OPPOSITION No B 2 225 889

Isdin, S.A, Calle Provençals, 33, 08019 Barcelona, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Hunus Bio Inc., 4FAnjin B/D, Guui-Dong, 234-25, Gwangjin-Gu, Seoul, Republic of Korea (applicant), represented by Fabrice Hambersin, rue de l'Aurore 10, 1000 Bruxelles, Belgium (professional representative).

On 16/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 225 889 is partially upheld, namely for the following contested goods and services:

Class 3: Cleaning preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for affixing false eyelashes; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; alum stones [astringents]; amber [perfume]; antiperspirant soap; antiperspirants [toiletries]; aromatics [essential oils]; astringents for cosmetic purposes; badian essence; balms other than for medical purposes; bases for flower perfumes; bath salts, not for medical purposes; beard dyes; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of soap; cleaning preparations; cleansing milk for toilet purposes; colorants for toilet purposes; cosmetic creams; cosmetic dyes; cosmetic kits; cosmetic pencils; cosmetic preparations for baths; cosmetic preparations for eyelashes; cosmetic preparations for skin care; cosmetic preparations for slimming purposes; cosmetics; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; decorative transfers for cosmetic purposes; dental bleaching gels; dentifrices; denture polishes; deodorant soap; deodorants for human beings or for animals; deodorants for pets; depilatories; depilatory wax; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; eau de cologne; essential oils of cedarwood; essential oils of citron; essential oils of lemon; ethereal essences; ethereal oils; extracts of flowers [perfumes]; eyebrow cosmetics; eyebrow pencils; false eyelashes; false nails; fumigation preparations [perfumes]; gaultheria oil; geraniol; greases for cosmetic purposes; hair dyes; hair lotions; hair spray; hair waving preparations; heliotropine; henna [cosmetic dye]; hydrogen peroxide for cosmetic purposes; ionone [perfumery]; jasmine oil; lavender oil; lavender water; lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; medicated soap; mint essence [essential oil]; mint for perfumery; mouth washes, not for medical purposes; musk [perfumery]; mustache wax; nail art stickers; nail care preparations; nail polish; neutralizers for permanent waving; oils for cleaning purposes; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; perfumery; perfumes; petroleum jelly for cosmetic purposes; pomades for cosmetic purposes; potpourris [fragrances]; preparations for cleaning dentures; quillaia bark for washing; rose oil; safrol; scented water; shampoos; shampoos for pets; shaving preparations; shaving soap; shaving stones [astringents]; skin whitening creams; soap; soap for foot perspiration; sun-tanning preparations [cosmetics]; sunscreen preparations; talcum powder, for toilet use; terpenes [essential oils]; tissues impregnated with cosmetic lotions; toilet water; toiletries.

Class 44: Hygienic and beauty care for human beings or animals; animal grooming; beauty salons; hairdressing salons; health spa services; manicuring; massage; pet grooming; public baths for hygiene purposes; sauna services; solarium services; turkish baths; visagists' services.

2. European Union trade mark application No 11 621 521 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 621 521. The opposition is based on European Union trade mark registration No 7 287 568. 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.

1. The goods and services

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

Class 1: Chemicals used in the cosmetic and pharmaceutical industry.

Class 3: Sun lotions.

