Decision on Opposition No B 2 808 874 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Cosmetics, namely, nail care preparations; artificial nails, nail extensions,
nail forms, nail tips; liquid and powder artificial nail preparations and associated
bonding agents and removers.
The contested goods are the following:
Class 3: Toiletries; cleaning and fragrancing preparations; essential oils and aromatic
extracts; body cleaning and beauty care preparations; perfumery and fragrances;
cosmetics; cosmetics preparations; bath preparations; soaps and gels; skin care
preparations; hair preparations and treatments; hair removal and shaving
preparations; bath foams; shower foams; shaving foams; hair styling foams; skin
cleansing foams; body cleansing foams; foam cleaning preparations; foam
detergents; cosmetic foams containing sunscreens.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods to a broader category, is exclusive and restricts the scope of
protection only to the goods specifically listed.
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 toiletries; cosmetics; cosmetics preparations; body cleaning and
beauty care preparations include, as broader categories, the opponent’s nail care
preparations. Since the Opposition Division cannot dissect ex officio the broad
categories of the contested goods, they are considered identical to the opponent’s
The contested essential oils and aromatic extracts; perfumery and fragrances; bath
preparations; soaps and gels; skin care preparations; hair preparations and
treatments; hair removal and shaving preparations; bath foams; shower foams;
shaving foams; hair styling foams; skin cleansing foams; body cleansing foams;
cosmetic foams containing sunscreens are similar to the opponent’s nail care
preparations. These goods have the same distribution channels, target the same