DECISION

of the Second Board of Appeal

of 3 November 2020

In case R 158/2016-5

Debonair Trading Internacional LDA
Avenida do Infante 50 9000 Funchal, Madeira Portugal	Opponent / Appellant

represented by Beck Greener, Fulwood House, 12 Fulwood Place, London WC1V 6HR, United Kingdom

v

L'OREAL Direction Juridique - Propriété Intellectuelle 41 rue Martre 92110 Clichy14 France	Applicant / Defendant

represented by Baker & Mckenzie LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 314 634 (European Union trade mark application No 12 194 015)

The Second Board of Appeal

composed of V. Melgar (Chairperson), C. Govers (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 3 October 2013, L’OREAL (‘the applicant’), claiming the priority trade mark No 134 007 97 with a filing date of 28 May 2013, sought to register the word mark

SO COUTURE

as a European Union trade mark (‘EUTM’) for the following list of goods:

Class 3 – Make-up preparations.

2. The application was published on 7 November 2013.

3. On 4 February 2014, Debonair Trading Internacional LDA (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods.

4. The grounds of opposition were those laid down in Article 8(1)(b), Article 8(5), and Article 8(4), CTMR.

5. The opposition was based, inter alia, on the following earlier marks:

• EUTM No 485 078, for the word mark SO...?, filed on 7 March 1997 and registered on 26 February 2001 for, as far as relevant in these proceedings, the following goods:

Class 3 – Toilet preparations; preparations for use in the shower and the bath, all being non-medicated; perfumes; fragrances; aftershaves; creams, gels and lotions; cosmetics; eau de cologne; toilet waters; hair styling products; anti-perspirants; deodorants for personal use.

• EUTM No 3 188 091 for the word mark SO...? DESIRABLE, filed on 9 May 2003 and registered on 13 October 2004 for, as far as relevant in these proceedings, the following goods:

Class 3 – Toiletries; hair care products; perfumery; cosmetics; deodorants.

• EUTM No 7 055 239 for the word mark SO...? ETERNAL, filed on 10 July 2008 and registered on 3 June 2009 for goods in Class 3.

• EUTM No 2 335 511, for the word mark, SO...? KISS ME, filed on 31 July 2001 and registered on 27 May 2005 for goods in Class 3.

• EUTM No 4 330 221, for the word mark, SO...? SINFUL, filed on 3 March 2005 and registered on 18 April 2006, for goods in Class 3.

• EUTM No 5 099 635, for the word mark SO...? SUPERSTAR, filed on 26 May 2006 and registered on 27 April 2007, for goods in Class 3.

• EUTM No 4 246 311, for the word mark SO...? WILD, filed on 19 January 2005 and registered on 3 April 2006, for goods in Class 3.

• UK trade mark registration No 2 155 752, for the word mark, SO…? DESIRABLE, filed on 17 January 1998 and registered on 5 November 1999 and duly renewed, for goods in Class 3.

• UK trade mark registration No 2 114 058, for the figurative mark, , filed on 26 October 1996 and registered on 23 May 1997 and duly renewed, for goods in Class 3.

• EUTM No 10 891 307, for the word mark SO...? ADDICTIVE, filed on 17 May 2012 and registered on 20 August 2014 for, as far as relevant in these proceedings, the following goods:

Class 3 – Hair care preparations; perfumery; perfumed body spray; eau de toilette; cosmetics; personal care deodorants; body lotion; shower gel; dry shampoo; hair care shampoo; hair care conditioner.

• EUTM No 11 359 882, for the word mark SO...? FABULOUS filed on 20 November 2012 and registered on 5 May 2014, for goods in Class 3.

• EUTM No 11 359 973, for the word mark SO...? GLAMOROUS filed on 20 November 2012 and registered on 5 May 2014, for goods in Class 3.

• EUTM No 5 530 993, for the word mark SO...? SENSUAL, filed on 7 December 2006 and registered on 15 November 2007, for goods in Class 3.

• EUTM No 8 492 217, for the word mark SO...? SEXY, filed on 14 August 2009 and registered on 29 March 2010 , for goods in Class 3.

• EUTM No 8 657 637, for the word mark SO...? BRIT, filed on 3 November 2009 and registered on 15 June 2010, for goods in Class 3.

• EUTM No 10 899 078, for the word mark SO...? HAIR WITH ATTITUDE, filed on 21 May 2012, for goods in Class 3.

• EUTM No10 891 265, for the word mark SO...? LOVELY, filed on 17 May 2012 and registered on 28 December 2012, for goods in Class 3.

• EUTM No 10 891 224, for the word mark SO...? SEDUCTIVE, filed on 17 May 2012 and registered on 28 December 2012, for goods in Class 3.

• EUTM No 9 067 299, for the word mark SO...? EXCLUSIVE, filed on 29 April 2010 and registered on 3 December 2010, for goods in Class 3.

6. By decision of 14 December 2015 (‘the contested decision’), the Opposition Division rejected the as amended in its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

Contested goods in Class 3

• The contested make-up preparations are included in the broad category of the opponent’s cosmetics covered by some of the earlier marks. Therefore, they are considered identical.

• Furthermore, the contested make-up preparations are similar to a high degree to perfumery (perfumes) covered by some of the earlier marks as they have the same purpose. Furthermore, they can coincide in producers, end users and distribution channels.

• Visually and aurally the marks are similar to a low degree because of the coincidence of the element ‘SO’.

• Conceptually, for the English and German-speaking public the element ‘SO’ of the earlier marks may have various meanings but, without any further context, it will most likely be seen as an introduction, a beginning of a phrase. Since in the present case it is followed by suspension dots and a question mark, it will be perceived in particular as the beginning of a question. It might therefore be understood by English-speaking consumers, out of context, as meaning ‘then’, ‘thus’ or ‘therefore’, whereas accompanied by another word, it would have a laudatory function or would refer to the concept ‘so’, indicating importance or a degree; also for the German-speaking public ‘so’ is used as emphasis (so gross, so klein), in a comparison or it indicates a certain way, so schnell (this fast), so eine Frau (this kind of woman). The element ‘SO…?’ followed by different English adjectives, nouns (SUPERSTAR) or expressions (KISS ME, HAIR WITH ATTITUDE) will be perceived most likely by the relevant public as an answer to the question. The verbal elements of the earlier marks will have the following meanings for the English-speaking public:

• The element ‘SO’ in the contested mark as it is followed by the adjective will be perceived at least by the English and German-speaking public as an intensifier, indicating that something is ‘very couture’.

• The element ‘COUTURE’ of the contested mark is a word of French origin and will most likely be understood by part of the relevant public as referring to ‘fashionable dressmaking or design; high fashion’ (Oxford Dictionary). It can also be understood as an adjective meaning ‘created or produced by a fashion designer’ e.g. couture clothes; being, having, or suggesting the style, quality, etc., of a fashion designer; very fashionable e.g. the couture look (http://dictionary.reference.com/browse/couture) or as fashion that is constructed by hand from start to finish, made from high quality, expensive, often unusual fabric and sewn with extreme attention to detail and finished by the most experienced and capable sewers, often using time-consuming, hand-executed techniques.

• Taking into account the mentioned visual, aural and to some extent conceptual coincidences, it is considered that the signs under comparison are similar to a low degree.

• According to the opponent, the earlier trade marks enjoy a high degree of distinctiveness as result of their long standing and intensive use in connection with all the goods on which the opposition is based.

