OPPOSITION DIVISION
OPPOSITION No B 2 787 318
NR Class 3, LLC, 30 Irving Place, 9th Floor, New York, New York 10003, United
States of America (opponent), represented by CMS Cameron McKenna Nabarro
Olswang LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom
(professional representative)
a g a i n s t
Трейд Импекс БГ ЕООД, ул. Цар Иван Асен II 1, 1124 София, Bulgaria and
George Luis Rodriguez, ул. Цар Иван Асен II 1, 1124 София, Bulgaria
(applicants).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 787 318 is upheld for all the contested goods.
2. European Union trade mark application No 15 326 762 is rejected in its entirety.
3. The applicants bear the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 326 762 . The opposition is based on European Union
trade mark registration No 2 410 504 ‘NARCISO RODRIGUEZ’. The opponent
invoked Article 8(1)(b) and (5) 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.
Decision on Opposition No B 2 787 318 page: 2 of 7
a) The goods
The goods on which the opposition is based are the following:
Class 3: Cosmetics, toiletries and toilet preparations; preparations for laundry
use, for cleaning, polishing, scouring and with abrasive action; perfumes, toilet
waters, deodorants for personal use, essential oils for cosmetic use; soaps, namely,
skin soaps, facial soaps, body soaps and bathsoaps; toilet products and lotions for
body, hair and face, namely, body emulsions, body mask cream, body mask lotion,
body mask powder, body masks, body oil, body scrub, facial emulsions, facial
creams, facial cleansers, facial scrubs, hair bleach, hair bleaching preparations, hair
care preparations, hair color, hair color removers, hair dressings for men, hair
emollients, hair frosts, hair gel, hair lighteners, hair lotions, hair mascara, hair
mousse, hair pomades, hair relaxers, hair relaxing preparations, hair rinses, hair
spray, hair straightening preparations, hair styling preparations, hair waving lotion,
shampoos, hair conditioners, styling lotions and dyes and tints for the hair;
cosmetics, namely, lipsticks, lip gloss, eye shadow, eyegloss, mascara, eyeliner,
eyebrow pencils, lip pencils, eyepencils, blush, make up foundation cream, make up
foundation powder, nail polish and varnish; make up; make up removal products,
namely, nail polish remover, make up removing lotions, milks, creams and gels;
cosmetic products and preparations for skincare, for the bath, for tanning of the skin,
namely, skin creams, skin milks, skin lotions, skin gels, skin powders, body creams,
body milks, body lotions, body gels, body powders, beauty masks; pencils for
cosmetic use; products for mouth care not for medical use, namely, toothpaste, tooth
gel, tooth polish, tooth powder and dentifrices; capillary lotions; depilatories; shaving
preparations; shaving soaps; cotton, wool and cotton-tipped sticks for cosmetic use,
tissues impregnated with cosmetic lotion.
The contested goods are the following:
Class 3: Essential oils and aromatic extracts; toiletries; cleaning and
fragrancing preparations.
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.
Essential oils; toiletries; cleaning preparations are identically contained in both lists of
goods (including synonyms).
The contested fragrancing preparations include, as a broader category, the
opponent’s perfumes. Since the Opposition Division cannot dissect ex officio the
broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested aromatic extracts are highly similar to the opponent’s essential oils for
cosmetic use, the main differences being their production methods. They have the
same purpose and method of use, and they can have the same producers,
distribution channels and end users. Moreover, they are in competition.
Decision on Opposition No B 2 787 318 page: 3 of 7
b) 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 a high degree are
directed at the public at large or at business customers with specific professional
knowledge or expertise. The degree of attention is average.
c) The signs
NARCISO RODRIGUEZ
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The coinciding element ‘RODRIGUEZ’ is a surname that is widespread in Spain but
far less so in other countries of the relevant territory. The element ‘NARCISO’ of the
earlier mark is a Spanish, Portuguese or Italian masculine given name.
The perception of signs made up of personal names may vary from country to
country within the European Union. Family names have, in principle, a higher intrinsic
value as indicators of the origin of goods or services than first names. This is
because common experience shows that the same first names may belong to a great
number of people who have nothing in common, whereas the presence of the same
surname (provided it is not common in the relevant territory) could imply the
existence of some link between them (identity of the persons or a family link).
Decision on Opposition No B 2 787 318 page: 4 of 7
However, in the present case, neither the additional, given name ‘NARCISO’ of the
earlier mark nor the surname ‘RODRIGUEZ’ of both signs is widespread in English-
speaking countries; therefore, both have an average degree of distinctiveness
because they have a similar capacity to distinguish the commercial origin of the
goods from competitors.
The word ‘PERFUME’ of the contested sign will be understood by part of the relevant
public such as English- or Spanish-speaking consumers. For those consumers, this
element is non-distinctive for all the goods found to be identical or similar to a high
degree because they are all related to perfumery.
When assessing the similarity of the signs, an analysis of the distinctiveness of the
coinciding components is carried out to assess the extent to which these elements
have a lesser or greater capacity to indicate the commercial origin. It may be more
difficult to establish that the public may be confused about origin due to similarities
that pertain solely to elements with a low degree of distinctiveness. Bearing in mind
that similarities between signs are higher where the commonalities reside in more
distinctive elements and the differences in weaker elements, the Opposition Division
will assess the signs from the perspective of consumers for whom the surname
‘RODRIGUEZ’ is not common and the additional word ‘PERFUME’ is understood and
therefore non-distinctive. Consequently, the Opposition Division finds it appropriate to
focus the comparison of the signs on the English-speaking part of the public.
The figurative element of the contested sign consists of a stylised bird and other
wavy forms. The latter are weak because they will be perceived as purely decorative
or as reminiscent of fragrances and therefore as descriptive taking into account the
relevant goods. 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).
The element ‘RODRIGUEZ’ and the figurative elements in the contested sign are the
dominant elements, as they are the most eye-catching.
Visually and aurally, the signs coincide in the distinctive verbal element
‘RODRIGUEZ’, which is also a co-dominant element in the contested sign. However,
they differ in the first verbal element, ‘NARCISO’, of the earlier mark and in the non-
distinctive word, ‘PERFUME’, of the contested sign. Visually, the signs also differ in
the less distinctive or secondary figurative elements of the contested sign.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be associated with the same
surname, namely ‘RODRIGUEZ’, the signs are conceptually similar to an average
degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 787 318 page: 5 of 7
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified. It must be
appreciated globally, taking into account all factors relevant to the circumstances of
the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18;
11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The goods, found to be identical or similar to a high degree, target the public at large
or business customers whose degree of attention is considered average. The signs
are visually, aurally and conceptually similar to an average degree. The
distinctiveness of the earlier mark is normal. The differences between the signs are
confined to non-distinctive or secondary elements and aspects.
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).
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
identity or high degree of similarity between the goods offsets the lower degree of
similarity between the signs.
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 covered are from the
same or economically linked undertakings. 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 that it
designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Decision on Opposition No B 2 787 318 page: 6 of 7
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. Therefore, the opposition is well founded
on the basis of the opponent’s European Union trade mark registration No 2 410 504.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use and reputation as claimed by the
opponent. The result would be the same even if the earlier mark enjoyed an
enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)
(b) EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(5) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. Since the applicants are the
losing party, they must bear the opposition fee as well as the costs incurred by the
opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Frédérique SULPICE Benoit VLEMINCQ Begoña URIARTE
VALIENTE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
Decision on Opposition No B 2 787 318 page: 7 of 7
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.