OPPOSITION No B 2 799 735

Nova Estheco, S.L., C/ Sirio, 26, 28007 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Tomasz Marzec, Jerzmanowskiego 14/45, 30-836 Kraków, Poland and Jolanta Stelmach, Jerzmanowskiego 14/45, 30-836 Kraków, Poland (applicants), represented by Arkadiusz Michalak, Ul. Masarska 9/6, 31-539 Kraków, Poland (professional representative)

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 799 735 is partially upheld, namely for the following contested goods:

Class 3:         Tissues impregnated with cosmetic lotions; Make-up removing preparations; Make up removal towels; Antiperspirants [toiletries]; Deodorants in the form of sticks; Soaps; Soap; Shaving preparations; Bath salts, not for medical purposes; Cologne; Nail decorations; Cosmetic preparations for slimming purposes; Oils for perfumes and scents; Perfume; After-shave preparations; Dentifrices; Toilet water; Astringents for cosmetic purposes; Nail polish remover; Dentifrices; Lotions and gels for feminine hygiene; Wipes for personal hygiene; skin care exfoliators; Bath herbs; Mouthwash.

Class 4:         Perfumed candles; Perfumed candles.

Class 21:         Make up brushes; Cosmetic brushes; Brush covers; Cases for cosmetic brushes; Toilet cases; Toilet cases; Cosmetic utensils; Toilet utensils; Applicators for cosmetics; Toothbrushes.

2.        European Union trade mark application No 14 713 581 is rejected for all 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 European Union trade mark application No 14 713 581 for the word mark ‘Pigment’. The opposition is based on European Union trade mark registration No 11 051 307 for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicants requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 22/10/2015.

Earlier European Union trade mark registration No 11 051 307 was registered on 03/01/2013. Therefore, the request for proof of use is inadmissible.

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 and services on which the opposition is based are the following:

Class 2: Colorants for micropigmentation, permanent make-up and tattoos.

Class 3: Colorants for micropigmentation, for tattoos and for non-permanent make-up for cosmetic purposes; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 10: Apparatus and instruments for micropigmentation for creating tattoos and for applying permanent make-up.

Class 44: Hygiene and beauty care for human beings, Medical services.

The contested goods are the following:

Class 3: Tissues impregnated with cosmetic lotions; Make-up removing preparations; Make up removal towels; Antiperspirants [toiletries]; Deodorants in the form of sticks; Soaps; Soap; Shaving preparations; Bath salts, not for medical purposes; Cologne; Nail decorations; Cosmetic preparations for slimming purposes; Oils for perfumes and scents; Perfume; After-shave preparations; Dentifrices; Toilet water; Astringents for cosmetic purposes; Nail polish remover; Dentifrices; Lotions and gels for feminine hygiene; Wipes for personal hygiene; skin care exfoliators; Bath herbs; Mouthwash.

Class 4: Perfumed candles; Perfumed candles.

Class 5: Medicinal herbs.

Class 21: Make up brushes; Cosmetic brushes; Brush covers; Cases for cosmetic brushes; Toilet cases; Toilet cases; Cosmetic utensils; Toilet utensils; Applicators for cosmetics; Toothbrushes.

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.

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

Soaps; soap and dentifrices are identically contained in both lists of goods.

The contested perfume; cologne; oils for perfumes and scents; after-shave preparations and toilet water are included in, or overlap with, the broad category of the opponent’s perfumery. Therefore, they are identical.

Cosmetics are substances used to enhance the appearance or odour of the human body and include skin-care creams, lotions, powders, perfumes, lipsticks, fingernail and toe nail polish, eye and facial makeup, permanent waves, hair colours, hair sprays and gels, deodorants, baby products, bath oils, bubble baths, bath salts, butters and many other types of products.

