OPPOSITION No B 2 764 812

Lornamead Group Limited, Sabre House, 377-399 London Road, Camberley, Surrey GU15 3HL, United Kingdom (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)

a g a i n s t

Organique Sp. z o.o. Sp. k., Plac Strzelecki 20 lokal 2, 50 224 Wrocław, Poland (applicant), represented by Tomasz Szelwiga, ul. Sanocka 1/14, 53-304 Wroclaw, Poland (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 812 is partially upheld, namely for the following contested services:

Class 44: Cosmetic treatments, beauty care, beauty salons, spas and wellness centres; Professional make-up and face-lift services, hairdressing, including artistic hairdressing; Massage, solariums, saunas; Aromatherapy.

2.        European Union trade mark application No 15 141 831 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 141 831 namely against some of the services in Classes 41 and 44. The opposition is based on the European Union trade mark registration No 10 479 269. The opponent invoked Article 8(1)(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 and services

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; shampoos; non-medicated hair shampoos; baby shampoo; dandruff treatments in the form of shampoos; hair conditioners; hair moisturisers; conditioners for treating the hair; conditioners for use on the hair; conditioning liquids for the hair; conditioning preparations for the hair; hair conditioning rinses; hair care agents; hair care preparations; non-medicated hair care preparations; hair care products; hair washing agents; hair cleaning preparations; preparations for enriching the hair; substances for the hair; hair cosmetics; beauty preparations for the hair; cosmetics for the use on the hair; natural body care products for the hair; hair protection lotions; non-medicated hair lotions; hair styling aids; hair texturisers; hair thickeners; aerosol hairspray; creams for the hair; hair protection creams; gels for use on the hair; hair protection gels; non-medicated gels for the hair; hair balm; hair cream; hair oil; hair gel; hair lacquer; hair mousse; hair protection mousse; hair styling waxes; bleaches for use on the hair; bleaching preparations for the hair; chemical preparations for the hair; colour rinses for the hair; colouring lotions for the hair; colouring matters for the hair; dyes for the hair; hair colorants; hair colours; hair tinters; hair curling preparations; hair finishing rinses; hair fixers; hair fixing oil; hair grooming preparations; hair neutralizers; hair permanent treatments; hair permanent wave solution; hair perming products; hair setting lotion; hair strengthening treatment lotions; hair waving preparations; neutralizing hair preparations; non-medicated topical preparations for promoting thickening of thinning hair; hair removing preparations; body care preparations; body milks; body butter; body cleansing foams; body creams; body lotions; body moisturisers; body oil; body soap; body spray; body deodorants; deodorants; anti-perspirants; beauty tonics for application to the body; cleaning preparations for use on the body; cleaning preparations for the hands; hand cream; hand barrier creams; hand care preparations; hand cleansers; hand lotion; hand oils; shower gel; shower foam; shower soap; after shower creams; after shower gel; bath gel; bath foam; bath lotion; bubble bath.

Class 5: Pharmaceutical preparations for treating dandruff; medicated hair and scalp preparations; deodorants.

Class 21: Brushes; hair brushes; cosmetic brushes; eyebrow brushes; shaving brushes; bath brushes; brushes for personal hygiene; combs; large-toothed combs; comb cases; soap boxes; soap dispensers; soap holders; fitted vanity cases.

The contested services are the following:

Class 41: Arranging and conducting of courses, training and demonstrations relating to techniques for carrying out cosmetic, spa and wellness treatments; Arranging and conducting of courses, training and demonstrations relating to the use of cosmetic preparations for carrying out cosmetic, spa and wellness treatments; Training staff in the field of cosmetics.

Class 44: Cosmetic treatments, beauty care, beauty salons, spas and wellness centres; Professional make-up and face-lift services, hairdressing, including artistic hairdressing; massage, solariums, saunas; Aromatherapy.  

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 services in Class 41

The contested arranging and conducting of courses, training and demonstrations relating to techniques for carrying out cosmetic, spa and wellness treatments; arranging and conducting of courses, training and demonstrations relating to the use of cosmetic preparations for carrying out cosmetic, spa and wellness treatments; training staff in the field of cosmetics are dissimilar to all the opponent’s goods in Classes 3, 5 and 21.

The Opposition Division does not share the opponent’s opinion according to which the contested services are closely connected to the opponent’s goods. Besides the fact that the nature of services is fundamentally different from that of goods, these goods and services do not share any relevant points. Firstly their purposes are different, as the contested services are aimed at training while the opponent’s goods, such as cosmetics and pharmaceutical preparations are aimed to improve people’s appearance and hygiene or to improve health conditions. Moreover they are not strictly complementary or in competition with each other and do not coincide in their distribution channels.

