OPPOSITION No B 2 717 596

Börlind Gesellschaft für kosmetische Erzeugnisse mbH, Lindenstr. 15, 75365, Calw, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Tommaso Nicola Grasso, Via Nino Bixio 56/A, 82030 Campoli del Monte Taburno, Italy (applicant).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 596 is upheld for all the contested goods, namely:

Class 3:        Perfumery; Cosmetics; Sun bronzers; Sun-tanning gels; Toning creams [cosmetic]; Sun protecting creams [cosmetics]; Cosmetic preparations for eyelashes; Eyebrow cosmetics; Eyebrow pencils; Eyebrow colors; Eyebrow colors in the form of pencils and powders; Perfume; Solid perfumes; Liquid perfumes; Cosmetic creams; Cosmetic nourishing creams; Cosmetic creams and lotions; Face creams for cosmetic use; Cosmetic hand creams; Moisturising skin creams [cosmetic]; Skin care creams [cosmetic]; Skin whitening creams.

2.        European Union trade mark application No 15 331 572 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 331 572 (figurative mark: ) namely against some of goods in Class 3. The opposition is based on, inter alia, international registration designating the European Union No 971611 (figurative mark: ).

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 international trade mark registration No 971 611 designating the European Union.

1. The goods

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

Class 3:        Soaps; perfumery; cosmetics and personal care preparations; hair care preparations for cosmetic use.

The contested goods are the following:

Class 3:        Perfumery; Cosmetics; Sun bronzers; Sun-tanning gels; Toning creams [cosmetic]; Sun protecting creams [cosmetics]; Cosmetic preparations for eyelashes; Eyebrow cosmetics; Eyebrow pencils; Eyebrow colors; Eyebrow colors in the form of pencils and powders; Perfume; Solid perfumes; Liquid perfumes; Cosmetic creams; Cosmetic nourishing creams; Cosmetic creams and lotions; Face creams for cosmetic use; Cosmetic hand creams; Moisturising skin creams [cosmetic]; Skin care creams [cosmetic]; Skin whitening creams.

Contested goods in Class 3

Perfumery, cosmetics are identically contained in both lists of goods.

The contested perfume; solid perfumes; liquid perfumes are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested sun bronzers; sun-tanning gels; toning creams [cosmetic]; sun protecting creams [cosmetics]; cosmetic preparations for eyelashes; eyebrow cosmetics; eyebrow pencils; eyebrow colors; eyebrow colors in the form of pencils and powders; cosmetic creams; cosmetic nourishing creams; cosmetic creams and lotions; face creams for cosmetic use; cosmetic hand creams; moisturising skin creams [cosmetic]; skin care creams [cosmetic]; skin whitening creams are included in the broad category of the opponent’s cosmetics and personal care preparations for cosmetic use. Therefore, they are identical.

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 are directed at the public at large.

The degree of attention is considered average.

3. The signs

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 earlier mark consists of two upper case italic letters ‘L’ in a standard typeface. They intersect and one is slightly below the other. The contested mark consists of two letters ‘L’ in a standard typeface, surrounded by a frame, and the additional verbal elements ‘LUXURY LAB’ and ‘COSMETICS’. The two letters ‘L’ are adjacent and do not intersect. The verbal element ‘LUXURY LAB’ is under the frame and is in bold upper case letters. The other verbal element, ‘COSMETICS’, is in upper case letters and is underneath the other elements of the mark.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘LUXURY LAB’ and ‘COSMETICS’ are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland, the United Kingdom and Malta.

The element that the signs have in common, namely ‘LL’, has no meaning for the relevant public and is, therefore, distinctive. It is the only element of the earlier mark.

The figurative element of the contested sign is a frame that is a commonplace addition to trade marks; it is deemed a banal element. Therefore, it is non-distinctive.

The verbal elements ‘LUXURY LAB’ and ‘COSMETICS’ of the contested sign are descriptive of the characteristics of the goods, namely their quality (luxury), origin (lab) and nature (cosmetics). They will be understood as ‘high-quality cosmetics which are produced in a high-quality laboratory’. Therefore, these verbal elements are non-distinctive for all the contested goods.

Therefore, the element ‘LL’ in the contested sign is more distinctive than these non-distinctive figurative elements.

Since the frame and the verbal elements ‘LUXURY LAB’ and ‘COSMETICS’ occupy similarly sized areas, the contested sign has no visually eye-catching, dominant element.

Visually, the signs coincide in the sequence of letters ‘LL’, which is the only distinctive element of both signs. However, the signs differ in the stylisation of the letters ‘LL’, the verbal elements ‘LUXURY LAB’ and ‘COSMETICS’ and the figurative element of the contested sign. These elements are, however, non-distinctive and therefore have less impact on the overall impression given by the marks. Moreover, since consumers generally tend to focus on the beginning or the top of a sign, as they will read from left to right and from top to bottom when they encounter a trade mark, it is the element ‘LL’ that will primarily attract the public’s attention.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LL’, present identically in both signs. It is the only distinctive element of both signs. The pronunciation differs in the syllables ‛LUXURY-LAB-COSMETICS’ of the contested mark, which have no counterparts in the earlier sign. Although the number of coinciding syllables (two) is less than the number of differing ones (seven), this is offset by the fact that these differing components are all non-distinctive. Furthermore, the coinciding syllables ‘LL’ are at the top of the contested mark and, therefore, following the reasoning described above, the element ‘LL’ will be the first to catch the attention of the consumers.

Therefore, the signs are similar to a high degree.

Conceptually, as mentioned above, the coinciding element ‘LL’ has no meaning. Although the words ‘LUXURY LAB COSMETICS’ and the frame have a meaning for the English-speaking part of the public, they do not differentiate the marks conceptually, since the words are a clear reference to the goods and frames are commonly used in trade to embellish trade marks. Therefore, the conceptual comparison does not influence the assessment of similarity of the marks.

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

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the contested goods are identical, and the signs are visually similar to an average degree and aurally similar to a high degree.

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).

Since the goods in question are identical, the signs would have to differ significantly to exclude the likelihood of confusion on the part of the relevant public. However, as described above, the signs are visually similar to an average degree and aurally similar to a high degree. The differences between the signs as a result of the descriptive words ‘LUXURY LAB’ and ‘COSMETICS’ and the simple frame in the contested sign are not sufficient to exclude likelihood of confusion.

Finally, it must also be taken into account that the likelihood of confusion includes the likelihood of association with the earlier trade mark. Even if a part of the public would be able to distinguish between the marks at issue, the existence of likelihood of association is not excluded. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark, which consists of the letters ‘LL’ in combination with other words (‘LUXURY LAB’ and ‘COSMETICS’), as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This is because all the additional verbal elements are non-distinctive, and the differences in stylisation of the elements ‘LL’ do not substantially alter the perception that both marks are based on this sequence of two letters. Therefore, the relevant public might think that the origin of the cosmetics marketed under the mark ‘LL LUXURY LAB COSMETICS’ is the same as that of the goods marketed under the mark ‘LL’, or at least that there is an economic link between the companies that market them.

The conclusion is that, given the similarity between the signs and the identity between the goods, there is a likelihood of confusion between the marks in dispute for all the contested goods, in the sense of Article 8(1)(b) EUTMR.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 971 611 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right international trade mark registration No 971 611 designating the European Union 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).

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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

Adriana VAN ROODEN

Martin EBERL

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.