OPPOSITION No B 2 736 042

OpCapita Red Bidco S.à.r.l., 5, rue Guillaume Kroll, 1882 Luxembourg, Luxembourg (opponent), represented by Friese Goeden Patentanwälte PartGmbB, Widenmayerstr. 49, 80538 Munich, Germany (professional representative)

a g a i n s t

Baron – Comércio Internacional Lda, Rua Raúl Brandão Nº 9, 1700-321 Lisbon, Portugal (holder), represented by A.G. da Cunha Ferreira Lda, Avenida 5 de Outubro 146-7º, 1050-061 Lisbon, Portugal (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 042 is partially upheld, namely for the following contested goods:

Class 18: Cases, bags and pouches empty, for holding make-up.

2.        International registration No 1 269 166 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration No 1 269 166 designating the European Union. The opposition is based on international trade mark registration No 802 201 designating the European Union. 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.

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1. The goods

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

Class 18: Leather and imitation leather; animal skins, hides; trunks and suitcases; umbrellas, parasols, walking sticks; whips, saddlery.

Class 24: Fabrics and textiles (included in this class); bed and table covers.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 3: Make up products and articles; make up remover products; cotton discs for make up; cosmetics kits; paper hand pads, moistened and impregnated with a cosmetic lotion.

Class 18: Cases, bags and pouches empty, for holding make-up.

Class 20: Make up mirrors.

Class 21: Make up accessories in particular applicators, sponges and make up brushes and accessories for removing make up; make up powder compact cases.

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

The term ‘in particular’, used in the holder’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

Contested goods in Class 3

The contested make up products and articles; make up remover products; cotton discs for make up; cosmetics kits; paper hand pads, moistened and impregnated with a cosmetic lotion are essentially make-up preparations, make-up removers and accessories therefor. These goods are dissimilar to the opponent’s goods in Classes 18, 24 and 25. The opponent’s goods in Class 18 are raw materials, products intended to carry objects, devices for protection from the weather (umbrellas, parasols), staffs, instruments used for driving animals (whips) and equipment for horses, such as saddles and harnesses (saddlery). The opponent’s goods in Class 25 are used to cover and protect various parts of the human body against the elements or serve as articles of fashion. Even though nowadays designers sell cosmetics, fashion accessories and travel accessories under their marks, this is not the rule, and rather applies only to (economically) successful designers. The opponent’s goods in Classes 18 and 25 and the contested goods have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though some of these goods may be sold through the same distribution channels, they cannot be found in the same sections or departments of the relevant points of sale. The same conclusion applies to the opponent’s goods in Class 24, which are textile products.

Contested goods in Class 18

The contested cases, bags and pouches empty, for holding make-up are similar to the opponent’s trunks and suitcases, as they have the same general purpose, namely to contain and carry objects of various natures. Moreover, these goods can have the same end users and distribution channels.

Contested goods in Class 20

The contested make up mirrors are pieces of furniture that may be designed to make the application of make-up more accurate or comfortable. These goods are dissimilar to the opponent’s goods in Classes 18, 24 and 25, which have already been defined above. These goods have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, they are not commercialised through the same points of sale.

Contested goods in Class 21

The contested make up accessories in particular applicators, sponges and make up brushes and accessories for removing make up; make up powder compact cases are accessories for applying, containing or removing make-up. These goods are dissimilar to the opponent’s goods in Classes 18, 24 and 25, which have already been defined above. These goods have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, they are not commercialised through the same points of sale.

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 similar are directed at the public at large. The degree of attention is considered average.

3. The signs

NKD
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). 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 words ‘MAKE UP DESIGN’ are meaningful in certain territories, for example in those countries where English is understood, such as the United Kingdom, Ireland and Malta. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘NKD’, which has no meaning for the relevant public and, therefore, has a normal degree of distinctive character.

The contested sign includes the upper case letters ‘MKD’, which, given their size and position, are the dominant element of the mark. Being devoid of any meaning for the relevant public, this element is considered distinctive. Consequently, it will have a significant impact on the present comparison.

The sign also includes the words ‘MAKE UP DESIGN’ in slightly stylised upper case letters. This element has a limited impact on the overall impression of the contested sign, due to its small size and secondary position. Moreover, it will be associated with the concept of making, conceiving the presentation of or formulating certain cosmetics and/or cosmetics-related products. Bearing in mind that the relevant goods are cases, bags and pouches empty, for holding make-up, this element is considered weak, since it alludes to the type of activity carried out by the trade mark holder. The mark also includes the device consisting of two horizontal lines. This figurative element, given its simplicity, has no distinctive character and, therefore, is of limited relevance to the present comparison. Moreover, 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). Therefore, the horizontal lines will have a limited impact on the present comparison.

Visually, the signs coincide in the letters ‘KD’, which are the second and third letters of the earlier mark and of the most distinctive portion of the contested sign. They differ in the letter ‘N’ of the earlier mark, in the letter ‘M’ of the contested sign and in the remaining elements of the contested sign, which are less relevant to the present comparison, for the reasons explained above.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KD’, present identically in the earlier mark and in the most distinctive portion of the contested sign. The pronunciation differs in the sound of the letters ‘N’ of the earlier mark and ‘M’ of the contested sign, which are, however, both nasal consonants and have rather similar sounds. Due to the subordinate position and small size of the element ‘MAKE UP DESIGN’ in the contested sign, the public is unlikely to pronounce these words, which also have little distinctive character and consequently a limited impact on the present comparison.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the element of the contested sign ‘MAKE UP DESIGN’, 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, this dissimilarity is due to a weak, and therefore less relevant, element.

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 goods covered by the trade marks in dispute have been found partly similar and partly dissimilar. They target the public at large and the degree of attention paid by consumers is expected to be average. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an average degree and aurally highly similar. In particular, the visual differences between the signs result from elements that are likely to be disregarded by consumers. Indeed, one of the marks’ differences lies in a non-distinctive figurative element. The difference in the weak element ‘MAKE UP DESIGN’ will also have a limited impact on consumers due to its small size and secondary position, with ‘MKD’ being the dominant element in the contested sign. The earlier mark and the dominant part of the contested sign both have three letters; both are, consequently, relatively short signs. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in principle, in short words small differences may lead to a different overall impression. Nevertheless, the fact that the signs coincide in two letters and that the differing one is phonetically similar may lead to a finding of likelihood of confusion (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

In addition, 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).

Considering all the above, there is a likelihood of confusion on the part of the English-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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.