OPPOSITION DIVISION
OPPOSITION No B 2 821 836
Eau Zone Huiles & Fragrances Ltée, 1625 Chabanel Ouest – Suite # 825, Montréal,
Québec H4N2S7, Canada (opponent), represented by Novagraaf France, Bâtiment
O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France
(professional representative)
a g a i n s t
Shenzhen Xisheng Technology Co. Ltd, 4/F Minle Industrial Zone, Meiban Avenue,
Minzhi Street, Longhua New District, Shenzhen, People’s Republic of China
(applicant), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street,
Hanover Square, London W1S 1YH, United Kingdom (professional representative).
On 10/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 821 836 is partially upheld for the following contested goods:
Class 10: Adult sexual stimulation aids, namely, devices for massaging or
vibrating external and internal portions of the body; vibrating and non-vibrating
reproductions of parts of the male and female anatomies; male sex toys;
masturbators; penis pumps; electrical penis cyclone pumps, rings, clamps,
stimulators, vibrators, dildos, dongs, butt plugs, anal beads, rings to be worn
about the penis; Adult sexual stimulation kit comprised primarily of adult sexual
stimulation aids and a workbook; condoms; love dolls; massage apparatus;
vibromassage apparatus.
2. European Union trade mark application No 15 821 648 is rejected for the above
goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 821 648 ‘SECRET GARDEN’. The opposition is based on
Decision on Opposition No B 2 821 836 page: 2 of 6
European Union trade mark registration No 15 287 667 ‘SHUNGA SECRET
GARDEN’. 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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Massage gels, waxes, oils, lotions and creams for intimate use.
Class 5: Lubricating gels for intimate use, desensitising balms, vaginal moisturisers,
preparations for enhancing sexual desire and sexual sensations, personal sexual
lubricants, preparations for facilitating sexual intercourse, preparations for inhibiting
sexual intercourse, gels for sexual stimulation.
The contested goods are the following:
Class 10: Adult sexual stimulation aids, namely, devices for massaging or vibrating
external and internal portions of the body; vibrating and non-vibrating reproductions
of parts of the male and female anatomies; male sex toys; masturbators; penis
pumps; electrical penis cyclone pumps, rings, clamps, stimulators, vibrators, dildos,
dongs, butt plugs, anal beads, rings to be worn about the penis; Adult sexual
stimulation kit comprised primarily of adult sexual stimulation aids and a workbook;
condoms; love dolls; massage apparatus; suspensory bandages; vibromassage
apparatus.
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.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
The contested adult sexual stimulation aids, namely, devices for massaging or
vibrating external and internal portions of the body; vibrating and non-vibrating
reproductions of parts of the male and female anatomies; male sex toys;
masturbators; penis pumps; electrical penis cyclone pumps, rings, clamps,
Decision on Opposition No B 2 821 836 page: 3 of 6
stimulators, vibrators, dildos, dongs, butt plugs, anal beads, rings to be worn about
the penis; Adult sexual stimulation kit comprised primarily of adult sexual stimulation
aids and a workbook; love dolls have the purpose of sexual stimulation in a similar
way as the opponent’s goods, in particular, preparations for enhancing sexual desire
and sexual sensations, personal sexual lubricants, preparations for facilitating sexual
intercourse, gels for sexual stimulation. Furthermore, these goods are available in
special adult shops, can be produced by the same undertakings and target the same
customers. There can also be complementarity between these goods. In summary,
these contested goods are similar to the opponent’s goods specified above. In its
observations, the applicant essentially endorses complementarity between these
goods in comparison but it claims that “a workbook containing information about
sexual stimulation” is dissimilar to the opponent’s goods. However, in its specification,
workbook is indicated as part of an adult sexual stimulation kit (comprised primarily
of adult sexual stimulation aids and a workbook). Therefore, it is reasonable to
assume that the above findings on similarity based on the Canon criteria, in particular
those concerning common distribution channels and target customers, must apply to
this contested product, too.
The contested condoms are barrier devices commonly used during human sexual
activity to reduce the probability of pregnancy and spreading sexually transmitted
diseases such as HIV. As such, these goods can be used in complementarity with the
opponent’s lubricating gels for intimate use; personal sexual lubricants. Furthermore,
these goods in comparison can be distributed via the same channels, namely via
specific sections of supermarkets, pharmacies or adult shops, they target the same
consumers and are often produced by the same undertakings. Based on this, these
goods must be considered similar.
The contested massage apparatus; vibromassage apparatus make a rather broad
category without any specification as to the actual purpose of these pieces of
apparatus. Accordingly, such a general wording must be interpreted as applying to
apparatus intended for all forms of massage, including sexual or erotic massage. As
such, the potential purpose of these contested goods may include achieving and
enhancing sexual arousal which coincides with the purpose of some of the
opponent’s goods, namely preparations for enhancing sexual desire and sexual
sensations, gels for sexual stimulation. Given this potentially overlapping purpose, it
cannot be excluded that these goods in comparison are available at the same shops,
produced by the same undertakings and target the same consumers. They are,
therefore, similar.
