OPPOSITION No B 2 506 346

Difusion Consumo, S.L., Ronda Santa Maria 200, 08210 Barbera Del Valles, Barcelona, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Kur-Apotheke, Inh. Sabine Wölfer e.K., Ludwigstraße 9, 83435 Bad Reichenhall, Germany (applicant), represented by Jan-David Hecht, Ranstädter Steinweg 28, 04109 Leipzig, Germany (professional representative).

On 17/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 506 346 is partially upheld, namely for the following contested goods:

Class 3: Cosmetics; cosmetic products, in particular in the form of liniments, including ointments, balms; shaving preparations; soaps; bath balms, cosmetic preparations for baths; bath salts, not for medical purposes (repeated twice); bath preparations, not for medical purposes; balms other than for medical purposes; deodorants for human beings; disinfectant soap; deodorant soap; foot balms; witch hazel soaps; shampoo; lip gloss; lipstick; lotions for cosmetic purposes; make-up; medicated soap; cleansing milk for toilet purposes; cosmetic salts, not for medical purposes; cosmetic preparations for slimming purposes; cosmetic masks; vitamin body butter.

Class 44: Beauty salons and visagists’ services.

2. European Union trade mark application No 12 886 305 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 886 305. The opposition is based on European Union trade mark registration No 14 274. The opponent invoked Article  8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 13/01/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 13/01/2010 to 12/01/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Depilatories, toilet soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods in respect of which it is registered and on which the opposition is based.

On 10/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/01/2016 to submit evidence of use of the earlier trade mark. On 15/01/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is, in particular, the following:

• Three printouts in Spanish from the opponent’s website, taky.es, dated 11/01/2016, with a copyright date of 2014, which contain several images of different kinds of depilatory products, for instance body strips, body roll-on, body wax and body cream, all bearing the mark .

• A set of 45 invoices, dated between June 2010 and December 2014, referring to the earlier mark ‘TAKY’ in relation to various types of depilatory creams and waxes and face and body depilatory strips, all of which are addressed to clients in Bulgaria, Cyprus and Portugal. The invoices were issued by Laboratorios Byly, S.A.

• Three declarations, dated January 2016, issued by three different distributors of ‘TAKY’ products. Two, in English, are from distributors in in Bulgaria and Cyprus and the other, in Spanish, from a distributor in Portugal. The declarations state that those companies began to distribute the opponent’s products in April 2012 (Bulgaria), September 2008 (Cyprus) and February 2011 (Portugal).

• Sales figures, originating from the opponent, for the range of products commercialised under the name ‘TAKY’ for the years 2011, 2012, 2013, 2014 and 2015 in Bulgaria, Cyprus and Portugal.

• A variety of supermarket flyers distributed in Bulgaria, Cyprus and Portugal and printouts from magazines published in these countries in which the mark appears in relation to depilatories, all dated between 2012 and 2014.

According to Article 15(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor.

At the evidence stage it is prima facie sufficient that the opponent submits only evidence that a third party has used the mark. The Office infers from such use, in combination with the opponent’s ability to present evidence of it, that the opponent has given prior consent.

In the present case, the opponent had clarified that it is an authorised distributor of the goods manufactured by Laboratorios Byly, S.A. Therefore, the use by Difusion Consumo, S.L. is considered authorised use.

Place and time of use

The evidence submitted by the EUTM proprietor shows without any doubt that the place of use is Bulgaria, Cyprus and Portugal. This can be inferred from the invoices, which are addressed to clients in Bulgaria, Cyprus and Portugal, and from the supermarket flyers and magazine printouts. All the evidence is dated within the relevant period. Therefore, the evidence of use filed by the opponent contains sufficient indication concerning the place and time of use.

Extent of use

Concerning extent of use, it is settled case law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

In the present case, the documents filed, namely invoices and sales figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of part of the goods on which the opposition is based, namely depilatories.

Nature of use

Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as the differing elements do not alter the distinctive character of the trade mark and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, EU:T:2006:65, § 50).

In the present case, the opponent has used the earlier mark in its word form, ‘TAKY’, and in its figurative form, . However, since the figurative form merely consists of the representation of the word ‘Taky’ in a white fairly stylised typeface set against a purple background, which are common features normally used on labels of the products in question, it cannot be considered a modification capable of altering the distinctive character of the trade mark. Therefore, not only the word form but also the figurative one constitutes use of the mark.

Moreover, the Court of Justice has held that there is ‘genuine use’ of a mark where it 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. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark 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.