The contested goods and services 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; abrasive paper; abrasives; adhesives for affixing false eyelashes; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; air fragrancing preparations; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; alum stones [astringents]; amber [perfume]; ammonia [volatile alkali] [detergent]; antiperspirant soap; antiperspirants [toiletries]; antistatic preparations for household purposes; aromatics [essential oils]; astringents for cosmetic purposes; badian essence; balms other than for medical purposes; bases for flower perfumes; bath salts, not for medical purposes; beard dyes; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; bleaching salts; bleaching soda; breath freshening sprays; breath freshening strips; cake flavourings [essential oils]; cakes of soap; canned pressurized air for cleaning and dusting purposes; carbides of metal [abrasives]; cleaning chalk; cleaning preparations; cleansing milk for toilet purposes; cloths impregnated with a detergent for cleaning; cobblers' wax; color-brightening chemicals for household purposes [laundry]; color-removing preparations; colorants for toilet purposes; corundum [abrasive]; cosmetic creams; cosmetic dyes; cosmetic kits; cosmetic pencils; cosmetic preparations for baths; cosmetic preparations for eyelashes; cosmetic preparations for skin care; cosmetic preparations for slimming purposes; cosmetics; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; decorative transfers for cosmetic purposes; degreasers other than for use in manufacturing processes; dental bleaching gels; dentifrices; denture polishes; deodorant soap; deodorants for human beings or for animals; deodorants for pets; depilatories; depilatory wax; detergents other than for use in manufacturing operations and for medical purposes; diamantine [abrasive]; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry-cleaning preparations; dry shampoos; drying agents for dishwashing machines; eau de cologne; emery; emery cloth; emery paper; essential oils of cedarwood; essential oils of citron; essential oils of lemon; ethereal essences; ethereal oils; extracts of flowers [perfumes]; eyebrow cosmetics; eyebrow pencils; fabric softeners for laundry use; false eyelashes; false nails; flavorings for beverages [essential oils]; floor wax; floor wax removers [scouring preparations]; fumigation preparations [perfumes]; furbishing preparations; gaultheria oil; geraniol; glass cloth; greases for cosmetic purposes; grinding preparations; hair dyes; hair lotions; hair spray; hair waving preparations; heliotropine; henna [cosmetic dye]; hydrogen peroxide for cosmetic purposes; incense; ionone [perfumery]; jasmine oil; javelle water; joss sticks; lacquer-removing preparations; laundry bleach; laundry blueing; laundry glaze; laundry preparations; laundry soaking preparations; laundry starch; laundry wax; lavender oil; lavender water; leather bleaching preparations; leather preservatives [polishes]; lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; medicated soap; mint essence [essential oil]; mint for perfumery; mouth washes, not for medical purposes; musk [perfumery]; mustache wax; nail art stickers; nail care preparations; nail polish; neutralizers for permanent waving; non-slipping liquids for floors; non-slipping wax for floors; oil of turpentine for degreasing; oils for cleaning purposes; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; paint stripping preparations; pastes for razor strops; perfumery; perfumes; petroleum jelly for cosmetic purposes; polish for furniture and flooring; polishing creams; polishing paper; polishing preparations; polishing rouge; polishing stones; polishing wax; pomades for cosmetic purposes; potpourris [fragrances]; preparations for cleaning dentures; preparations for unblocking drain pipes; preparations to make shiny the leaves of plants; pumice stone; quillaia bark for washing; rose oil; rust removing preparations; sachets for perfuming linen; safrol; sandcloth; sandpaper; scale removing preparations for household purposes; scented water; scented wood; scouring solutions; shampoos; shampoos for pets; shaving preparations; shaving soap; shaving stones [astringents]; shining preparations [polish]; shoe cream; shoe polish; shoe wax; shoemakers' wax; silicon carbide [abrasive]; skin whitening creams; smoothing preparations [starching]; smoothing stones; soap; soap for brightening textile; soap for foot perspiration; soda lye; stain removers; starch glaze for laundry purposes; sun-tanning preparations [cosmetics]; sunscreen preparations; tailors' wax; talcum powder, for toilet use; terpenes [essential oils]; tissues impregnated with cosmetic lotions; toilet water; toiletries; tripoli stone for polishing; turpentine, for degreasing; varnish-removing preparations; volcanic ash for cleaning; wallpaper cleaning preparations; washing soda, for cleaning; waxes for leather; whiting; windscreen cleaning liquids.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; abdominal belts; abdominal corsets; abdominal pads; acupuncture needles; aerosol dispensers for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; air pillows for medical purposes; ambulance stretchers; anaesthetic apparatus; anaesthetic masks; apparatus and installations for the production of x-rays, for medical purposes; apparatus for artificial respiration; apparatus for the treatment of deafness; apparatus for use in medical analysis; appliances for washing body cavities; arch supports for footwear; armchairs for medical or dental purposes; artificial breasts; artificial eyes; artificial jaws; artificial limbs; artificial skin for surgical purposes; artificial teeth; babies' bottles; balling guns; bandages, elastic; basins for medical purposes; bed pans; bed vibrators; beds, specially made for medical purposes; belts, electric, for medical purposes; belts for medical purposes; blankets, electric, for medical purposes; blood testing apparatus; body rehabilitation