Therefore, the contested tissues impregnated with cosmetic lotions; shaving preparations; bath salts, not for medical purposes; cosmetic preparations for slimming purposes; skin care exfoliators; antiperspirants [toiletries]; deodorants in the form of sticks; nail decorations; lotions and gels for feminine hygiene; bath herbs and astringents for cosmetic purposes are included in, or overlap with, the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested make-up removing preparations and nail polish remover are personal beauty care products and closely linked to the opponent’s cosmetics. They have the same nature, purpose and method of use. They have the same distribution channels, target the same consumers and can be provided by the same producers. Therefore, they are highly similar. 

The contested make up removal towels and wipes for personal hygiene are highly similar to the opponent’s cosmetics which include wipes for cosmetic use. These goods can coincide in nature, producer, end user, distribution channels and can be interchangeable.

The contested mouthwash is highly similar to the opponent’s dentifrices. Although their nature is slightly different, these goods have a similar purpose, namely to clean the mouth and teeth. These goods share the same distribution channels and are normally found in the same sector and shelves in supermarkets; they target the same relevant public and are often manufactured by the same undertakings.

Contested goods in Class 4

The contested perfumed candles; perfumed candles are similar to the opponent’s essential oils in Class 3. The contested goods consist of perfumed candles that are often scented by means of the opponent’s essential oils. In any case, candles, in particular scented and perfumed candles, serve, as essential oils also do, the purpose of releasing pleasing smells which create a pleasant atmosphere. In addition, their end consumers and points of sale generally coincide (25/07/2013, R 882/2012-4, Tales of London (FIG) / TAYLOR OF LONDON et al. § 14).

Contested goods in Class 5

The contested medicinal herbs are dissimilar to all the opponent’s goods and services in Classes 2, 3, 10 and 44. The opponent’s goods in Classes 2 and 10 are specific goods for micropigmentation, permanent make-up and tattoos and have no points of contact with the contested goods in Class 5. The opponent’s goods in Class 3 which essentially consist of soaps; perfumery, essential oils, cosmetics, hair lotions and dentifrices also have different natures and purposes to the contested medicinal herbs in Class 5. They do not normally share the same distribution channels or target the same relevant public; they do not originate from the same undertakings and are not complementary to each other or in competition with each other. As regards the opponent’s services in Class 44 and, in particular, the opponent’s medical services in this class, even though a certain link cannot be denied with the contested medicinal herbs due to the common goal of treating diseases, the differences in nature, and especially in the usual origin, clearly outweigh any similarities. The relevant public does not expect a hospital, doctor, dentist, nurse or veterinarian to develop and market a drug or medicinal herbs. Consequently, the above contested goods are also dissimilar to the opponent’s services in Class 44.

Contested goods in Class 21

Cosmetics include make-up products and toiletries. Therefore, the contested make up brushes; cosmetic brushes; cosmetic utensils; toilet utensils and applicators for cosmetics and the opponent’s cosmetics in Class 3 can share the same purpose and be complementary to each other. These goods can share the same distribution channels, target the same relevant public and can be produced by the same undertakings. Therefore, they are highly similar.  

The contested toothbrushes are highly similar to the opponent’s dentifrices in Class 3. Although the nature of these goods is different, their purpose is the same, namely to clean the teeth, and the contested goods are indispensable for the use of, for example, toothpaste covered by the opponent’s goods. Furthermore, these goods share the same distribution channels, target the same relevant public and are also often produced by the same undertakings.

The contested cases for cosmetic brushes; toilet cases; toilet cases are similar to the opponent’s cosmetics in Class 3 since they can share the same distribution channels, target the same relevant public and can be produced by the same undertakings. Furthermore, the contested goods have a complementary nature with the opponent’s goods.

The contested brush covers include cosmetic brush covers and are therefore at least similar to a low degree to the opponent’s cosmetics in Class 3 since they can share the same distribution channels, target the same relevant public and can be expected to be produced by the same undertakings.

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.

