OPPOSITION No B 2 672 197

PZ Cussons (International) Limited, Manchester Business Park, 3500 Aviator Way, Manchester M22 5TG, United Kingdom (opponent), represented by Addleshaw Goddard LLP, 1 St Peter’s Square, Manchester M2 3DE, United Kingdom (professional representative)

a g a i n s t

Alkemie Group Spółka z o.o., ul. Okopowa 18, 58-500 Jelenia Góra, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 672 197 is partially upheld, namely for the following contested goods and services:

Class 3:        Cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, oils, lotions, balms, liquids, gels, washing preparations, shampoos.

Class 5:        Cosmetics with medical properties: medicated lotions, medicated creams, medicinal oils, medicinal ointments, medicated lotions, tonics (medicines), medicated skin care lotions, medicinal sprays, medicated capillary lotions, medicated baby powders, medicated baby oils, medicated babies’ creams, medicated pre-moistened tissues; Sanitary preparations for medical purposes, medicated anti-bacterial skin washes, medicated skin lotions; Medicated oral hygiene gels and mouthwash, medicated preparations for skin treatment; Hygienic products.

Class 35:        Retailing, wholesaling, sale via the internet and mail order sale of the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, oils, lotions, balms, liquids, gels, washing preparations, shampoos.

2.        European Union trade mark application No 14 248 141 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 248 141. The opposition is based on international trade mark registration No 1 130 737 designating the European Union and United Kingdom trade mark registration No 2 580 513, both for the word mark ‘MUM & ME’ and both registered for goods in Class 3. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 21/03/2016, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/08/2016.

On 27/07/2016, the opponent submitted its observations accompanied by printouts from the EUIPO eSearch plus database in relation to the earlier international trade mark registration claimed as a basis of the opposition.

The opponent did not submit any additional evidence concerning the substantiation of the earlier trade mark.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark. As regards international registrations, extracts from the ROMARIN and TMview databases are accepted (26/11/2014, T-240/13, Alifoods, EU:T:2014:994), in addition to the official certificates issued by WIPO. The Office does not accept printouts from eSearch plus for international registrations designating the European Union, since this approach contravenes Rule 19(2)(a) EUTMIR. No exception to this rule is provided for in Title XIII of the EUTMR. This practice came into force on 01/07/2012 and applies to all oppositions filed as from this date (on or after).

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

Therefore, the opposition will proceed as regards earlier United Kingdom trade mark registration No 2 580 513.

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:        Non-medicated toilet preparations; preparations for cleansing the skin; preparations for cleansing the skin and having anti-bacterial properties; facial and body moisturising preparations; body creams, milks, lotions; massage oils; aromatic and fragrance preparations; hand creams; emollient creams and washes; soap; liquid soap; personal cleaning wipes; bath creams; bath foams; bath salts; bath oils; bath herbs; bath wash; bath paints; bath crayons; bubble bath; arnica cream; arnica wash; shower gels; shower creams; shaving preparations; shave gels; shaving creams; shaving foams; after-shave preparations; talc; deodorants and anti-perspirants; cooling pads; hair preparations; hair care preparations; shampoos; conditioners; combined shampoo and conditioners; hair lotions; hair colouring preparations; hair straightening preparations; hair sprays; hair mousses; hair lacquers; foot sprays; perfumes, eau de toilettes; essential oils; stretch mark creams; baby oils; cleaning, washing, bleaching, polishing, rinsing and scouring preparations; preparations for freshening pillows and covers; preparations for freshening pillows and covers for use in aiding relaxation; descalents; laundry preparations; detergents; fabric conditioners; preparations for the care, treatment, softening, conditioning, enhancing and beautification of fabrics; washing up preparations; soaps and shampoos for household purposes.

The contested goods and services are the following:

Class 3:        Cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, oils, lotions, balms, liquids, gels, washing preparations, shampoos.

Class 5:        Cosmetics with medical properties: medicated lotions, medicated creams, medicinal oils, medicinal ointments, medicated lotions, tonics (medicines), medicated skin care lotions, medicinal sprays, medicated capillary lotions, medicated baby powders, medicated baby oils, medicated babies’ creams, medicated pre-moistened tissues; Sanitary preparations for medical purposes, medicated anti-bacterial skin washes, medicated skin lotions; Medicated oral hygiene gels and mouthwash, medicated preparations for skin treatment; Diet supplements; Hygienic products.