In the present case the evidence shows genuine use of the trade mark for depilatories in Class 3. Therefore, the Opposition Division will only consider these goods in its further examination of the opposition.

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

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

1. The goods and services

The goods on which the opposition is based and in relation to which genuine use of the earlier mark has been proven are the following:

Class 3: Depilatories.

The contested goods and services are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, dentifrices; alum stones [astringents]; breath freshening strips; breath freshening sprays; ethereal essences; bath balms; bath salts, not for medical purposes; cosmetic preparations for baths; bath preparations, not for medical purposes; balms other than for medical purposes; bleaching salts; bleaching soda; spring salts, inhalation salts, salts for gargling and bath salts, not for medical purposes; deodorants for human beings or for animals; disinfectant soap; deodorant soap; foot balms; witch hazel soaps; cosmetic products, in particular in the form of liniments, including ointments, balms; shampoo; lip gloss; lipstick; lotions for cosmetic purposes; make-up; medicated soap; unblocking drain pipes (preparations for -); dental rinses, non medicated; washing soda, for cleaning; soda lye; shaving preparations; cleansing milk for toilet purposes; dentures (preparations for cleaning -); cosmetic salts, not for medical purposes; scented oils for use in saunas; cosmetic preparations for slimming purposes; cosmetic masks; vitamin body butter; all the aforesaid goods, including being manufactured with mountain pine extracts or mountain pine oil; parts, components and accessories for all the aforesaid goods (included in class 3).

Class 5: Dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; material for stopping teeth, dental wax; laxatives; medical preparations for slimming purposes; slimming pills; appetite suppressants for medical purposes; appetite suppressant pills; medicines for human purposes; medicines for veterinary purposes; medicines for dental purposes; eye-washes; bath salts for medical purposes; bath preparations for medical purposes; therapeutic preparations for the bath; spring salts, inhalation salts, salts for gargling and bath salts for medical purposes; dietetic substances adapted for medical use; alcoholic liniment gel; remedies for foot perspiration; remedies for perspiration; cough mixtures; potassium salts for medical purposes; medicinal beverages and infusions; medicinal foodstuffs enriched with vitamins and minerals; sea water for medicinal bathing; mineral waters for medical purposes; minerals for medical purposes; mineral water salts; food supplements with a base of vitamins and/or minerals and/or trace elements; dietary supplements in the form of dragées, capsules, tablets or chewable tablets based on plants and/or plant constituents and/or plant substances; nasal drops; bicarbonate of soda for pharmaceutical purposes; sodium salts for medical purposes; non-medical food supplements; lozenges for pharmaceutical purposes; pharmaceutical preparations in the form of liniments (including ointments, balms), soft and hard gelatine capsules, dragees, hard and effervescent tablets, powders, granules and bath preparations; rubbing alcohol, carmelite water; smelling salts; ointments, including being fortified with menthol and being rheumatism and nerve remedy ointment; salts for medical purposes; salts for mineral water baths; vitamin sweets for medical purposes, including sugar-free; all the aforesaid goods, including being manufactured with mountain pine extracts or mountain pine oil; parts, components and accessories for all the aforesaid goods (included in class 5).

Class 44: Medical services; agriculture, horticulture and forestry services; aromatherapy services; pharmaceutical consultation; health spa services; salt caves for halotherapy; medical assistance; health centers; clinics, health clinics, rehabilitation centres, sanatoriums, beauty salons; visagists’ services; services provided by medical and health care facilities specialising in medicine and in naturopathy, dietetics and nutrition, and consultancy relating thereto; massage; nutrition research and clinical analysis; therapeutic and medical care and support; pharmacists’ services to make up prescriptions; all the aforesaid services, including on a franchise basis.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

In relation to the applicant’s list of goods in Classes 3 and 5, it should be noted that the expression ‘all the aforesaid goods, including being manufactured with mountain pine extracts or mountain pine oil’ does not influence the outcome of this comparison since these characteristics do not alter the basic nature of the goods. Therefore, these characteristics will not be considered further in the following assessment.

