Revoline | Decision 2803164
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 803 164
Revlon (Suisse) S.A., Badenerstr. 116, 8952 Schlieren, Switzerland (opponent),
represented by Beautyge Beauty Group, S.L., Josep Maria Rovira Peláez, Wtc
Almeda Park Tirso de Molina, 40 E, 08940 Cornellá de Llobregat (Barcelona), Spain
(employee representative)
a g a i n s t
Fabrizio Maffia, Via chiesali 29, 10050 Villar Focchiardo, Italy (applicant).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 803 164 is rejected in its entirety.
2. The opponent bears the costs.
REASONS
The opponent filed an opposition against some of the goods and services of the
figurative European Union trade mark application No 15 734 791 , namely
against all the goods in Class 3 and some of the goods and services in Classes 5, 35
and 41. The opposition is based on the word European Union trade mark registration
No 3 335 833 ‘REVLON’. The opponent invoked Article 8(1)(b) and (5) 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
the Regulations currently in force, except where expressly indicated otherwise.
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.
Decision on Opposition No B 2 803 164 page: 2 of 9
a) The goods and services
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 and services are the following:
Class 3: Body cream; scented body creams; creams (non-medicated -) for the
body; scented body lotions and creams; anti-aging creams; creams for
cellulite reduction; moisturising creams, lotions and gels; moisturising
skin creams [cosmetic]; beauty masks; beauty care cosmetics.
Class 5: Body creams [medicated].
Class 35: Online retail store services relating to cosmetic and beauty products.
Class 41: Training; health and wellness training; staff training services relating to
the retail trade; vocational skills training.
Some of the contested goods and services are identical or similar to the goods on
which the opposition is based. For reasons of procedural economy, the Opposition
Division will not undertake a full comparison of the goods and services listed above.
The examination of the opposition will proceed as if all the contested goods and
services were identical to those of the earlier mark which, for the opponent, is the
best light in which the opposition can be examined.
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
according to the category of goods or services in question.
In the present case, the goods and services assumed to be identical are directed at
the public at large. The degree of attention is considered to be average.
c) The signs
REVLON
Earlier trade mark Contested sign
Decision on Opposition No B 2 803 164 page: 3 of 9
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 mark is a word mark consisting of the word ‘REVLON’ which has no
meaning for the relevant public, and is therefore distinctive.
The contested sign is a figurative mark that includes several elements: first, at the
very beginning are the letters ‘REVO’, then a red representation of an
electrocardiogram (measures the heart’s activity) followed by the letters ‘LINE’. Apart
from the first letter ‘R’ which is represented in red upper case letters and in a bigger
size compared with the rest of the letters, all the remaining letters are depicted in
blue upper case letters.
Concerning the word elements of the contested sign, the combination of letters
‘REVO’ do not convey any immediately perceptible meaning for the goods and
services at issue from the perspective of the relevant public. Therefore, its
distinctiveness is average.
As regards the remaining letters, although the average consumers normally
perceives a mark as a whole and do not proceed to analyse its various details, 'the
fact remains that, when perceiving a verbal sign, they will break it down into elements
that suggest a concrete meaning, or that resemble words that they already know
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion,
EU:T:2008:33, § 58, 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004,ECR II-3445, §
51). In the case at hand, the relevant consumers will clearly perceive the element
‘LINE’ placed at the end of the contested sign.
The word ‘LINE’ refers in English to, inter alia, ‘a line of people or things is a number
of them arranged one behind the other or side by side’ (information extracted on
16/10/2017 from Collins Dictionaries at
https://www.collinsdictionary.com/dictionary/english/line). It will be therefore
understood with this meaning by the relevant public due to its similarity to the
equivalent word in many official languages (Linie in German and Romanian and ligne
in French among others), to the widespread use of this word on the market and the
public’s exposure to it, or to the relevant consumers’ knowledge of English (e.g. in the
case of the Dutch-speaking part of the public). Bearing in mind that the relevant
goods are basically toiletries, body cleaning and beauty care products, the
distinctiveness of this element in the contested sign is considered to be lower than
average given that the relevant consumers will simply associate it with ‘a product line’
or ‘a range of commercial goods’. Furthermore, it cannot be excluded that the public
will understand the contested sign as a whole as referring to a line of products called
‘REVO’.
