OPPOSITION No B 2 566 258

Clarins Fragrance Group, 9, rue du Commandant Pilot, 92200 Neuilly-sur-Seine, France (opponent), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative)

a g a i n s t

Ricarda M. Hofmann, Zuccalistrasse 16, 80639 München, Germany (applicant), represented by Greffenius Zehle Beulke Barber, Ferdinand-Maria-Str. 31, 80639 München, Germany (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 566 258 is upheld for all the contested goods.

2.        European Union trade mark application No 14 095 293 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 095 293. The opposition is based on European Union registration No 5 385 158. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 applicant requested that the opponent submit proof of use of the European Union trade mark No 5 385 158.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 29/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/05/2010 to 28/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; beauty products.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 24/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/10/2016 to submit evidence of use of the earlier trade mark. On 03/08/2016, within the time limit and even before the express invitation by the Office to file proof of use, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Invoices: 19 invoices sent to clients in France between 2011 and 2014 related to different products bearing the trade mark ‘ANGEL’, namely, perfume, deodorant, body milk and hair mist. 19 invoices sent to clients in Germany between 2010 and 2014 for sales of perfume, body lotion, body cream, shower gel and deodorant bearing the mark ‘ANGEL’. 26 invoices sent to clients in Italy between 2010 and 2014 and referring essentially to the same goods.

• Affidavit dated 09/07/2015 from the Chief Financial Officer of Clarins Group stating the average yearly turnover achieved by the company under the mark ‘ANGEL’ from 2009 to 2014 (between EUR 41,900,000 and 48,800,000) in France, United Kingdom, Germany and Italy. It also states the marketing expenses for this mark during the same years, going from EUR 5,266,000 to 8,920,000.

• Press clips showing advertisements and articles and corresponding to 2011, 2012, 2014 and 2015.

• Extract of the opponent’s website dated 03/12/2015 showing the products sold under the earlier mark ‘ANGEL’, namely shower gel, body lotion, body cream, hair mist, deodorant, perfume, eau de cologne and hand cream.

The evidence submitted shows that the mark has been used in several countries of the European Union. The invoices are addressed to clients in France, Italy and Germany. Moreover, the information on the opponent’s website is related to its activity in United Kingdom. This can be inferred from the website www.mugler.co.uk and the prices in pound sterling (GBP) of the products offered on sale under the mark ‘ANGEL’. Therefore, the evidence relates to the relevant territory.

Most of the evidence, in particular the invoices, the press clips and the information contained in the affidavit, is dated within the relevant period, from 29/05/2010 to 28/05/2015.

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The documents filed also provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. This conclusion results in particular from the affidavit issued by the Chief Financial Officer of Clarins Group. Although the probative value of this kind of evidence is generally given less weight than independent evidence, in this case it is supported by other pieces of evidence, such as the different invoices submitted by the opponent, which corroborate the frequency, scope and volume of use of the mark. Also the press clips referring to different years within the relevant period are sufficient to corroborate the information contained in the affidavit about the marketing expenses to promote the earlier mark.

Furthermore, the evidence shows that the mark has been used for a number of products, namely shower gel, body lotion, body cream, hair mist, deodorant, perfume, eau de cologne and hand cream. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The mark is registered for soaps; perfumery, essential oils, cosmetics, hair lotions; beauty products. The goods for which use have been proved belong to some of these categories, namely perfumery (perfume, eau de cologne), cosmetics (body lotion, body cream, hand cream) and hair lotions (hair mist). As the opponent is not required to prove all the conceivable variations of the categories of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a clear and coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for perfumery, cosmetics and hair lotions.

It is important to note that the applicant has not contested any of the aspects explained above, namely place, time and scope of use of the earlier mark. The only argument put forward by the applicant is related to the lack use of the mark as registered. In its opinion, the earlier mark always appears in combination with the words ‘Thierry Mugler’ or ‘Mugler’ and this alters the distinctive character of the earlier mark.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

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In the present case, some pieces of evidence clearly show the mark as registered, the word ‘ANGEL’ alone. This is the case of the invoices, where this word is only accompanied by the description of the product, which clearly does not alter the distinctive character of the mark. In other pieces of evidence showing pictures of the products sold under the mark, it is true that the word ‘ANGEL’ appears in combination with the elements ‘Thierry Mugler’ in a fanciful typeface  .

