OPPOSITION No B 2 729 435

Versailles B.V., Verrijn Stuartweg 60, 1112 AX Diemen, The Netherlands (opponent), represented by Merkenbureau Bouma B.V., Beurs WTC – Beursplein 37, room 313, 3011 AA Rotterdam, The Netherlands (professional representative)

a g a i n s t

Alba Beauty Science S.r.l., Via Roma 3, 36056 Tezze sul Brenta, Italy (applicant), represented by Società Italiana Brevetti S.P.A., Piazza di Pietra 39, 00186 Roma, Italy (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 729 435 is partially upheld, namely for the following contested goods:

Class 3: Foot treatment cosmetics; foot scrubs; foot smoothing stones; foot balm; non-medicated foot cream; non-medicated foot lotions; foot care preparations; foot masks for skin care; deodorants for the feet.

Class 5: Foot creams (medicated-); remedies for foot perspiration; medicated creams for the care of the feet; foot care preparations for medical use; medicated foot powder; foot balms (medicated).

2.        European Union trade mark application No 15 200 306 is rejected for all the above goods. It may proceed for the remaining 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 15 200 306. The opposition is based on International trade mark designating Denmark, Sweden, Finland No 1 076 296 and on Spanish trade mark registrations No 822 663 and No 822 662. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – SPANISH TRADE MARK REGISTRATIONS No 822 662 AND No 822 663

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.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, the opposition is based on, inter alia, Spanish trade mark registrations No 822 662 and No 822 663, both of the word mark ‘PODOSAN’.  On 14/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 19/11/2016.

The evidence submitted on 17/11/2016 for Spanish trade mark registrations No 822 662 and No 822 663 consists of registration certificates and renewal certificates while the translations provided consist of an extract of the OEPM database which is only partially translated and of another document which source is not indicated. The translations submitted by the opponent are insufficient since none of them reproduce the structure and contents of the original registration and renewal certificates provided. Rule 98(1) EUTMIR requires that the translation reproduces the structure and contents of the original document.

Furthermore, only irrelevant administrative indications (e.g. previous transfers of ownership that do not affect the opposition, administrative entries on fees, etc.) with no bearing on the case may be omitted from the translation (judgment of 29/09/2011, T-479/08, Shoe with two stripes, EU:T:2011:549).

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

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 Spanish trade mark registrations No 822 662 and No 822 663.

The opposition is also based on an International trade mark registration No 1 076 296 designating Denmark, Finland and Sweden. The Opposition Division finds it appropriate to first examine the opposition in relation to the Swedish designation.

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: Cosmetic products and preparations for the care of the skin and the feet; deodorants for personal use; anti-perspirants (toiletries); talcum powder for cosmetic use; perfumery; beauty products (cosmetics); essential oils; cosmetic creams, powders, lotions, milks, gels, oils and ointments for the care and cleansing of the feet.

Class 5: Sanitary preparations for the feet, for medical use; pharmaceutical creams, powders, lotions, milks, gels, oils and ointments for the care and cleansing of the feet; plasters, materials for dressings; disinfectants.

Class 8: Manicure- or pedicure sets; nail clippers; nail files; scissors (not for medical use); pincers.

Class 10: Orthopaedic and chiropody apparatus and instruments, also for the treatment and care of the feet; orthopaedic insoles, such as disposable insoles and deodorized insoles.

The contested goods and services are the following:

Class 3: Foot treatment cosmetics; foot scrubs; foot smoothing stones; foot balm; non-medicated foot cream; non-medicated foot lotions; foot care preparations; foot masks for skin care; deodorants for the feet.

Class 5: Foot creams (medicated-); remedies for foot perspiration; medicated creams for the care of the feet; foot care preparations for medical use; medicated foot powder; foot balms (medicated); dietary and nutritional supplements; vitamin preparations in the nature of food supplements.

Class 35: Advertising; publicity and sales promotion services; dissemination of advertising and promotional materials; dissemination of advertising and promotional matter relating to cosmetics and preparations for medical purposes; distribution of samples for publicity purposes; distribution of brochures and samples for cosmetics and cosmetic preparations, cosmetics and preparations for medical purposes; demonstration of goods; demonstration and display of cosmetics and cosmetic preparations, preparations for medical purposes; demonstration of goods for promotional purposes; advertising relating to cosmetics and preparations for medical purposes; organisation and management of customer loyalty programs; administration, organisation and management of customer loyalty programmes for cosmetics and cosmetic preparations, preparations for medical purposes; mediation of trade business for third parties; arranging of presentations for business purposes; business management; providing of consultancy in the field of consumer goods relating to cosmetics and preparations for medical purposes; organisation of presentations for advertising purposes relating to cosmetics and preparations for medical purposes; marketing of cosmetics and preparations for medical purposes. 

Contested goods in Class 3

The contested goods in Class 3 are all included in the broad category of the opponent’s cosmetic products and preparations for the care of the skin and the feet. Therefore, they are identical.

