OPPOSITION DIVISION
OPPOSITION No B 2 836 867
IICOMBINED Co., Ltd., 41, Eoulmadang-ro 5-gil, Mapo-gu, Seoul, Republic of
Korea, (opponent), represented by Müller Fottner Steinecke Rechtsanwalts- Und
Patentanwaltspartnerschaft Mbb, Prielmayerstr. 3, 80335 München, Germany
(professional representative)
a g a i n s t
Xiao Jie Xiang, No.53, Yangdu, Yangdu Village, Chuanliao Town, Qintian County,
Zhejiang Province, People’s Republic of China (applicant), represented by Eugene
Johann Pienaar, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom
(professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 836 867 is partially upheld, namely for the following
contested goods:
Class 3: Hair care preparations; hair lotions; cleansing creams; cosmetics;
hair colorants; cleaning preparations.
2. European Union trade mark application No 15 872 815 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods of European Union trade mark
application No 15 872 815 . The opposition is based on international trade
mark registration No 1 303 698 ‘GENTLE MONSTER’ designating the European
Union. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 836 867 page: 2 of 7
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 and services
A preliminary remark must be made regarding the comparison of the goods and
services as the opposition notice indicates that the opposition is based on ‘all
services’, but appears to include a shorter list of services as the basis of opposition
than the list of services reflected in the certificate of registration of the opponent’s
earlier mark invoked. Since in the opposition notice the opponent indicated that it
bases its opposition on all the services, the Opposition Division, in order to overcome
the contradictory information contained in the notice of opposition, will assume that
the opposition is based on all the services for which the earlier right is registered.
The services on which the opposition is based are the following:
Class 35: Window dressing and display arrangement services; wholesale store
services featuring glasses; wholesale store services featuring eyeglasses cases;
wholesale store services featuring sunglasses; wholesale store services featuring
spectacle lenses; wholesale store services featuring contact lenses; wholesale store
services featuring carrying cases and containers for contact lenses; wholesale store
services featuring clothing; wholesale store services featuring bags; wholesale store
services featuring wallets; wholesale store services featuring shoes; wholesale store
services featuring hats; wholesale store services featuring earrings; wholesale store
services featuring necklaces; wholesale store services featuring rings; wholesale
store services featuring watches; wholesale store services featuring cosmetics; retail
store services featuring glasses; retail store services featuring eyeglasses cases;
retail store services featuring sunglasses; retail store services featuring spectacle
lenses; retail store services featuring contact lenses; retail store services featuring
carrying cases and containers for contact lenses; retail store services featuring
clothing; retail store services featuring bags; retail store services featuring wallets;
retail store services featuring shoes; retail store services featuring hats; retail store
services featuring earrings; retail store services featuring necklaces; retail store
services featuring rings; retail store services featuring watches; retail store services
featuring cosmetics; sales agency services for glasses; sales agency services for
eyeglasses cases; sales agency services for sunglasses; sales agency services for
spectacle lenses; sales agency services for contact lenses; sales agency services for
carrying cases and containers for contact lenses; sales agency services for clothing;
sales agency services for bags; sales agency services for wallets; sales agency
services for shoes; sales agency services for hats; sales agency services for
earrings; sales agency services for necklaces; sales agency services for rings; sales
agency services for watches; sales agency services for cosmetics.
Decision on Opposition No B 2 836 867 page: 3 of 7
The contested goods are the following:
Class 3: Hair care preparations; hair lotions; cleansing creams; laundry preparations;
cakes of toilet soap; cleaning preparations; washing preparations; perfumery;
cosmetics; hair colorants; dentifrices; potpourris [fragrances]; perfumery; perfume
perfumed water; liquid perfumes.
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
The opponent’s services cover, inter alia, sales agency services for cosmetics. The
word ‘sales’ is defined to mean “the action of selling something” while the word
‘agency’ is defined to mean “a business or organization providing a particular service
on behalf of another business, person, or group”.
(https://en.oxforddictionaries.com/definition/sale), https://en.oxforddictionaries.com/definition/agency).
Accordingly, the Opposition Division interprets the opponent’s wording to be
synonymous with retail services concerning the sale of cosmetics.
