OPPOSITION No B 2 416 439

Advance Magazine Publishers Inc., One World Trade Center, New York, NY 10007, United States of America (opponent), represented by Beck Greener, Fulwood House, 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative)

a g a i n s t

Andy Bender, Eckendorfer Str. 36, 33609 Bielefeld, Germany (applicant).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 416 439 is partially upheld, namely for the following contested goods:

Class 3:         Adhesives for affixing artificial fingernails; Nail polish; Nail care preparations; Nails (artificial); False nails; Nail polish pens; Tips, glue and lacquers, all for nail grooming; Artificial fingernails with glue therefor, being complete sets; Emery paper, emery cloth and emery, all for nail care; Nail care preparations, nail strengthening, repair and conditioning preparations, brush-on gels and resins for nail, curable nail gels; Nail polish, nail varnish, nail base coats, nail top coats, quick-dry nail varnish; Nail polish remover; False nails; Nail adhesives, nail tip removers; False nail enamel removers; Deep moisturising lotion for pedicures; Nail brush cleaners, Nail forms; Cuticle creams, removers and oils, all the aforesaid goods only for use in connection with professional nail care; Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetic preparations and substances for the hair; Preparations for colouring the hair; Conditioner; nonmedicated toiletries; Shampoo; Perfumery; Cosmetics; all the aforesaid goods only for professional use in connection with professional services.

2.        European Union trade mark application No 12 891 801 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 891 801. The opposition is based on European Union trade mark No 9 944 547. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods

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

Class 3: Cleaning, scouring and polishing preparations and substances; non-medicated toilet preparations and substances; beauty preparations and substances; cosmetics; make up; lip-stick and lip gloss; dentifrices; fragrances, perfumery, cologne, toilet waters and eau de colognes; essential oils; aromatherapy products; deodorants for personal use; anti-perspirants; sun-tan and sun-screening preparations and substances; depilatory preparations and substances; shaving cream and shaving soaps; massage oils; powders, creams and lotions; nail polish; nail polish remover; soaps and shampoos; shaving and after-shave preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth and nails; shower and bath preparations; bath oils and bath salts; talcum powder; moisturisers; pot pourri; incense; incense sticks; room fragrances and articles for perfuming rooms; non-medicated baby oils and baby creams; non-medicated baby wipes; cotton wool.

The contested goods are the following:

Class 1: Chemicals for use in industry and photography, in particular light-curing gels, adhesives used in industry.

Class 3: Adhesives for affixing artificial fingernails; nail polish; nail care preparations; nails (artificial); false nails; nail polish pens; tips, glue and lacquers, all for nail grooming; artificial fingernails with glue therefor, being complete sets; emery paper, emery cloth and emery, all for nail care; nail care preparations, nail strengthening, repair and conditioning preparations, brush-on gels and resins for nail, curable nail gels; nail polish, nail varnish, nail base coats, nail top coats, quick-dry nail varnish; nail polish remover; false nails; nail adhesives, nail tip removers; false nail enamel removers; deep moisturising lotion for pedicures; nail brush cleaners, nail forms; cuticle creams, removers and oils, all the aforesaid goods only for use in connection with professional nail care; bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetic preparations and substances for the hair; preparations for colouring the hair; conditioner; nonmedicated toiletries; shampoo; perfumery; cosmetics; all the aforesaid goods only for professional use in connection with professional services.

Class 11: Apparatus for lighting, in particular UV lamps (not for medical purposes).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods in Class 1

The contested chemicals for use in industry and photography, in particular light-curing gels, adhesives used in industry are not related to any of the opponent’s goods in Class 3.

The applicant’s goods in Class 1 are essentially chemicals used in the field of industry and photography, while the goods for which the earlier mark is registered are finished products used for laundry, cleaning and cosmetic purposes to, inter alia, enhance the appearance of the body and face or for the care and appearance of the skin, body, face, eyes, hair, teeth and nails. The natures and purposes of these goods are different, as well as their origins. Neither are these goods complementary or in competition.

Furthermore, it is important to note that the goods in Class 1 for which registration is sought target the industry and professionals, while the goods of the earlier mark in Class 3 are products aimed at the general end consumer. Therefore, even though, as the opponent claims, the applicant’s goods could be used in the preparation of cosmetics, this claim alone is not enough to change the outcome of the comparison of the goods.

Therefore, it is the opinion of the Opposition Division that these goods are dissimilar.

