OPPOSITION No B 2 726 811
Victoria's Secret Stores Brand Management, Inc., 4 Limited Parkway, Reynoldsburg, Ohio 43068, United States of America (opponent), represented by Burges Salmon LLP, One Glass Wharf, Bristol BS2 0ZX United Kingdom (professional representative)
a g a i n s t
Chin-Hsiang Wu, No. 456-90 Linsen E. Road, East District, Chiayi City, Taiwan (applicant), represented by Langpatent Anwaltskanzlei, Rosenheimer Str. 139, 81671 München, Germany (professional representative).
On 19/06/2017, the Opposition Division takes the following
1. Opposition No B 2 726 811 is upheld for all the contested goods.
2. European Union trade mark application No 15 302 615 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 302 615. The opposition is based on European Union trade mark registration No 13 693 577. 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 goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; personal care products and perfumery products, namely, perfume, eau de parfum, eau de cologne, eau de toilette, body splash, body mist, body spray, body scrub, body wash, body soap, body butter, body cream, body lotion, body powder, bubble bath, shower gel, hand soap, hand cream, hand lotion, hair spray, hair shampoo, hair conditioner.
The contested goods are the following:
Class 3: Cosmetics; lotions for cosmetic purposes; skin moisturizers; skin whitening creams; cleansing milk for cosmetic purposes; anti-wrinkle creams; cosmetic preparations for baths; nutritional creams (non-medicated -); astringents for cosmetic purposes; beauty masks; exfoliating scrubs for cosmetic purposes; cosmetic preparations for skin care; cosmetic preparations for slimming purposes; hair conditioners; body milk; make-up removing preparations.
Cosmetics; hair conditioners are identically contained in both lists of goods.
The opponent’s cosmetics refer to a range of preparations intended to beautify the hair and the skin. Therefore, the contested lotions for cosmetic purposes; skin moisturizers; skin whitening creams; cleansing milk for cosmetic purposes; anti-wrinkle creams; cosmetic preparations for baths; nutritional creams (non-medicated -); astringents for cosmetic purposes; beauty masks; exfoliating scrubs for cosmetic purposes; cosmetic preparations for skin care; cosmetic preparations for slimming purposes; body milk; make-up removing preparations fall into the broader category of the opponent’s cosmetics. The goods are therefore identical.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is 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.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public as the structure of the earlier sign and of the first part of the contested sign will be perceived and understood easily by this part of the relevant public.
Indeed, the first part of the contested sign and the earlier mark are structured as followed: a female name: “VIVIENE” in the contested sign, “VICTORIA” in the earlier sign, the “ ‘S “ which indicates the possessive form of the third person singular in English and the word “SECRET”. The sequences will mean something kept from public knowledge, hidden or concealed by a woman either named Victoria or either named Viviene. Since these sequences are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
The Chinese characters in the contested sign may not be understood but will be perceived as such and will be associated with Chinese, or at least with an Asian language. Since the characters have no meaning for the relevant public they are, therefore, distinctive.
Visually, the signs coincide in their beginnings with the letters “VI” as well as in the elements “‘S SECRET” at the end of the earlier sign and at the end of the comprehensible part of the contested sign for the relevant public.
However, they differ in “-CTORIA” and “-VIENE” respectively in the first word of the earlier mark and the contested sign. They also differ in the Chinese characters which have no counterpart in the earlier mark. This difference has less impact because the characters stand in second position, below the verbal element and because, 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). It is even more applicable in the present case since the relevant public will not be able to read the Chinese characters and will therefore see them as a mere figurative element.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters “VI”, present identically at the beginning of both signs as well as in the sequence “‘S SECRET”. The pronunciation differs in the sound of the letters “C-T-O-R-I-A” and “V-I-E-N-E” respectively in the earlier mark and in the contested sign. The figurative elements of the contested sign which represent Chinese characters are not likely to be pronounced. These are, therefore, not subject to phonetic assessment.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The Opposition Division considers that, the signs are conceptually similar to an average degree to the extent that they both refer to “something belonging to a female which is concealed from public knowledge”. On the other hand, the two different female names and the Chinese characters in the contested sign create some conceptual differences between the marks.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The relevant public is the public at large and the level of attention is average.
It has to be borne in mind 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 signs are visually, aurally and conceptually similar to an average degree. Taking into account that the conflicting goods are identical, and the interdependence principle mentioned above, it is considered that there exists a likelihood of confusion.
Moreover, from the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant public will make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings.
Consequently, in relation to identical goods, consumers may legitimately believe that the contested trade mark, is a new version or a brand variation, incorporating a different female name, of the earlier mark, originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting goods.
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 13 693 577. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.