Even though the contested services may need the use of the opponent’s goods in Class 3 such as cosmetics, they do not tend to originate from the same undertakings. It is true, as the opponent stresses in its observations, that nowadays some producers of hair care products or cosmetics can also run their own hairdressing academies or organise courses or exhibitions, but this is not the rule; it tends to apply only to (commercially) successful and reputed entrepreneurs. In fact, it is not common in the market that training services are provided by the same company that produces the opponent’s goods, and if it is so they are provided as ancillary and promotional services to their core activity and the relevant public is aware of it. Therefore, the opponent’s arguments must be set aside.

Contested services in Class 44

As a preliminary remark, it should be noted that, even if by their nature, services are generally dissimilar to goods, they can, however, be complementary. Moreover, services can have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between services and goods can be found. This applies to the present case.

The contested cosmetic treatments, beauty care, beauty salons, spas and wellness centres; Professional make-up and face-lift services, hairdressing, including artistic hairdressing; massage, solariums, saunas are similar to the opponent’s cosmetics.

The contested services are those that are provided in relation to the maintenance of hygiene or wellbeing and beauty. These services are provided, or can be provided by establishments, such as wellness and beauty centres which offer, among others, massages, hair, facial and body treatments by means of the application of cosmetics, oils, shampoos, etc. and the use of special apparatus. The opponent’s goods and the contested services may have the same purpose: to improve people’s appearance and hygiene, and they target the same relevant public. Furthermore, the goods and services at issue may have the same distribution channels. Moreover, the goods and services are complementary to each other, as it can be necessary to use the opponent’s products to perform the contested services and vice versa.

For the above mentioned reasons the Opposition Division cannot share the Applicant’s view according to which an average buyer does not come to a beauty salon to buy a specific product or a product’s brand has a secondary importance in a beauty salon. It is true what the applicant says regarding the fact that average consumers may be advised by the staff of a beauty salon about the properties of the goods in order to buy the best product in relation to the consumer needs, but it does not mean the trade marks do not perform their distinctive function in this context or that they have a secondary importance. Therefore, the applicant’s arguments must be set aside.

The contested aromatherapy is the practice of using the natural oils extracted from flowers, bark, stems, leaves, roots or other parts of a plant to enhance psychological and physical well-being. This service is similar to a low degree to the opponent’s essential oils, as they can coincide in relevant public and distribution channels. Furthermore they are complementary.

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 and services found to be similar are directed at the public at large.

The degree of attention may vary from average (e.g. for solariums, saunas) to rather high (e.g. for some kinds of expensive cosmetics treatments).

3. The signs

HARMONY	HARMONY BY ORGANIQUE
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.

For reasons related to the conceptual comparison of the signs, as set out below, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian, French and Spanish-speaking parts of the public in the relevant territory.

The earlier mark is the word mark ‘HARMONY’ and the contested sign is the word mark ‘HARMONY BY ORGANIQUE’. Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘HARMONY’, present in both signs, is an English word meaning ‘a pleasant musical sound made by different notes being played or sung at the same time; a situation in which people are peaceful and agree with each other, or when things seem right or suitable together’ (information extracted from Cambridge Dictionary online on 22/09/2017). This word will be perceived with the same meaning by the relevant public due to its similarity to the equivalent words in French, Spanish and Italian (i.e. in French ‘harmonie’, in Italian ‘armonia’ and in Spanish ‘armonía’).

The applicant in its observation stresses that the word ‘HARMONY’ is a purely descriptive word as:

– it ‘indicates that the cosmetics marked with it do not cause unwanted reactions and negative effects to the body (…)’

– ‘by using products marked with the HARMONY mark, it is expected that the following processes will take place: improvement of skin conditions, removal of imperfections, irritation alleviation etc.’

– It is expected that the use of services of all types of salons marked with the term HARMONY will contribute to the achievement of emotional equilibrium, rest, calm etc.

Contrary to the applicant’s opinion the Opposition Division considers that the word ‘HARMONY’ is not descriptive in relation to the relevant goods and services as it does not describe a characteristic of the services or the goods at issue. In fact, there is not a direct link between this word and the related goods and services as the term ‘HARMONY’ does not enable the public concerned to discern immediately and without further reflection the description of one of their characteristics. The link that, according to the applicant’s opinion, can be found between the term ‘HARMONY’ and those ‘beauty care, wellness services’ or ‘cosmetic products’ is too vague as it involves several mental steps from consumers to make a mental connection between the word ‘HARMONY’ and the ‘beauty care, wellness services’ or ‘cosmetic products’.

In its observations, the applicant also argues that the word ‘HARMONY’ lacks distinctive character given that there are hundreds of examples on the websites, which show that this word is used along with the words ‘cream’, ‘soap’, ‘beauty salons, ‘spa’ etc. and given that there are more than 240 trade marks that include the word ‘HARMONY’. In support of its first argument, the applicant refers to printouts showing the results of internet searches, but in support of its second argument it did not allege any evidence of trade mark registrations containing the word ‘HARMONY’.