Contested goods in Class 3

The contested adhesives for affixing artificial fingernails; nail polish; nail care preparations (listed twice); nails (artificial); false nails (listed twice); nail polish pens; tips, glue and lacquers, all for nail grooming; artificial fingernails with glue therefor, being complete sets; emery paper, emery cloth and emery, all for nail care; nail care preparations, nail strengthening, repair and conditioning preparations, brush-on gels and resins for nail, curable nail gels; nail polish, nail varnish, nail base coats, nail top coats, quick-dry nail varnish; nail polish remover; nail adhesives, nail tip removers; false nail enamel removers; deep moisturising lotion for pedicures; nail brush cleaners, nail forms; cuticle creams, removers and oils, all the aforesaid goods only for use in connection with professional nail care are included in the broader category of the opponent’s preparations and substances for the conditioning, care and appearance of nails. Therefore, they are identical.

The contested cleaning, polishing, scouring preparations; all the aforesaid goods only for professional use in connection with professional services are included in the broader category of the opponent’s cleaning, scouring and polishing preparations and substances. Therefore, they are identical.

The contested soaps, perfumery (listed twice), essential oils, cosmetic preparations and substances for the hair; preparations for colouring the hair; conditioner; nonmedicated toiletries; shampoo; cosmetics; all the aforesaid goods only for professional use in connection with professional services are included in the broad categories of, or overlap with, the opponent’s soaps and shampoos, perfumery, essential oils, cosmetics, preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, teeth and nails; non-medicated toilet preparations and substances. Therefore, they are identical.

The contested bleaching preparations and other substances for laundry use, and abrasive preparations; the aforesaid goods only for professional use in connection with professional services are at least similar to the opponent’s cleaning preparations, as they coincide in their purpose, distribution channels and producer. They might also coincide in their relevant public (in which case, the similarity would be even higher).

Contested goods in Class 11

The contested apparatus for lighting, in particular UV lamps (not for medical purposes) is dissimilar to the opponent’s goods in Class 3. Even though some of the opponent’s goods, namely preparations and substances for the conditioning, care and appearance of the skin, may be used for the same purpose as the contested goods, this possibility does not suffice to establish similarity between these goods. For the same reasons, the Opposition Division cannot agree with the opponent’s claim that the UV lamps are used in the nail care sector and, therefore, it should be considered that the goods at issue are similar.

The contested goods have different commercial origins and distribution channels from the opponent’s goods and services. They do not target the same consumers and have different natures. Moreover, they are neither complementary to nor in competition with each other.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and the professional public.

The degree of attention may vary from average to high depending on the specialised nature, or terms and conditions of the purchased goods.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element, ‘VOGUE’, and the element ‘EN’ of the contested sign are not meaningful in certain territories, for example in those countries where French and English are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

The earlier mark is a figurative mark composed of the sole element ‘VOGUE’, written in fairly standard upper case letters. The contested mark is a figurative sign, ‘enVogue’, written in a generally standard typeface, except the upper case letter ‘V’, which is slightly stylised. Due to the slight stylisation of this letter and the fact that it is written in upper case, the element ‘Vogue’ in the contested mark will be clearly distinguished. Moreover, it is possible that the relevant public will see a slight gap between ‘en’ and ‘Vogue’ in the contested mark.

The element ‘VOGUE’ of both signs and the element ‘EN’ or the letters ‘enVogue’ of the contested mark have no meaning for the relevant public and are, therefore, distinctive.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘VOGUE’. However, they differ in the first two letters of the contested mark, ‘en’, and the slight stylisation of the marks.

Therefore, considering that the earlier mark is reproduced in the contested sign, the signs are visually similar to an average degree. Moreover, this degree could even be considered high for the part of the public that will see a slight gap between ‘en’ and ‘Vogue’ in the contested mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VOGUE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛en’ of the contested mark, which has no counterpart in the earlier sign.

Consequently, the signs are aurally similar to an average 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

The goods are partly identical, partly similar and partly dissimilar. The signs are visually and aurally similar to an average degree, because they correspond in the distinctive element ‘VOGUE’, which is the sole element of the earlier mark and constitutes most of the contested mark. There is no conceptual aspect that influences the present comparison.

The degree of attention may vary from average to high depending on the specialised nature, or terms and conditions of the purchased goods.

Furthermore, the earlier mark has a normal degree of distinctiveness.

Moreover, the element ‘VOGUE’ will be dissected in the contested mark due to the slightly stylised initial upper case letter ‘V’ of this element. However, neither this letter ‘V’ nor either of the signs as a whole presents any substantial stylisation capable of differencing the marks under comparison.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 9 944 547. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 outcome as regards the dissimilar goods would be the same even if the opponent’s evidence demonstrated the enhanced degree of distinctiveness of its earlier mark.

For the sake of completion, the Opposition Division notes that the marks under comparison are not identical and the opposition on the basis of Article 8(1)(a) EUTMR must fail.

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

Orsola LAMBRETTI

Gailé SAKALAITÉ

Pierluigi M. VILLANI

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.