OPPOSITION No B 2 545 666
Yfeng Group Limited, Flat/RM B, 8/F Chong Ming Bldg, 72 Cheung Sha Wan RD KL, Special Administrative Region of Hong Kong of the People’s Republic of China (opponent), represented by Wolfgang Hellmich, Lortzingstr. 9/2. Stock, 81241 Munich, Germany (professional representative)
a g a i n s t
Caprice Anonymi Xenodocheiaki Kataskevastiki Kai Emporiki Etaireia kai to diakritiko titlo Caprice A.E., 3 Chlm L. Varis Koropiou, 19400 Koropi, Greece (applicant), represented by Nikos Linaras, Pandrosou st. 4, 15126 Amarousion, Greece (professional representative).
On 02/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 545 666 is upheld for all the contested goods, namely
Class 3: Cosmetics; perfumes; essential oils.
2. European Union trade mark application No 13 873 179 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 873 179, namely against some of the goods in Class 3. The opposition is based on European Union trade mark registration No 13 555 701. 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 and services
The goods and services on which the opposition is based are the following:
Class 9: Eyeglasses; contact lenses; sunglasses; eyeglass chains; eye glass cords; spectacle glasses; spectacle frames; eyeglass frames; spectacle cases; containers for contact lenses.
Class 25: Clothing; smocks; shoes; boots; hats; hosiery; gloves [clothing]; neckties; leather belts [clothing]; overcoats.
Class 44: Opticians' services; physical therapy; nursing, medical; rest homes; beauty salons; sauna services; animal grooming; landscape gardening; food nutrition consultation; rental of sanitation facilities.
The contested goods after the applicant’s limitations of 14/09/2015 and 15/02/2016 are the following:
Class 3: Cosmetics; perfumes; essential oils.
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
The contested cosmetics are a beauty preparations intended to improve the appearance of the face and body, especially applied to the face as make-up.
The contested perfumes are a fragrant liquids typically made with an alcohol from essential oils extracted from flowers and spices etc., or made synthetically, used to give a pleasant long-lasting smell to the body, or are added to some products to make them smell nice, or are used to fragrance the air.
The contested essential oils are used as an intermediate product by e.g. the cosmetic industry to produce all kinds of fragrances, but it can be also sold as a ready-to-use product for home use.
The opponent’s services beauty salons in Class 44 are the establishments serving professional beauty services such as facial treatment, make-up, hairdressing, manicuring, and massage to enhance one’s appearance. Although the applicant’s goods are tangible and the opponent’s services are intangible, and therefore are of different natures, these goods (cosmetics; perfumes; essential oils) and services (beauty salons) are closely related. They share the same purpose which is making the one’s face and/or body look and smell nice and to enhance its appearance. Therefore they target the same public, and may be offered by the same distribution channels; moreover the goods and services in question are complementary to each other. It is quite common that the beauty salons apart from rendering the beauty services sell under their own brand or partner brands different types of beauty products and/or cosmetics that are used for the services and recommended to the clients. The same applies to scent products such as perfumes and essential oils. Therefore, the goods and services under comparison are considered similar.
- 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 similar are directed at the public at large. The level of attention is expected to be average.
- The signs
|
|
|
|
Earlier trade mark |
Contested sign |
The relevant territory is the European Union.
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.
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 earlier sign encompasses the expression ‘wake-up’ in a standard bold font in lower case with stylisation of the letters ‘u’ and ’p’ that are linked in such a way that the right arm of the letter ‘u’ is incorporated in the letter ‘p’ on the right side.
The contested sign is composed of the stylized word ‘Wakeup’ in the typeface resembling handwritting in lower case letters except the first letter. Beneath is the word ‘COSMETIC’ smaller in size, and even much smaller word ‘MILANO’ that is placed below the word COSMETIC’, both in upper case letters.
The expression ‘wakeup’, present in both signs, will be understood as ‘an instance of a person waking up or being woken up’ (See the Oxford English Dictionary, Online Edition).
The earlier mark is normally distinctive, since the expression ‘Wakeup’ is not descriptive, allusive or otherwise weak for the relevant services (beauty salons).