• The evidence consists, in particular, of the following documents:

• A witness statement from Karim Gangji, a Director of Incos Limited, dated 19/06/2014, stating that Incos Limited is an exclusive licensee of Debonair since January 1999.The affidavit states that the products have been sold under the SO marks since 1994, when the range was launched by the original owner, Yardley and Company. In late 1998, Debonair acquired the SO brand and goodwill therein from Yardley and Company via the company Wasserstein and Co Inc.

• The affidavit states that the core target market for the SO products is the 14 to 17 year olds with average disposable funds and that the SO branded products are available in over 4 000 ordinary retail outlets, including Boots, Superdrug, Lloyds, other chemists, supermarkets including Sainsbury’s, Tesco, Asda and Morrison’s, other chain stores and independent stores. In the EU, the ‘SO’ branded products are available in a wide range of almost 3 800 stores, including: Prisma, S-Market, Sokos and Emotions, Kicks, Anttila and independent stores in Finland; Kruidvat in the Netherlands; Matas, Dansk Supermarket and independent stores in Denmark; Marionnaud in Austria and Italy; Boots, Tesco, McAuley’s, McCabe’s and Dunne’s in Ireland; Carrefour, Orphanides Hypermarkets, Smart, Papantoniou supermarkets, Alphamega and independent stores in Cyprus; Ahold, Ravena perfumeria and independent stores in the Czech Republic; independent stores in Malta and Poland; Barreiros Faria and independent stores in Portugal; and Kicks, ICA Kvantum, ICA Maxi and Gekäs in Sweden. The affidavit also states that the ‘SO’ branded products have won a number of reader awards from magazines.

• Registration details of the ‘SO’ trade marks in the European Union and Member States of the EU (Exhibit KG-1).

• Registration details of the ‘SO’ trade marks in countries outside the EU (Exhibit KG-2).

• A table setting out the number of 70 million of products sold by my the opponent in the EU under the indicated ‘SO’ marks between 2000 and 2013 (Exhibit KG-3).

• A selection of more than 150 sample invoices, covering the period from 14 February 2000 to 5 September 2011 concerning various ‘SO…?’ products destined for the UK, Ireland, Germany, France, Denmark, Sweden, Finland, the Netherlands, Austria, Italy, Spain, Portugal, Malta, Estonia, Lithuania and the Czech Republic (Exhibit KG-4).

• Examples of the packaging of ‘SO…?’ branded products (Exhibit KG-5).

• Examples of the advertisements promoting the SO brand in various magazines in the UK and the EU, such as Cosmopolitan, Cosmo Girl!, Sugar, Heat, Shout, Elle Girl, TV Hits, Pride, Beauty, Bliss, Reveal, Mizz, Top of the Pops, We♥ Pop, Hair Ideas placed between 1999 and 2012 (not on all magazines, dates are visible and sometimes dates are added by the opponent (Exhibits KG-6, 7 and 8).

• Examples of the above promotions. The opponent further promotes the SO…? products by giving away free, samples of the products, and by arranging giveaways of its ‘SO…?’ products in magazine competitions, with a magazine subscription offer or purchase of a magazine (Exhibit KG-9).

• A table setting out the visitors statistics for the SO websites in April, August, October, November, and December 2007 (Exhibit KG-10).

• Extracts from the opponent’s websites displaying the marks (Exhibit KG‑11).

• Examples of promotional events of the SO…? products (Exhibit KG-12).

• Examples of the opponent’s participation in trade exhibitions such as Cosmoprof in Bologna in 2007 and 2008 (Exhibit KG-13).

• Examples of promotional materials used in social networks and the promoting by bloggers, promotional articles about ‘SO…?’ products, such as recommendations (Exhibits KG-13 and 14).

• ‘SO…? Brand Information’, a survey carried out in 1998 by Taylor Nelson, an independent market information which groups, eleven to sixteen year olds and seventeen to twenty-four year olds. The purpose of the survey was to find out the percentage of brand usage for the following brands: SO…?, CK ONE, EXCLAMATION and CHARLIE (Exhibit KG‑15).

• A document showing a part of the ranking from 2005, conducted by EUROMONITOR showing that the SO…? brand is ranked 15^th top UK female fragrance brands by value along with the prestige fragrances such as Chanel and Estee Lauder (Exhibit KG-16).

• Previous decisions from the Institut National de la Propriété Industrielle dated 17/12/2013 (OPP 13-3712/FBR).

• Two decisions from the UK Trade Marks Registry.

• The evidence submitted by the opponent is not sufficient to demonstrate that the earlier trade marks have acquired an enhanced distinctiveness.

• Despite showing use of the earlier trade marks, the evidence does not provide any indication on the degree of recognition of the earlier trade marks by the relevant public. Although the opponent provided the amount of money invested in advertising (affidavit) and has shown advertisement efforts (advertisements in magazines, organising different promotions), there is no indication that the campaigns actually reached the relevant consumer and were successful.

• Almost all materials are coming directly from the opponent and not from any objective sources. Although the witness statement shows money invested in promoting a mark and regular sales under the mark, it does not provide sufficient information regarding the recognition of the mark and enhanced distinctiveness or reputation claimed. The statements made therein are not supported by independent evidence.

• The opponent did not submit any objective press releases stating that the mark is reputed, mostly sponsored advertisements. Moreover, many dates are added by the opponent or the dates on the magazine’s covers are not legible, which makes the evidence by the opponent even less reliable. The materials filed with a view to proving enhanced distinctiveness or reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on printed documents), are not apt for giving reliable information about the material time.

• It is correct that invoices, as concluded in one of the judgments submitted by the opponent, may be an evidence of reputation. However the evidence must be assessed as a whole and invoices are just one of the elements of this assessment. Further, as the opponent did not submit market share figures, there is no indication as to the size of the perfume market in the European Union or at least in the United Kingdom. In the absence of information about the perfume market and the opponent’s share thereof, the amount of sales demonstrated by the invoices merely show use but not enhanced distinctiveness.

• The evidence does not indicate the market share of the trade marks. As a result, the evidence neither proves that the trade marks are known by a significant part of the relevant public nor shows the degree of recognition of the trade mark by that public.

• The distinctive character of the earlier marks relies on their specific structure, including the three dots and the question mark, which, in their totality, give them a normal degree of distinctiveness.

Global assessment

• Depending on the marks compared, the goods have been found to be identical or highly similar and the signs have been found to be only lowly similar.

• As regards the signs, overall they show more dissimilarities than similarities. The mere coincidence in the short, weak word ‘SO’ cannot render the marks similar overall given the difference in their other elements. This is because in the case of the earlier marks, this element is combined with three dots and a question mark, converting the marks in a kind of question or doubt, which is not the case in the contested mark.

• The marks in conflict will be seen as a whole by the relevant public. It follows that it cannot be inferred from the position occupied by the element ‘SO’ in the earlier marks that it will attract consumers’ attention more.

• Taking into account that the common part of the signs is weak and the signs as a whole evoke a different concept due to the dots and question mark in the earlier marks, and other words insofar as they are perceived as meaningful, the differences in the final and more distinctive parts must be considered to enable this public to distinguish the marks even if they are used for identical goods.

• The relevant public is not likely to believe that the earlier marks and the contested sign originate from the same undertaking or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR. Therefore, there is no likelihood of confusion because the similarities between the signs are confined to weak elements.