The Opposition Division notes that this evidence is simply printouts showing Internet search results for the word ‘HARMONY’ and is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of the internet printouts submitted by the applicant, it cannot be assumed that consumers have been exposed to widespread use of and have become accustomed to trade marks that include the word ‘HARMONY’. Moreover, the fact that the word ‘HARMONY’ is present in some in these websites with the words ‘cream’, ‘soap’, ‘beauty salons, ‘spa’ etc., does not mean that this word is commonly used in a descriptive way to refer to relevant goods and services. Under these circumstances, the applicant’s claims must be set aside. The same reasoning applies also to the existence of several trade mark registrations containing the word ‘HARMONY’. It follows that even if the applicant had alleged evidence of trade mark registrations in support of its arguments, this evidence would not have demonstrated that consumers have been exposed to widespread use of, and have become accustomed to trade marks that include the word ‘HARMONY’.

It follows that the distinctiveness of this word must be considered normal and that the applicant arguments must be set aside.

The word ‘BY’ of the contested sign is an English preposition, that in the case at issue, placed before the word ‘ORGANIQUE’, may indicate the commercial origin of the services (i.e. that they are offered by a company called ‘ORGANIQUE’). Anyway, since ‘BY’ is an English word without any similar equivalent words in Italian, French and Spanish, it is likely to be perceived by a part of the relevant public as a meaningless word and, therefore, it is considered distinctive for this part of the public. The Opposition Division will proceed with the evaluation of the decision on this basis. The word ‘ORGANIQUE’ is a French word referring to something ‘produced from natural substances, usually without the addition of chemicals’. Since this word is very similar to the equivalent Spanish and Italian words (‘organico’ in Italian and ‘orgánico’ in Spanish) it will be perceived with the same meaning by these parts of the public.

Bearing in mind that the relevant services are related to cosmetic and beauty care treatments involving the use of cosmetic products, the term ‘ORGANIQUE’ is considered weak, as it can be perceived as referring to a characteristic of these services, namely that these beauty services are performed with the use of organic, chemical-free cosmetic products.

Visually and aurally, the signs coincide in the word/sound ‘HARMONY’ which constitutes the entire earlier mark and is fully included at the beginning of the contested sign. The signs differ in the additional words/sounds ‘BY ORGANIQUE’ of the contested sign.

As consumers tend to focus on the initial parts of signs, they will perceive the identity in the word/sound ‘HARMONY’ and will pay much less attention to the different words  which appear in the middle and towards the end of the contested sign. The relevance of the first part of the signs to consumers is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Moreover the difference in the word/sound ‘ORGANIQUE’ of the contested sign will have a limited impact on the public’s perception of the signs also on account of its weak distinctive character.

Therefore, the signs are visually and aurally highly similar.

Conceptually, as seen above, the signs will be associated with the meaning of their common distinctive element ‘HARMONY’. Consequently, taking into account the above-mentioned comments about the weak distinctive character of the additional word ‘ORGANIQUE’ of the contested sign and the absence of specific semantic content of the other differentiating element ‘BY’, the signs are conceptually similar to a high degree.

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.

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.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods and services are partly similar and partly dissimilar to the opponent’s goods and the distinctiveness of the earlier mark as a whole is normal. The degree of attention paid by the relevant public may vary from average to rather high.

The signs are visually, aurally and conceptually similar to a high degree on account of their coincidence in the element ‘HARMONY’, which constitutes the entire earlier mark and the first element of the contested sign.

The differences between the signs are confined to the words ‘BY ORGANIQUE’ of the contested sign which do not have a decisive impact on the overall impressions created by the signs since they are placed in the middle and toward the end of the contested sign. Moreover the impact of the word ‘ORGANIQUE’ has even less of an impact due to its low level of distinctiveness as explained in section c) of the present Decision.

Account should be 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 with 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Bearing in mind the above, the Opposition Division finds that the dissimilarity caused by the additional verbal elements in the contested sign is outweighed by the similarity arising from the fact that the earlier mark is solely constituted by the word ‘HARMONY’, which is fully reproduced in the contested sign. Therefore, the relevant public, when encountering the signs in relation to similar goods and services, even that part of the public that will display a relatively high degree of attention, is likely to think that the goods and services come from the same undertaking or, as the case may be, from economically linked undertakings.

This is also true for the contested services which have been found to be similar to a low degree to the earlier goods. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore the high degree of visual, aural and conceptual similarity between the signs is sufficient to offset the low similarity of the contested services and to find a likelihood of confusion on the part of the public with regard to these as well.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian, Spanish and French-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 479 269. 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 services found to be similar to varying degrees to the goods of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Belén IBARRA DE DIEGO

Angela DI BLASIO

Michele M. BENEDETTI-ALOISI

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.