As regards the figurative element of the contested mark, it could be seen as allusive
in relation to part of the services in Class 41, namely in relation to health training. Its
distinctiveness is therefore considered lower than average given that the relevant
consumers will simply associate it with a kind of check that is done as part of the
health training.
Neither of the signs under comparison has any element that could be considered
clearly more dominant (visually eye-catching) than other elements.
Decision on Opposition No B 2 803 164 page: 4 of 9
Visually, the signs coincide in the sequence of letters ‘R-E-V’ which are represented
identically as well as in the letters ‘O-L-N’, although they are not represented in the
same positions in the signs. They differ in the letters ‘I’ and ‘E’ of the contested mark
which have no counterparts in the earlier mark. Moreover, they also differ in the
figurative aspects of the contested mark described above, and in the different
structure of the marks.
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Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. While the public in the relevant territory will perceive
the contested mark as referring to a range of products (called ‘REVO’), the other sign
lacks any meaning in the relevant territory. 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, 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.
According to the opponent, the earlier trade mark has a reputation in the European
Union in connection with part of the goods, for which it is registered, namely for
cosmetics and hair lotions in Class 3. This claim must be properly considered given
that the distinctiveness of the earlier trade mark must be taken into account in the
assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark,
the greater will be the likelihood of confusion, and therefore marks with a highly
Decision on Opposition No B 2 803 164 page: 5 of 9
distinctive character because of the recognition they possess on the market, enjoy
broader protection than marks with a less distinctive character (29/09/1998, C-39/97,
Canon, EU:C:1998:442, § 18).
The opponent submitted, the following evidence:
Revlon´s Annual Report (2015).
List of ‘REVLON’ European Union trade mark registrations.
Article from the New York Times, dated November 2014, in which there is a
reference to the money invested by the ‘REVLON’ company for advertising the
brand during the first six months of 2014.
Article from the Forbes Magazine, dated December 2015, in relation to
Revlon´s financial results.
Article from the Independent newspaper, dated 2012, on Revlon´s history and
the extensive roster of talent and celebrities that have been associated with the
Revlon brand.
Article from the Guardian newspaper, dated June 2016, of the recent
acquisition of Elizabeth Arden and the continuous growth of Revlon´s business.
Two articles from ELLE UK magazine, regarding collaboration with the
renowned fashion house Marchesa and on the presence of Hollywood
celebrities in the ‘Revlon Celebrates Achievement in Cancer Research’. They
are dated August 2012 and June 2013 respetively.
Three WIPO UDPR decisions.
Decision from the Spanish Patent and Trademark Office rejecting the
registration of the mark ‘REVILO’ due to the opposition of the mark REVLON
and confirming that ‘REVLON’ is well-known.
Having examined the material listed above, the Opposition Division concludes that
the evidence submitted by the opponent does not demonstrate that the earlier trade
mark acquired a high degree of distinctiveness through its use.
The opponent submitted the abovementioned evidence in order to prove the
enhanced distinctiveness/reputation of the earlier mark. The Opposition Division
notes that from the evidence submitted, the presence of Revlon in the European
market is obvious. However, the evidence does not assist in demonstrating that the
brand has achieved such a level of recognition on the market as to conclude that it
has a reputation in the European Union.
Although some of the newspapers from which articles are submitted are from the
United Kingdom, most of the references made in those articles refer to Revlon as a
company with presence in the United States of America and few mentions are made
to the European Union. Moreover, when referring to the advertising expenditure
reference was made to the dollar being the currency used.
It is also true that in the annual report submitted, there are references to the
European Union, specifically in pages 43 and 61. However from this evidence it
Decision on Opposition No B 2 803 164 page: 6 of 9
cannot be deduced which part of the revenue, income etc… indicated refer to the
European Union and which refer to the United States of America or other countries.
Moreover, this report refers to the opponent as an undertaking and does not
differentiate between the different trade marks owned by the opponent.