• The opponent argues that it is the proprietor of a series of marks displaying commonly the element ‘SO’. All the earlier marks mentioned above display a common element ‘SO…?’. However, this common element is not reproduced in the contested application. Neither the three dots, nor the question mark is included in the mark applied for. It follows that the full element, which is at the basis of the family of marks claimed by the opponent, is not included in the mark applied for. Moreover, this element is sufficiently different from the beginning of the mark applied for.

• Even taking into account that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, 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.

• Neither Article 8(5) EUTMR nor Article 8(4) EUTMR is applicable with the consequence that the opposition has to be rejected as a whole.

7. On 25 January 2016, the opponent filed an appeal against the contested decision, requesting that the decision be as amended set aside as amended rejected. The statement of grounds of the appeal was received on 14 April 2016.

8. In its observations in reply received on 16 June 2016, the applicant requested that the appeal be dismissed.

Submissions and arguments of the parties

9. The arguments raised in the statement of grounds may be summarised as follows:

• The opponent’s licensee sells a range of perfumes, body sprays, shower gels and related goods under various of the above marks, primarily targeted at young women. This range has been for sale since 1994.

• The opponent is very well-known on this market, in particular in the UK and Ireland, and also in the Netherlands, Sweden and Finland. The opponent’s licensee also sells products in Denmark, Italy, Cyprus, the Czech Republic, Malta, Poland and Portugal through national retail chains and independent stores.

• Evidence of this was filed during the opposition (see witness statement from Karim Gangji and the exhibits thereto). This evidence included data regarding the sales of the opponent’s products (paragraphs 16 – 19 of the witness statement and Exhibit KG-3, supported by sample invoices in Exhibit KG-4), packaging samples (paragraph 23 and Exhibit KG-5), details of advertising and marketing expenditure (paragraphs 17, 24 and 25), sample advertisements (paragraph 26 and Exhibit KG-6), articles making reference to the opponent’s products (paragraph 27 and Exhibit KG-7), television and radio advertising (paragraph 28 and Exhibit KG-8), details of promotional competitions and giveaways (paragraph 29 and Exhibit KG-9), website extracts and visitor figures (paragraph 30 and Exhibits KG-10 and KG-11), promotional events (paragraph 31 and Exhibit KG-12), attendance at trade exhibitions (paragraph 31 and Exhibit KG-13), use of social networking and bloggers to promote the opponent’s products (paragraph 33 and Exhibit KG-14), magazine reader awards for the opponent’s products (paragraph 35), and consumer surveys and awards (paragraphs 36 – 38 and Exhibits KG-15 and KG-16). Karim Gangji’s witness statement is accompanied by a statement of truth, in accordance with local practice.

• With regard to the earlier marks, each of these marks contains the element ‘SO’, which is also present in the contested application. This element is at the start of each mark and is therefore significant in the overall visual, phonetic and conceptual impressions given by each mark. Some of the marks also contain a further element which is conceptually similar to the term ‘couture’; in particular, the marks ‘SO…? DESIRABLE’, ‘SO…? EXCLUSIVE’, and ‘SO…? GLAMOROUS’. All of these evoke the concepts of glamour, luxury, exclusivity and elegance that are evoked by the word ‘couture’. When the earlier marks are pronounced, the suspension dots ‘…’ and the question mark ‘?’ elements, which are present in the majority of the earlier marks, cannot be detected.

• The earlier marks form a family. The earlier marks are mainly in the form of ‘SO…? [adjective]’.

• The existence of the family of marks was confirmed (15/02/2007, R 951/2005-1, SO…? (et al.) / SO SOLID; 26/03/2013, R 203/2011-1, SO’ BiO etic (fig.) / SO...? et al.; (Annex 5 to the statement of grounds of opposition)). The form of the contested application is very similar to the form of the family of earlier marks, as it contains the word ‘SO’ followed by an adjective. Accordingly, the contested application is confusingly similar to the family of earlier marks.

• The finding that the contested application is confusingly similar to the opponent’s mark ‘SO…?’ is supported by the decision of the French Trade Marks Registry that the mark ‘SO…?’ and the contested application are indeed confusingly similar, a copy of which decision was filed as part of Annex 4 to the statement of grounds of opposition. The earlier marks, as a result of their longstanding and intensive use, as demonstrated in Karim Gangji’s witness statement and accompanying exhibits, have a reputation in at least the United Kingdom and Ireland, which reputation increases the likelihood of confusion of the average consumer as to the origin of goods sold under the contested application.

• The opponent disagrees with the conclusion that the marks are visually similar to a low degree, despite coinciding in their first two letters. It is established law that, as the average consumer reads from left to right, the attention of the average consumer will be drawn primarily to the beginning of the mark, and thus the visual impact of the first word of the mark will be greater than the visual impact of the remainder of the mark. The visual similarity between the marks in general should be considered higher than the low degree as determined the Opposition Division.

• The presence of the punctuation ‘…?’ will make no difference to the way in which the word ‘so’ is pronounced, and no difference to the intonation in which the mark is spoken. The opponent is not aware of any situation in which any person has pronounced the mark ‘SO…?’ with the intonation of a question. No evidence has been put forward to substantiate the assertion that any change in intonation would take place.

• However, even if that were accepted, the pronunciation of the initial word of the marks would remain the same, namely the normal manner in which the word ‘SO’ is pronounced, and accordingly the marks at issue coincide aurally in their first syllable, to which the attention of the consumer will primarily be drawn. The marks at issue are therefore aurally similar.

• The word ‘SO’ has no descriptive or laudatory meaning with respect to Class 3 goods. The word ‘SO’ on its own is essentially meaningless to the consumer, as, in order to function grammatically in either English or German, it needs to be accompanied by a following word to which it can act, for example, as an intensifier.

• Where the comparison is between the earlier mark ‘SO…?’ and the mark applied for, there is no conceptual similarity, as in the earlier mark the word ‘so’ stands alone and thus cannot adopt any particular meaning, whereas in the contested mark the word ‘so’ is positioned to function as a intensifier. However, in the earlier marks where ‘SO…?’ is followed by an adjective, the structure of the mark is similar as the word ‘SO’ in both cases can function as an intensifier.

• The concepts arising in the mind of the average consumer as a result of exposure to at least the marks ‘SO…? DESIRABLE’, ‘SO…? GLAMOROUS’, and ‘SO…? EXCLUSIVE’ will be perceived as similar to the concepts arising in the mind of the average consumer as a result of exposure to the word ‘SO COUTURE’.

• As explained during the opposition proceedings, with reference to Annexes 1–3 filed with the grounds of opposition, the word ‘couture’ is not only used commercially in the dictionary-definition sense referring to made-to-measure or bespoke clothing, but also is used to evoke an aura of luxury, glamour and exclusivity, partly as a result of the extremely high price of made-to-measure or bespoke clothing as made by couturiers, but also due to the publicity and the influence on the fashion world resulting from the styles of clothing and the make-up displayed in catwalk shows given by couturiers. It is well known that for couturiers the most profitable elements of their business are not the couture clothing for which they are mainly famous, but instead their lines of, in particular, accessories, cosmetics and perfumery which trade the impression of glamour, luxury and exclusivity conveyed by the catwalk clothing and make-up looks while remaining affordable to a much wider range of consumers.

• The word ‘couture’ is associated in the mind of the average consumer with concepts of glamour, luxury and exclusivity, and the mark ‘SO COUTURE’ will carry this aura, which clearly is conceptually similar to that conveyed by the earlier marks ‘SO…? DESIRABLE’, ‘SO…? GLAMOROUS’ and ‘SO…? EXCLUSIVE’.

