OPPOSITION DIVISION
OPPOSITION No B 2 808 874
Creative Nail Design, Inc., 9560 Towne Centre Drive, San Diego, California 92121,
United States of America (opponent), represented by Beautyge Beauty Group, S.L.,
Josep Maria Rovira Peláez, WTC Almeda Park, Tirso de Molina, 40 E, 08940
Cornellá de Llobregat (Barcelona), Spain (employee representative)
a g a i n s t
Desert King International, 7024 Manya Circle, San Diego, California 92154, United
States of America (applicant), represented by Fieldfisher LLP, Riverbank House,
2 Swan Lane, City of London, London EC4R 3TT, United Kingdom (professional
representative).
On 16/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 808 874 is partially upheld, namely for the following
contested goods:
Class 3: Toiletries; essential oils and aromatic extracts; body cleaning and
beauty care preparations; perfumery and fragrances; cosmetics;
cosmetics preparations; bath preparations; soaps and gels; skin
care preparations; hair preparations and treatments; hair removal
and shaving preparations; bath foams; shower foams; shaving
foams; hair styling foams; skin cleansing foams; body cleansing
foams; cosmetic foams containing sunscreens.
2. European Union trade mark application No 15 772 627 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 772 627 for the word mark ‘FOAMATION’, namely against all
the goods in Class 3. The opposition is based on European Union trade mark
registration No 6 733 381 for the word mark ‘FORMATION’. The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 808 874 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Cosmetics, namely, nail care preparations; artificial nails, nail extensions,
nail forms, nail tips; liquid and powder artificial nail preparations and associated
bonding agents and removers.
The contested goods are the following:
Class 3: Toiletries; cleaning and fragrancing preparations; essential oils and aromatic
extracts; body cleaning and beauty care preparations; perfumery and fragrances;
cosmetics; cosmetics preparations; bath preparations; soaps and gels; skin care
preparations; hair preparations and treatments; hair removal and shaving
preparations; bath foams; shower foams; shaving foams; hair styling foams; skin
cleansing foams; body cleansing foams; foam cleaning preparations; foam
detergents; cosmetic foams containing sunscreens.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods to a broader category, is exclusive and restricts the scope of
protection only to the goods specifically listed.
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 toiletries; cosmetics; cosmetics preparations; body cleaning and
beauty care preparations include, as broader categories, the opponent’s nail care
preparations. Since the Opposition Division cannot dissect ex officio the broad
categories of the contested goods, they are considered identical to the opponent’s
goods.
The contested essential oils and aromatic extracts; perfumery and fragrances; bath
preparations; soaps and gels; skin care preparations; hair preparations and
treatments; hair removal and shaving preparations; bath foams; shower foams;
shaving foams; hair styling foams; skin cleansing foams; body cleansing foams;
cosmetic foams containing sunscreens are similar to the opponent’s nail care
preparations. These goods have the same distribution channels, target the same
Decision on Opposition No B 2 808 874 page: 3 of 5
public and are likely to originate from the same undertaking or economically linked
undertakings.
The contested cleaning and fragrancing preparations; foam cleaning preparations;
foam detergents are used for domestic hygiene purposes and, as such, they are
considered dissimilar to all the opponent’s goods. They are neither complementary
nor in competition. They have different methods of use and they satisfy different
needs. These goods usually have different commercial origins, are distributed via
different channels and target different publics.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the
public at large.
The degree of attention is average.
c) The signs
FORMATION FOAMATION
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The element ‘FOAM’ is not meaningful in certain territories, for example in those
countries where English is not commonly understood. Consequently, the Opposition
Division finds it appropriate to focus the comparison of the signs on the non-English-
speaking part of the public.
The word ‘FOAMATION’, which constitutes the contested mark, has no meaning for
the relevant public and is, therefore, distinctive.
The word ‘FORMATION’, which constitutes the earlier mark, exists in French and, as
it has similar equivalents in Spanish, Portuguese and Italian, it will be understood as
Decision on Opposition No B 2 808 874 page: 4 of 5
‘the action of forming’ by the relevant public. As it has no clear connection with the
goods at issue, it is distinctive.
The rest of the relevant public, such as the Czech- or Slovenian-speaking public, is
not likely to associate any meaning with the earlier sign. The word ‘FORMATION’ is,
therefore, also distinctive for this part of the public.
Visually and aurally, the signs coincide in ‘FO*MATION’. However, they differ in
their third letters, ‘R’ in the earlier mark versus ‘A’ in the contested sign, which are
visually somewhat similar. The signs have eight out of nine letters/sounds in common
in the same positions; therefore, from the aural point of view, they will have the same
rhythm and intonation.
Therefore, the signs are visually and aurally highly similar.
Conceptually, neither of the signs has a meaning for a part of 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.
Although a part of the public in the relevant territory will perceive the meaning of the
earlier mark as explained above, the other sign has no meaning in that territory.
Since one of the signs will not be associated with any meaning, the signs are not
conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
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).
In the present case, the goods are partly identical, partly similar and partly dissimilar
and target the public at large.
The signs in dispute are visually and aurally highly similar because they have in
common the letter sequence ‘FO*MATION’. The differences between the signs are
limited to their third letters/sounds, namely ‘R’ in the earlier mark and ‘A’ in the
contested sign. For a part of the public, the signs are not conceptually similar, and for
Decision on Opposition No B 2 808 874 page: 5 of 5
the rest of the relevant public the conceptual aspect does not influence the
assessment of the similarity of the signs. Taking into account the principle of
imperfect recollection, and since the signs are both composed of nine letters (the
longer the sign, the less perceptible the differences) and differences in one letter may
be easily overlooked, the likelihood of confusion cannot be excluded, even for the
part of the public that would understand the meaning of the earlier mark.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the non-English-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. As stated above in section c) of this decision, a likelihood of
confusion for only part of the relevant public of the European Union is sufficient to
reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods 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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) 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 for only some 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
Steve HAUSER Katarzyna ZANIECKA Justyna GBYL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.