OPPOSITION No B 2 739 798

Laboratoire Nuxe, 19, rue Péclet, 75015 Paris, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)

a g a i n s t

Institut des Cosmétiques de la Nouvelle Génération ‘LA LUXE’ SARL, 102 avenue des Champs-Elysees, 75008 Paris, France (applicant), represented by Sołtysiński Kawecki & Szlęzak – Kancelaria Radców Prawnych i Adwokatów, ul. Jasna 26, 00-054 Warsaw, Poland (professional representative).

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

DECISION:

1.        Opposition No B 2 739 798 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 050 271 (word mark ‘LA LUXE REMODE LIFT’). The opposition is based on French trade mark registration No 1 688 882 and European Union trade mark registration No 13 609 599, both for the word mark ‘NUXE’. The opponent invoked Article 8(1)(b) and 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.

1. The goods and services

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

French trade mark No 16 88 882

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices.

Class 5:        Pharmaceuticals preparations; sanitary preparations for medical purposes and for intimate hygiene; dietetic subs[t]ances adapted for medical use, food for babies; disinfectants.

European Union trade mark No 13 609 599

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Leather preservatives (polishes); Creams for leather; Dentifrices; Cosmetics; Perfumes, toilet water, eau de Cologne, body deodorants; Essential oils; Extracts of plant for cosmetic purposes; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care; Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for slimming purposes; Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-shave preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Incense, Perfume water, Room perfumes, Sachets for perfuming linen.

Class 5:        Pharmaceutical, veterinary and sanitary preparations for medical purposes and for personal hygiene; Dietetic substances adapted for medical use, Plant-based dietetic preparations adapted for medical use, Medicinal herbs, Herbal teas for medicinal purposes; Sugar for medical purposes; Food for babies; Adhesive bands for medical purposes, Materials prepared for bandages (dressings), Menstruation bandages; Material for stopping teeth, dental wax; Disinfectants for medical or sanitary purposes (other than soaps); Preparations for destroying vermin, fungicides, herbicides, parasiticides; Bath preparations for medical purposes; Creams, gels, milks, lotions, serums and pomades for medical purposes; Dermatological and pharmaceutical preparations for skin care, Sun blocking preparations for medical use; Babies’ diapers of paper and cellulose (disposable).

Class 44:        Medical services, Hospitals, Veterinary services; Convalescent homes and rest homes, medically supervised homes; Opticians’ services; Hygienic and beauty care for human beings or animals, massages, beauty salons, care services (saunas), spas (care and beauty services), balneotherapy, physiotherapy, aromatherapy; Agriculture, horticulture and forestry services; Farming (animals); Gardening, landscape gardening and plant nurseries.

The contested goods and services are the following:

Class 3:        Cosmetics; Body cleaning and beauty care preparations; Skincare cosmetics; Skin care preparations; Non-medicated beauty preparations; Exfoliants for the care of the skin; Exfoliants; Exfoliant creams; Body scrub; Cosmetic moisturisers; Cosmetics for use in the treatment of wrinkled skin; Creams for firming the skin; Skin whitening creams; Skin conditioners; Skin masks [cosmetics]; Cleaning masks for the face; Face packs; Face packs; Skin moisturizer masks; Gel eye masks; Body mask cream; Face packs; Cleansing masks; Skin toners; Milky lotions for skin care; Cleansing milks for skin care; Cleansing milk for toilet purposes; Body milks; Make-up removing milks; Make-up removing lotions; Make-up removing gels; Make-up removing creams; Eye make up remover; Skin care oils [non-medicated]; Body oils [for cosmetic use]; Hand creams; Hand lotions; Cosmetic hand creams; Hand cleansers; Deodorants for the feet; Non-medicated foot lotions; Slimming aids [cosmetic], other than for medical use; Lotions for cellulite reduction; Creams for cellulite reduction; Soaps; Skin cleansers [cosmetic]; Soaps for body care; Non-medicated toilet soaps; Soap free washing emulsions for the body; Washing creams; Washing liquids; Wipes impregnated with a skin cleanser; Impregnated cleaning pads impregnated with toilet preparations; Artificial tanning preparations; After sun moisturisers; Sun bronzers; Sun blocking preparations [cosmetics]; After-sun oils [cosmetics]; Suntanning oil [cosmetics]; Tanning milks [cosmetics]; Make-up preparations; Make-up removing preparations; Skin foundation; Cosmetic face powders; Foot powder [non-medicated]; Cosmetic rouges; Lipstick; Lip gloss; Eyelid shadow; Under-eye enhancers; Hair mascara; Cosmetics for eye-lashes; Eyelash dye; Mascara; Eyeliner pencils; Eyeliner; Cosmetic pencils; Lip balms [non-medicated]; Concealers; Nail polish; Nail varnish for cosmetic purposes; Nail hardeners [cosmetics]; Cuticle oil; Nail care preparations; Nail polish remover; Cosmetics for the use on the hair; Hair preparations and treatments; Hair moisturisers; Hair preparations and treatments; Shampoo; Hair nourishers; Styling lotions; Oils for hair conditioning; Oil baths for hair care; Hair spray; Hair spray; Mousses being hair styling aids; Hair styling waxes; Tooth care preparations; After-sun lotions; Sun-tanning gels; After-sun oils [cosmetics]; Sun-tanning oils; Sun-tanning gels; Creams for tanning the skin; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Extracts of perfumes; Perfume; Perfumed tissues; Perfumery; Cologne; Perfumed toilet waters; Toilet water; Natural perfumery; Oils for perfumes and scents; Scented body spray; Oils for perfumes and scents; Oils for cosmetic purposes; Depilatory lotions; Wax (Depilatory -); Depilatory creams; Hair removal and shaving preparations; Shaving gel; Shaving cream; Shaving preparations; Shaving foam; Shaving preparations in liquid form; After-shave preparations; Aftershave balms; After-shave emulsions; Aftershave milk; After-shave preparations; Toiletries; Perfumed toilet waters; Deodorants and antiperspirants; Antiperspirants [toiletries]; Anti-perspirants in the form of sprays; Deodorants for body care; Body deodorants [perfumery]; Anti-perspirant deodorants; Sanitary preparations being toiletries; Scented oils; Non-medicated oils; Oils for toilet purposes; Body oils [for cosmetic use]; Mineral oils [cosmetic]; Massage oils; Room scenting sprays; Hair tonic; Bath foam; Bath herbs; Bath salts; Bath salts; Bath oil; Bubble bath; Liquid bath soaps; Liquid soap used in foot bath; Bath and shower gels, not for medical purposes.

