OPPOSITION No B 2 378 852

American International Industries (General Partnership), 220 Gaspar Ave., Los Angeles, California 90040, United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Essential Nail Products Limited, Manor Road, Haverhill, Newmarket CB9 0EP, United Kingdom (applicant), represented by Loven Patents & Trademarks Limited, 3 Checkpoint Court, Sadler Road, Lincoln LN6 3PW, United Kingdom (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 378 852 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 651 121. The opposition is based on:

1. Community trade mark registration No 9 447 699 ‘GEL-LAC’;

2. Community trade mark registration No 9 713 066 ;

3. well-known trade mark ‘GELAC’ in all countries of the European Union;

4. well-known trade mark in all countries of the European Union;

5. non-registered trade mark ‘GELAC’ in all countries of the European Union;

6. non-registered trade name ‘GELAC’ in all countries of the European Union;

7. non-registered trade mark in all countries of the European Union;

8. non-registered trade name in all countries of the European Union;

9. Benelux trade mark registration No 201 105 ;

10. Portuguese trade mark registration No 485 848 ;

11. Czech trade mark registration No 321 799 ;

12. Spanish trade mark registration No 2 984 910 ;

13. Austrian trade mark registration No 2 643 305 ;

14. Maltese trade mark registration No 50 514 ;

15. Hungarian trade mark registration No 205 128 ;

16. Danish trade mark registration No VR2011 02 198 ;

17. Slovenian trade mark registration No 2011 70 638 ;

18. Slovak trade mark registration No 231 474 ;

19. Estonian trade mark registration No 50 261 ;

20. Bulgarian trade mark registration No 81 921 ;

21. French trade mark registration No 3 842 967 ;

22. Cypriot trade mark registration No 79 471 ;

23. German trade mark registration No 302 011 028 247 ;

24. Finnish trade mark registration No 252 701 ;

25. Irish trade mark registration No 245 476 ;

26. Lithuanian trade mark registration No 65 178 ;

27. Latvian trade mark registration No M 64 356 ;

28. Swedish trade mark registration No 506 515 ;

29. Italian trade mark registration No 1496 405 .

All of the earlier rights cover goods in Class 3. The opponent invoked Article 8(1)(b), for the registered trade marks and for the well-known marks, as well as Article 8(5) CTMR for the registered trade marks and Article 8(4) CTMR for the remaining non-registered rights.

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) CTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory - according to Rule 19(2)(b) CTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based, and in particular national registered trade marks 9 to 29 and well-known marks 3 and 4.

On 18/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/11/2014.

The opponent did not submit any evidence concerning the substantiation of well-known marks 3 and 4 or national trade marks 9 to 29.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on earlier rights 3 and 4 and 9 to 29.

The Opposition Division will examine the opposition based on the first ground invoked, namely Article 8(1)(b) CTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 9 713 066 (trade mark 2 above).

1. The goods

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

Class 3: False nails; nail care preparations; nail enamel; nail polish; nail polish base coat; nail polish remover; nail polish top coat; nail strengtheners; nail-polish removers.

The contested goods are the following:

Class 1: Acrylic monomers and polymers for creating and maintaining artificial nails; resin preparations for creating and maintaining artificial nails; activator preparations for use with artificial nails.

Class 3: Nail varnishes; nail polish; nail enamel; nail base coat and top coat; nail gel; nail glitter; nail art stickers; nail hardeners (cosmetics); nail polish remover; nail glue; adhesives for nails; nail strengtheners; nail care preparations; manicure and pedicure lotions; emery boards; nail treatment creams; false (artificial) nails; nail tips; lacquer for cosmetic purposes; lacquer removing preparations; nail cream; artificial nail care preparations; adhesives for fixing artificial nails; UV gel nail polishes; airbrush nail polishes and varnishes; gel preparations for treating and maintaining artificial nails; acrylic primers for creating and maintaining artificial nails; preparations and wraps for removing and soaking off artificial nails and gel nails; preparations for use on the cuticles and nail surrounds; toe separators; nail care kits; nail art stencils; self-adhesive nail stickers; decorative nail transfers; foil nail art wraps; adhesive for applying nail art and nail tip extensions; skin jewels, including glitter and diamante; body art paint; body art stencils; tooth jewels; cleaning preparations for nail brushes; cotton wool for cosmetic use; wipes for cosmetic use; artificial tanning preparations; sun-tanning and sun protection preparations; after-sun preparations; false eye lashes; cosmetic bags.