• The average consumer, when considering the earlier marks or the mark applied for, will recognise that the dominant and distinctive component in each case is the word ‘SO’. This is because it appears at the beginning of the mark, both when it is seen and when it is pronounced. In the earlier mark SO…?, the word ‘SO’ is clearly the dominant and distinctive element as it is the only word present, the remainder of the mark being punctuation symbols.

• In the contested decision it was decided that the distinctive character of the earlier marks relies on the specific structure of the marks, including the three dots and the question mark. It is settled case-law that punctuation cannot form the dominant and distinctive element of the earlier marks, as the consumer naturally perceives word elements to be dominant over associated punctuation elements. The punctuation elements may serve to assist the word elements to communicate meaning, but they have no independent existence of their own. The punctuation element would therefore not be perceived as independently communicating trade origin. It serves to focus the attention back on the word ‘SO’ as the distinctive element of the mark.

• When assessing the dominant and distinctive elements of the signs, the opponent’s extensive use since 1994 of a family of marks beginning with ‘SO…?’, sales figures in Exhibit KG-3, supported by the invoices in Exhibit KG-4 from Karim Gangji’s witness statement, demonstrate sales throughout the EU of a wide range of ‘SO’ marks, ranging from around two million products in total in the year 2000 under thirteen different ‘SO’ marks (including the house mark ‘SO…?’ which appears on all of the opponent’s licensee’s products), to a total of just under seven million products in 2013 under a range of thirty four different ‘SO’ marks. The total number of products sold in the EU in the fourteen years from 2000 – 2013 is almost seventy million (see paragraph 19 from Karim Gangji’s witness statement). It has been demonstrated by the evidence that the opponent’s licensee spends considerable sums on advertising the ‘SO’ marks, with tables of expenditure between 1999 and 2011 being set out in paragraphs 24 and 25 from Karim Gangji’s witness statement, and examples of the magazine advertising and other promotional activities of the opponent’s licensee being detailed in paragraphs 26 – 33 therein and the respective exhibits thereto. The opponent’s licensee targets its products at teenage girls, in particular in the age range 14 – 17, but it should be noted that a significant proportion of the sales of ‘SO’ branded products arises from the sale of gift boxes, which may typically be bought by teenagers’ parents and other relatives, for example as Christmas presents, and thus the brand achieves high recognition from a wide age range as stated in paragraph 34 from Karim Gangji’s witness statement.

• This proven extensive and long-standing use of the mark within a significant proportion of the EU has led to the distinctiveness of the element ‘SO’ common to all of the opponent’s earlier rights having an enhanced distinctiveness for Class 3 goods.

• The dominant and distinctive element of the earlier marks, namely the word SO, is reproduced in the contested application, which element will be recognised by the average consumer as dominant and distinctive due to its position at the beginning of the mark, and, in respect of the earlier marks, due to the enhanced distinctiveness gained by the use of those marks, at least for consumers in the UK and Ireland. The average consumer will recognise the similarity in structure between the earlier marks with the form SO…? [adjective] and the contested application. There are earlier marks which have a conceptual similarity as a whole with the contested mark, namely ‘SO…? EXCLUSIVE’, ‘SO…? GLAMOROUS and ‘SO…? DESIRABLE’. The goods at issue are identical or highly similar. Accordingly, there is a likelihood of confusion in relation to the global assessment of the similarity between at least the marks ‘SO…?’, ‘SO…? EXCLUSIVE’, ‘SO…? DESIRABLE’ and ‘SO…? GLAMOROUS’ on an individual basis and the contested application.

• The earlier marks form a family of marks. The Opposition Division was willing to concede that the earlier marks formed a series of marks having the common element ‘SO…?’. However, it appears that the Opposition Division has conflated the test, as set out in Bainbridge for a given mark to qualify as part of a family of marks, with the test which must be carried out using the usual principles for a global assessment as to whether or not the average consumer would be likely to confuse the contested application with the family of marks. These tests are not the same.

• The existence of the family of marks shows that the consumer is aware of the existence of a number of marks beginning with the element ‘SO…?’ on the market for Class 3 goods. These marks enjoy a reputation within at least the UK and Ireland. As stated in Karim Gangji’s witness statement at paragraph 39, the consumer has been taught over the years to recognise that the brand brings out new products periodically using different marks beginning with SO…?, often in the form of ‘SO…?’ [adjective].

• The consumer has thus been educated to expect the appearance of new products under marks in this form. The consumer being familiar with the family of the earlier marks and with the release of new products under marks in the form of ‘SO…? XXX’, which have a similar structure to that, may cause the average consumer to associate them with the opponent’s licensee’s products. The overall structure of the contested application is similar to that of the family of earlier marks, in that they all begin with the word ‘SO’, and in many cases end with an adjective. A number of the earlier marks end with an adjective that is evocative of luxury, glamour or exclusivity, as is the word ‘couture’. Therefore ‘SO COUTURE’ is exactly the type of mark that the consumer will be familiar with insofar as it would be expected to form a further member of the opponent’s family of marks. Accordingly, there is a likelihood of confusion between the contested application and the opponent’s family of marks; the fact that the family of marks has a common element including punctuation would not undermine that conclusion. The punctuation is not a dominant or distinctive element of the earlier rights, and the consumer would overlook that, thus having an imperfect recollection of the earlier marks.

• Karim Gangji’s witness statement, and exhibits provide evidence that, by the filing date of the contested application, the opponent’s licensee was selling large quantities of products under the earlier marks (see paragraphs 16 and 19 from Karim Gangji’s witness statement and Exhibit KG-3) through high profile outlets (see paragraphs 21 and 22 from Karim Gangji’s witness statement). The opponent’s licensee advertised frequently in the most popular magazines for the target market (see paragraphs 24 – 27 from Karim Gangji’s witness statement along with Exhibits KG-6 and KG-7) which target market is 14 – 17 year old girls (see paragraph 18 from Karim Gangji’s witness statement). In addition to this, promotional events were being carried out (see paragraphs 29 and 31 from Karim Gangji’s witness statement along with Exhibit KG-9 and KG12) and the brand was being promoted via a website (see paragraph 30 from Karim Gangji’s witness statement). Independent surveys and awards voted by magazine readers and store users indicated that there was a high level of brand recognition on the target market (see paragraphs 34 – 38 and Exhibit KG-15 and KG16). Further, the goods under the earlier marks have been promoted by means of social networking and blogs (see paragraph 33 and Exhibit KG-14). Sales figures in Exhibit KG-3, supported by the invoices in Exhibit KG-4 from Karim Gangji’s witness statement, demonstrate sales throughout the EU of a wide range of ‘SO’ marks, ranging from around two million products in total in the year 2000 under thirteen different ‘SO’ marks (including the house mark ‘SO…?’ which appears on all of the opponent’s licensee’s products), to a total of just under seven million products in 2013 under a range of thirty four different ‘SO’ marks.

• That reputation is recognised in decisions (15/02/2007, R 951/2005-1, SO…? (et al.) / SO SOLID; 26/03/2013, R 203/2011-1, SO’ BiO etic (fig.) / SO...? et al.) in particular due to the long standing intensive use of the ‘SO…?’ marks over a substantial part of the European Union. The evidence on which the contested decision, and the ‘SO…? (et al.)’ decision (15/02/2007, R 951/2005-1, SO…? (et al.) / SO SOLID) have been based is to some extent the same. Essentially, the evidence submitted in the opposition proceedings leading to these two decisions, and in the present proceedings have been the same in so far as they relate to the same periods of time, with the evidence of use having been updated over time. Given that the evidence demonstrates that intensive and long-standing use of the marks within a substantial part of the EU has been conducted since 1994, the only reasonable conclusion from the evidence is that the reputation and distinctiveness of these marks have increased since the ‘SO’ BiO etic’ decision (26/03/2013, R 203/2011-1, SO’ BiO etic (fig.) / SO...? et al.).

