OPPOSITION No B 2 764 267

Jiri Stratil, Alte Landstr. 11, 6314 Unterägeri, Switzerland (opponent), represented by Ter Meer Steinmeister & Partner Patentanwälte MBB, Nymphenburger Straße 4, 80335 Munich, Germany (professional representative)

a g a i n s t

L&P Cosmetic Co. Ltd., B101, Wooree Venture Town 466, Gangseo-Ro Gangseo-Gu, Seoul, Republic of Korea (holder), represented by Grosse Schumacher Knauer Von Hirschhausen, Nymphenburger Str. 14, 80335 Munich, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 267 is partially upheld, namely for the following contested goods:

Class 3:        Cosmetics; make-up powder; lip liner; lipsticks; massage oils; mascara; make-up foundation; make-up preparations; shaving gels; shaving preparations; hair dyes; hair waving preparations; pomades for hair; hair cream; bath salts, not for medical purposes; cosmetics for toilet purposes; creams for cosmetic purposes; body lotions; body oil, for toilet purposes; body cream; vanishing cream; gels for toilet purposes; oils for toilet purposes; oils for cosmetic purposes; perfumes; sun-tanning preparations; shaving foam; shaving soap; after-sun creams; after-shave lotion; cosmetic preparations for slimming purposes; talcum powders for cosmetic use; neutralizers for permanent waving; permanent waving lotions; perfumed talcum powder; facial lotions; facial cream; lotions for face and body care; cosmetics for face and body; pomades for cosmetic purposes; pre-shave creams; skin whitening cream; hair glaze; hair lotion; hair styling gel; hair spray; hair conditioner; hair care lotion; greases for cosmetic purposes; beauty masks for cosmetic use; astringent for cosmetic purposes; pencils for cosmetic purposes; make-up removing preparations; cosmetic kits; gaultheria oil; soap for toilet purposes; soap for foot perspiration; deodorant soap; shampoos; shampoos for pets; liquid soap; shampoos for baby; cream soap; nail manicure preparations; nail enamel removers; hair decolorants; baby powder; sunscreen creams for cosmetic use; skin cleansers; perfumed creams; facial cleansing milk; pressed face powder; hair moisturizers; hand cleaners; essential oils for personal use; hair rinses for cosmetic use; baby oil; gels for cosmetic use; eyebrow pencils; cosmetic rouges; hair colorants; sun-block lotions; lotions for strengthening the nails; colorants for the nails; cosmetic creams for skin care; make-up removing preparations for eye; cosmetics for pets.

2.        International registration No 11 111 229 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 11 111 229, namely against some of the goods in Class 3. The opposition is based on European Union trade mark registration No 483 651. 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

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

Class 3:        Ointments, creams, lotions and tinctures for deep cleansing the human skin.

Class 42:         Beauty institute services.

The contested goods are the following:

Class 3:        Cosmetics; make-up powder; lip liner; lipsticks; massage oils; mascara; make-up foundation; make-up preparations; shaving gels; shaving preparations; hair dyes; hair waving preparations; pomades for hair; hair cream; bath salts, not for medical purposes; cosmetics for toilet purposes; creams for cosmetic purposes; body lotions; body oil, for toilet purposes; body cream; vanishing cream; gels for toilet purposes; oils for toilet purposes; oils for cosmetic purposes; perfumes; sun-tanning preparations; shaving foam; shaving soap; after-sun creams; after-shave lotion; cosmetic preparations for slimming purposes; talcum powders for cosmetic use; neutralizers for permanent waving; permanent waving lotions; perfumed talcum powder; facial lotions; facial cream; lotions for face and body care; cosmetics for face and body; pomades for cosmetic purposes; pre-shave creams; skin whitening cream; hair glaze; hair lotion; hair styling gel; hair spray; hair conditioner; hair care lotion; greases for cosmetic purposes; beauty masks for cosmetic use; astringent for cosmetic purposes; pencils for cosmetic purposes; make-up removing preparations; cosmetic kits; gaultheria oil; soap for toilet purposes; soap for foot perspiration; deodorant soap; shampoos; shampoos for pets; liquid soap; shampoos for baby; cream soap; nail manicure preparations; nail enamel removers; hair decolorants; baby powder; sunscreen creams for cosmetic use; skin cleansers; perfumed creams; facial cleansing milk; pressed face powder; hair moisturizers; soaps for household use; hand cleaners; essential oils for personal use; hair rinses for cosmetic use; baby oil; gels for cosmetic use; eyebrow pencils; cosmetic rouges; hair colorants; sun-block lotions; lotions for strengthening the nails; colorants for the nails; cosmetic creams for skin care; make-up removing preparations for eye; cosmetics for pets.

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 cosmetics; cosmetics for toilet purposes; creams for cosmetic purposes; body lotions; body cream; facial lotions; facial cream; lotions for face and body care; cosmetics for face and body; skin cleansers; perfumed creams; facial cleansing milk; hand cleaners; cosmetic creams for skin care  are identical to the opponent’s ointments, creams, lotions and tinctures for deep cleansing the human skin, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested perfumes and the opponent’s ointments, creams, lotions and tinctures for deep cleansing the human skin in Class 3, although having a different intended purpose (impart a pleasant smell to the body on one hand, cleaning the human skin on the other), they can be produced by the same entities. Also, they are sold through the same distribution networks to the same relevant public. Consequently, these goods are similar.

