RACO | Decision 2490822 - RACCO COSMETICOS trading as RIC INTERNATIONAL CORP. ADM., Limited company v. ACON ONE GmbH
Date Published: Oct 10, 2017
OPPOSITION No B 2 490 822
Racco Cosmeticos trading as Ric International Corp. Adm., Limited company, Rua Paul Garfunkel, 455, Curitiba, Parana 81450-080, BRASIL (opponent), represented by Cabinet Smissaert, 22, quai Louis Durand, 17 000 La Rochelle, France (professional representative)
a g a i n s t
ACON ONE GmbH, Finowstraße 25, 12045 Berlin, Germany (applicant]), represented by Schulz Junghans Patentanwälte Part GmbB, Großbeerenstraße 71 1. Hof, Remise rechts, 10963 Berlin, Germany (professional representative).
On 13/03/2017, the Opposition Division takes the following
1. Opposition No B 2 490 822 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against part of the goods of European Union trade mark application No 13 555 818 for the word mark ‘RACO’. The opposition is based on European Union trade mark registration No 4 275 152 for the word mark ‘RACCO’. 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
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
The contested goods are the following:
Class 18: Rucksacks; trunks and travelling bags; briefcases; travelling cases; vanity cases, not fitted; bags, in particular beach bags, all-purpose sports bags, all-purpose athletic bags, sports holdalls, shoulder bags, beach bags, bags for campers, shopping bags, handbags, game bags (hunting accessories), sling bags for carrying infants, travelling bags, document cases, school satchels, tool bags; baggage; baggage; key bags; credit-card holders
Class 25: Beach towels; towels; bathroom towels.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’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).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 Classes 18 and 24
The contested rucksacks; trunks and travelling bags; briefcases; travelling cases; vanity cases, not fitted; bags, in particular beach bags, all-purpose sports bags, all-purpose athletic bags, sports holdalls, shoulder bags, beach bags, bags for campers, shopping bags, handbags, game bags (hunting accessories), sling bags for carrying infants, travelling bags, document cases, school satchels, tool bags; baggage; baggage; key bags; credit-card holders in Class 18 are various types of bags and cases used for carrying personal items.
The contested goods in Class 24, namely beach towels; towels; bathroom towels, are different types of towels being mainly goods made of textile and used for drying the body, in particular after washing, bath or swim.
The opponent’s bleaching preparations and other substances for laundry use are chemical agents used for whitening or cleaning a cloth. The opponent’s polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. The opponent’s soap is a cleaning or emulsifying agent. All these goods are different preparations used in the household for the purposes described above. Therefore, these goods genuinely differ from the contested goods in Class 18 and 24 as they do not share any relevant point in common. Apart from different natures, methods of use and intended purposes, they do not coincide in their distribution channels and relevant publics. They are considered dissimilar.
Furthermore, the opponent’s perfumery, essential oils, cosmetics, hair lotions; dentifrices are fragrant and cosmetic products used for beautifying purposes. As evident from the descriptions of the goods, the nature of the contested goods and their main purposes are different from the opponent’s perfumery and cosmetic products. The goods differ in their distribution channels, stores offering bags or textile products versus cosmetic stores and perfumeries, and they target different general publics. In addition, they are neither in competition, nor complementary. Even though some fashion designers nowadays also may sell perfumes, fashion accessories and travel accessories under their marks, as the opponent itself pointed out in its observations, this is not the rule; it tends to apply only to (commercially) successful designers. In the present case, the applicant did not make such a claim regarding its own earlier right and did not furnish evidence to substantiate it. Therefore, the contested goods are dissimilar to all the opponent’s goods in Class 3.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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
LOPEZ FERNANDEZ DE CORRES
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.