10. The arguments raised in reply to the appeal may be summarised as follows:

• The marks are visually similar to a low degree. While the applicant does not dispute that the average consumer reads from left to right, it does not follow that the visual impact of the first word of the mark must be greater than the visual impact of the remainder of the mark. In fact the opposite is true in the present case. The element ‘SO’ is the least distinctive part of the opponent’s mark; it is the punctuation which follows ‘SO’ that has the greatest distinctiveness and is what the relevant consumer is likely to focus on.

• The opponent appears to be seeking to exert a monopoly over the common English word ‘SO’. However, the opponent's earlier marks do not consist of the word ‘SO’ alone. The grant of a monopoly in this word would create an unfair commercial state of affairs whereby the opponent would be able to prevent any use of the word ‘SO’ which, as the decision makes clear, can adopt a variety of meanings depending on the context in which it is used and should not be reserved for the sole use of one entity.

• The presence of the suspension dots with a question mark noticeably impacts the intonation when any one of the ‘SO...?’ marks is spoken. The opponent’s claimed lack of ‘awareness’ of a situation where ‘SO...?’ is spoken with the intonation of a question is entirely inconsequential and not evidential of anything. This is the natural reading of ‘SO...?’ and the very purpose of such punctuation is to effect a change in intonation. The burden of proof is therefore on the opponent that the relevant public has been educated to perceive ‘SO...?’ in a manner which would result in a non-questioning intonation. The opponent has notably submitted no such evidence.

• On the opponent’s final point with respect to aural similarity, the applicant disagrees that the consumer’s attention will primarily be drawn to the first syllable. The punctuation ‘...?’ creates a shift in intonation at the end of that first syllable, making the recipient of the sound expectant of what follows.

• The applicant agrees with the Opposition Division’s finding that the word ‘SO’ has a descriptive and/or laudatory meaning. The opponent’s claim that the word ‘SO’ is meaningless to the consumer cannot be supported, as it is an English word which has a dictionary definition.

• The applicant maintains its position with respect to the meaning of the word ‘couture’ in the sense that it is distinctive for the goods in Class 3. The applicant submits that the reason the Opposition Division did not take the ‘evidence’ submitted as Annexes 1-3 is because it was neither pertinent nor necessary, given the assessment to be made is that of what the average consumer would appreciate and understand.

• The applicant disagrees that the dominant and distinctive component of the applicant’s mark or the earlier marks is ‘SO’. The opponent seems to take the position that the punctuation of marks should be regarded as redundant in relation to the global assessment of the marks. This is not correct, not least due to the impact of the aforementioned punctuation on the earlier mark both visually and phonetically. It is difficult to believe that, at the origination of the ‘SO...?’ brand, the suspension dots and the question mark was included without any thought given to its impact. The naming of brands and products is often time-consuming with every letter and punctuation mark being the product of much discussion and analysis. The punctuation was included for a reason and its inclusion is not surprising given that ‘SO...?’ has a much more distinctive impression than the word SO per se. It is also notable that the punctuation ‘...?’ has been used consistently across the earlier marks. There is no variation in the style of punctuation. It is always three full stops without spacing followed immediately by a single question mark. This very strongly suggests that the opponent is perfectly aware of the importance of the element ‘...?’ and the distinctiveness of the ‘SO...?’ family of marks.

• The Opposition Division’s conclusion is a logical one made on the grounds that advertising campaigns are only made up in part on their content. Much, if not all, of their success lie in how they are received by their target audience. Without that knowledge it would not be fair to consider the advertising campaigns as evidence of anything other than how a product has been marketed.

• With regard to Karim Gangji’s witness statement, the fact remains that regardless of its veracity, it is not objective and independent evidence and so cannot be given the equal weight as evidence that possesses those characteristics.

• Even if the evidence presented by the opponent were taken at face value and relied upon as evidence of distinctiveness, that distinctiveness relates to the element ‘SO...?’ of the earlier marks and not the simple use of ‘SO’.

• The opponent has referred to appeal decisions (15/02/2007, R 951/2005-1, SO…? (et al.) / SO SOLID; 26/03/2013, R 203/2011-1, SO’ BiO etic (fig.) / SO...? et al.) as evidence of the recognition of the enhanced distinctiveness of the element ‘SO’. Earlier decisions are not binding and each case must be considered on its own merits and facts. In respect of the ‘SO' BiO etic’ decision (26/03/2013, R 203/2011-1, SO' BiO etic (fig.) / SO...? et al.) as the opponent itself states, the finding of enhanced distinctiveness relates to ‘SO...?’ i.e. the version of the mark with the punctuation and not simply the word ‘SO’; it does not demonstrate any prior finding of the enhanced distinctiveness of the element ‘SO’ alone. The relevant period in relation to ‘SO…? (et al.)’ decision (15/02/2007, R 951/2005-1, SO…? (et al.) / SO SOLID ) dates back to well over a decade ago and is wholly irrelevant to the present case.

• The distinctive element of the opponent’s trade marks is not merely the word ‘SO’ followed by another word but the word ‘SO’ followed by ‘...?’ and then a relevant word. It is the punctuation and its impact on the overall structure and pronunciation of the earlier marks that is the key issue and would certainly not be overlooked by the average consumer.

• The appeal is entirely without merit and should be rejected in its entirety.

Reasons

11. Regulation No 207/2009 of 26 February 2009 on the European Union trade mark was repealed by Regulation 2015/2424 of 16 December 2015 which entered into force on 23 March 2016. It was later removed and replaced by Regulation 2017/1001 of 14 June 2017 on the European Union trade mark with effect from 1 October 2017. However, given the time at which the facts forming the basis of the dispute were given, the present appeal must be examined on the basis of Regulation No 207/2009, in its original version (‘CTMR’).

12. The appeal complies with Articles 57, 58 and 59 CTMR. It is admissible.

Preliminary remark

13. The Board will examine the opposition based on Article 8(1)(b) CTMR and on earlier CTM No 485 078 ‘SO…?’ and only proceed to examine the other grounds invoked by the opponent when it is necessary.

Proof of use of earlier CTM No 485 078 ‘SO…?’

14. The applicant requested that the opponent file proof of use of several of the earlier marks, among them earlier CTM No 485 078 ‘SO…?’. The contested decision did not examine whether genuine use had been proven. However as is apparent from Article 42(2) CTMR, and following the settled case-law, genuine use of the earlier mark is a matter which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper. The request for proof of genuine use of the earlier mark therefore adds to the opposition procedure a specific and preliminary question and in that sense changes the content thereof (26/09/2014, T‑445/12, Kw surgical instruments, EU:T:2014:829, § 30 and case-law cited).

15. There is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

16. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43).

17. According to Rule 22(3) CTMIR the indications and evidence for the furnishing of proof of use shall concern the place, time, extent and nature of use of the trade mark for the goods and services in respect of which it is registered. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43).

18. The CTMR gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing. However, this does not mean that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 61; 24/05/2012, T‑152/11, Mad, EU:T:2012:263, § 33).

