OPPOSITION DIVISION
OPPOSITION No B 2 387 341
Revuele Ltd., Bratin Dol. Str., bl. 26A, en. B, floor 4, app.27 1330 Sofia, Krasno Selo
Region, Bulgaria (opponent), represented by Ivan Nikolov Ivanov, IP Consulting
Ltd., 6-8, Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria
(professional representative)
a g a i n s t
Brand Agency (London) Limited, Batchworth House, Batchworth Place, Church
Street, Rickmansworth, Herts WD3 1JE, United Kingdom (applicant), represented by
Ai Ling Lim-Lee, Brand Agency (London) Limited, 3rd floor Shand House,14 – 20
Shand Street, London SE1 2ES, United Kingdom (employee representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 387 341 is upheld for all the contested goods, namely
Class 3: Nail care and grooming preparations; nail care and grooming
products, tools and treatment, namely nail tips, nail strangtheners, nail
hardeners, nail decolorants, nail enamel, nail glitter, nail cream, nail gel,
artificial nails, nail art stickers, nail care preparations, nail tips, nail polish and
enamel removers, nail base and top coat, preparations for sculpting, reinforcing
and strengthening nails, adhesives for fixing false nails, glue for artificial nails,
nail art kits; perfumery; cosmetics; hair products; dentifrices; toiletries; essential
oils and aromatic extracts; abrasive and adhesive cosmetic materials; non-
medicated creams, lotions, serums, oils, powders, gels, balms and soaps;
cosmetic preparations for nails; nail lacquer, varnish and polish; oils,
adhesives, false eyelashes, eyelash tints and dyes, cosmetic preparations for
eyelashes, adhesives for fixing false eyelashes; make-up.
2. European Union trade mark application No 12 893 129 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 12 893 129, namely against all the goods in Class 3. The
Decision on Opposition No B 2 387 341 page: 2 of 6
opposition is based on international trade mark registration No 1 119 310 designating
Bulgaria, Poland and Romania. 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.
The Opposition Division finds it appropriate to first examine the opposition in relation
to the opponent’s international trade mark registration insofar as it designates
Bulgaria.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
The contested goods are the following:
Class 3: Nail care and grooming preparations; nail care and grooming
products, tools and treatment, namely nail tips, nail strangtheners, nail hardeners,
nail decolorants, nail enamel, nail glitter, nail cream, nail gel, artificial nails, nail art
stickers, nail care preparations, nail tips, nail polish and enamel removers, nail base
and top coat, preparations for sculpting, reinforcing and strengthening nails,
adhesives for fixing false nails, glue for artificial nails, nail art kits; perfumery;
cosmetics; hair products; dentifrices; toiletries; essential oils and aromatic extracts;
abrasive and adhesive cosmetic materials; non-medicated creams, lotions, serums,
oils, powders, gels, balms and soaps; cosmetic preparations for nails; nail lacquer,
varnish and polish; oils, adhesives, false eyelashes, eyelash tints and dyes, cosmetic
preparations for eyelashes, adhesives for fixing false eyelashes; make-up.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods with a broader category, is exclusive and restricts the scope of
protection only to the specifically listed goods.
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.
Decision on Opposition No B 2 387 341 page: 3 of 6
Perfumery; cosmetics; dentifrices; essential oils; soaps are identically contained in
both lists of goods.
The contested nail care and grooming preparations; nail care and grooming
products, tools and treatment, namely nail strangtheners, nail hardeners, nail
decolorants, nail enamel, nail glitter, nail cream, nail gel, nail care preparations, nail
polish and enamel removers, nail base and top coat, preparations for sculpting,
reinforcing and strengthening nails, nail art kits; abrasive and adhesive cosmetic
materials; non-medicated creams, lotions, serums, powders, gels, balms; cosmetic
preparations for nails; nail lacquer, varnish and polish; eyelash tints and dyes,
cosmetic preparations for eyelashes, make-up are all included in the broad category
of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.
The contested toiletries are according to Oxford Dictionaries ‘articles used in washing
and taking care of one’s body, such as soap, shampoo, and toothpaste’ (information
extracted on 27/10/2017 https://en.oxforddictionaries.com/definition/toiletries).
Therefore, the contested goods include as a broad category, the opponent’s soaps;
these goods are identical.
