OPPOSITION No B 2 762 360

N.V. Parfumerie Ici Paris XL, Schaarbeeklei 499, 1800 Vilvoorde, Belgium (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative)

a g a i n s t

Zhejiang Rifeshow Cosmetics Co. Ltd., No. 67 Dashi Road, Fotang Town, Yiwu City, Zhejiang 322000, People’s Republic of China (applicant), represented by Inmaculada Moreno Delgado, Nubla 31, 1, Jaen, Spain (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 360 is upheld for all the contested goods.

2.        European Union trade mark application No 15 352 594 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 352 594. The opposition is based on, inter alia, European Union trade mark registration No 2 635 001. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 635 001.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3:        Soaps, perfumery, essential oils, cosmetic preparations, hair lotions, deodorants for personal use, toiletries.

The contested goods are the following:

Class 3:        Perfumes; cosmetics; facial cleanser; cakes of toilet soap; nail polish; dentifrices; essential oils; cleaning preparations; polishing preparations.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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

Perfumes (or the synonym perfumery), cosmetics (or the synonym cosmetic preparations) and essential oils are identically contained in both lists of goods.

The contested cakes of toilet soap are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested facial cleanser; nail polish; dentifrices are included in the broad category of the opponent’s toiletries. Therefore, they are identical.

The contested cleaning preparations are identical to the opponent’s soaps. Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since the opponent’s soaps are used for cleaning purposes, they are identical to the contested cleaning preparations.

The contested polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. These products are agents used for cleaning. To that extent, their nature and purpose are similar to those of the opponent’s soaps. Furthermore, they target the same consumers and are sold in the same retail outlets and the same sections in supermarkets. Therefore, these goods are considered 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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

ONLY YOU
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 verbal element that the signs have in common, namely ‘ONLY(Y)OU’, is meaningful in certain territories, for example in those countries where English is spoken or commonly understood. Nevertheless, this expression is not descriptive, allusive or otherwise weak (and neither are its elements ‘ONLY’ and ‘YOU’ per se) for the relevant goods; therefore, it has a normal degree of distinctiveness. For reasons of procedural economy, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland and the United Kingdom.

The earlier mark is a word mark, ‘ONLY YOU’, which – as seen above – has a normal degree of distinctiveness for the relevant goods.

The contested sign is a figurative mark consisting of the verbal element ‘ONLYOU’ above a figurative device composed of a slightly stylised curved black line, which could be perceived as part of a leaf. To the left of this verbal element, there is an oval figurative device, which could be perceived as two slightly stylised letters ‘U’, with one upside down above the other, and underneath, in a much smaller standard typeface, the verbal element ‘ONLYOU’.

Although the verbal element in the contested sign is composed of a single word (i.e. ‘ONLYOU’), the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Consequently, the relevant public will perceive the contested sign as the words ‘ONLY YOU’.

As mentioned above, the verbal element ‘ONLYOU’ has a normal degree of distinctiveness. As regards the figurative aspects of the contested sign, the figurative element composed of a curved line or leaf will be perceived as having a purely decorative nature. The letters of the element ‘ONLYOU’ under the oval figurative device are so small that this element is much less visually eye-catching than the oval figurative device and the verbal element ‘ONLYOU’ depicted in much larger letters above the curved line/leaf. Furthermore, the oval device has a normal degree of distinctiveness; nevertheless, 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). Consequently, the verbal element ‘ONLYOU’ to the right of the oval device, above the device of a curved line or leaf, is the element that will have the most impact on the relevant consumers.

Visually, the signs coincide in six letters, that is, ‘ONLY*OU’, out of the seven letters of the earlier word mark. They differ in the additional letter ‘Y’ of the earlier mark and in the figurative elements and the repetition of the verbal element ‘ONLYOU’, depicted in much smaller letters, in the contested sign.

In addition, the element that the signs have in common, namely ‘ONLYOU’, is the element of the contested sign that will have the most impact on consumers.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ONLYOU’, present identically in both signs. In addition, ‘ONLY YOU’ and ‘ONLYOU’ will be pronounced identically by the relevant English-speaking consumers, because they will recognise this expression in the single verbal element of the contested sign; therefore, these elements will convey the same meaning when perceived aurally.

The pronunciation will differ in only the repetition of the sound of the letters ‘ONLYOU’, if pronounced at all (because of their much smaller size, they might be overlooked by the public or, in any event, they might not be pronounced twice), and in the additional letters, ‘U’, of the contested sign (if pronounced).

Therefore, the signs are aurally similar to a high degree.

Conceptually, the semantic content of the conflicting signs and their elements is discussed above. As the element with the most impact on consumers in the contested sign will be associated with an identical meaning to the earlier mark, the signs are conceptually similar to a very high 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.

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).

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.

Considering that the signs are visually similar to an average degree, aurally similar to a high degree and conceptually similar to a very high degree, the differences between the signs are incapable of counteracting the similar overall impressions created by the signs sufficiently to enable the relevant public with an imperfect recollection to safely distinguish between them in relation to goods that are identical or similar. The element with the most impact in the contested sign is entirely included in (and differs in only one additional letter from) the earlier mark.

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).

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 2 635 001. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 2 635 001 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Gueorgui IVANOV

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.

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.