19. An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 36; 24/05/2012, T-152/11, Mad, EU:T:2012:263, § 34). Indeed, the sufficiency of the indications and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted.

20. The Board will therefore evaluate the evidence submitted in an overall assessment, taking into account all the circumstances of the case and assessing all the materials submitted in conjunction with each other.

21. The contested mark was published on 7 November 2013. The opponent was therefore required to prove that CTM No 485 078 ‘SO…?’ was put to genuine use in the EU during the period 7 November 2008 and 6 November 2013.

Time of use

22. It is not a matter of examining whether the trade mark has been put to continuous use over the course of the relevant period. It is sufficient that a trade mark has been put to genuine use during a part of that period (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 52-53).

23. Although some documents are not dated or are dated outside of the relevant period – as stated by the applicant – it must be noted, that Karim Gangji’s witness statement, a Director of Incos Limited, is very clear and well-structured and reinforced or confirmed by objective evidence.

24. Therefore, the applicant’s argument claiming that this affidavit lacks objectivity and is irrelevant must be rejected. It is true that that affidavit has been established as being in the opponent’s interest and that according to settled case-law, affidavits from a person who has close links with the party concerned are of lower evidential value than those from third parties and they cannot therefore, on their own, constitute sufficient proof of use of the mark. However, the affidavit in question is corroborated by other relevant evidence as in particular the invoices (Exhibit KG-4), the depiction of packaging (Exhibit KG-4) and the intensive advertising and promotional activity (Exhibits KG-6, 7, 8, 9, 12 and 13).

25. The invoices in Exhibit KG-4 consist of a selection of more than 150 sample invoices, covering the period from 14 February 2000 to 5 September 2011 concerning various ‘SO…?’ products destined for the UK, Ireland, Germany, France, Denmark, Sweden, Finland, the Netherlands, Austria, Italy, Spain, Portugal, Malta, Estonia, Lithuania and the Czech Republic. They clearly show that during a large part of the relevant period CTM No 485 078 has been sold to different customers within the EU.

26. The applicant contends that the opponent did not show that Incos Limited whose director is Karim Gangji, is the opponent’s exclusive licensee with the consequence that the use of that company would be without the opponent’s consent. These arguments have to be dismissed.

27. Karim Gangji’s witness statement, explained that his company, Incos Limited, is the opponent’s exclusive licensee with the consequence that the use by the said company amounts to a use with the opponent’s consent in the meaning of Article 15(2) CTMR. Moreover, pursuant to settled case-law, it is unlikely that the opponent would be in a position to submit evidence if the mark had been used against its wishes (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 25).

28. The applicant himself does not dispute that some of the evidence submitted by the opponent actually refers to the relevant time period. Therefore, the Board concludes that the evidence filed contains sufficient indications concerning the time of use.

Place of use

29. The territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors. Since the earlier mark is an EUTM, use of the mark had to be shown in the territory of the EU. This must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the European Union (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44).

30. It is not necessary that the mark should be used in an extensive geographic area for use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 54-55).

31. The relevant invoices clearly indicate that the products were addressed to customers in a large part of the EU namely, the UK, Ireland, Germany, France, Denmark, Sweden, Finland, the Netherlands, Austria, Italy, Spain, Portugal, Malta, Estonia, Lithuania and the Czech Republic (Exhibit KG-4). The fact that the opponent advertised and promoted the mark in a large number of magazines and through social media underlines the fact that the earlier mark is aimed at a wide audience within the whole EU (Exhibits KG-6, 7, 8, 9, 12 and 13).

32. The opponent does not contend that the earlier mark has not been used on the relevant territory, which is the whole EU and in consequence the Board notes that the evidence shows that the earlier mark has been used within the EU.

Extent of use

33. Concerning the extent of use to which the earlier mark has been put, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Nevertheless, use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

34. The Board emphasises that the requirement for the extent of use does not mean that the opponent has to reveal the entire volume of sales or turnover figures. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310,§ 72), whereby it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. There is no de minimis rule (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 25).

35. More than 150 sample invoices (Exhibit KG-4) referring to the UK, Ireland, Germany, France, Denmark, Sweden, Finland, the Netherlands, Austria, Italy, Spain, Portugal, Malta, Estonia, Lithuania and the Czech Republic show impressively the actual and intensive use of the earlier mark from the opponent`s side.

36. With respect to the abovementioned invoices within the EU it must be noted that they correspond to different customers, are not numbered consecutively, and relate to different years and months. They are, therefore, to be considered as examples which do not represent the overall amount of the actual sales of the products bearing the registered mark (08/07/2020, T‑686/19, Gnc live well, EU:T:2020:320, § 72).

37. The opponent’s efforts in marketing, promoting and advertising of the products under the earlier mark (Exhibits KG-6, 7, 8, 9, 12 and 14) reinforce the seriousness of use and show a more than sufficient volume of use. Although, the circulation figures of the magazines where the earlier mark is advertised as well as the visits on the social media have not been submitted – as stated by the applicant – it must be inferred from the huge amount of different advertisings and promotions in many magazines that a large part of the relevant consumers has been reached by those activities.

38. In light of the above, the Board concludes that the extent of use of the earlier mark is more than sufficient and satisfies the required level to this end.

Nature of use

39. The required ‘nature of use’ of the sign refers to: (a) use as a trade mark in the course of trade; (b) use of the mark as registered or of a variation thereof; and (c) use for goods and services for which it is registered.

Use as a trade mark in the course of trade

40. Genuine use of a trade mark requires that such mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the registered goods or services in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43). As such, the mark must be used to distinguish the goods and services offered by a specific undertaking.

41. It is evident that the opponent has shown that it uses the earlier mark in the market of fragrances. The invoices (Exhibit KG-4) and the packaging (Exhibit KG-5) clearly evidence this fact. The applicant did not dispute this aspect.

Use as registered

42. Article 18(1)(a) EUTMR states that use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark.

43. Following the invoices (Exhibit KG-4), the packaging material (Exhibit KG-5) and the whole advertising and promotional material (Exhibits KG-6, 7, 8, 9, 12 and 13), the earlier word mark, ‘SO…?’ has been used alone or in combination with other marks containing the earlier mark at their beginnings. In this context the Board underlines that following the case-law, it might well be that the use of a composite sign, may be sufficient in order to show genuine use of two registered marks (08/07/2020, T‑800/19, Air, EU:T:2020:324, § 17 and case-law cited).

44. The earlier mark has been used as registered.

Use in relation to the registered goods

45. Pursuant to Article 42(2) CTMR where the earlier CTM has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

46. The applicant puts forward that the opponent had only shown use for the goods, ‘fragrances, body sprays and deodorants’ (Class 3).

47. The Board agrees that the whole evidence submitted by the opponent does not cover all the goods for which the earlier CTM is protected and mainly refers to ‘fragrances’ and also to ‘toiletry preparations’.

Global assessment of the evidence

48. The Board has assessed all the evidence submitted together and considers that, although some items of proof may be outside the relevant period or undated, they contribute to substantiating the use together with other documents and information.

49. Karim Gangji’s witness statement, a Director of Incos Limited, is corroborated by objective evidence and therefore constitutes additional proof that the earlier CTM has been sufficiently put in use in the EU.

50. For reasons of procedural economy and for the purpose of further examination of the likelihood of confusion invoked, the Board will assume that the earlier CTM has been used for ‘fragrances’ (Class 3) and will refrain from further examining if the opponent has shown use for any further specific good in Class 3.