Most of the documents submitted relate to a country outside the European Union,
namely the United States of America. Consequently, the opponent cannot
successfully claim to hold a well-known mark in the EU.
In addition to this, the evidence above does not include direct evidence of reputation
such as surveys establishing that the relevant public is aware of the trade mark. Nor
does it include independent rankings/awards reflecting its commercial successor
invoices of the products sold in the European Union.
The opponent considers its mark to be reputed because it is associated with
renowned persons as can be seen from some articles of the Elle Magazine that have
been submitted. However, a sign does not enjoy any reputation simply because it is
associated to famous people but only for the goods and services it designates and as
a consequence of the use made of it.
The opponent has also submitted several EUTM registrations of the mark ‘REVLON’.
However, this is in itself a weak indication of the degree of recognition of the sign by
the relevant public. The fact that the opponent has many trade mark registrations and
in many classes may indirectly attest to an international circulation of the brand, but
cannot decisively prove in itself a reputation.
Regarding the decision from the Spanish office, even though national decisions are
admissible evidence and may have evidentiary value, especially if they originate from
a Member State the territory of which is also relevant for the opposition at hand, they
are not binding for the Office, in the sense that it is not mandatory to follow their
conclusion. While the Opposition Division does not dispute that the decisions in
question mention the well-known character of the ‘REVLON’ trade mark, the
opponent has not provided any explanation regarding how that reputation was
proved and how the Spanish Office interprets the concept of reputation. It is also not
clear how much weight is given to reputation in Spanish proceedings or whether the
Spanish office has merely taken into account facts ex officio, something which the
Opposition Division is not permitted to do so.
In any event, the evidence filed by the opponent is lacking overall. There is very little
advertising or promotional material appearing in third party publications. There are no
documents such as opinion polls or market surveys. There are no invoices or other
commercial documents and most of the documents submitted relate to countries
outside the European Union.
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.
e) Global assessment, other arguments and conclusion
The marks have been found visually and aurally similar to a low degree. Moreover,
since one of the signs will not be associated with any meaning, the signs are not
Decision on Opposition No B 2 803 164 page: 7 of 9
conceptually similar. The goods and services at issue have been assumed to be
identical.
The Opposition Division is of the opinion that there will be no likelihood of confusion
between the marks, even when assuming that the goods and services are identical.
Furthermore, the category of goods and the circumstances in which they are
marketed are also important, considering that an aural or conceptual similarity
between signs may be less important in the case of goods that are examined
visuallybefore being bought. This applies in the present case, given that, generally,
cosmetics are arranged on shelves and consumers usually can either choose
themselves the products they wish to buy or be assisted by sales staff. Therefore, the
choice of such products is generally made visually. Accordingly, whilst oral
communication in respect of the goods and the trade marks is not ruled out,
consumers are guided more by the visual impact of the marks. Therefore, the visual
aspect plays a greater role in the global assessment of the likelihood of confusion.
Although there are certain visual and aural commonalities between the signs, the
differing elements are clearly perceptible and sufficient to exclude any likelihood of
confusion between the marks. Evaluating likelihood of confusion implies some
interdependence between the relevant factors and, in particular, a similarity between
the marks and between the goods or services; a lesser degree of similarity between
the goods and services may be offset by a greater degree of similarity between the
marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the
present case, however, it is considered that the visual and aural differences are not
outweighed by the assumed identity between the goods and services, for the reasons
explained above.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b)
EUTMR.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Decision on Opposition No B 2 803 164 page: 8 of 9
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the abovementioned conditions may not be sufficient.
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
a) Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation and highly
distinctive character of the earlier trade mark has already been examined above
under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings,
which are equally valid for Article 8(5) EUTMR.
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark acquired a reputation.
As seen above, it is a requirement for the opposition to be successful under
Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been
established that the earlier trade mark has a reputation, one of the necessary
conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be
rejected. Therefore, the opposition must be rejected insofar as it is based on Article
8(1)(b) EUTMR.
COSTS
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
Decision on Opposition No B 2 803 164 page: 9 of 9
maximum rate set therein. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Francesca DRAGOSTIN Cristina CRESPO MOLTO José Antonio GARRIDO
OTAOLA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 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.