The contested hair products include as a broader category the opponent’s hair
lotions. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
The contested aromatic extracts and oils (listed twice) are included in the broad
category of, or overlap with, the opponent’s essential oils. Therefore, they are
identical.
The contested nail tips (listed twice), artificial nails; false eyelashes are false nails
and eyelashes which purpose coincide with the opponent’s cosmetics. Moreover,
these goods are complementary, are sold through the same distribution channels,
target same relevant publics and are produced by the same companies. Therefore,
they are highly similar.
The contested nail art stickers are used for nail decoration and are, therefore, used
with the same and/or a similar purpose as the opponent’s cosmetics, namely for
aesthetic purposes. Moreover, these goods are sold in the same shops, they target
same relevant publics and are produced by the same companies. Therefore, they are
deemed similar.
The contested adhesives for fixing false nails, glue for artificial nails; adhesives,
adhesives for fixing false eyelashes are similar to a low degree to the opponent’s
cosmetics. These goods are sold in the same shops, they target same relevant
publics and are produced by the same companies.
b) 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 and similar to various degrees
are directed at the public at large. The degree of attention is considered average.
Decision on Opposition No B 2 387 341 page: 4 of 6
c) The signs
LIQUID VELVET
Earlier trade mark Contested sign
The relevant territory is Bulgaria.
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 applicant has provided some extracts from Google® showing a search on
‘LIQUID VELVET’ and argues that the contested sign is not ‘used commonly in any
context. Indeed, essentially all references [in the Google® search] are to the
applicant’s brand, marketed on its own website and through its distribution network’.
The Opposition Division finds that the word ‘VELVET’ (present in both signs) is
meaningless for the relevant public and that it is distinctive. The initial word ‘LIQUID’
of the contested sign is also meaningless to the Bulgarian public and is a distinctive
element in the contested sign. The graphical representation of the earlier mark is
banal, since it merely contains a greyish/black depiction of ‘Velvet’ (in lower case
letters with a capital ‘V’) placed inside a rectangular shape, against a white
background. Therefore, the figurative elements of the earlier mark are weak.
Conceptually, as explained above, neither sign has a meaning for the public in the
relevant territory. The rectangular shape of the earlier mark is weak and it has no real
impact on the comparison of the signs. Therefore, a conceptual comparison is not
possible and the conceptual aspect does not influence the assessment of the
similarity of the signs.
Visually and aurally, the signs coincide in the distinctive word ‘VELVET’ and differ in
the distinctive word ‘LIQUID’. Nevertheless, the signs’ common and distinctive
element ‘VELVET’ appears as an independent element in the contested sign (being
separated from ‘LIQUID’), and is the sole element to be read and pronounced in the
earlier mark. Moreover, the earlier mark’s figurative elements are weak. Therefore,
the signs are visually and aurally similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
Decision on Opposition No B 2 387 341 page: 5 of 6
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, despite its graphical representation is banal and weak, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are identical and similar to different degrees. The
signs are visually and aurally similar to an average degree while no concept of
relevance will be perceived in either sign by the relevant public. It is true that the
differing word ‘LIQUID’ is a distinctive element in the contested sign and that it,
consequently, creates some visual and aural differences between the signs.
However, since the distinctive and sole word of the earlier mark (‘VELVET’) is present
as an independent element in the contested sign, it creates a risk of association
between the signs. Indeed, 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. In
the present case, it is highly conceivable that the relevant consumer will perceive the
contested mark as a sub-brand, a variation of the earlier mark, configured in a
different way according to the type of goods that it designates (23/10/2002, T-104/01,
Fifties, EU:T:2002:262, § 49). Therefore, the Opposition Division finds that the signs’
similarities outweigh their differences, even in relation to the goods which are only
similar to a low degree.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 119 310 insofar as it designates Bulgaria. It follows that
the contested trade mark must be rejected for all the contested goods.
As the designation of Bulgaria of the opponent’s earlier international registration
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
further examine the opposition under the same international registration in relation to
its remaining designations (16/09/2004, T-342/02, Moser Grupo Media, S.L.,
EU:T:2004:268, by analogy).
Decision on Opposition No B 2 387 341 page: 6 of 6
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Martina GALLE Christian RUUD Boyana NAYDENOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.