As regards the contested sign, the stylized word ‘Wakeup’ due to its predominant position and size is the most dominant element in the contested trade mark, and at the same time, the only distinctive element of the contested sign. In fact, the other elements ‘COSMETIC’ and ‘MILANO’ in perception of the relevant English-speaking public are meaningful words in relation to the goods in Class 3 and are deemed to be non-distinctive, as they indicate the goods themselves (COSMETIC for cosmetics), their commercial origin (COSMETIC for perfumes and essential oils, in the sense that the undertaking offering them also normally deals with cosmetics) and their geographical origin (MILANO, which will be understood as the Italian name of the city of Milan, which is well known as a global capital of fashion that encompasses clothing, hairdressing and makeup).
Visually, the signs coincide in the word elements that form the distinctive expression ‘Wakeup‘. However, they differ in the additional words ‘COSMETIC’ and ‘MILANO’ contained in the contested trade mark, which are not only non-distinctive but do also play a secondary role since the dominant element of the contested sign is the element ‘Wakeup’.
Furthermore, account must be taken on the fact that 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.
Therefore, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters of the distinctive word ‘Wake/up’ composing the earlier trade mark and the most dominant verbal element of the contested sign. The pronunciation differs in the sound of the letters creating the non-distinctive words ‛COS/MET/IC’ and ‘MI/LA/NO’ of the contested sign, which have no counterparts in the earlier trade mark.
Consequently, the signs are aurally similar to a high degree.
Conceptually, as both signs will be perceived as referring to the same English expression ‘Wakeup’, the signs are conceptually identical also in view of the fact that the additional elements ‛COSMETIC’ and ‘MILANO’ of the contested sign are non-distinctive.
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 services (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
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 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 claim that its earlier mark had acquired an enhanced degree of distinctiveness for the goods and services at issue. Therefore, the earlier mark possesses a normal degree of distinctiveness.
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 word ’Wakeup’. In support of its argument the applicant refers to several European Union trade mark registrations:
- CTM No 3 248 333 WAKE UP TO A WHITER SMILE (that has expired),
- CTM No 7 191 513 WAKE UP GORGEOUS (that has been cancelled),
- EUTM No 12 036 562 WAKE ME UP (registered),
- CTM No 2 457 760 WAKE-UP MISSION (that has expired),
- EUTM No 12 484 201 WAKE UP CALL (registered),
- EUTM No 7 540 552 WAKE UP WONDER (registered),
- EUTM No 10 402 386 WAKE UP TO SLEEP (registered),
- EUTM No 3 752 871 WAKE UP (registered),
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 word ‘Wakeup’. Under these circumstances, the applicant’s claims must be set aside.
As seen above, all of the contested goods in Class 3 (cosmetics; perfumes; essential oils) are similar to the opponent’s beauty salon services in Class 44. The relevant goods target the public at large, whose degree of attention is average.
Since consumers tend to pay much more attention to the verbal content of trade marks than to their figurative elements, which in both signs have a merely decorative function, and a secondary role as both consists of the lettering of the verbal compounds of the signs, the main similarities of the signs under comparison will be grasped immediately due to such coinciding verbal element ‘Wakeup’.
The earlier trade mark is fully included in the contested sign.
It is significant fact that the coinciding word ‘Wakeup’ is distinctive in relation the goods and the services covered by the conflicting marks. The other verbal elements of the contested sign, namely ‘COSMETIC’ and ‘MILANO’, are negligible from a visual point of view, because of the size and dominant position of the word ‘Wakeup’ in the contested sign. Furthermore, these elements are non-distinctive.
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 spite of the differences in the additional, nevertheless non-distinctive word elements ‘COSMETIC’ and ‘MILANO’ of the contested mark, there is a likelihood of confusion because the visual, aural, and conceptual coincidences are overwhelming.
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 13 555 701. It follows that the contested trade mark must be rejected for all the contested goods.
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
|
Andrea VALISA |
José Antonio GARRIDO OTAOLA |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.