It must be recalled that retail services concerning the sale of particular goods are
similar to a low degree to those particular goods. Although the nature, purpose and
method of use of these goods and services are not the same, they have some
similarities, as they are complementary and the services are generally offered in the
same places where the goods are offered for sale. Furthermore, they target the same
public. The same considerations apply to wholesale services.
The contested cosmetics also appear in the opponent’s list of services as products
that are sold. Consequently, these contested goods and the opponent’s sales agency
services for cosmetics are similar to a low degree.
Furthermore, given the broad scope of the generic term ‘cosmetics’, several of the
applicant’s remaining goods are contained in this category and are, thus, identical to
cosmetics. Accordingly, the contested hair care preparations; hair lotions; cleansing
creams; hair colorants; cleaning preparations must also be considered to be similar
to a low degree to the opponent’s services, following the same line of argument as in
the preceding paragraph.
The remaining contested goods, namely, laundry preparations; cakes of toilet soap;;
washing preparations; perfumery; dentifrices; potpourris [fragrances]; perfumery;
perfume perfumed water; liquid perfumes are, at most, similar to cosmetics.
Therefore, these goods must be considered to be dissimilar to the opponent’s
services.
In its observations, the opponent refers to a Board of Appeal decision (19/07/2010 –
R 1804/2008-4 – ROSALÍA DE CASTRO/ROSALÍA) to support its request for a total
rejection of the contested sign. However, in that decision, there was identity between
the opponent’s goods and those covered by the contested retail services. The case-
law cited, thus, does not apply to the present case for the reasons explained above.
Decision on Opposition No B 2 836 867 page: 4 of 7
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 and services found to be similar to a low degree are
directed at the public at large.
The degree of attention is considered to be average.
c) The signs
GENTLE MONSTER
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.
Since both signs consist of English words, the Opposition Division will restrict the
assessment of the marks to the English-speaking part of the public.
Both signs contain the words ‘GENTLE MONSTER’, in slightly different typeface. The
word ‘gentle’ refers to something kind or soft and it may be viewed by some as
alluding to a possible effect or characteristics of the relevant cosmetics-related goods
and services. The other word, ‘monster’ will be understood as referring to a very big,
usually imaginary, creature. It does not relate to the relevant goods and services and
is, thus, distinctive. Apart from these two words, the contested sign also contains a
rather simple, V-shaped device to which customers will not attach any meaning, and
it will be viewed as a decorative feature.
Decision on Opposition No B 2 836 867 page: 5 of 7
Overall, it is concluded that the signs have no element that is more distinctive than
other element since it can be presumed that they will be perceived and understood
as a whole.
None of the elements of either sign can be considered to be clearly more dominant
than the other.
Visually, the signs coincide in their two words ‘GENTLE MONSTER’ and differ in the
contested sign’s typeface and figurative element. However, neither of these
differentiating components can have any significant impact on how consumers
perceive the signs. This is also because 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
(judgment of 14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of
19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE, § 24; and 13/12/2011, R
53/2011-5, Jumbo (fig.) / Device of an elephant (fig.), § 59). On the basis of all the
foregoing, the signs are highly similar.
Aurally, since the signs contain the same words, they are identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content identically conveyed by both signs. Since the only differentiating component,
the contested sign’s figurative element, lacks any meaning, the signs must be
considered identical.
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 services 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
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).
Decision on Opposition No B 2 836 867 page: 6 of 7
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).
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).
The goods and services are partly similar to a low degree and partly dissimilar. The
signs are highly similar visually and identical aurally and conceptually. The
differences between them, namely the typeface and a simple device, are so minor
that they are incapable of having an impact on the overall impression produced by
them.
Considering all the above, there is a likelihood of confusion on the English-speaking
part of the public. This finding is true even if some of the goods and services
compared are similar to only a low degree, since the impact of the differences
between the signs is not sufficient to overcome the similarities between them. 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 partially well founded on the basis of the opponent’s
European Union trade mark registration. It follows that the contested trade mark must
be rejected for the goods found to be similar, even if only to a low degree, to the
services of the earlier trade mark.
The rest of the contested goods are dissimilar to the opponent’s services. 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.
Decision on Opposition No B 2 836 867 page: 7 of 7
The Opposition Division
Cynthia DEN DEKKER Ferenc GAZDAMichaela SIMANDLOVA
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.