apparatus for medical purposes; boots for medical purposes; bougies [surgery]; breast pumps; brushes for cleaning body cavities; cannulae; cases fitted for medical instruments; castrating pincers; catgut; catheters; childbirth mattresses; clips, surgical; clothing especially for operating rooms; commode chairs; compressors [surgical]; condoms; containers especially made for medical waste; contraceptives, non-chemical; corn knives; corsets for medical purposes; crutches; cupping glasses; cushions for medical purposes; cutlery [surgical]; defibrillators; dental apparatus and instruments; dental apparatus, electric; dental burs; dentists' armchairs; dentures; diagnostic apparatus for medical purposes; dialyzers; douche bags; drainage tubes for medical purposes; draw-sheets for sick beds; dropper bottles for medical purposes; droppers for medical purposes; ear picks; ear plugs [ear protection devices]; ear trumpets; elastic stockings for surgical purposes; electric acupuncture instruments; electrocardiographs; electrodes for medical use; enema apparatus for medical purposes; esthetic massage apparatus; feeding bottle teats; feeding bottle valves; filters for ultraviolet rays, for medical purposes; finger guards for medical purposes; forceps; fumigation apparatus for medical purposes; furniture especially made for medical purposes; galvanic belts for medical purposes; galvanic therapeutic appliances; gastroscopes; gloves for massage; gloves for medical purposes; hair prostheses; hearing aids for the deaf; hearing protectors; heart pacemakers; heating pads, electric, for medical purposes; hematimeters; hot air therapeutic apparatus; hot air vibrators for medical purposes; hypodermic syringes; hypogastric belts; ice bags for medical purposes; incontinence sheets; incubators for babies; incubators for medical purposes; inhalers; injectors for medical purposes; instrument cases for use by doctors; insufflators; intraocular prostheses [lenses] for surgical implantation; invalids' hoists; knee bandages, orthopedic; knives for surgical purposes; lamps for medical purposes; lancets; lasers for medical purposes; love dolls [sex dolls]; masks for use by medical personnel; massage apparatus; maternity belts; medical apparatus and instruments; medical guidewires; microdermabrasion apparatus; mirrors for dentists; mirrors for surgeons; needles for medical purposes; nursing appliances; obstetric apparatus; obstetric apparatus for cattle; operating tables; ophthalmometers; ophthalmoscopes; orthodontic appliances; orthopedic articles; orthopedic belts; orthopedic footwear; orthopedic soles; pads [pouches] for preventing pressure sores on patient bodies; pessaries; physical exercise apparatus, for medical purposes; physiotherapy apparatus; pins for artificial teeth; plaster bandages for orthopedic purposes; probes for medical purposes; protection devices against x-rays, for medical purposes; pulse meters; pumps for medical purposes; quartz lamps for medical purposes; radiological apparatus for medical purposes; radiology screens for medical purposes; radiotherapy apparatus; radium tubes for medical purposes; receptacles for applying medicines; respirators for artificial respiration; resuscitation apparatus; saws for surgical purposes; scalpels; scissors for surgery; slings [supporting bandages]; soporific pillows for insomnia; sphygmomanometers; spirometers [medical apparatus]; spittoons for medical purposes; splints, surgical; spoons for administering medicine; sprayers for medical purposes; stents; sterile sheets, surgical; stethoscopes; stockings for varices; strait jackets; stretchers, wheeled; supportive bandages; supports for flat feet; surgical apparatus and instruments; surgical drapes; surgical implants [artificial materials]; surgical sponges; suspensory bandages; suture materials; suture needles; syringes for injections; syringes for medical purposes; teats; teething rings; temperature indicator labels for medical purposes; thermal packs for first aid purposes; thermo-electric compresses [surgery]; thermometers for medical purposes; thread, surgical; tips for crutches for invalids; tongue scrapers; traction apparatus for medical purposes; trocars; trusses; ultraviolet ray lamps for medical purposes; umbilical belts; urethral probes; urethral syringes; urinals [vessels]; urological apparatus and instruments; uterine syringes; vaginal syringes; veterinary apparatus and instruments; vibromassage apparatus; water bags for medical purposes; water beds for medical purposes; x-ray apparatus for medical purposes; x-ray photographs for medical purposes; x-ray tubes for medical purposes.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; aerial and surface spreading of fertilizers and other agricultural chemicals; alternative medicine services; animal breeding; animal grooming; aquaculture services; aromatherapy services; artificial insemination services; beauty salons; blood bank services; chiropractics; dentistry; farming equipment rental; flower arranging; gardening; hair implantation; hairdressing salons; health care; health centers; health counseling; health spa services; horticulture; hospices; hospitals; in vitro fertilization services; landscape design; landscape gardening; lawn care; manicuring; massage; medical assistance; medical clinic services; medical equipment rental; midwife services; nursing homes; nursing, medical; opticians' services; pet grooming; pharmacists' services to make up prescriptions; pharmacy advice; physiotherapy; plant nurseries; plastic surgery; public baths for hygiene purposes; rehabilitation for substance abuse patients; rental of sanitation facilities; rest homes; sanatoriums; sauna services; services of a psychologist; solarium services; speech therapy services; tattooing; telemedicine services; therapy services; tree planting for carbon offsetting purposes; tree surgery; turkish baths; vermin exterminating for agriculture, horticulture and forestry; veterinary assistance; visagists' services; weed killing; wreath making.

