OPPOSITION No B 2 635 053

Angel Custodio Dalmau Salmons, Balmes, 426, 9º B, 08022, Barcelona, Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009, Barcelona, Spain (professional representative)

a g a i n s t

Unilever Plc, Port Sunlight, Wirral, Merseyside, United Kingdom, CH62 4ZD, (applicant), represented by Baker & McKenzie LLP, 100 New Bridge Street, London, EC4V 6JA, United Kingdom, (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 635 053 is upheld for all the contested goods, namely:

Class 3:        Soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonic, hair creams, preparations for the bath and/or shower; non-medicated toilet preparations; skin care preparations; cosmetics.

2.        European Union trade mark application No 14 631 881 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against part of the goods and services of European Union trade mark application No 14 631 881, namely against all the goods in Class 3.

The opposition is based on, inter alia, European Union trade mark registration No 2 060 622 CUSTO (word mark). The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

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

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 2 060 622 CUSTO.

1. The goods

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

Class 3:        Perfumery and cosmetic products.

The contested goods are the following:

Class 3:        Soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, conditioners, hair sprays, hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonic, hair creams, preparations for the bath and/or shower; non-medicated toilet preparations; skin care preparations; cosmetics.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

The contested soaps are considered to be similar to the earlier perfumery since they share distribution channels, relevant public and producer/provider.

Perfumery and cosmetics are identically contained in both lists of goods. Therefore, they are identical.

The contested hair care products; hair colorants; hair dyes; hair lotions; hair waving preparations; shampoos, conditioners; hair sprays; hair powder, hair dressings, hair lacquers, hair mousses, hair glazes, hair gels, hair moisturisers, hair liquid, hair preservation treatments, hair desiccating treatments, hair oils, hair tonic, hair creams; skin care preparations; preparations for the bath and/or shower are identical to the opponent’s cosmetic products either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

Essential oils are considered to be highly similar to perfumery as the goods have the same purpose and nature. They have the same producers, end users and distribution channels.

The contested deodorants and antiperspirants are similar to a high degree to the opponent’s cosmetics. The goods are produced by the same undertakings and they have the same distribution channels. They are sold in the same type of specialised shops or in the same areas in supermarkets.

The contested non-medicated toilet preparations include goods such as toilet water which are considered to be highly similar to the opponent’s cosmetics. They coincide with purpose, distribution channels, relevant public and producer/provider.

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 are directed at the public at large. The degree of attention is considered to be average.  

3. The signs

CUSTO
Earlier trade mark	Contested sign

The relevant territory is 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.

For reasons of procedural economy, the Opposition Division will focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark, CUSTO. It has no meaning to the relevant public. The contested sign is a figurative mark consisting of the word ‘custom’ with the letter ‘c’ being in a circle. It does not have a meaning to the relevant public so it is considered to be an invented word. The representation of the mark is not considered to be particularly stylised or distinctive.

Visually, the signs are similar to the extent that they coincide in the presence of the word CUSTO. However, they differ in that the contested sign ends with an ‘m’ and the letter ‘c’ is in a circle. Since the representation of the letter ‘c’ is not considered to be particularly stylised or distinctive and there is only one letter difference (which is at the end of the contested sign, the signs are considered to be visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the first syllable ‛CUS’, present identically in both signs and only differ insofar that the contested sign ends with an ‘m’.   Given the coincidences between the signs and that they only differ with an ‘M’ sound at the end of the contested mark, they are considered to be aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, it has been found that the respective signs are visually and aurally similar to a high degree. There is no conceptual comparison.

Many of the goods covered by the respective signs in dispute have been found to be identical. Therefore, when the earlier mark is considered to have an average degree of distinctive character and the relevant public is the general public who pay a reasonable degree of care and attention there is an inevitable likelihood of confusion.

With regard to the remaining goods where the degree of similarity was found to be average, applying the interdependence principle, this is offset by the high degree of similarity between the marks. Therefore, there is also a likelihood of confusion with respect to these goods.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 060 622 CUSTO.  It follows that the contested trade mark must be rejected for all the contested goods. It may proceed to registration for the uncontested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

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

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

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

The Opposition Division

Ioana MOISESCU

Mark KING

Cristina CRESPO MOLTÓ

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.