However, this does not mean that the distinctive character of the earlier mark is altered. It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

In the present case, it is clear that ‘Thierry Mugler’ clearly plays the role of ‘house mark’ and will be perceived as such by consumers. The fact that it appears in a different typeface and normally in a different position than the element ‘ANGEL’ contributes to this conclusion. The Court has confirmed that several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34). Therefore, the applicant’s argument must be set aside.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for the above mentioned goods.

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 3: Perfumery, cosmetics, hair lotions.

The contested goods are the following:

Class 3: Soap; perfumery; essential oils; cosmetics; hair tonic; toiletries; cleaning and fragrancing preparations; essential oils and aromatic extracts.

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.

The contested perfumery; cosmetics are identically protected by both marks.

Hair tonic is included in the opponent’s hair lotions and is therefore identical.

Toiletries are identical to the cosmetics covered by the earlier mark because they overlap with the latter or are included in these.

The contested fragrancing preparations are identical to the opponent’s perfumery, either because they are identically contained in both lists (including synonyms) or because the opponent’s include, are included in, or overlap with the contested goods.

Essential oils; essential oils and aromatic extracts are similar to high degree to the opponent’s perfumery. They coincide in nature and purpose, are manufactured by the same producers and share the distribution channels.

The remaining contested goods soap; cleaning preparations share the purpose (provide a pleasant smell) and distribution channels with the opponent’s perfumery and target the same end users. These goods are similar.

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 and similar to different degrees are directed at the public at large. The degree of attention is average.

3. The signs

ANGEL	Touch of Angels
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 common element ‘ANGEL’ is meaningful in certain parts of the relevant territory, for example, in member states where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. This word will be associated with ‘a spiritual being in some religions who is believed to be a messenger of God, usually represented as having a human form with wings’ and is distinctive for the relevant goods. The word ‘Touch’ of the contested sign means, among other, ‘a very small amount of something’ in English and is also distinctive. Therefore, the contested sign as a whole will be perceived as ‘a very small amount of angels’.

Visually, the signs coincide in the verbal element ‘ANGEL’ present in both marks. They differ in the additional letter ‘S’ at the end of this word and the additional elements ‘TOUCH OF’ of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ANGEL’ which are present identically in both signs. They differ in the sound of the additional letter ‘S’ at the end of this word and the additional elements ‘TOUCH OF’ of the contested sign, which have no counterparts in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning to the extent that they both include the word ‘ANGEL’ (in singular and plural form), the signs are 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.

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.

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.

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).

The goods are identical and similar to different degrees. The marks are similar to the extent they both contain the word ‘ANGEL’ which is the only element of the earlier sign and plays an independent and distinctive role in the contested mark, with the only difference of the plural form. The addition of the letter ‘s’ in this word in the contested mark and the words ‘Touch of’ are not sufficient to outweigh the visual, aural and conceptual similarities arising from the coinciding element ‘ANGEL’.

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).

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, 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.

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.

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In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘ANGEL’ registered at European Union level. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘ANGEL’. Under these circumstances, the applicant’s claims must be set aside.

In its observations, the applicant argues that it owns a previous European Union trade mark registration ‘Touch of angel’, which has been coexisting with the opponent’s mark since 2005.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Finally, the applicant argues that the opponent has acquiesced in the use of its trade marks for several years and is not entitled to file an opposition against this application pursuant to Article 54 EUTMR. However, this provision only applies to invalidity proceedings and, therefore, not to opposition proceedings. Moreover, it refers exclusively to registered trade marks and not to applications for the registration of a trade mark as in the present case.

Therefore, the opposition is well founded on the basis of the opponent’s European Union registration No 5 385 158. It follows that the contested trade mark must be rejected for all the contested goods.

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 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Pedro JURADO MONTEJANO

Begoña URIARTE VALIENTE

Martina GALLE

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.

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The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.