Class 35:        Retailing, wholesaling, sale via the internet and mail order sale of the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetics with medical properties, sanitary preparations, clothing, bed clothes, playthings, children’s furniture; Advertising and marketing; Presentation of goods; Arranging of participation in trade fairs and exhibitions.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Lotions and washing preparations are identically included in both lists of goods.

The opponent’s non-medicated toilet preparations include preparations for beautification and personal hygiene. Therefore, the contested cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, shampoos are included in, or overlap with, the opponent’s non-medicated toilet preparations. Therefore, they are identical.

The contested oils, balms, liquids, gels overlap with the opponent’s non-medicated toilet preparations insofar as both categories include oils, balms, liquids and gels for beautification and personal hygiene. Therefore, they are identical.

Contested goods in Class 5

The opponent’s non-medicated toilet preparations in Class 3 include a list of preparations used to enhance or protect the appearance or odour of the human body. The contested cosmetics with medical properties: medicated lotions, medicated creams, medicinal oils, medicinal ointments, medicated lotions, tonics (medicines), medicated skin care lotions, medicinal sprays, medicated capillary lotions, medicated baby powders, medicated baby oils, medicated babies’ creams, medicated pre-moistened tissues; sanitary preparations for medical purposes, medicated anti-bacterial skin washes, medicated skin lotions; medicated oral hygiene gels and mouthwash, medicated preparations for skin treatment; hygienic products comprise products such as skin or hair care preparations with medical properties. They may have the same purpose as cosmetics. Moreover, they have the same distribution channels, since they can be found in pharmacies or other specialist shops. They target the same public and are often manufactured by the same companies. Therefore, they are similar.

The contested diet supplements are substances prepared for special dietary requirements intended to provide nutrients in order to increase the quantity of nutrients consumed or to provide non-nutrient chemicals that are claimed to have a biologically beneficial effect. The opponent’s goods in Class 3 are used for personal care, enhancement and hygiene. The natures and purposes of these goods are not the same; although the goods can be used in combination with each other to the same end (e.g. to improve skin condition), they are not strictly speaking complementary and they do not usually have the same commercial origin. Therefore, they are dissimilar.

Contested services in Class 35

The activity of retailing goods, as a service for which the protection of an EUTM can be obtained, consists not of the mere act of selling the goods, but of the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification as ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical to find similarity, that is to say, they must either be exactly the same goods or fall within the natural and usual meaning of the same category.

However, retail services relating to the sale of particular goods and other goods are not similar. In principle, goods are not similar to services. Too broad a protection would be given to retail services if similarity were found where the goods sold at retail were only highly similar or similar to the goods covered by the other mark.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesaling, sale via the internet and mail order services in Class 35.

In the light of the above, the contested retailing, wholesaling, sale via the internet and mail order sale of the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, cleansing milk for toilet purposes, oils, lotions, balms, liquids, gels, washing preparations, shampoos are similar to a low degree to the opponent’s goods in Class 3.

The rest of the contested services, namely retailing, wholesaling, sale via the internet and mail order sale of the following goods: cosmetics with medical properties, sanitary preparations, clothing, bed clothes, playthings, children’s furniture are dissimilar to the opponent’s goods in Class 3. The opponent’s goods have a different nature and purpose from the contested services. They have a different commercial origin and target a different public. These goods and services have different distribution channels and, finally, they are neither complementary nor in competition.

By their nature, goods are generally different from services. The contested advertising and marketing; presentation of goods; arranging of participation in trade fairs and exhibitions consist essentially in advertising and marketing services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services.

Therefore, the opponent’s goods in Class 3 are dissimilar to the contested advertising and marketing; presentation of goods; arranging of participation in trade fairs and exhibitions, since they do not have the same nature, purpose, method of use or usual origin. They are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other.

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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the fields, for example, of sales and beauty.

