OPPOSITION No B 2 744 368

L’Oréal (S.A.), 14, rue Royale, 75008 Paris, France (opponent), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milan, Italy (professional representative)

a g a i n s t

V.I.P.A. S.R.L., Via Domenico Millelire N. 13, 20147 Milan, Italy (applicant).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 744 368 is upheld for all the contested goods.

2.        European Union trade mark application No 15 458 417 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 458 417 . The opposition is based on, inter alia, European Union trade mark registration No 13 117 981 ‘L’OREAL’. 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 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 European Union trade mark registration No 13 117 981.

1. The goods

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

Class 3: Perfumes, eau de toilettes; Bath and shower gels and salts not for medical purposes; Soap; personal deodorants; Cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); Make-up; Shampoo; Gels, mousses, balms and preparations in aerosol form for hair styling and hair care; Hair spray; Hair-colouring and hair-decolorizing preparations; Hair-waving preparations; Essential oils.

The contested goods are the following:

Class 3: Deodorants and antiperspirants; Make-up; Hair preparations and treatments; Bath preparations; Hair removal and shaving preparations; Skin care preparations; Soaps and gels; Paper hand towels impregnated with cleaning agents; Nail conditioners; Lip neutralizers; Creamy face powder; Colour cosmetics for the skin; Beauty care cosmetics; Cosmetics in the form of creams; Cosmetics in the form of powders; Beauty balm creams; Washing creams; Cosmetic creams and lotions; Fluid creams [cosmetics]; Hand cleansers; Foams for use in the shower; Shower and bath foam; Soap free washing emulsions for the body; Laundry detergents for household cleaning use; Ammonia for cleaning purposes; Javelle water; Household bleach; Perfumery and fragrances; Oral hygiene preparations; Body cleaning and beauty care preparations; Aloe vera preparations for cosmetic purposes; Balms other than for medical purposes; Cotton sticks for cosmetic purposes; Slimming aids [cosmetic], other than for medical use; Cosmetics and cosmetic preparations; Cosmetics for personal use; Cosmetics in the form of oils; Cuticle cream; Massage creams, not medicated; Make-up pads of cotton wool; Bergamot oil; Massage gels other than for medical purposes; Aloe vera gel for cosmetic purposes.

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

The term ‘among other’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category cosmetics and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples.

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.

The applicant argues that the conflicting marks are used for different products (beauty and well-being products versus PVC films, floats and materials for extinguishers) due to the different businesses of the parties. To support its allegations, it filed various pieces of evidence.

The comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant to the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s claims must be set aside.

Contested goods in Class 3

Make-up; soaps, cosmetics are identically contained in both lists of goods.

The contested perfumery is identical to the opponent’s perfumes, and the contested fragrances are identical to the opponent’s perfumes, eau de toilettes, since these terms are synonyms.

Likewise, the contested cosmetic preparations; cosmetics for personal use are identical to the opponent’s cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands.

The contested hair preparations and treatments; bath preparations; hair removal and shaving preparations; skin care preparations; gels; paper hand towels impregnated with cleaning agents; nail conditioners; lip neutralizers; creamy face powder; colour cosmetics for the skin; beauty care cosmetics; cosmetics in the form of creams; cosmetics in the form of powders; beauty balm creams; washing creams; cosmetic creams and lotions; fluid creams [cosmetics]; foams for use in the shower; shower and bath foam; soap free washing emulsions for the body; body cleaning and beauty care preparations; aloe vera preparations for cosmetic purposes; balms other than for medical purposes; slimming aids [cosmetic], other than for medical use; cosmetics in the form of oils; cuticle cream; massage creams, not medicated; massage gels other than for medical purposes; aloe vera gel for cosmetic purposes are included in the broad category of the opponent’s cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands. Therefore, they are identical.

The contested bergamot oil is included in the opponent’s essential oils. Therefore, they are identical.

The contested deodorants and antiperspirants include, as a broader category, or overlap with the opponent’s personal deodorants. 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 hand cleansers overlap with the opponent’s soaps. Therefore, they are identical.