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 Class 3

The contested cosmetics (listed twice) and toiletries include, as a broader category, the opponent’s sun lotions. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered to be identical to the opponent’s goods.

The contested sun-tanning preparations [cosmetics]; sunscreen preparations; cosmetic creams; cosmetic kits; cosmetic preparations for skin care lotions for cosmetic purposes overlap with the opponent’s sun lotions. Therefore, they are considered identical.

The contested cosmetics for animals overlap with the opponent’s sun lotions, since there include sun care products specially intended for animals. Therefore, they are identical.

The contested after-shave lotions; almond milk for cosmetic purposes; almond oil; aloe vera preparations for cosmetic purposes; balms other than for medical purposes; beauty masks; cleansing milk for toilet purposes; cosmetic preparations for baths; cosmetic preparations for eyelashes; cosmetic preparations for slimming purposes; eyebrow cosmetics; massage gels other than for medical purposes; pomades for cosmetic purposes; skin whitening creams; tissues impregnated with cosmetic lotions and the opponent’s sun lotions are all specific types of cosmetics. These goods have the same nature, they serve the same overall purpose, are directed at the same consumers and can coincide in producers and distributions channels. Therefore, for the reasons explained above, they are all considered similar to a high degree.

The contested cleaning preparations; soaps; perfumery, essential oils, hair lotions; adhesives for affixing false eyelashes; adhesives for affixing false hair; adhesives for cosmetic purposes; almond soap; alum stones [astringents]; antiperspirant soap; antiperspirants [toiletries]; aromatics [essential oils]; astringents for cosmetic purposes; badian essence; bath salts, not for medical purposes; beard dyes; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; cakes of soap; cleaning preparations; colorants for toilet purposes; cosmetic dyes; cosmetic pencils; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; decorative transfers for cosmetic purposes; deodorant soap; deodorants for human beings or for animals; deodorants for pets; depilatories; depilatory wax; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; eau de cologne; essential oils of cedarwood; essential oils of citron; essential oils of lemon; ethereal essences; ethereal oils; extracts of flowers [perfumes]; eyebrow pencils; false eyelashes; false nails; fumigation preparations [perfumes]; gaultheria oil; greases for cosmetic purposes; hair dyes; hair lotions; hair spray; hair waving preparations; henna [cosmetic dye]; hydrogen peroxide for cosmetic purposes; jasmine oil; lavender oil; lavender water; lip glosses; lipsticks; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; medicated soap; mint essence [essential oil]; musk [perfumery]; mustache wax; nail art stickers; nail care preparations; nail polish; neutralizers for permanent waving; oils for cleaning purposes; oils for cosmetic purposes; oils for toilet purposes; perfumery; perfumes; petroleum jelly for cosmetic purposes; potpourris [fragrances]; quillaia bark for washing; rose oil; scented water; shampoos; shampoos for pets; shaving preparations; shaving soap; shaving stones [astringents]; soap; soap for foot perspiration; talcum powder, for toilet use; terpenes [essential oils]; toilet water are all goods used to enhance, clean or protect the appearance or odour of the body. The opponent’s sun lotions have the same or a similar purpose. Moreover, such goods are available through the same distribution channels in the same outlets or in the same sections of supermarkets and they are directed at the same consumers who may assume that the same undertaking is responsible for their production as it is common on the market that the same company produces many different cosmetic preparations. Thus, they are deemed to be similar.