Likelihood of confusion (Article 8(1)(b) EUTMR)

51. Pursuant to Article 8(1)(b) EUTMR, a European Union trade mark application shall be rejected upon opposition where there is an earlier trade mark as referred to in Article 8(2) EUTMR and if, because of the identity with, or similarity to, the earlier sign and the identity or similarity between the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. A likelihood of confusion includes a likelihood of association with the earlier mark.

52. According to settled case-law, the risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C-39/97, Canon, EU:C:1999:323, § 17).

53. In line with the same case-law, a likelihood of confusion must be assessed globally, based on how the relevant public would perceive the marks and the goods in question and taking into account all factors relevant to the circumstance 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; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

The relevant public

54. Since the earlier mark is a CTM, the relevant territory is that of the whole EU.

55. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use the goods covered by the earlier mark and those covered by the mark applied for that were found to be identical or similar (24/05/2011, T‑408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited; 01/07/2008, T‑328/05, Quartz, EU:C:2009:450). Furthermore, the relevant public is identified by means of the nature of the goods covered by the marks in conflict.

56. For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

57. It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them that he or she has kept in his or her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

58. With respect to the goods in Class 3, they are everyday consumer goods which can be more expensive but also low cost. They target the general public who will have an average degree of attention when buying the confronted goods (07/02/2012, T‑305/10, Dynique, EU:T:2012:57, § 26; 16/12/2015, T-356/14, Kerashot, EU:T:2015:978, § 23).

Comparison of the goods

59. It is settled case-law that, in order to assess the similarity between the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37 and case-law cited).

60. The contested goods are ‘Make-up preparations’ (Class 3). They are similar to an average degree to the earlier ‘fragrances’ (Class 3) as they share hygiene and cosmetic properties, that is to say they aim to clean and beautify the human body and parts of it. ‘Fragrances’ are used to evoke a pleasant smell and therefore contribute to the beauty and aesthetic appearance of a person, as ‘make-up preparations’ obviously also do. On that point, beautification is not only obtained by the use of traditional means, such as make-up or other cosmetics, but also through the use of products as fragrances or perfumes (27/09/2007, T-418/03, La Mer, EU:T:2007:299, § 111; 27/07/2018, R 66/2018-4, Mata Hari (fig.) / Mata Hari, § 16). Since the conflicting goods share the same purpose they also target the same consumers. Normally they have the same producers and the same distribution channels as they are all sold in the same retail outlets and in the same section in supermarkets and stores (19/02/2018, R 902/2017-4, Venisage / Vernissage (fig.), § 37).

61. The parties do not contest the findings in the contested decision as regards the comparison of the goods.

62. Consequently, the Board finds the contested goods to be similar to an average degree to the earlier goods ‘fragrances’ (Class 3).

Comparison of the marks

63. The signs to be compared are:

    SO…?	SO COUTURE
    Earlier mark	Contested sign

64. With regard to the comparison between the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarities between the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

65. The assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 42).

66. According to the aforementioned case-law, it follows that it is necessary to assess the distinctive and dominant elements of the signs under comparison before assessing their visual, aural and conceptual similarities.

67. As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 35).

68. The applicant argues that the element ‘SO’ would be descriptive or laudatory. However, although ‘SO’ is a simple and common English word, in the Board’s opinion, it is a distinctive sign in relation to cosmetics and perfumes. The term may have various meanings but, without any further context, it will most likely be seen as an introduction, a beginning of a phrase or question and therefore creates certain suspense or expectation. Whether or not it is followed by suspension dots, the word ‘SO’ normally anticipates, requires an accompanying word or the continuation of the phrase. The term as such has no relationship with the goods at issue, it does not allude to their nature or qualities. Therefore, the Board considers that it is intrinsically of normal distinctiveness in relation to the goods concerned (15/02/2007, R 951/2005-1, ‘SO…?(et al.)/SO SOLID’, § 14).

69. Consequently, as the earlier mark consists of the word element ‘SO’ followed by three dots and a question mark and such punctuations, are generally not distinctive (30/09/2009, T‑75/08, !, EU:T:2009:374, § 29), the word element, ‘SO’, in the earlier mark is the dominant and intrinsically distinctive element and the applicant’s view that the element ‘…?’ is visually the most striking and distinctive element may not be upheld.

70. In a similar case, where the opposition was based on the same earlier mark as in the case at hand, the Court of Justice confirmed the General Court’s findings in its conclusion that the dots and the question mark were found to be negligible having regard to the single verbal element ‘SO’, taking into consideration that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end (28/02/2019, C‑505/17P, SO' BiO etic (fig.) / SO...? et al., EU:C:2019:157, § 52).

71. Within the contested mark, which consists of ‘SO’ and ‘COUTURE’, the opponent has explained and shown that part of the consumers within the EU will understand the meaning of ‘COUTURE’ as referring to a ‘made-to-measure or bespoke clothing’ but also as a laudatory evocation of luxury and high quality. The decision of the French Trade Mark Office, i.e. the Institut National de la Propriété Industrielle, dated 17/12/2013 (OPP 13-3712/FBR) reached the conclusion that the term ‘COUTURE’ is weak because it makes reference to producers of clothing who nowadays are also active on the beauty products and cosmetics market.

72. The applicant contests this finding by merely putting forward that the term ‘COUTURE’ would be allusive of goods in Class 25 but not in relation to the goods at hand. The Board concludes that ‑ as explained and shown by the opponent ‑ for part of the consumers within the EU, namely consumers from the English and French-speaking countries of the EU, the term ‘COUTURE’ is laudatory and weak for the goods under comparison.

The visual comparison

73. From the outset, it has to be stressed that the first element in the earlier mark, namely ‘SO’, is fully included at the beginning of the contested mark. In that regard, it must be borne in mind, first, that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar both visually and aurally and, secondly, that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact (08/06/2017, T‑341/13 RENV, So’bio etic (fig.) / SO...? et al., EU:T:2017:381, § 44; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26, 36 and cited case-law).

74. Moreover, as has been stated above, the differing elements between the marks, namely ‘…?’ of the earlier mark and the term ‘COUTURE’ of the contested sign are, at least for a relevant part of the consumers, weak and occupy a less prominent position compared to the term ‘SO’ in both marks.

75. Contrary to the applicant’s view of a visual dissimilarity, it follows from the foregoing, that for the English and French-speaking consumers within the EU, the marks are visually similar to at least an average degree.

The phonetic comparison

76. Phonetically, the earlier mark which consists of one syllable is fully contained in the contested mark, which following the case-law mentioned above in paragraph 70 leads already to a certain degree of similarity.

77. The applicant contends that the dots and the question mark in the earlier mark will cause a different intonation which allows the public to distinguish the marks due to the phonetic dissimilarity.

78. However, this approach cannot be followed. The suspension dots and question mark do not affect the pronunciation of the earlier mark in a way that it will be phonetically different to the contested sign (08/06/2017, T‑341/13 RENV, So’bio etic (fig.) / SO...? et al., EU:T:2017:381, § 50-51). Moreover, it must be recalled that the term ‘COUTURE’ is the second element within the contested sign and for part of the public, it will be laudatory and weak.

79. Aurally, the marks are similar to at most an average degree.

The conceptual comparison

80. From a conceptual point the earlier mark might be considered as an introduction to a question, however it does not convey any specific meaning in relation to the goods at hand. On the other hand the term ‘COUTURE’ in the contested sign refers for the English and French-speaking consumers to ‘high fashion’ and also to ‘luxury’. The impact of this conceptual meaning on the contested sign is however diminished due to its weakness in relation to the goods.

