MO XPLOSION | Decision 2165960 - LIFEstyle Group GmbH v. Modalfa - Comércio e Serviços, S.A.
Date Published: May 16, 2018
OPPOSITION No B 2 165 960
LIFEstyle Group GmbH, Erfurter Str. 3, 85386 Eching, Germany (opponent), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative)
a g a i n s t
Modalfa – Comércio e Serviços, S.A., Lugar do Espido, Via Norte, 4470 Maia, Portugal (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).
On 17/01/2017, the Opposition Division takes the following
1. Opposition No B 2 165 960 is upheld for all the contested goods, namely:
Class 3: Perfumery and cosmetics for the face and body, namely milks, creams, perfumery and cosmetics for the hands, feet and nails, sun creams; Sun screen preparations.
2. European Union trade mark application No 11 374 188 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 374 188, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 10 548 345. The opponent invoked Article 8(1)(b) EUTMR.
On 02/03/2015, the applicant requested a suspension of the proceedings while it challenged the earlier rights constituting the basis of the present opposition. On 10/03/2015, the Office granted the suspension, informing both parties accordingly about the circumstances. However, the contested EUTMA was partially rejected in parallel opposition decision No B 2 134 131, rendered on 11/12/2014. Since this decision has become final and the contested sign was rejected for goods against which the present opposition was directed, namely goods in Classes 14, 18 and 25, the Office requested that the opponent inform it in writing if it maintained its opposition after the relevant restriction. The opponent maintains its opposition only with respect to European Union trade mark No 10 548 345 and has withdrawn the other earlier right, namely European Union trade mark No 3 353 547, as a basis of the opposition. The Opposition Division notes that the sole earlier right on which the opposition is now based, initially recorded as an earlier European Union trade mark application, has been registered as a trade mark and, furthermore, is not the subject of any pending proceedings that might have an impact on the present proceedings. Therefore, the Opposition Division will take a decision on the substance of the case.
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: Perfumery, perfumes, after-shave lotion, cosmetics, deodorants for human beings, hair lotions.
Class 18: Goods made of leather and accessories made of leather included in class 18, especially purses, key cases, wallets, business card cases (not filled), bags, boxes.
The contested goods are the following:
Class 3: Perfumery and cosmetics for the face and body, namely milks, creams, perfumery and cosmetics for the hands, feet and nails, sun creams; Sun screen preparations.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
The contested perfumery and cosmetics for the face and body, namely milks, creams, perfumery and cosmetics for the hands, feet and nails, sun creams are included in, or overlap with, the opponent’s perfumery and cosmetics. Therefore, they are identical.
The contested sun screen preparations are included in the opponent’s cosmetics. Therefore, they are 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 average.
- The signs
Earlier trade mark
The relevant territory is the 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 earlier sign is a word mark written in upper case letters. However, in the case of word marks, the word as such is protected and not its written form. Therefore, it is immaterial whether the earlier mark is written in upper or lower case letters. Furthermore, it has no elements that could be considered clearly more distinctive or more dominant than other elements.
The contested sign is a figurative mark consisting of the stylised verbal element ‘mo’ written in lower case letters, with the verbal element ‘xplosion’ depicted underneath in much smaller lower case letters in a standard typeface.
The word ‘xplosion’ of the contested sign may be perceived as a misspelling of the English and French word ‘explosion’, meaning ‘the act or an instance of exploding’ or of other similar equivalents such as the Spanish word ‘explosión’ or the German word ‘Explosion’, which have the same meaning. Taking into account that the relevant goods are perfumery and cosmetics, this element may be seen by the relevant public as a reference to ‘an explosion of sensations’, a concept commonly used in the cosmetics and perfumery industry to illustrate the positive experience resulting from the stimulation of one of the sense organs (usually smell or touch) of consumers by using the relevant cosmetics products or perfumes. Consequently, the word ‘xplosion’ will be somewhat less distinctive for the parts of the public that understand it, as referred to above. However, it will have a normal degree of distinctiveness for the rest of the public, which does not understand it.
In addition, the verbal element ‘mo’ in the contested sign overshadows the other verbal element placed underneath by virtue of its central position and much larger size. Consequently, this verbal element is the visually dominant element of the contested trade mark.
Visually, the signs coincide in the letters ‘MO’. However, they differ in the additional verbal element of the contested sign, namely ‘xplosion’, as well as in the slight stylisation of the contested sign. However, taking into account the less distinctive character for part of the public and, furthermore, the less striking character of this additional element, as well as the rather negligible stylisation of the dominant element ‘MO’ in the contested sign, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘MO’, present identically in both signs. The pronunciation differs in the sound of the verbal element ‘xplosion’ of the contested sign, which has no counterpart in the earlier mark. Therefore, taking into account the lower degree of distinctiveness of this differentiating verbal element as explained above, the signs are aurally highly similar.
Furthermore, due to its smaller size and secondary position, at least some consumers will not pronounce the verbal element ‘xplosion’ when referring to the mark. To that extent, the signs are aurally identical.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory in relation to the relevant goods, the element ‘xplosion’ in the contested sign may be associated by part of the public with the concept of ‘explosion’, as referred to above, in particular the English-speaking part of the public, for which the first letter, ‘x’, will be pronounced as ‘eks’, as well as for the French-, Spanish- and German-speaking parts of the public, whose languages have similar equivalents. However, it has been concluded that this verbal element will have less impact for the parts of the public that understand it. Consequently, since one of the signs will not be associated with any meaning, the signs are conceptually not similar.
For the part of the public that does not see the verbal element as meaningful or alluding to any concept, a conceptual comparison cannot be carried out.
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, of 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). Furthermore, 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).
The goods are identical and the degree of attention is average.
The signs in question are visually and aurally highly similar (and aurally identical for at least a part of the public) to the extent that the contested sign incorporates the entire earlier mark. The additional distinctive element ‘xplosion’ of the contested sign, regardless of whether it is understood by the relevant public, will certainly be paid less attention than the other, more distinctive and more striking element, ‘mo’, by a substantial part of the public.
In addition, 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. For example, in the present case, consumers who do not understand the additional component ‘xplosion’ of the contested sign may perceive it as indicating an extension of the brand or a new line of products under the earlier mark. Furthermore, although for this part of the public the word ‘xplosion’ has a normal degree of distinctiveness as regards goods in Class 3, the earlier mark is fully incorporated at the beginning of the contested sign, where it constitutes its dominant element. Therefore, the additional word ‘xplosion’ of the contested sign will not be capable of preventing the risk of association (even taking into account a potentially higher degree of attention).
In its observations, the applicant made brief reference to a few national and European Union trade mark registrations including the verbal element ‘MO’ and having the same or a similar scope of protection that coexist with the opponent’s earlier mark.
According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal co-existence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.
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 European Union trade mark registration No 10 548 345. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed with respect to the non-contested goods and services.
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
Cristina CRESPO MOLTÓ
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.