OPPOSITION No B 2 420 431

Omega Pharma Innovation & Development NV, Venecoweg 26, 9810 Nazareth, Belgium (opponent), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Eveline Cosmetics Brand Concept Development Sp. z o.o., ul. Wierzbowa nr 18, 90-245 Łódź, Poland (applicant), represented by Kancelaria Patentowa Aleksandra Marcińska, ul. J. Słowackiego 5/149, 01-592 Warszawa, Poland (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 420 431 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 789 269 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 and services of European Union trade mark application No 12 789 269. The opposition is based on the following earlier rights:

• international trade mark registration No 231 527 designating Benelux and Italy for the word mark ‘LACTACYD’;
• Benelux trade mark registration No 954 172 for the word mark ‘LACTACYD’;
• Polish trade mark registration No 151 784 for the word mark ‘LACTACYD’.

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights and Article 8(5) EUTMR in relation to Polish trade mark registration No 151 784 for the word mark ‘LACTACYD’.

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 on which the opposition is based are the following:

Class 3: Soaps; perfumeries; bathing preparations; cosmetics; cosmetic crèmes and lotions; deodorants; etheric oils; cosmetics for personal hygiene; cosmetics for intimate care.

Class 5: Pharmaceutical preparations; disinfectants for hygienic purposes; hygienic preparations for medical purposes; hygienic preparations for personal hygiene; bathing preparations for medical purposes; disinfectants; lotions for pharmaceutical preparations; wipes with pharmaceutical lotions; vaginal washes; nutritional supplements for medical purposes; fungicides for medical use; pharmaceuticals for the treatment of skin infections; vaginal antimycotics; vaginal lubricant; vaginal moisturizers.

The contested goods and services, after a limitation, are the following:

Class 3: Soaps; Perfumery; Essential oils; Cosmetics; Cosmetic kits; Cosmetic masks; Skincare cosmetics; Moisturising gels [cosmetic]; Douching preparations for personal sanitary or deodorant purposes [toiletries].

Class 5: Balms for medical purposes; Ointments for pharmaceutical purposes; Medicated skin creams; Feminine hygiene products; all afore-mentioned goods for use as medical cosmetics.

Class 44: Beauty salons.

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

Soaps; perfumery; essential oils; cosmetics are identically contained in both lists of goods (including synonyms).

The contested cosmetic kits; cosmetic masks; skincare cosmetics; moisturising gels [cosmetic]; douching preparations for personal sanitary or deodorant purposes [toiletries] are included in, or overlap with, the broad category of the opponent’s cosmetics. Therefore, they are identical.

Contested goods in Class 5

The contested balms for medical purposes; ointments for pharmaceutical purposes; medicated skin creams; feminine hygiene products; all afore-mentioned goods for use as medical cosmetics are included in the broad category of, or overlap with, the opponent’s pharmaceuticals for the treatment of skin infections. Therefore, they are identical.

Contested services in Class 44

The contested beauty salons are considered similar to the opponent’s cosmetics in Class 3. These goods and services, although different in nature, have the same purpose, namely that of improving people’s appearance. They target the same public and they can also have the same distribution channels, as nowadays beauty salons often also offer cosmetic products. These goods and services can also be complementary, as it may be necessary to use the opponent’s goods to perform the contested services.

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 and at professionals with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention will vary from average to high depending on the nature of goods and services. It will be average for, for example, cosmetics in Class 3 and high for, for example, pharmaceuticals for the treatment of skin infections in Class 5.

Although average and professional consumers both display a higher than average degree of attention in relation to pharmaceutical preparations, the examination will proceed on the basis of the perception of average consumers, since the general public is more prone to confusion.

3. The signs

LACTACYD
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

The earlier mark is a word mark ‘LACTACYD’.

The contested sign is figurative and composed of the verbal element ‘LACTA’ in bold, title case characters and the element ‘MED’ in upper case characters. The verbal elements are placed against a background in shades of grey. All the elements are depicted in a standard typeface in black and grey.

The applicant argues that the earlier mark is essentially composed of the name of the main ingredient of the product, namely ‘lactic acid’, and therefore it will be understood by the relevant public, especially professionals. As mentioned above, the examination is based on the general public. Taking into account that ‘lactic acid’ in Dutch is ‘melkzuur’, it is not likely that the average consumer will perceive the earlier mark as a meaningful term. Therefore, it is considered that, as the earlier mark, ‘LACTACYD’, is not composed of meaningful elements, it will not be broken down but will be perceived as one word by the relevant public. As it has no meaning for the relevant Dutch-speaking public, it is distinctive.

