot care; Foot massage services; Hair care services; Hair colouring services; Hair cutting services; Hair dressing salon services; Hair implantation; Hair replacement; Hair restoration; Hair salon services; Hair styling services; Hair tinting services; Hair treatment; Hair weaving; Hairdressing salon services; Health spa services; Hygienic and beauty care for human beings; Hygienic and beauty care services; Hygienic care for human beings; Information relating to massage; Leasing skin care equipment; Make-up application services; Make-up consultation services provided on-line or in-person; Make-up services; Manicuring services; Nail care services; Nail salon services; On-line make-up consultation services; Pedicurist services; Permanent hair removal and reduction services; Permanent makeup services; Personal hair removal services; Personal therapeutic services relating to cellulite removal; Personal therapeutic services relating to circulatory improvement; Personal therapeutic services relating to hair regrowth; Providing information relating to beauty salon services; Removal of body cellulite; Salon services (Beauty -); Salons (Beauty -); Salons (Hairdressing -); Services of a hair and beauty salon; Services of a make-up artist; Skin care salons; Skin tanning service for humans for cosmetic purposes; Slimming salon services; Slimming treatment services; Spas; Sun tanning salon services; Tanning salon and solarium services; Weight reduction diet planning and supervision; Weight-reduction programmes (Supervision of -); Weight-reduction programmes (Planning of -); Weight reduction services.

Contested goods and services in Classes 3, 5 and 44

The opponent’s services in Class 41 for which enhanced distinctiveness was proven do not have the same purpose or method of use. They do not share the same distribution channels and are not expected to be provided by the same undertakings as the contested goods and services. Furthermore, they are not in competition. Therefore, the Opposition Division considers that there is no sufficient point of contact between the goods and services concerned for a finding of a degree of similarity. As a result, the contested services are considered to be dissimilar to the opponent’s services for which enhanced distinctiveness has been proven.

The Opposition Division will now proceed with the comparison of the contested goods and services listed above to the remaining goods and services of the opponent on which the opposition is based.

European Union trade mark registration No 14 180 467

European Union trade mark registration No 10 173 557

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs

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

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

Distinctiveness of the earlier marks

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

In its submissions, the opponent claimed that the opponent’s earlier marks are inherently very strong and very distinctive. It claims that the expression ‘MADE IN CHELSEA’ has no particular meaning in respect of the goods and services covered by the earlier marks and that the crown logo adds a further level of distinctive character.

The Opposition Division cannot agree with the opponent’s arguments. The expression ‘MADE IN CHELSEA’ simply gives a message that the goods and services are made/origin from Chelsea, a famous suburb which exists in London and also in New York City. Considering what has been stated above in section 2.a) of this decision, the inherent distinctiveness of the earlier marks must be seen as lower than normal for all the goods and services in question.

Moreover, the representation of a crown in the contested mark may evoke the notion of high quality or a royal standard. As it is typically used in the market to emphasise the high quality of goods or services, the relevant public will perceive the stylised crown in the earlier mark as at least alluding to a high quality and will not pay as much attention to this element.

According to the opponent the earlier trade marks also enjoy a high degree of distinctiveness and reputation as result of its long standing and intensive use in the European Union in connection with all the goods and services for which they are registered. This claim has already been assessed under the ground of Article 8(5) EUTMR and some degree of enhanced distinctiveness has been established for the EUTM No 10 173 557 but only in relation to Production of television programmes and entertainment in the form of TV shows in Class 41 which is enough to enhance the mentioned earlier mark’s distinctiveness to a normal degree at the time of filing of the EUTM application.

As regards the remaining goods and services for which the earlier marks are registered, no enhanced distinctiveness or reputation has been established. The assessment of the distinctiveness of the earlier marks for the remaining goods and services will therefore rest on their distinctiveness per se. In the present case, as already stated in section a) of this decision, the earlier marks as a whole will indicate that quality goods and services are manufactured or offered in Chelsea. The distinctiveness of the earlier marks must be therefore seen as lower than average for all of the remaining goods and services.

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).

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 contested goods and services were assumed to be identical.

The coincidence between the marks lies in the element ‘CHELSEA’ and the representation of a crown placed above the verbal elements. These elements are, as explained above, non-distinctive in relation to the goods and services in both marks and, therefore, the coincidence of the mark in this element only results in a low similarity of the marks as they differ in all the remaining elements. Moreover, the distinctiveness of the earlier mark as a whole is lower than average and only lies in the specific combination with a figurative element, which is also considered to be weak and, thus, a higher level of similarity of the marks or of the goods and services would be required to find likelihood of confusion.

Although the distinctiveness of the additional elements included in the marks may not be very high, they still contribute to the overall impression created by the mark. Considering the above, it is concluded that despite the assumed identity of some of the goods and services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This finding cannot be overcome by the enhanced distinctiveness of the earlier EUTMR No 10 173 557. As seen above, the opponent showed that this earlier mark enjoys an enhanced scope of protection in relation to some of the services in Class 41. However, these services were found to be dissimilar to all the contested goods and services.

The similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result is therefore the same even if the earlier mark enjoys an enhanced degree of distinctiveness in relation to some of the services.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Lars HELBERT

Janja FELC

Judit NÉMETH

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.

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