Decision on Opposition No B 2 653 874 page: 4 of 6
It is important to note 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, and from top to bottom, which makes the part placed at the top of the sign (the
initial part) the one that first catches the attention of the reader. Therefore, in the
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
beginning of a long sign. Therefore, the signs are aurally dissimilar.
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
any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, albeit
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 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).
The goods are identical and target the public at large whose degree of attention is