The contested make-up pads of cotton wool; cotton sticks for cosmetic purposes are similar to the opponent’s cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands. These goods target the same public and have the same distribution channels and producers.

The opponent’s 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. Since soap is used for cleaning purposes, it is identical to the contested laundry detergents for household cleaning use. Furthermore, it is similar to the contested ammonia for cleaning purposes; javelle water; household bleach, which are preparations for cleaning and/or bleaching, because they target the same consumers and have the same producers and distribution channels.

The contested oral hygiene preparations include dentifrices used to clean and embellish (polish and whiten) teeth. These products are similar to a low degree to the opponent’s cosmetics, among other, creams, milks, lotions, gels and powders for face, body and hands to the extent that these products have the same distribution channels and target the same public.

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 or similar to varying degrees are directed at the public at large, whose degree of attention is average.

3. The signs

L’OREAL
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.

Since the element ‘PARISIEN’ of the contested sign is meaningful in French, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier mark is composed of the word ‘L’OREAL’, which is meaningless and therefore distinctive to an average degree in relation to the relevant goods.

The contested sign is a figurative sign consisting of the word ‘LORÉL’ in white upper case letters, with the word ‘PARISIEN’ in much smaller letters underneath, both of them against a blue oval that contains a depiction of a light blue stylised world map. All these elements are on a blue/grey square background.

The word ‘LORÉL’ is meaningless and therefore distinctive to an average degree in relation to the relevant goods, whereas the word ‘PARISIEN’, which means ‘relating to Paris; a native or inhabitant of Paris’, is weak, since it indicates the geographical origin of the applicant and/or of its goods.

Regarding the figurative elements of the contested sign, 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). Furthermore, in the present case, the depiction of the world map is weak, since it refers to the international presence of the applicant.

Therefore, the word ‘LORÉL’ is the most distinctive element of the contested sign.

The verbal element ‘LORÉL’ and the figurative element of the contested sign are the more dominant (visually eye-catching) elements of the sign compared with the word ‘PARISIEN’ in very small letters in the lower part of the oval.

Case-law has established the principle, which is relevant in this comparison, that 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 earlier sign, ‘L’OREAL’, and the distinctive and dominant verbal element, ‘LORÉL’, of the contested sign coincide in five letters, ‘LORE*L’, (out of six) in the same order and differ in the additional letter ‘A’, in the apostrophe after the first letter ‘L’ of the earlier sign and in the accent over the letter ‘E’ of the contested sign. These last are secondary, since accents are often omitted on upper case letters and the apostrophe is a mere punctuation mark. The coinciding letters are mostly at the beginnings of the signs, where the attention of the public is focused. The signs differ further in the figurative elements and in the word ‘PARISIEN’ of the contested sign. Taking into account the above considerations about the distinctive and dominant elements of the signs, the signs are considered visually similar to an average degree.

Aurally, even though the earlier mark is pronounced in three syllables, whereas the dominant and distinctive verbal element of the contested sign is pronounced in two syllables, they coincide in the sound of the letters ‛LORE*L’, present identically in both signs, and differ in the sound of the additional letter ‘A’ of the earlier sign. The signs differ further in the sound of the element ‘PARISIEN’ of the contested sign. However, due to its secondary position and weak character, it is likely not to be pronounced. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier sign is meaningless, whereas the contested sign contains the depiction of a world map and the word ‘PARISIEN’ with the meaning given above. Since 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 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 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).

The goods are partly identical and partly similar to varying degrees.

The signs are visually similar to a medium degree and aurally similar to a high degree. Although the contested sign contains additional verbal and figurative elements, these elements are of limited distinctiveness and the distinctive and dominant element, ‘LORÉL’, of the contested sign has significant visual and aural similarities with the earlier mark, ‘L’OREAL’.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs. This also applies to the goods that are similar to a low degree, given the relevant similarities between the signs.

The applicant refers to several trade mark registrations in some countries of the European Union that include the element ‘LOREL’. 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 the element ‘LOREL’.

Therefore, bearing in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion on the part of the French-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 117 981. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned 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

Sandra IBANEZ

Frédérique SULPICE

Benoit VLEMINCQ

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.