Class 11: Apparatus for lighting and heating; apparatus for drying and ventilating; hand drying apparatus; ultra-violet lamps; ultra-violet lamps for curing resins; UV lamps and lightboxes for use in manicures and curing nail resins.

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.

Both marks cover goods that relate to nails, including artificial nails. Artificial nails are coverings placed over fingernails as fashion accessories. Artificial nails are made from a wide variety of materials.

Contested goods in Class 1

The contested acrylic monomers and polymers for creating and maintaining artificial nails; resin preparations for creating and maintaining artificial nails; activator preparations for use with artificial nails are raw and semi-finished chemicals. These chemicals are sold not directly to end consumers but to manufacturers of nail preparations, nail removal goods and nail after-care goods.

Although major chemical companies are usually involved in the production of all kinds of basic chemicals, speciality chemicals and consumer products, such as cosmetics, when comparing these goods, the mere fact that their nature is the same, as all of them can widely be classified as chemical products, is not sufficient to find them similar. Special attention must be given to their specific purpose, target public and distribution channels. Although the opponent’s goods in Class 3 are usually combinations of various chemicals, they are not, in principle, considered similar to goods in Class 1. Their purpose as finished products usually differs from that of goods in Class 1, which are mainly raw, unfinished chemicals that have not yet been mixed with other chemicals and inert carriers to create a final product. Furthermore, the finished products in Class 3 usually target a different public from and do not have the same distribution channels as goods in Class 1. They are dissimilar.

Contested goods in Class 3

The contested nail varnishes; nail polish; nail enamel; nail base coat and top coat; nail gel; nail glitter; nail hardeners (cosmetics); nail polish remover; nail strengtheners; nail care preparations; manicure and pedicure lotions; nail treatment creams; false (artificial) nails; nail tips; lacquer for cosmetic purposes; lacquer removing preparations; nail cream; artificial nail care preparations; UV gel nail polishes; airbrush nail polishes and varnishes; gel preparations for treating and maintaining artificial nails; preparations and wraps for removing and soaking off artificial nails and gel nails; preparations for use on the cuticles and nail surrounds; nail care kits are identical to the opponent’s false nails; nail care preparations; nail enamel; nail polish; nail polish base coat; nail polish remover; nail polish top coat; nail strengtheners; nail-polish removers, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in or overlap with the contested goods or vice versa.

The contested nail glue; adhesives for nails; nail art stickers; emery boards; adhesives for fixing artificial nails; acrylic primers for creating and maintaining artificial nails; nail art stencils; self-adhesive nail stickers; decorative nail transfers; foil nail art wraps; cleaning preparations for nail brushes; adhesive for applying nail art and nail tip extensions; toe separators are all products used in relation to nails and are highly similar to the opponent’s goods in the same class, as they can have the same origin, they are complementary, they have the same distribution channels and the same public, and their purpose is the same, namely enhancing nail beauty and care.

The contested skin jewels, including glitter and diamante; body art paint; body art stencils; tooth jewels; artificial tanning preparations; sun-tanning and sun protection preparations; after-sun preparations; false eye lashes; cotton wool for cosmetic use; wipes for cosmetic use; cosmetic bags are similar to the opponent’s goods in the same class, as they can have the same distribution channels, the same general purpose, namely to enhance the appearance, and the same target public.

Contested goods in Class 11

The contested apparatus for lighting and heating; apparatus for drying and ventilating; hand drying apparatus; ultra-violet lamps; ultra-violet lamps for curing resins; UV lamps and lightboxes for use in manicures and curing nail resins are appliances that can be used in beauty salons, in particular during manicures and pedicures. Nevertheless, although these goods can be used with the opponent’s goods relating to nails, it is not likely that the public would believe that they had the same origin, as the opponent’s goods are cosmetics and the contested goods are appliances and lamps. Therefore, they do not have the same purpose, the same sales outlets or the same target public. They are dissimilar.

