OPPOSITION DIVISION

OPPOSITION No B 2 653 874

Mixer & Pack, S.L., Ctra. de Azuqueca, 9, 28880 Meco, Madrid, Spain (opponent),

represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain

(professional representative)

a g a i n s t

L'Oréal, 14 rue Royale, 75008 Paris, France (applicant), represented by Carlos

Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional

The opponent filed an opposition against all the goods of European Union trade mark

application No 14 990 329, . The opposition is based on

European Union trade mark registration No 3 460 813, . The opponent

invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

assessment of the evidence of use submitted. The examination of the opposition will

proceed as if genuine use of the earlier mark had been proven for all the goods

invoked, which is the best light in which the opponent’s case can be considered.

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

cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3: Cosmetics and make-up products.

The contested cosmetics are identically protected by both marks, whereas make-up

products are included in the opponent’s broad category of cosmetics. The goods are

therefore identical.

b) 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

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 element ‘MIXER’ present in both marks will be associated by part of the public,

such as the English-speaking public, with ‘a machine that mixes substances’. This

element is not particularly distinctive for the relevant goods (cosmetics) since it

alludes to a characteristic or the way the products are to be used. For another part of

the public, this element is meaningless and therefore distinctive for the relevant

goods.

relevant territory due to the basic English words and the linguistic equivalences. This

expression is non-distinctive for the relevant goods. Furthermore, ‘FOUNDATION’ will

be associated by the English-speaking public to ‘a type of make-up that is spread

over the skin of the face, usually before other make-up is put on, giving it a better and

more even colour and hiding unwanted marks’, whereas ‘PRO’ is often used as an

abbreviation for ‘professional’. Therefore, the expression ‘PRO FOUNDATION

MIXER’ as a whole is non-distinctive for the relevant goods (cosmetics and make up)

because it refers to the goods themselves and their way of application. For another

part of the public, the expression is meaningless or only some of the elements, such

as ‘PRO’ will be associated with any meaning. Therefore, for this part of the public,

contested mark, consumers will primarily focus their attention in the element ‘NYX’.

Visually, the signs coincide in the element ‘MIXER’ present in both marks. However,

they differ in all the additional elements, namely the figurative element of the earlier

mark and all the other verbal elements of the contested mark (‘NYX

PROFESSIONAL MAKEUP PRO FOUNDATION’). The presence of these additional

elements in the contested sign, preceding the word ‘MIXER’, contributes to minimise

the impact of the similarity.

Therefore, the signs are visually similar only to a low degree.

Aurally, it is very likely that consumers will refer to the contested mark as ‘NYX’.

Indeed, this is the most eye catching element; it is distinctive and is placed at the

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. Since one of the signs will not be associated with

only to a low degree, the examination of likelihood of confusion will proceed.

d) 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

e) Global assessment, other arguments and conclusion

The goods are identical and target the public at large whose degree of attention is

average.

likelihood of confusion between the marks.

Even taking into account that the relevant public does not always has the possibility

to compare marks side by side, and that they must place trust in the imperfect picture

that they have kept in mind, there are no reasons to consider that the consumer

would establish a link between the earlier mark and the contested mark and would

think that the relevant goods bearing the marks are offered by the same undertaking

or economically linked undertakings.

The absence of likelihood of confusion even more so applies to the part of the public

for which ‘MIXER’ is weak. This is because consumers will attach to this element less

attention and therefore will perceive the signs as less similar.

the goods and are sufficient to exclude likelihood of confusion. Therefore, the

opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the

applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)

and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the

applicant are the costs of representation, which are to be fixed on the basis of the

maximum rate set therein.

The Opposition Division

VALIENTE

subject to appeal was taken. Furthermore, a written statement of the grounds for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been 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 Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.