Like the opponent’s chemicals used in the cosmetic and pharmaceutical industry in Class 1, the contested amber [perfume]; bases for flower perfumes; geraniol; heliotropine; ionone [perfumery]; mint for perfumery; oils for perfumes and scents; safrol are raw ingredients or semi-finished products that are mainly used in creating cosmetics and perfumes. Thus, they are of a same nature and purpose and can be complementary. They are also traditionally provided by the same companies and directed at the same professional consumers in a particular sector of industry. Therefore, they are similar.

As regards the contested dentifrices; breath freshening sprays; breath freshening strips; dental bleaching gels; dentifrices; denture polishes; mouth washes, not for medical purposes; preparations for cleaning dentures they are also deemed to be linked to the opponent’s sun lotions. Notwithstanding their different specific purpose (dental care on one hand, skin care on the other), these categories of goods are both used to promote health care and to enhance the appearance and odour of the human body. These goods are normally sold through the same distribution channels, although their origin is often different. Thus, they are deemed to be lowly similar.

The contested air fragrancing preparations; joss sticks; sachets for perfuming linen; scented wood are fragrances and scented products that are used to freshen / perfume a room or linen or remove unpleasant odours in the household, while the opponent’s sun lotions are applied to human or animal body and used to enhance the personal appearance. These goods have different purposes, methods of use and nature. They are neither in competition nor complementary. They target different publics and are not produced by the same undertakings. The same considerations apply to the opponent’s goods in Class 1. All these goods are clearly dissimilar.

The remaining contested cake flavourings [essential oils]; flavorings for beverages [essential oils] are used in production of food and beverages and, therefore, they have no common elements with the opponent’s goods in Classes 1 and 3. They have a different nature and purpose. They normally originate from different undertakings and target a different public. They use different channels of distribution, and are neither in competition nor are they complementary. The goods and services are clearly dissimilar.

The contested Bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations; abrasive paper; abrasives; ammonia [volatile alkali] [detergent]; antistatic preparations for household purposes; bleaching salts; bleaching soda; canned pressurized air for cleaning and dusting purposes; carbides of metal [abrasives]; cleaning chalk; cloths impregnated with a detergent for cleaning; color-brightening chemicals for household purposes [laundry]; color-removing preparations; corundum [abrasive]; detergents other than for use in manufacturing operations and for medical purposes; diamantine [abrasive]; dry-cleaning preparations; drying agents for dishwashing machinesemery; emery cloth; emery paper; fabric softeners for laundry use; floor wax; floor wax removers [scouring preparations]; furbishing preparations; glass cloth; grinding preparations; javelle water; lacquer-removing preparations; laundry bleach; laundry blueing; laundry glaze; laundry preparations; laundry soaking preparations; laundry starch; laundry wax; leather bleaching preparations; leather preservatives [polishes]; non-slipping liquids for floors; non-slipping wax for floors; oil of turpentine for degreasing; paint stripping preparations; polish for furniture and flooring; polishing creams; polishing paper; polishing preparations; polishing rouge; polishing stones; polishing wax; preparations for unblocking drain pipes; preparations to make shiny the leaves of plants; pumice stone; rust removing preparations; sandcloth; sandpaper; scale removing preparations for household purposes; scouring solutions; shining preparations [polish]; silicon carbide [abrasive]; smoothing preparations [starching]; smoothing stones; soap for brightening textile; soda lye; stain removers; starch glaze for laundry purposes; tailors' wax; tripoli stone for polishing; turpentine, for degreasing; varnish-removing preparations; volcanic ash for cleaning; wallpaper cleaning preparations; washing soda, for cleaning; waxes for leather; whiting; windscreen cleaning liquids are all household or industry products used for the purpose of maintaining and cleaning by removing dirt and impurities. With regard to the opponent’s goods, they are cosmetics and raw or semi-finished products used in the cosmetic and pharmaceutical industry. Therefore, these goods have different purposes, methods of use and nature. They are neither in competition nor complementary. They target different public and are not produced by the same undertakings. They are dissimilar.