Class 5:        Medicinal creams for the protection of the skin; Medical preparations for slimming purposes; Scrubs [preparations] for medical use; Feminine hygiene products; Car deodorants; Air deodorising preparations; Tonics [medicines]; Tonics for medical use; Salts for mineral water baths; Therapeutic medicated bath preparations; Hand-sanitizing preparations; Creams (Medicated -) for the feet; Foot care preparations for medical use; Medicinal oils.

Class 44:        Removal of body cellulite; Cellulitis treatment services; Beauty salons; Beauty salons; Manicuring; Pedicurist services; Services for the care of the feet; Foot massage services.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks.

2. The signs

NUXE	LA LUXE REMODE LIFT
Earlier trade marks	Contested sign

The relevant territories are France and 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 signs are both word marks and are as shown above. Consequently and by definition, neither sign has any element that could be considered more eye-catching or more dominant than other elements.

The opponent claims that the earlier sign ‘has no meaning per se, but it has been created from the combination of the French words NATURE and LUXE (in English “luxury”)’. Even if this is the case, and there is no reason to doubt the opponent on this point, consumers will not make this connection, so the earlier sign, ‘NUXE’, has no meaning throughout the relevant territory and is therefore distinctive.

The contested sign also has no meaning per se throughout the relevant territory. It is possible that a part of the public, for example a part of the French public, might see ‘LUXE’ as alluding to ‘luxury’. In French, ‘LUXE’ is a masculine noun and would always be prefixed by the appropriate masculine article, ‘le’, and not ‘LA’ as here. Therefore, the allusion to luxury in the contested sign will be lessened because the sign uses the wrong article. This basic difference would not be lost on the French public, so this element is of average distinctiveness.

The element ‘REMODE’ as such does not have a meaning in the relevant territory and is thus distinctive, too. Notwithstanding, for the sake of completeness it has to be mentioned that for a part of the relevant public this element might allude to a similar verb, for example in English ‘remodel’ and in Spanish and Portuguese ‘remodelar’.

Furthermore, for the English-speaking part of the relevant public, the element ‘LIFT’ is non-distinctive for the majority of goods and services because, for example, cosmetics, medical creams or cellulite treatment services may have the desired effect of lifting. For another part of the relevant public, this element is at most allusive, for example for the German-speaking part. This is because the word ‘Lift’ exists in, for example, German with the meaning of an aesthetic surgical operation to make one’s skin firmer. However, for the remaining part of the public (e.g. the Polish- and Spanish-speaking parts), this element is distinctive and meaningless.

Therefore, as neither sign (as a whole) has any clear and direct meaning for the goods and services in question, they are considered of average distinctiveness.

Visually, the signs coincide in a sequence of three letters, namely ‘UXE’. However, they differ in their remaining letters, namely the first letter of the earlier marks, ‘N’, and the contested sign’s first three letters, ‘LA L’, as well as two additional verbal elements at the end, namely ‘REMODE LIFT’. The signs therefore vary considerably in their lengths: 4 letters versus 16, or 1 verbal element versus 4. Furthermore, the beginnings of the signs are also different (‘N’ versus ‘LA L’). The consumer normally attaches more importance to the first part of a word mark. This 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. Even the very first letters, ‘N’ and ‘L’, are not visually similar in the same way that the letters ‘B’ and ‘E’ or ‘M’ and ‘N’ are.

As the signs only coincide in irrelevant aspects, because the coinciding element is visually not perceptible as a separate element but hidden in the signs, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛UXE’, present identically in both signs. The pronunciation in the sound of the first letters of the signs, ‘N’ versus ‘LA L’, as well as in the additional letters ‛REMODE LIFT’ of the contested mark, which have no counterparts in the earlier sign. The number of syllables will also differ, either one versus five (/NUX/ versus /LA/LUX/RE/MOD/LIFT/) in, for example, French and English, or two versus seven (/NUX/E/ or /NU/XE/ versus /LA/LUX/E/RE/MO/DE/LIFT/ or /LA/LU/XE/ RE/MO/DE/LIFT/) in, for example, Spanish and German.

Therefore, and bearing in mind that the only coinciding sound is a string of letters somewhere in the middle of the contested sign and that the differences are also at the beginnings of the signs, where more attention is paid, the signs are not aurally similar.

Conceptually, neither of the signs has a meaning as a whole. Although part of the public in the relevant territory will perceive the meanings of the elements of the contested sign, 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.

3. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b)        Conclusion

According to Article 8(5) EUTMR, the similarity or identity of the signs is a necessary cumulative condition for applying this ground of refusal. Since the signs are dissimilar, one of the necessary conditions of Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected for this ground, too, because it is considered not well founded under Article 8(5) EUTMR.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Beatrix STELTER

Swetlana BRAUN

Claudia MARTINI

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.