The opponent’s services in Class 42, namely beauty institute services are services rendered by the establishments serving professional beauty services, aimed at humans but also at pets, such as facial treatment, make-up, hairdressing, manicuring, and massage to enhance one’s appearance. Although the applicant’s goods make-up powder; lip liner; lipsticks; massage oils; mascara; make-up foundation; make-up preparations; shaving gels; shaving preparations; hair dyes; hair waving preparations; pomades for hair; hair cream; bath salts, not for medical purposes; body oil, for toilet purposes; vanishing cream; gels for toilet purposes; oils for toilet purposes; oils for cosmetic purposes; sun-tanning preparations; shaving foam; shaving soap; after-sun creams; after-shave lotion; cosmetic preparations for slimming purposes; talcum powders for cosmetic use; neutralizers for permanent waving; permanent waving lotions; perfumed talcum powder; pomades for cosmetic purposes; pre-shave creams; skin whitening cream; hair glaze; hair lotion; hair styling gel; hair spray; hair conditioner; hair care lotion; greases for cosmetic purposes; beauty masks for cosmetic use; astringent for cosmetic purposes; pencils for cosmetic purposes; make-up removing preparations; cosmetic kits; gaultheria oil; soap for toilet purposes; soap for foot perspiration; deodorant soap; shampoos; shampoos for pets; liquid soap; shampoos for baby; cream soap; nail manicure preparations; nail enamel removers; hair decolorants; baby powder; sunscreen creams for cosmetic use; pressed face powder; hair moisturizers; essential oils for personal use; hair rinses for cosmetic use; baby oil; gels for cosmetic use; eyebrow pencils; cosmetic rouges; hair colorants; sun-block lotions; lotions for strengthening the nails; colorants for the nails; make-up removing preparations for eye; cosmetics for pets are tangible and the opponent’s services are intangible, and therefore are of

different natures, these goods and services are closely related. They share the same purpose which is making one’s face and/or body look and smell nice and to enhance its appearance. Therefore they target the same public, and may be offered by the same distribution channels; moreover the goods and services in question are complementary to each other. It is quite common that the beauty salons apart from rendering the beauty services sell under their own brand or partner brands different types of beauty products and/or cosmetics that are used for the services and recommended to the clients. Therefore, the goods and services under comparison are considered similar.

As regards the contested soaps for household use, account must be taken on the fact that soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Soaps are used to clean. However, the specific intended purpose of these soaps is household. When compared to the opponent’s goods and services in Classes 3 and 42 it is clear that they have different nature (at least in the case of services in Class 42); also, they radically differ in their intended purpose; they differ in their methods of use, producers and distribution channels; they are not in competition or complementary, since it is clear that the opponent’s goods and services are aimed at improving beauty of people or even animals in case, but not of houses. Thus, these goods and services must be considered dissimilar.

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 identical or similar are directed at the public at large.

The degree of attention is expected to be average.

3. The signs

LASOCARE
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 marks are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for instance, the Italian and Romanian-speaking part of the public such for whom the signs are meaningless.

The earlier mark is a word mark consisting of the element ‘LASOCARE’. The contested sign is a figurative sign consisting of the word ‘LABOCARE’ depicted using capital black letters. On the left, a figurative element consisting of nine horizontal traits of different length is placed. Above the letters ‘O’ and ‘C’ a black oval element is also placed.

The elements ‘LASOCARE’ and ‘LABOCARE’ have no meaning for the relevant public and are, therefore, distinctive. The same is valid for the figurative elements of the contested sign.

The contested sign has no elements that could be considered clearly more dominant than other elements.

However, account must be taken on the fact that 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘LA(X)OCARE’. They differ in their third letters, namely ‘S’ as regards the earlier mark and ‘B’ for what concerns the contested sign and in the additional figurative element of the contested sign, the impact of which is expected to be, for reasons seen above, of lesser importance. In view of the length of the word elements ‘LASOCARE’ and ‘LABOCARE’ and considering that these word only differ in one out of eight letters, the signs are deemed to be visually highly 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 ‘L-A-(x)-O-C-A-R-E’, present identically in both signs. The pronunciation differs in their third letters ‘S’ in the earlier mark and ‘B’ in the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for 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.

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 has no meaning for any of the goods and 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.

5. Global assessment, other arguments and conclusion

The goods and services covered by the trade marks in dispute have been found partly identical, partly similar and partly dissimilar. They are directed at the public at large, the degree of attention of which is expected to be average. The distinctiveness of both marks is deemed to be normal, in particular considering that none of them has a meaning from the perspective of the part of the public taken into account.  

The word ‘LASOCARE’, on one hand, and ‘LABOCARE’, on the other, share seven out of eight letters. In particular for this reason, they are deemed to be highly similar both from a visual and aural point of view. It is true that the contested sign is a figurative sign. However, for the reasons explained above in section c) of the present decision, the verbal component of the sign will have a stronger impact on the consumer than the figurative components.

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).

Due to the visual and aural high similarity and the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists on the part of the public who speaks Italian or Romanian and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration No 483 651. 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 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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cecilie Leth BOCKHOFF

Andrea VALISA

Francesca CANGERI SERRANO

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.