For the same reason, it is considered that the element ‘LACTA’ of the contested sign will not be associated with any clear meaning by average Dutch-speaking consumers. Although they may know the word ‘lactose’, they will not know the Latin prefix ‘lacto-’, let alone the word ‘lacta’. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The element ‘MED’ of the contested sign will be associated with ‘medical’. Bearing in mind that the relevant goods and services are beauty and healthcare products and services, this element is weak for these goods and services, as it indicates that the goods and services offered may have healing properties.

Neither of the marks has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘LACTA**D’. They differ in the penultimate and antepenultimate letters ‘CY’/‘ME’ and in the graphic depiction of the contested sign.

However, 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).

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.

Furthermore, taking into account that the marks coincide in the more distinctive element of the contested sign, which is, moreover, situated at the beginning of each sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LACTA’, which constitute the beginning of each sign, and the final sound ‘D’, present identically in both signs. The signs have the same length, each being composed of three syllables; therefore, they have the same rhythm and intonation. The pronunciation differs in the sounds of the letters ‛CY’ and ‘ME’, which are placed near the ends of the signs and are therefore less noticeable.

Therefore, the signs are aurally highly similar, as they differ only in two sounds.

Conceptually, although the public in the relevant territory will perceive the meaning of the weak element ‘MED’ 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. However, since the difference lies in a weak element of the contested sign, it is not of great importance.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The signs are considered visually similar to an average degree and aurally highly similar, as they coincide in the distinctive element ‘LACTA’.

Although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection.

Taking into account all the relevant factors of the case, including the average degree of distinctiveness of the earlier mark and the fact that the marks coincide in their beginnings and have similar overall structures (the same length, rhythm and intonation), it is considered that the visual and aural similarities between the signs are sufficient to counteract the dissimilarities resulting from the weak element at the end of the contested sign. It is, therefore, likely that the relevant public, on being exposed to the use of both signs in relation to identical and similar goods and services, and having an imperfect recollection of the earlier mark, would think that the goods and services for which the contested sign is used were produced or offered by the same undertaking as the goods distributed under the earlier mark.

In its observations, the applicant argues that the element ‘LACTA’ has a low distinctive character given that there are many trade marks that include ‘LACT’. In support of its argument the applicant refers to several trade mark registrations in Benelux, Italy and Poland. The applicant also submits printouts from the internet about marks containing the prefix ‘LACT’ in relation to hygienic products. It also argues that nowadays, another entity also sells goods under the trade mark ‘LACTACYD’. It argues that these marks can coexist on the European market.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LACT’. Under these circumstances, the applicant’s claims must be set aside.

In the present case, from the internet printouts submitted by the applicant, it cannot be concluded either that the public does not confuse those marks or that there is no relationship or agreement between the producers. The evidence submitted by the applicant consists of some internet extracts showing products beginning with ‘LACT’. The extracts do not, however, demonstrate that ‘LACT’ has become customary in trade in Benelux in relation to the goods in question, because they refer, in all cases but one, to pharmaceutical preparations, namely dietary supplements. Therefore, the documents submitted by the applicant cannot alter the above conclusion about the existence of likelihood of confusion between the marks in conflict in the present case in relation to identical and similar goods and services. Moreover, in relation to some of the evidence, it is not clear to which territory it refers (e.g. ‘Lacto Calamine Lotion’, which is in English with no reference to Benelux, or ‘Lactanase’, which is extracted from the French website www.dochorse.fr).

The applicant refers to Court judgments as well as to previous decisions of the Office to support its arguments. 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 cases and judgments referred to by the applicant are not relevant to the present proceedings, as they refer to cases in which the coinciding element is weak or non-distinctive.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant Benelux public is sufficient to reject the contested application.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 954 172. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Benelux trade mark registration No 954 172 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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) or the proof of use requested in relation to those marks.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR, invoked in relation to Polish trade mark registration No 151 784.

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

Steve HAUSER

Katarzyna ZANIECKA

Adriana VAN ROODEN

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.