Depending on the nature or price of the goods and/or services, the degree of attention is likely to vary from average (e.g. for the goods in Class 3) to higher than average (e.g. for medicated creams in Class 5, irrespective of whether or not they are issued on prescription, as these goods can affect the user’s state of health).

3. The signs

MUM & ME
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 the expression ‘MUM & ME’, which will be understood and perceived as a reference to the relation of a son or daughter (‘ME’) and his or her mother (‘MUM’). Although it may evoke some properties or characteristics of the relevant goods and services (e.g. goods and services that care for the consumer as a mother would), this relation is not direct and therefore the expression has a normal degree of distinctiveness.

In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is irrelevant.

The contested sign is a figurative mark composed of the sequence of letters ‘m*mme’, with the first two ‘m’ letters in bold separated by a purple heart containing a white leaf. By virtue of their size and position, these letters and the heart form the most visually eye-catching element of the mark. Underneath this element, in a smaller typeface, is the sequence of words ‘Baby Natural Care’, in black letters.

The element depicting a heart is reminiscent of a highly stylised letter ‘o’ and it is reasonable to assume that consumers will perceive it this way. As a whole, the dominant element of the contested sign has no meaning. However, the Court has held that although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Accordingly, the first component will be perceived as ‘mom’, also because these two letters are depicted in bold, and understood as an abbreviation of ‘mother’ in conjunction with the word ‘me’. The verbal element will therefore be associated with the abovementioned meanings. The figurative element of the heart may also be associated with care and love and the leaf with greenery, thus indicating that the goods care for the health and wellness of the consumer and have natural ingredients. Therefore, these figurative elements have little capacity to indicate commercial origin.

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).

In the same vein, the element consisting of the words ‘Baby Natural Care’, bearing in mind the relevant goods and services, will be linked to the characteristics and natural origin of the goods and therefore will also be attributed very little trade mark significance.

Visually, the signs coincide in the sequence of letters ‘m*m*me’, which form the dominant element in the contested sign. They differ in the second letter, ‘U’, of the earlier sign and the ampersand, ‘&’, between the two elements of the sign. The signs further differ in the figurative elements of the contested sign, the secondary expression ‘Baby Natural Care’ in the contested sign and the slight stylisation of the letters in the contested sign.

Although the contested sign differs in several verbal and figurative components, their limited distinctiveness for the goods and services at issue must be taken into consideration.

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

Aurally, given what has been stated above as regards the aural perception of the element depicting a heart between the first letters ‘m’ in the contested sign, the pronunciation of the signs coincides in the sound of the letters ‘MUM’ in the earlier mark, which has a highly similar pronunciation to the letters ‘MOM’ in the contested sign, and in the sound of the letters ‘ME’. The pronunciation differs in the sound of the ampersand, ‘&’, in the earlier mark, which will be pronounced as ‘AND’. Furthermore, given the limited distinctiveness of the secondary element ‘Baby Natural Care’ of the contested sign, this expression will most probably not be pronounced by the relevant public; 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. Both signs convey the distinctive concept of a reference to the relation of a son or daughter (‘ME’) and his or her mother (‘MOM’), underlying the elements that they have in common. Although the contested sign conveys the meanings of the additional verbal and figurative elements, the impact of those weak elements on the assessment of the conceptual similarity between the signs is low. Therefore, the signs are conceptually similar to a high degree.

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 clear 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

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 covered are from the same or economically linked undertakings.

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. The signs are aurally and conceptually similar to a high degree and visually similar to an average degree. The differences identified between the signs, mainly confined to the additional elements of the contested sign, which have a limited impact on the public’s perception of the sign, are not sufficient to outweigh the visual, aural and conceptual similarities to the extent that a likelihood of confusion on the part of the public can safely be excluded.

Indeed, 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 and services that it designates. For example, the contested sign may be interpreted as a stylised depiction of the earlier mark used to denote toiletries and cosmetics with medical properties for the care of babies.

Bearing in mind the foregoing, the Opposition Division considers that even consumers paying a higher than average degree of attention are likely to believe that the identical or similar goods and services, even those found to be similar to a low degree, originate from the same undertaking or related undertakings.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Jorge ZARAGOZA GOMEZ

Richard BIANCHI

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.