2. The signs

	GELAZE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the letters ‘GELA’. However, they differ in the last letter, ‘c’, of the earlier trade mark, in the stylisation of the letters (i.e. the typeface used) in the earlier mark and in the last letters, ‘ZE’, of the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the pronunciation of the letters ‛GELA’ present in both signs, and to that extent the signs are aurally similar. The pronunciation of the last letter, ‘c’, does not significantly alter the pronunciation of the earlier sign, as it is pronounced together with the letter ‘a’. The marks differ in the ending, ‘ZE’, of the contested sign, which in certain languages, such as English, Spanish, Italian and German, clearly adds a syllable to the word, thus creating an intonation that is different from that of the earlier mark. Even in the languages in which no additional syllable is created, the different ending would be noticed, since the earlier mark ends in the plosive sound ‘k’, whereas the contested sign ends in a sibilant, ‘z’.

Conceptually, although the signs as a whole have no meaning, both signs start with the word ‘GEL’ (short for gelatine), referring to a fluid substance; this word will be understood by English-, German-, French-, Spanish-, Italian-, Polish- and Swedish-speaking consumers, especially considering the nature of the relevant goods, which are or relate to gels for nails. There are many types of goods that relate to nails, and gels are one of them, including soak-off gels, builder gels, sculpturing gels, glitter gels, colour gels and removal gels. The signs are conceptually similar, as they both start with the word ‘GEL’, for the part of the public that understands the meaning of this word. For the rest of the public, the conceptual comparison has no influence on the outcome, as neither of the signs conveys a clear meaning.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element that the signs have in common, ‘GEL’, will be understood by part of the public as referring to a fluid substance. Bearing in mind that some of the relevant goods are gels that are used for nail care, it is considered that this element is non‑distinctive for these goods. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The mark has a normal degree of distinctiveness, despite the presence in the mark of an element that is non‑distinctive, as explained above in section c) of this decision.

5. 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 found to be identical or similar to different degrees are directed at the public at large and a specialised public with specific professional knowledge or expertise. The degree of attention is average, considering the nature of the goods.

6. Global assessment, other arguments and conclusion

The goods are identical, similar to different degrees and dissimilar. The earlier trade mark is distinctive as a whole, even though it includes the word ‘GEL’, which is descriptive for some of the relevant goods in Class 3 in the most spoken languages in the European Union. The mark has a normal degree of distinctiveness owing to the addition of the letters ‘AC’ at its end. The handwriting-style typeface does not add much to the mark’s distinctive character, but is nonetheless an additional point of difference between the marks. The contested sign also starts with the word ‘GEL’, but the addition of the letters ‘AZE’ at its end makes it distinctive overall.

It is considered that the different endings of the marks, which result in aural differences in some of the relevant languages (creating an additional syllable in the contested sign), together with their visual differences in length and the graphic depiction of the earlier mark, are sufficient to counterbalance their similarities. The conceptual similarities have no impact on the global assessment, since the marks coincide in the concept of ‘GEL’, which is descriptive for some of the relevant goods and is understood in the languages most spoken in the European Union.

A similarity in an element with a low degree of distinctiveness will not normally, in itself, lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or have an insignificant visual impact and the overall impressions created by the marks are similar. There may also be likelihood of confusion if the overall impressions created by the marks are highly similar or identical. In comparing the signs and ‘GELAZE’, it has been found that their different endings create different intonations in some languages, and the graphic depiction of the earlier mark is sufficient to give it a different overall impression from that of the contested sign, including for the part of the public not understanding the meaning of ‘GEL’.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

Community trade mark registration No 9 447 699 ‘GEL-LAC’ (trade mark 1 above), registered for nail care preparations, nail varnish, artificial nails in Class 3.

The other earlier right invoked by the opponent is less similar to the contested mark than the one that has already been compared, because it is composed of two word elements separated by a hyphen. Moreover, it covers a narrower scope of goods. Therefore, the outcome cannot be different.

The Opposition Division will examine the opposition based on the other grounds invoked by the opponent.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) CTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) CTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks for which reputation was claimed, namely earlier trade marks 1 and 2 for goods in Class 3 (reputation was also claimed for all the national trade marks from 9 to 29, which were not substantiated).

On 18/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/11/2014. It was extended until 23/03/2015.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based for this ground.

Given that one of the necessary requirements of Article 8(5) CTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) CTMR

According to Article 8(4) CTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier signs, namely non-registered marks 5 and 7 and trade names 6 and 8, in the course of trade.

On 18/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/11/2014. It was extended until 23/03/2015.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) CTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned and for non-registered marks 5 and 7 and trade names 6 and 8.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ana MUÑIZ RODRÍGUEZ

Jessica Norma LEWIS

Isabel de ALFONSETI HARTMANN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.