The contested shoemakers' wax; tailors' wax are used for waxing thread in relation to the production/repair of clothing and footwear. The contested cobblers' wax; pastes for razor strops; shoe cream; shoe polish; shoe wax are waxes and pastes aimed to be applied on shoes and razor strops. These goods are dissimilar to all the goods of the earlier right as their natures, main purposes, producers and distribution channels are different. Furthermore, they are neither in competition, nor complementary.

Contested goods in Class 10

The contested goods have a medical purpose and, therefore, target a specialized public dedicated to the purchase of medical apparatus and instruments used in hospitals and clinics etc., upon prescription by doctors or dentists and after a thorough medical examination and a decision by the professional in that area. Consequently, they are for sale through specialised distribution channels.

The earlier goods in Class 3, in contrast, are sun lotions aimed at and used by the general public and are widely available in pharmacies or even at larger department stores. To purchase these goods does not normally require a professional’s involvement. Moreover, they do not have strictly speaking a medical purpose, being cosmetics. Furthermore, they are neither complementary nor in competition and they differ in pertinent distribution channels and manufacturers. Therefore, they are considered dissimilar.

Likewise, the contested goods, which are mainly medical devices, furniture, artificial organs and surgical apparatus, have no connection whatsoever with the goods in class 1 which are chemical preparations and raw materials for use in the manufacturing of pharmaceuticals and cosmetic products. These goods belong to different sectors and come from different providers. Moreover, they address different needs and have totally different nature and functions. Therefore, they are dissimilar.

Contested services in Class 44

There is a link between the earlier sun lotions and the contested hygienic and beauty care for human beings or animals; animal grooming; beauty salons; hairdressing salons; health spa services; manicuring; massage; pet grooming; public baths for hygiene purposes; sauna services; solarium services; turkish baths; visagists' services as the earlier goods are used for hygienic or beauty care purposes, mainly for human beings but for animals too and they, therefore, are complementary with these contested services. Notably, a beauty salon or spa or even a hotel offering such services could also sell certain of the products used for the services, in particular soaps, essential oils, cosmetics, hair lotions. Therefore, they can also coincide in their distribution channels. Based on the above, it can be concluded that the purpose as well as the target public of these goods and services is the same in that they are all intended to improve the hygiene and looks of the consumers. In addition, they can often be sold at the same place. For all these reasons, it must be concluded that these goods and services are similar to a low degree.

The remaining contested services are related to tattooing, opticians’ services, gardening, agriculture and horticulture, animal breeding, medical services, hospices and rental services. On the other hand, the opponent’s sun lotions in Class 3 are cosmetics intended to be placed in contact with the various external parts of the human body to protect them from the sun, perfume them and/or change their appearance. The earlier goods in class 1 are chemical preparations and raw materials for use in the manufacturing of pharmaceuticals and cosmetic products. The contested services have nothing in common with the opponent’s goods. They belong to different fields and, therefore, do not have the same purpose, method of use or nature. Their producers, distribution channels and relevant publics are also different. Furthermore, they are neither complementary nor in competition. Consequently, they are all clearly dissimilar.

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 or similar (to different degrees) are directed mainly at the public at large. The degree of attention is considered to be average.