Contested goods in Class 5

The contested foot creams (medicated-); remedies for foot perspiration; medicated creams for the care of the feet; foot care preparations for medical use; medicated foot powder; foot balms (medicated) are included in the broad category of the opponent’s sanitary preparations for the feet, for medical use. Therefore, they are identical.

The contested dietary and nutritional supplements; vitamin preparations in the nature of food supplements are concentrated sources of nutrients or other substances meant to supplement the normal diet to improve overall health and energy. The opponent’s goods in Class 5 are of a very specific nature (sanitary and pharmaceuticals preparations and articles, some especially for the care of the feet) and they have a very specific purpose as well (sanitising versus nutrition). The targeted public and the producers are different and even if they can be acquired at the same point of sale, they are normally not on the same shelves. Finally, they are neither complementary nor in competition. Therefore, they are dissimilar.

Moreover, they are also dissimilar to any of the opponent’s goods in Classes 3, 8 and 10 that are mainly cosmetics, hand instruments and orthopaedic apparatus and instruments since they are goods of a different nature and serve different needs. Furthermore, they have different methods of use, they are not offered by the same companies and they are not meant for the same public.  Finally, they are neither complementary nor in competition. 

Contested services in Class 35

The contested advertising; publicity and sales promotion services; dissemination of advertising and promotional materials; dissemination of advertising and promotional matter relating to cosmetics and preparations for medical purposes; distribution of samples for publicity purposes; distribution of brochures and samples for cosmetics and cosmetic preparations, cosmetics and preparations for medical purposes; demonstration of goods; demonstration and display of cosmetics and cosmetic preparations, preparations for medical purposes; demonstration of goods for promotional purposes; advertising relating to cosmetics and preparations for medical purposes; organisation and management of customer loyalty programs; administration, organisation and management of customer loyalty programmes for cosmetics and cosmetic preparations, preparations for medical purposes; mediation of trade business for third parties; arranging of presentations for business purposes; business management; providing of consultancy in the field of consumer goods relating to cosmetics and preparations for medical purposes; organisation of presentations for advertising purposes relating to cosmetics and preparations for medical purposes; marketing of cosmetics and preparations for medical purposes are mainly advertising and business management services provided to third parties whereas the opponent’s goods in Classes 3, 5, 8 and 10 are cosmetics, pharmaceuticals, hand instruments and orthopaedic apparatus and instruments. They have a very different purpose and method of use. Furthermore, they are not complementary nor in competition and they will not be provided through the same undertaking. Finally, normally goods and services have a different nature since services are intangible whereas goods are tangible. Therefore, they are dissimilar.

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 and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average for goods such as foot scrubs that are cosmetics to relatively high for pharmaceutical goods such as medicated creams for the care of the feet.

Indeed, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

PODOSAN
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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 is a word mark consisting of the single word ‘PODOSAN’ which has no meaning for the relevant public in the territory and is therefore distinctive.

The contested sign is a figurative mark consisting of the single word ‘PEDISAN’ represented in standard grey upper case letters. A white foot is depicted inside the letter ‘P’. The drawing of the foot is indicating to the consumer the scope of the products in question and its distinctive character is therefore weak as opposed to the word ‘PEDISAN’ that has no meaning in the relevant territory and is therefore distinctive. Furthermore, this element is also considered to be the dominant element as it is the most eye-catching.

Visually, the signs coincide in five out of a total of seven letters, namely, ‘P*D*SAN’. Nevertheless, they differ in the colours, in the two letters ‘O’ placed in the second and fourth positions of the earlier mark, and in the letters ‘E’ and ‘I’ also placed in the same positions of the contested mark. They also differ in the specific, yet standard typography used in the contested sign. This graphic element is not particularly elaborate or sophisticated, at least not to such an extent as to have much of an impact on the consumers. The signs further differ in the drawing of the foot, of limited distinctive character, which has no counterpart in the earlier mark.

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

Aurally, the signs coincide in the sound of the letters ‘P*D*SAN’ present in both signs. Although they differ in the sound of their vowels placed in the second and fourth positions in both signs, as mentioned above, they follow the same pattern and structure (PE/DI/SAN vs PO/DO/SAN). They also have a very similar intonation.

Consequently, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the concept of the foot in the contested sign, 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.

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

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).

According to the same line of case-law, 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).

In the present case, the contested goods and services are partly identical and partly dissimilar to the opponent’s goods. The signs are visually similar to an average degree, aurally similar to a high degree and conceptually not similar. Indeed, the verbal elements coincide in five letters placed in the same positions and the differences are confined to two letters and to a figurative element of weak distinctive character and that will not cause much of an impact on consumers.

Although it is true that consumers normally exercise a certain degree of attention in relation to some of the goods at issue, even sophisticated consumers are not immune to trade mark confusion, especially taking into account the degree of similarities between the marks in question and the fact that the goods are identical.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.

The opponent has also based its opposition on the earlier International trade mark registration No 1 076 296 designating Denmark and Finland.

Since these marks are identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Martina GALLE

Sandra IBAÑEZ

Catherine MEDINA

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.