OPPOSITION No B 2 791 054

Ekaterina Kimlova, Zimmlerova 2938/50, 70030 Ostrava, Czech Republic (opponent), represented by Pavel Nádvorník, Sokola Tůmy 1, 709 00 Ostrava-Hulváky, Czech Republic (professional representative)

a g a i n s t

Kimt AG, c/o Eurotreuhand AG, Landstrasse 6, 9495 Triesen, Liechtenstein (applicant).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 791 054 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 604 002 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 and services of European Union trade mark application No 15 604 002 (figurative mark: ), namely against all the goods and services in Classes 3 and 44. The opposition is based on the Czech national trade mark registration No 342 034 (figurative mark: ). The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 3:         Perfumery, parfums, cologne and toilet water, cosmetics, cosmetic preparations included in the class 03, body cosmetics, natural cosmetics, shaving preparations, scented oils, essential oils, cosmetics for the use on the hair, shampoos, cosmetics for the use on eyes and on nails, false nails, cosmetic preparations for eyelashes, false eyelashes, adhesives for false eyelashes, eyelashes and eyebrows dyeing, polishing preparations for nails, soaps, disinfectant soaps, dentifrices and oral hygiene preparations, sun bronzers, preparations for cosmetic baths, personal deodorants, laundry blueing and others laundry preparations, cleaning preparations, polishing preparations, de-greasing preparations and abraders, depilatory preparations, make-up preparations, mascara. 

Class 41:        Training courses, seminars, courses and training in the field of cosmetics, courses specialized in eyelashes lengthening, eyelashes sticking and permanent wave on eyelashes, photography, entertainment information and education information, competitive and educational events, organization of educational or entertainment competitions, arranging of beauty contests.

Class 44:        Beauty salon services, particularly cosmetic skin treatment, hair treatment, nail treatment including cosmetic massages and aromatherapy services, massages, manicure and pedicure services, hair salon services, solarium services, sauna services, visagists' services, tattooing and body piercing, professional consultancy relating to cosmetics and beauty services, beauty treatment services included in class 44, eyelashes stylist services, eyelashes lengthening.

The contested goods and services are the following:

Class 3:        Cosmetic preparations for eyelashes; Eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Adhesives for false eyelashes, hair and nails; Eyelash dye.

Class 44:        Beauty treatment services especially for eyelashes; Eyelash curling services; Eyelash perming services; Eyelash extension services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘particularly’ and ‘including’, used in the opponent’s list of services, as well as the term ‘especially, used in the applicant’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods in Class 3

Adhesives for (affixing) false eyelashes; cosmetic preparations for eyelashes, false eyelashes are identically contained in both lists of goods (including synonyms).

The contested eyelashes include, as a broader category, the opponent’s false eyelashes. 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 eyelash dye is included in the opponent’s eyelashes and eyebrows dyeing. Therefore, they are identical.

The contested adhesives for hair and nails are highly similar to the opponent’s adhesives for false eyelashes. This is because they have the same nature and similar purpose, the same distribution channels and producers. Furthermore, they target the same consumers and their method of use is the same as well.

Contested services in Class 44

The contested beauty treatment services especially for eyelashes; eyelash curling services; eyelash perming services; eyelash extension services are included in the broad category of the opponent’s beauty treatment services included in class 44. Therefore, they are identical.

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 and services found to be identical or highly similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 elements consisting of the word ‘VIOLET’ with slightly different stylisation (namely that the tittle on letter i is different), will be both associated by the average consumer with the flower viola or the colour between purple and blue. Bearing in mind that the relevant goods are cosmetics-related and the relevant services relate to the beauty industry, this element is weak for the relevant goods and services, as it might allude to the colour, dyeing capability or smell of the relevant goods or of the products used for providing the relevant services.

The coinciding figurative element depicting a wave may be associated with an eyelash, at least by a part of the public. Bearing in mind that the relevant goods and services include preparations and beauty treatments for eyelashes, this element is non-distinctive for these goods and services. It cannot, however, be excluded that another part of the public will not associate this element with any meaning. As such a wave is a decorative element common in trade mark practice, it is non-distinctive for this part of the public as well.

The coinciding element ‘LASHES’ has no meaning for the relevant public and is, therefore, distinctive.

The element ‘By’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The elements ‘Ekaterina Kimlova’ of the earlier mark will be understood as a female name and surname by the relevant public and are normally distinctive.

The combination of the elements ‘VIOLET’ and ‘LASHES’ of the earlier mark occupies a position above the other elements ‘By Ekaterina Kimlova’. This taken together with the stylisation (including size and bold font) makes the abovementioned combination visually striking and more outstanding than the other elements ‘By Ekaterina Kimlova’. The contested sign has no element that can be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive element ‘LASHES’, the weak element ‘VIOLET’, and the non-distinctive figurative element. However, they differ in the additional distinctive elements ‘By Ekaterina Kimlova’ of the earlier mark. Furthermore, they also differ in the stylisation of the letter ‘I’ within the verbal element ‘VIOLET’, albeit this difference is not necessarily visible at first sight. Despite the fact that all the additional differing elements are distinctive, while the coinciding elements consist of a distinctive, a weak and a non-distinctive element, the visual similarities are substantial. This is because the coinciding elements’ position towards each other is identical, they are placed on the top of the signs and are visually more striking than the differing elements, due to their size and bold font.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘VI-O-LET’ and ‘LA-SHES’, present identically at the beginning of both signs. The pronunciation differs in the syllables ‘By-E-ka-te-ri-na-Kim-lo-va’ of the earlier sign, which have no counterparts in the contested mark. It is true, that the earlier mark is longer than the contested sign, as the earlier mark consists of 14 syllables and 30 letters, while the contested mark consists of 5 syllables and 12 letters. The Opposition Division notes however that all the syllables of the contested mark are identically contained at the beginning of the earlier mark. Furthermore, according to settled case-law, the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). It has also been established by the General Court that only the dominant part of the mark would normally be pronounced when enunciated by consumers. (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Therefore, the differing elements ‘By’ and ‘Ekaterina Kimlova’, as elements of secondary visual importance, will more likely be omitted than the coinciding elements when the consumers enunciate the signs.

Therefore, the signs are highly similar.

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, despite the presence of the differing meaningful element ‘Ekaterina Kimlova’ of the contested sign, the signs are similar at least to a low 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak and non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 contested goods and services are identical or highly similar, and the signs are visually and aurally highly similar, and conceptually similar to at least a low degree. The differences between the signs lay mainly in an element of a secondary visual importance within the earlier sign and the similarities are overwhealming.

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).

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.

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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Czech national trade mark registration No 342 034. It follows that the contested trade mark must be rejected for all the contested goods and services.

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(1)(a) EUTMR.

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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

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Claudia MARTINI

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.