81. In light of the above, the signs are in particular visually but also aurally similar.

Distinctiveness of the earlier mark

82. The more distinctive the earlier mark, the greater the risk of confusion. Since protection of a trade mark depends on there being a likelihood of confusion, marks with a highly distinctive character, either per se, or because of the reputation 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).

83. Moreover, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by two trade marks is sufficient to give rise to the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 24).

84. The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without it necessarily having to have a reputation within the meaning of Article 8(5) EUTMR. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character because of the public’s recognition of it (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 24). Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the relevant public, the more the distinctive character of that mark is strengthened.

85. To support its claim, the opponent provided evidence which was considered insufficient to prove reputation according to the contested decision (see above § 6).

86. The opponent has produced a large amount of items. In particular it must be observed that the earlier mark has been used since 1994 in the whole EU and in particular in the UK. Mr Karim Gangji’s witness statement, a Director of Incos Limited, is supported by sufficient information corroborating its content as to the intensive use made, among others, of earlier EUTM No 485 078, ‘SO…?’.

87. Not only the invoices (Exhibit KG-4) but also the fact that the products sold under the ‘SO’ marks are available in 3 800 stores in a substantial part of the EU (paragraph 22 of the affidavit of Mr Karim Gangji) give already a clear indication of the penetration of the earlier mark on the corresponding market.

88. The longstanding and constant promotional and advertising activities in many magazines and on TV together with the organisations of events for young people (Exhibits KG-6, 7, 8, 9, 12, 13) evidence the opponent’s efforts to promote and render the earlier mark well-known among the relevant consumers, who are mainly teenagers and younger customers.

89. In this context, the number of 70 million products sold under the ‘SO’ marks between 2000 and 2013 (Exhibit KG-3) appears to be reasonable and true, and in particular the significant appearance of the ‘SO’ marks in many magazines sufficiently reinforces and underlines the conclusion that the earlier mark is well-known among the relevant consumers, and therefore enjoys an enhanced distinctiveness on the corresponding market.

90. Although, some of the evidence predates the relevant period, in terms of when the enhanced distinctive character has to be shown, namely 28 May 2013, taking all the evidence submitted into consideration, it is reasonable to assume that on the relevant date, the earlier mark still had an increased level of distinctive character.

91. From the evidence and also from Mr Karim Gangji’s witness statement (paragraph 39), it may be inferred that the enhanced distinctive character refers to the goods ‘fragrances’ (Class 3). This finding is in line with the conclusions reached by the General Court (08/06/2017, T‑341/13 RENV, So’bio etic (fig.) / SO...? et al., EU:T:2017:381, § 67).

Family of marks

92. The opponent put forward that it is the proprietor of a family of marks. In the case when an opposition is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, which may be the case, inter alia, either when they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion.

93. However, in order to show the existence of such a family of marks two conditions must be cumulatively satisfied.

94. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. For there to be a likelihood of confusion, the public has to be mistaken as to whether the trade mark applied for belongs to the series, the earlier marks forming part of that series must necessarily be present on the market. Since taking into account the serial nature of the earlier marks would entail widening the scope of protection of the trade marks forming part of the series, considered individually, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing, as in this case, the same distinctive element, and in the absence of any actual use of the marks, must be regarded as excluded (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 126).

95. Secondly, the common element must have a distinctive character (21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 116).

96. The opponent filed some packaging where earlier EUTMs No 3 188 091, ‘SO…? DESIRABLE’, No 3 188 083, ‘SO…? INSPIRED’, No 2 335 511, ‘SO…? KISS ME’, No 4 330 221 ‘SO…? SINFUL’ and No 4 246 311 ‘SO…? WILD’ (Exhibit KG-5) are depicted. The invoices (Exhibit KG-4) also show that the aforesaid marks have been used for ‘fragrances’.

97. All those marks have the same structure, namely at their beginnings the distinctive element, ‘SO’, followed by three dots, a question mark and one or two laudatory words which reinforce positive features or aspects of the goods promoting them as well. The common and outstanding element in all those marks is the element ‘SO’, which stands out and is separated from the rest by the dots and the question mark. It is likely that the element ‘SO’ catches the consumers’ attention who will recall that initial element of all those marks.

98. It follows that the opponent has shown that it owns a family of marks.

Overall assessment of the likelihood of confusion

99. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; 14/12/2006, T-81/03, T‑82/03 and T‑103/03, Mast-Jägermeister v OHIM — LicoreraZacapaneca (VENADO with frame and others), EU:T:2006:397, § 74).

100. The goods at issue have been considered similar to an average degree.

101. The signs are in particular visually but also aurally similar. There is no strong conceptual meaning which would counteract the mentioned similarities. Those who understand the meaning of ‘COUTURE’ in the contested mark, will consider its meaning as laudatory for the goods at issue.

102. In the case at hand it must be further pointed out that the goods covered by the marks at issue are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to those goods, the visual similarity between the signs will as a general rule be more important (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 61 and the case-law cited).

103. Additionally, the similarities between the marks lie in their initial parts which will mostly attract the consumer’s attention (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 07/09/2006, T‑133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 51; 16/10/2013, T‑328/12, Maxigesic, EU:T:2013:537, § 51). Moreover, the element ‘SO’ in the marks under comparison is the most distinctive one.

104. Moreover, taking the enhanced distinctive character of the earlier mark into consideration and the fact that it is the common element of a family of trade marks of the opponent, there is more than one argument to conclude that there is a likelihood of confusion on the market. With the element ‘SO’ at the beginning of the contested sign, the consumers with an average degree of attention will easily establish a link with the earlier mark and the family of marks to which it pertains. For those who understand the meaning of the expression ‘COUTURE’ at the end of the contested mark, this meaning is very similar to other laudatory terms used in the opponent’s family of marks as for example ‘FABULOUS’ or ‘GLAMOROUS’.

105. In light of the above, the Board concludes that at least for the English and French-speaking part of the EU the conditions as set out in Article 8 (1) (b) EUTMR are fulfilled and the opposition is to be upheld.

106. The applicant’s view to the contrary, namely that the dots and the question mark in the earlier mark and the term ‘COUTURE’ in the contested sign are the most distinctive and striking elements with the result that they avoid any likelihood of confusion between the marks, may not be upheld.

107. As indicated above under paragraph 70, both the Court of Justice and the General Court found that the dots and the question mark in the earlier mark were negligible. The term ‘COUTURE’ is for the English and French-speaking public laudatory and weak, as it suggests or alludes to a high quality of those goods.

108. Since the opposition is successful based on Article 8(1)(b) CTMR, there is no need to examine the other grounds invoked by the opponent.

Costs

109. Since the applicant is the losing party, it must bear the fees and costs of the opponent in accordance with Article 85(1) CTMR and Rule 94(1) CTMIR, namely the representation costs of the appeal proceedings of EUR 550 (Rule 94(7)(d)(v) CTMIR) and of the opposition proceedings of EUR 300 (Rule 94(7) (d)(ii) CTMIR) as well as the appeal fee of EUR 800 and the opposition fee of EUR 350 (Rule 94(6) CTMIR).

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision and rejects the contested trade mark.

2. Orders the applicant to bear the opponent’s costs in the appeal and in the opposition proceedings of EUR 2 000.

Signed V. Melgar

Signed C. Govers

Signed A. Pohlmann

Registrar: Signed H.Dijkema