The remaining contested goods, namely suspensory bandages are bandages of
elastic fabric applied to uplift a dependant part. They can have a wide range of
purposes but they are essentially medical goods and are typically used in a post-
surgery or post-injury situation where a certain part of the patient’s body needs
support and uplifting. Consequently, the purpose of these goods is, in principle, not to
achieve and enhance sexual arousal. It is also noted that a variety of goods may be
used in a sexual context without necessarily being considered complementary.
Therefore, these contested goods and the opponent’s goods in Class 5 are
dissimilar, and the same conclusions must be drawn in relation to the opponent’s
remaining goods in Class 3, namely massage gels, waxes, oils, lotions and creams
for intimate use which are not medical goods and they are essentially used for
intimate purpose. Also, these goods of the opponent have different distribution
channels and manufacturers than the contested suspensory bandages. In summary,
there is no similarity between these goods.
Decision on Opposition No B 2 821 836 page: 4 of 6
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 similar are directed at the public at large.
The degree of attention is considered to be average.
c) The signs
SHUNGA SECRET GARDEN SECRET GARDEN
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.
Since in the present case the signs contain, identical and distinctive, word elements
‘SECRET GARDEN’ which are meaningful in English, the Opposition Division finds it
appropriate to focus the comparison of the signs on the English-speaking part of the
public.
The earlier mark consists of the expression ‘SECRET GARDEN’ which has normal
distinctiveness in relation to the goods in question as it does not directly relate to
them. These words form an expression referring to a hidden place but this is too
abstract or general for it to be considered even allusive. The contested sign also
contains these two words preceded by an additional Japanese word ‘SHUNGA’ which
will not be understood by the relevant public and, therefore, has normal
distinctiveness. Furthermore, and contrary to the applicant’s assertion, the earlier
mark’s initial word ‘SHUNGA’ cannot be considered to have a dominant role as this
aspect is not relevant in the context of word marks.
Visually, the signs coincide in the words ‘SECRET GARDEN’ and they differ in the
contested sign’s additional word ‘SHUNGA’. In its observations, the applicant rightly
claims that, in principle, consumers tend to focus on the first word element of a sign.
However, this does not necessarily apply in every case (16/05/2007, T-158/05,
Alltrek, EU:T:2007:143, § 70). In the case at hand, the signs consist of additional,
distinctive words forming an expression which is identically present in both.
Furthermore, neither sign contains any other visual element or feature that could
Decision on Opposition No B 2 821 836 page: 5 of 6
detract consumer’s attention from the common words which, in addition, will be
recognized and understood by them. Overall, the signs are visually similar to an
average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SECRET
GARDEN’, present identically as distinctive elements in both signs. The
pronunciation differs in the contested sign’s additional word ‘SHUNGA’. Although this
differing word makes the contested sign somewhat longer and it, thus, changes its
rhythm to that extent, the fact remains that the earlier mark is identically reproduced
in the contested sign. As a consequence, the signs must be considered aurally
similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Both signs will evoke the same meaning ‘SECRET
GARDEN’, while the contested sign’s additional word is meaningless and, therefore,
it conveys no concept. Since consumers will clearly identify the identical, distinctive
concept, the signs must be considered highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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.
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.
e) Global assessment, other arguments and conclusion
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).
The goods are partly similar and partly dissimilar, and the signs are highly similar
conceptually and similar to an average degree visually and aurally. The difference
between them, namely the additional word in the earlier mark, is not sufficient to
outweigh the impact of the similarities, in particular since the whole of the contested
sign is included in the earlier mark in an identical way and this common element
evokes the same concept. Account is also taken of an average degree of attention of
the relevant public and normal degree of distinctiveness of the earlier mark.
In its observations, the applicant refers to the Board’s of Appeal decision 28/03/2011,
R 1669/2010-2 – ALEOSAN / CLENOSAN. However, the Opposition Division sees
very little analogy with the present case as the signs in that case were two single-
Decision on Opposition No B 2 821 836 page: 6 of 6
word marks and the relevant territory was Spain. In addition, the conclusion in that
case, if anything, works in favour of the Opposition Division’s findings in the present
one since the Board “concludes that the visual and aural dissimilarities between the
signs are not enough to counteract the visual and aural similarities between them
and, therefore, there is a likelihood of confusion on the part of the public.” The
applicant’s claim must, thus, be set aside.
Considering all the above, there is a likelihood of confusion on 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 partially well founded on the basis of the opponent’s
European Union trade mark registration No 15 287 667. It follows that the contested
trade mark must be rejected for the contested goods found to be similar to the
opponent’s goods.
The rest of the contested goods are dissimilar. As similarity of goods and 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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Zuzanna STOJKOWICZ Ferenc GAZDA Erkki MÜNTER
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.