OPPOSITION DIVISION
OPPOSITION No B 2 833 070
Camco Ltd, Gen. Radko Dimitriev Str. 1, 4000 Plovdiv, Bulgaria (opponent),
represented by Nelly Pencheva & Partners, Ibar str. 21, 1st floor, 4003 Plovdiv
Bulgaria (professional representative)
a g a i n s t
Top Beauty Cosmetics L.L.C., Office No. 1602, 16th Floor, Sultan Bin Ali Al Owais
Building, Bani Yas Road, Diera, Dubai, United Arab Emirates (applicant), represented
by Fiammenghi – Fiammenghi, Via delle Quattro Fontane, 31, 00184 Roma, Italy
(professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 833 070 is upheld for all the contested goods.
2. European Union trade mark application No 15 919 343 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods in Class 3 of European Union
trade mark application No 15 919 343, . The opposition is based on
Bulgarian trade mark registration No 73 113, . 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
Decision on Opposition No B 2 833 070 page: 2 of 6
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 and services
The goods and services on which the opposition is based are the following:
Class 3: Bleaching agents and washing detergents; cleaning, polishing, degreasing
and grinding agents; soaps; perfumery; essential oils; cosmetics; hair lotions; dental
cleaning agents.
Class 5: Pharmaceutical, veterinary and hygienic preparations; dietetic substances
adapted for medical use; baby food; adhesive bandages, medical dressing materials;
disinfectants; animal pest control agents; herbicides.
Class 25: Clothing, shoes, hats and other headwear.
Class 28: Games and playthings; gymnastic and sports articles not included in other
classes; Christmas tree decorations.
Class 35: Advertising; business transaction management; business administration;
administrative activities.
The contested goods are the following:
Class 3: Antiperspirant soap; beauty masks; depilatory preparations; essential oils;
cologne; eyebrow pencils; joss sticks; lipsticks; make-up; rose oil; paint removers;
cosmetic creams; cosmetic dyes; false eyelashes; nail polish.
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 antiperspirant soap is included in the broad category of the opponent’s
soaps. Therefore, they are identical.
The contested beauty masks overlap with the opponent’s hair lotions, as beauty
masks, in addition to being for use on the face, can also be used on hair. Therefore,
they are identical.
The contested depilatory preparations; eyebrow pencils; lipsticks; make-up; cosmetic
creams; cosmetic dyes; nail polish are included in the broad category of the
opponent’s cosmetics. Therefore, they are identical.
Essential oils are identically contained in both lists of goods.
The contested cologne is included in the broad category of the opponent’s
perfumery. Therefore, they are identical.
Decision on Opposition No B 2 833 070 page: 3 of 6
The contested rose oil is included in the broad category of the opponent’s essential
oils. Therefore, they are identical.
The contested paint removers are included in the broad category of, or overlap with,
the opponent’s bleaching agents. Therefore, they are identical.
The contested joss sticks are similar to a high degree to the opponent’s essential oils,
as they have the same distribution channels and purpose; their consumers are the
same and they may be in competition.
The contested false eyelashes are similar to a high degree to the opponent’s
cosmetics. These goods have the same purpose and are complementary.
Furthermore, they have the same producers and are sold in the same outlets. In
addition, they have the same relevant public.
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.
The degree of attention is average and slightly higher in relation to paint removers
and bleaching agents, which may have hazardous properties.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Bulgaria.
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).
Decision on Opposition No B 2 833 070 page: 4 of 6
The earlier trade mark is a figurative mark consisting of the words ‘VICTORIA
BEAUTY’, written one above the other, in a blue upper case typeface on a black and
purple background.
The contested sign is also a figurative mark. At the top, there is a circle that can be
perceived as the stylised profile of a woman; the element also contains some curved
lines, which some consumers may perceive as a stylised white letter ‘V’. Below the
circle, the words ‘VICTORIA BEAUTY’ are written one above the other in a black
upper case typeface. ‘BEAUTY’ is slightly stylised.
The signs contain no elements that could be considered more dominant than others.
‘VICTORIA’, identically contained in both marks, will be perceived as a female given
name. In relation to the goods at issue, this element has no meaning and has a
normal level of distinctiveness. The word ‘BEAUTY’ has no meaning in Bulgarian and
also has a normal level of distinctiveness.
When a mark is composed of both figurative and verbal elements, 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; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) /
BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN
ELEPHANT (fig.), § 59).
Visually, the signs coincide in the words ‘VICTORIA BEAUTY’ and in the fact that
these words are written one above the other, being the only verbal elements in the
marks. They differ in their typefaces and in the additional figurative elements of the
signs.
Given the weight conveyed by the different elements of the signs (the word elements
having more impact than the figurative elements), they are considered visually similar
to a high degree.
Aurally, the signs are identical, as they coincide in the words ‘VICTORIA BEAUTY’.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Given the identical presence of ‘VICTORIA’ and, for
part of the public, of the extra concept conveyed by the additional element in the
contested sign (a stylised profile of a woman), the signs are conceptually similar to at
least 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.
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.
Decision on Opposition No B 2 833 070 page: 5 of 6
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
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 conflicting signs are visually similar to a high degree, aurally
identical and conceptually similar to, at least, an average degree. The goods are
partly identical and partly similar to a high degree.
Moreover, 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).
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered
if because of its identity with or similarity to the earlier trade mark and the identity or
similarity of the goods or services covered by the trade marks there exists a
likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark. In the present case, consumers may
legitimately believe that the contested sign denotes a new brand line of goods
provided under the opponent’s mark or a new stylised version of the earlier
‘VICTORIA BEAUTY’ brand.
Therefore, the opposition is well founded on the basis of the opponent’s Bulgarian
trade mark registration No 73 113. It follows that the contested trade mark must be
rejected for all the contested goods.
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 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 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.
Decision on Opposition No B 2 833 070 page: 6 of 6
The Opposition Division
Gueorgui IVANOV Patricia LOPEZ
FERNANDES DE
CORRES
Sandra KASPERIŪNAITĖ
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
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.