OPPOSITION No B 2 604 224

Dirk Rossmann GmbH, Isernhägener Str. 16, 30938 Burgwedel, Germany (opponent), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative)

a g a i n s t

Invima AB, Höjdrodergatan 26, 212 39 Malmö, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 224 is upheld for all the contested goods.

2.        European Union trade mark application No 14 264 873 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 264 873. The opposition is based on, inter alia, German trade mark registration No 3 020 100 074 728. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

According to Rule 15(2)(c) EUTMIR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered to be properly indicated if the earlier marks are identified and it is possible to unequivocally identify the grounds and the opposition as based on Article 8(1) EUTMR.

According to Rule 17(2) EUTMIR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible (emphasis added).

On 04/11/2015, the opponent filed a notice of opposition against the contested application. However, the opponent only indicated 8(1)(b) EUTMR as grounds for the opposition.

On 02/03/2016, in its observations to complete the opposition, the opponent indicated that the opposition is also based on Article 8(5) EUTMR. However, since the opponent did not identify the grounds of Article 8(5) EUTMR in its notice of opposition and since it cannot extend its opposition after the three-month period following the date of publication of the contested trade mark, the opposition is considered inadmissible, as far as it is based on Article 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 German trade mark registration No 3 020 100 074 728.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3: Washing and bleaching detergents, cleaning, polishing, grease-removing and abrasive agents; soaps, perfumeries, especially eau de toilette, after shave, perfumes; essential oils; cosmetic preparations; personal hygiene and beauty products, especially shower gels, bath additives, deodorants, deosprays, shaving foam, shaving products, shaving soap, shaving gels, hair shampoos, hair gels, hair conditioner, hair sprays, hair care agents, wash gels, cremes, balsam, emulsions, gels; hair lotions; dentifrices.

The contested goods are the following:

Class 3: Soaps, Perfume, Cosmetics, Ethereal oils, Cosmetics preparations, Mascara, Eyelashes (False -).

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

The term especially used in the opponent’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).

Soaps, cosmetics, ethereal oils, cosmetics preparations are identically contained in both lists of goods, including synonyms.

The contested perfume is included in the broad category of the opponent’s perfumeries, especially eau de toilette, after shave, perfumes. Therefore, they are identical.

The contested mascara, eyelashes (False -) are included in the opponent’s cosmetic preparations which cover all preparations intended to beautify the hair, skin, or complexion. Therefore, they are identical. 

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 are directed at the public at large whose degree of attention is average.

3. The signs

ISANA	INSANE VOLUME MASCARA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘ISANA’ of earlier mark and the element ‘INSANE’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive. However, because of its high similarity with the German equivalent ‘Volumen Mascara’, the public will understand the expression ‘VOLUME MASCARA’ of the contested sign as indicating that the goods in Class 3 are mascaras or goods intended for thickening the eyelashes (giving volume). Therefore, it is non-distinctive for part of the goods (cosmetics, cosmetics preparations, mascara, eyelashes (False –). In relation to goods for which the meaning is not that obvious (perfume, ethereal oils, soaps), this element is distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the distinctive elements of the signs ‘ISANA’ and ‘INSANE’ coincide in the four letters ‘I-*-S-A-N-*’ and differ in the additional second letter ‘N’ of the contested sign and in the final letters ‘A’ versus ‘E’. The element ‘INSANE’ of the contested sign is placed at the beginning of the sign where the attention of the public is focussed on. The signs differ in the additional element ‘VOLUME MASCARA’ of the contested sign which is however non-distinctive in relation to part of the goods. Therefore, for these goods, the signs are visually similar to a medium degree. For the goods for which the element ‘VOLUME MASCARA’ is distinctive, the signs are visually similar to a low degree.

Aurally, the distinctive elements of the signs ‘ISANA’ and ‘INSANE’ are pronounced /i-sa-na/ and /in-sa-ne/. They coincide in the sound of the letters ‘I-*-S-A-N-*’ and they have the same rhythm (three syllables) and intonation. The pronunciation differs in the sound of the final letter ‛A’ versus ‘E’ and in the sound of the letter ‘N’ of the contested sign, which has no counterpart in the earlier sign. However, these differences are not clearly audible due to their position. The signs further differ in the sound of the elements ‘VOLUME MASCARA’ of the contested sign. However, since for part of the goods this element is neither distinctive nor dominant, it is probable that the relevant public will refer to the mark orally as just 'INSANE' which enhances the similarity (T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-4 and T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). Therefore, for these goods, the signs are aurally similar to a high degree. For the goods for which the element ‘VOLUME MASCARA’ is distinctive, the signs are aurally similar to a medium degree.

Conceptually, reference is made to the above findings. Since one of the signs (the earlier sign) 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim within its time limit to substantiate the opposition.

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).

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).

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.

The goods are identical. The distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

For the contested cosmetics, cosmetics preparations, mascara, eyelashes (False -), the signs are visually similar to a medium degree and phonetically similar to a high degree resulting from the lack of distinctive character of the additional element ‘VOLUME MASCARA’ of the contested sign.

For the contested soaps, perfume, ethereal oils, since the element ‘VOLUME MASCARA’ is distinctive, the level of similarity between the signs is lower and they are considered visually similar to a low degree and phonetically similar to a medium degree.

Since the similarities between the signs lie in a distinctive element placed at the beginning of the contested sign, they are particularly relevant.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities, in particular taking into account the interdependence principle mentioned above and the identity of the goods.

The applicant refers to a previous decision of the Office to support its arguments (28/03/2011, R 1669/2010-2, CLENOSAN/ALEOSAN). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings since the signs are not comparable. In the case mentioned, the differences placed at the beginning of the conflicting signs were significant and considered sufficient to counterbalance the similarities lying in the final elements of the signs, which is not the case here. 

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 3 020 100 074 728. It follows that the contested trade mark must be rejected for all the contested goods.

As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Anna ZIÓŁKOWSKA

Frédérique SULPICE

Catherine MEDINA

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.