The applicants argue that soaps and perfumes are specialised goods chosen by consumers carefully since they usually pay more attention and spend more time to become acquainted with their properties and effects and because it is also very common to test this kind of products before purchasing them. In view of this, the applicants claim that the degree of attention will be high in relation to these goods. However, although consumers may be relatively selective when purchasing in particular perfumes, in view of the nature, price and purchasing frequency of these goods and in the absence of any evidence to the contrary, the Opposition Division does not consider that the relevant public’s level of attention would generally be higher than normal. The applicants also argue that a higher degree of attention can be the consequence of brand loyalty and cites two Board of Appeal decisions concerning tobacco products in Class 34. According to the applicants, soaps and perfumery are goods which are bought frequently from the same company and, as a result, the applicants argue, consumers of such goods are more attentive of what they purchase. In this respect, as mentioned above, the case-law referred to by the applicants concerning brand loyalty relate to tobacco products and, in the absence of any evidence to support that consumers of soaps and perfumes would normally purchase them from the same company and therefore typically be loyal to one particular brand, the Opposition Division does not consider that this is generally the case in relation to such goods.

Therefore, the degree of attention in relation to all goods concerned is considered to be average.

3. The signs

	Pigment
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 contested sign is the word mark ‘Pigment’ and the earlier mark is a figurative mark consisting of the verbal element ‘pigmentalia’ depicted in bold lower case letters together with a figurative element consisting of two relatively large vertical purple lines, one featured before the verbal element and one featured after it.

In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the word of which the contested sign consists is capitalised whereas the verbal element of the earlier mark is in lower case letters.

The contested sign, ‘Pigment’, since it is the same or very close to the equivalent word in the official languages in the relevant territory, will be understood by the relevant public in the European Union as meaning ‘a substance that gives something a particular colour‘. However, since the meaning of the word ‘pigment’ has no direct connection to the contested goods, it will be perceived as distinctive.

The verbal element of the earlier mark, ‘pigmentalia’, is an invented word without any particular meaning. Although consumers are likely to perceive it as alluding to ‘pigment’, which could be non-distinctive or weak in relation to some of the opponent’s relevant goods (such as cosmetics) but distinctive in relation to others (such as perfumery), the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). Therefore, the verbal element of the earlier mark, ‘pigmentalia’, will be perceived as distinctive as a whole in relation to all goods concerned.

The figurative element of the earlier mark consists of two purple vertical lines, which are basic geometric shapes and, therefore, of very weak distinctiveness only, at most. 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 verbal element ‘pigmentalia’ is the most distinctive part of the earlier mark.

The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘pigment’ which is the only element of the contested sign. However, they differ in the additional letters ‘alia’ at the end of the verbal element of the earlier mark and its additional figurative element, which will however have little impact on the overall impression produced by the mark for the reasons outlined above.

It should also be borne in mind 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.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘pigment’, present identically in both signs. The pronunciation differs in the sound of the additional letters ‛alia’ at the end of the earlier mark, which has no counterpart in the contested sign.

Therefore, in line with the above findings, the signs are also aurally similar to an average degree.

Conceptually, although the earlier mark as a whole does not have any meaning for the public in the relevant territory, the element ‘pigment’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar, at least to a low 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 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, despite the presence of a non-distinctive or weak element in the mark for some of the goods concerned as stated above in section c) of this decision.

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).

Account should also be 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).

Moreover, 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/services covered are from the same or economically linked undertakings.

In the present case, the goods have been found identical, similar to varying degrees or dissimilar and the level of attention of the relevant public is average.

The earlier mark has a normal degree of distinctiveness as a whole in relation to all goods concerned and the signs are visually and aurally similar to an average degree and conceptually similar at least to a low degree.

In view of all the above and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the part of the public in the relevant territory within the meaning of Article 8(1)(b) EUTMR, in particular as the relevant consumers, even if they did recall the slight differences between the signs, would still believe, in view of their overall similarity, that the goods, even those that are similar to a low degree, offered under the different signs originated from the same or economically linked undertakings.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 11 051 307. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or similar to varying degrees to the opponent’s goods.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested goods are clearly dissimilar to opponent’s goods and services covered by the earlier mark, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is directed at these goods.

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

Benjamin WINSNER

Sam GYLLING

Frédérique SULPICE

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.