3. The signs

FUSION FLUID
Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a word mark, namely ‘FUSION FLUID’.

The contested sign is a figurative mark, consisting of the verbal sequence ‘Céll Fùsion C’ depicted in an almost standard italic typeface. Above the verbal element is a black cross followed by horizontal lines for its whole height, causing a three-dimensional effect.

The English term ‘FLUID’ of the earlier mark will be understood by the French-speaking public, since its equivalent in French is very close and almost identical aurally (FLUIDE). This word means ‘a substance, such as a liquid or gas, that can flow, has no fixed shape, and offers little resistance to an external stress; capable of flowing and easily changing shape’ (Collins English dictionary). Bearing in mind that the relevant goods are cosmetics and ingredients that are mainly used in creating cosmetics and perfumes, it is considered that this element is weak. Indeed, this word serves to designate a quality of the goods. The public understands the meaning of this weak element and will not pay as much attention to it as to the other, more distinctive, element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

Regarding the contested sign, the cross, which is a universal symbol associated with health care, may be perceived as such by a large part of the relevant public. This is all the more the case as the relevant goods and services, namely cosmetics, wellness, hygienic and beauty care services as well as ingredients used in creating cosmetics and perfumes, have a certain link with health care in the broad sense. Indeed, the relevant goods are often sold in pharmacies and the relevant services are often provided by companies which offer more medical services as well. Moreover, pharmacies in France are recognisable thanks to a neon sign containing a cross which hangs outside the establishment. This device gives the public the impression of medical legitimacy. Therefore, it is considered weak.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive word ‘FUSION’, which is independently included in both cases. It has to be noted that the earlier mark is a word mark and, consequently, it is the words themselves that are protected, and not their written form. In particular, differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate. Moreover, the grave accent on the letter ‘U’, as found in the contested sign, does not exist in French and thus will not be considered important by the public.

The signs differ in the additional word ‘FLUID’ of the earlier mark, which is however weak. Regarding the contested mark, the signs differ in the weak cross and in the verbal elements ‘Céll’ and ‘C’.

In addition, it should be recalled that 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; decisions of 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 letters ‛FUSION’, present in both signs. The pronunciation differs in the sound of the weak term ‘FLUID’ and in the sound of the word ‘Céll’ and of the less striking final letter ‘C’ of the contested sign.

Therefore, the signs are aurally similar to a normal degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the coinciding word ‘FUSION’ exists in French and will be understood by the public as ‘the act or process of fusing or melting together; union; the state of being fused; something produced by fusing;’ (Collins English dictionary). In the present case, this word is distinctive for all the relevant goods and services.

As has been considered above, the word ‘FLUID’ of the earlier mark will be understood and considered weak.

Likewise, the cross will convey the concept of the shape it depicts and is considered weak for the relevant goods and services.

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

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Moreover, the Court has set out the essential principle that 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. Therefore, 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, the goods and services are partly identical or similar to different degrees and partly dissimilar. The signs are visually, aurally and conceptually similar to an average degree, since they coincide in the element ‘FUSION’, which is distinctive and independently included in both signs. Furthermore, the additional elements ‘FLUID’ of the earlier mark and the stylised cross in the contested sign are considered weak.

Moreover, account should be taken of the fact that 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 Meyer, EU:C:1999:323).

Based on all the foregoing, it is considered that there are strong coincidences between the signs with a decisive impact. In other words, there is no doubt that the abovementioned differences do not alter the fact that the impactful element ‘FUSION’ has an independent role and a distinctive character in both signs. Therefore, these differences are not sufficient, in view of the public’s imperfect recollection, to exclude a likelihood of confusion with regard to the identical and similar goods and services, even the lowly similar ones. Indeed, consumers may perceive the contested sign as a version of the earlier mark and will inevitably think that the services concerned originate from the same undertaking or at least from economically linked undertakings.

Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 7 287 568. A likelihood of confusion cannot be safely excluded for a part of the public, namely the French-speaking public part of the relevant public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. It follows that the contested trade mark must be rejected for the contested goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Steve HAUSER

Volker MENSING

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.