OPPOSITION No B 2 189 945

Frédéric Krief, 3 Chemin du Pinet, 83990 Saint Tropez, France (opponent), represented by Naomi Aaronson, 19 Rue Ruhmkorff, 75017 Paris, France (professional representative)

a g a i n s t

Botica Comercial Farmacéutica Ltda., Av. Rui Barbosa, 3450 S. José dos Pinhais, Paraná 83065-260, Brasil (applicant), represented by Garrigues IP Unipessoal Lda., Avenida da República 25 - 1º, 1050-186 Lisbon, Portugal (professional representative).

On 17/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 189 945 is upheld for all the contested goods and services.

2. Community trade mark application No 11 489 911 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 11 489 911. The opposition is based on, inter alia, French trade mark registration No 3 750 154. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 3 750 154.

1. The goods and services

The goods on which the opposition is based are the following:

Class 3: Cosmetics, oils for cosmetic purposes, milks and creams for cosmetic use, cosmetic preparations for use in the bath or shower, cosmetic pencils, cosmetic sets; toiletries, soaps; make-up preparations, make-up, mascara, nail polish, lipsticks, make-up powder, make-up pencils, foundation; make-up removing preparations; beauty masks; shampoos; dentifrices; perfumery, perfumes, toilet water; deodorants for personal use perfumery; sun protection preparations (cosmetics); cosmetic suntan preparations.

Class 9: spectacles (optics); sunglasses, eyewear, eyeglasses cases.

Class 14: Jewellery; jewellery, precious stones; horological and chronometric instruments; precious metals and their alloys; coins; works of art of precious metal; jewellery cases; boxes of precious metal; watch cases, watch straps, watch chains, watch springs or watch glasses; fancy key rings; statues or figurines (statuettes) of precious metal; cases for watches; medals, charms.

Class 16: Stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; paper; cardboard; boxes of cardboard or paper; posters; albums; cards; books; newspapers; prospectuses; brochures; catalogues; calendars; writing instruments; patterns for dressmaking; face towels of paper; table linen of paper; bags envelopes, pouches of paper or plastics, for packaging;

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; wallets; change purses; handbags, rucksacks, wheeled shopping bags; bags for climbers, bags for campers, traveling bags, beach bags, school bags; unfitted vanity cases; collars or covers for animals; shopping nets or bags; bags or sachets envelopes, pouches of leather, for packaging purposes.

Class 24: Textiles, bed and table covers, fabrics for textile use, elastic woven material; velvet; bed linen; household linen; table linen, not of paper; bath linen, except clothing.

Class 25: Clothing, footwear (except orthopaedic footwear); headgear.

The contested goods and services are the following:

Class 3: Ethereal oils; make-up preparations; paper impregnated with substances for personal hygiene; cosmetic creams; cakes of soap; deodorant for personal use; dentifrices; cotton wool for personal hygiene; conditioners [cosmetic]; cosmetics; shampoos; perfumery; perfumes; oils for toilet purposes.

Class 35: Commerce (by any means) of cosmetics; commerce (by any means) of jewellery; commerce (by any means) of perfumery; commerce (by any means) of headgear; commerce (by any means) of clothing; commerce (by any means) of footwear; commerce (by any means) of articles and goods made of leather and imitations leather; commerce (by any means) of clothing; commerce (by any means) of bed, table and bathroom goods.

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 Class 3

Make-up preparations, dentifrices, cosmetics; shampoos; perfumery; perfumes; deodorant for personal use are identically contained in both lists of goods and services (including synonyms).

The contested cosmetic creams; conditioners [cosmetic] are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested cakes of soap are included in the broad category of the opponent’s soaps. Therefore, they are identical.

The contested ethereal oils and oils for toilet purposes overlap with the opponent’s oils for cosmetic purposes. Therefore, they are identical.

The contested paper impregnated with substances for personal hygiene and cotton wool for personal hygiene are included in the broad category of the opponent’s toiletries. Therefore, they are identical.

Contested services in Class 35

Commerce (by any means) concerning the sale of particular goods is similar to a low degree to these particular goods. Although the natures, purposes and methods of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested commerce (by any means) of cosmetics; commerce (by any means) of jewellery; commerce (by any means) of perfumery; commerce (by any means) of headgear; commerce (by any means) of clothing (repeated two times); commerce (by any means) of footwear are similar to a low degree, respectively, to the opponent’s cosmetics; jewellery; perfumery, headgear, clothing; footwear (except orthopaedic footwear).

The contested commerce (by any means) of articles and goods made of leather and imitations leather is similar to a low degree to the opponent’s travelling bags, to the extent that the latter can be made of, inter alia, leather or imitations of leather and therefore overlap with the opponent’s articles and goods of leather and imitations leather.

The contested commerce (by any means) of bed, table and bathroom goods is similar to a low degree to the opponent’s bed and table covers, bath linen, except clothing to the extent that the opponent’s goods are included in, and hence identical to, bed, table and bathroom goods.

2. 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 found to be identical and similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	QUEM DISSE, BERENICE?
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative mark featuring the word ‘BERENICE’ in fairly standard title case characters followed by two stylised wings.

The contested sign is a word mark featuring the words ‘QUEM DISSE’, a comma and the word ‘BERENICE’, followed by a question mark.

The marks at issue have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they both include the verbal element ‘BERENICE’, which is the only verbal element of the earlier mark. However, they differ in the words ‘QUEM DISSE’ and the question mark of the contested sign, and in the figurative element of the earlier sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛BERENICE’, present in both signs. The pronunciation differs in the sound of the words ‛QUEM DISSE’ of the contested mark, which have no counterparts in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, the word ‘BERENICE’, present in both signs, will be understood by the relevant public as a feminine name.

The words ‘QUEM DISSE’ have no meaning for the relevant public and the depiction of the two wings in the earlier sign will be perceived as such. Consequently, the signs are conceptually similar to an average degree, as they have the concept of the name ‘BERENICE’ in common.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods and services at issue are partly identical and partly similar to a low degree.

The signs are similar from the visual, aural and conceptual points of view due to the presence of the word ‘BERENICE’, which is the only verbal element of the earlier sign and is fully reproduced in the contested sign. As mentioned above, the relevant public will understand the element ‘BERENICE’ only as a name.

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). Therefore, consumers may be led to believe that the goods and services offered under the contested mark come from the same undertaking as those offered under the earlier sign, or an economically-linked undertaking.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character, given that there are many trade marks that include the word ‘BERENICE’. In support of its argument, the applicant refers to some CTM and French trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘BERENICE’. Under these circumstances, the applicant’s claims must be set aside.

In view of the fact that the signs have in common an independent, distinctive element and are similar on all three levels of the comparison, and given the principle of interdependence – according to which a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa – there is also a likelihood of confusion in relation to the services that are similar to a low degree.

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 French trade mark registration No 3 750 154. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, (FR No 3 750 154), leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Jessica LEWIS

Eamonn KELLY

Catherine MEDINA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.