Contested goods in Class 3

The contested cosmetics and cosmetic products, in particular in the form of liniments, including ointments, balms; parts, components and accessories for all the aforesaid goods include, as broader categories, the opponent’s depilatories. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested shaving preparations; parts, components and accessories for all the aforesaid goods are similar to a high degree to the opponent’s depilatories, as they have the same purpose, namely to remove unwanted hair from the body, and the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested soaps; bath balms, cosmetic preparations for baths; bath salts, not for medical purposes (repeated twice); bath preparations, not for medical purposes; balms other than for medical purposes; deodorants for human beings; disinfectant soap; deodorant soap; foot balms; witch hazel soaps; shampoo; lip gloss; lipstick; lotions for cosmetic purposes; make-up; medicated soap; cleansing milk for toilet purposes; cosmetic salts, not for medical purposes; cosmetic preparations for slimming purposes; cosmetic masks; vitamin body butter ; parts, components and accessories for all the aforesaid goods are beauty and body care products. The goods on which the opposition is based, depilatories, are also used for personal hygiene, and especially for removing unwanted hair from the body. Despite the specific purpose of the opponent’s goods, all these goods still have the same broad purposes, namely taking care of, and improving, one’s personal appearance, hygiene and attractiveness. They have the same distribution channels, they may be found in the same sections of department stores or in specialised shops by the same type of consumer and they are often manufactured by the same companies. Therefore, they are similar.

The contested perfumery, essential oils, dentifrices; alum stones [astringents]; breath freshening strips; breath freshening sprays; ethereal essences; bleaching salts; bleaching soda; spring salts, inhalation salts, salts for gargling, not for medical purposes; deodorants for animals; unblocking drain pipes (preparations for -); dental rinses, non medicated; washing soda, for cleaning; soda lye; dentures (preparations for cleaning -); scented oils for use in saunas; parts, components and accessories for all the aforesaid goods are dissimilar to the opponent’s depilatories, as they do not coincide in nature, purpose, method of use, producers, end users or, in some cases, distribution channels.

Contested goods in Class 5

The contested dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; material for stopping teeth, dental wax; laxatives; medical preparations for slimming purposes; slimming pills; appetite suppressants for medical purposes; appetite suppressant pills; medicines for human purposes; medicines for veterinary purposes; medicines for dental purposes; eye-washes; bath salts for medical purposes; bath preparations for medical purposes; therapeutic preparations for the bath; spring salts, inhalation salts, salts for gargling and bath salts for medical purposes; dietetic substances adapted for medical use; alcoholic liniment gel; remedies for foot perspiration; remedies for perspiration; cough mixtures; potassium salts for medical purposes; medicinal beverages and infusions; medicinal foodstuffs enriched with vitamins and minerals; sea water for medicinal bathing; mineral waters for medical purposes; minerals for medical purposes; mineral water salts; food supplements with a base of vitamins and/or minerals and/or trace elements; dietary supplements in the form of dragées, capsules, tablets or chewable tablets based on plants and/or plant constituents and/or plant substances; nasal drops; bicarbonate of soda for pharmaceutical purposes; sodium salts for medical purposes; non-medical food supplements; lozenges for pharmaceutical purposes; pharmaceutical preparations in the form of liniments (including ointments, balms), soft and hard gelatine capsules, dragees, hard and effervescent tablets, powders, granules and bath preparations; rubbing alcohol, carmelite water; smelling salts; ointments, including being fortified with menthol and being rheumatism and nerve remedy ointment; salts for medical purposes; salts for mineral water baths; vitamin sweets for medical purposes, including sugar-free; parts, components and accessories for all the aforesaid goods have nothing in common with the opponent’s depilatories. The goods under comparison have a different nature, purpose and method of use. They do not have the same commercial origin or distribution channels. The goods under comparison are neither used in combination nor are they in competition. Therefore, since none of the relevant Canon criteria is applicable, the goods at issue are found to be dissimilar.

Contested services in Class 44

The contested in beauty salons and visagists’ services are similar to a low degree to the opponent’s depilatories, as they may coincide in distribution channels and relevant public. Furthermore, they are complementary.

The contested medical services; agriculture, horticulture and forestry services; aromatherapy services; pharmaceutical consultation; health spa services; salt caves for halotherapy; medical assistance; health centres; clinics, health clinics, rehabilitation centres, sanatoriums, services provided by medical and health care facilities specialising in medicine and in naturopathy, dietetics and nutrition, and consultancy relating thereto; massage; nutrition research and clinical analysis; therapeutic and medical care and support; pharmacists’ services to make up prescriptions; all the aforesaid services, including on a franchise basis do not have anything in common with the opponent’s depilatories. Furthermore, in addition to having a different nature and purpose, they are neither complementary nor in competition. They differ in their distribution channels and are provided by different companies. Therefore, they are considered dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar (to various degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

TAKY	LAKI
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

Visually, both signs are word marks and they coincide in their second and third letters, ‘AK’. However, they differ in their first and last letters, namely ‘T-Y’ and ‘L-I’, respectively.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AK’, present identically in both signs. Furthermore, it should be noted that, in Italian, there is no difference in the pronunciation of the letters ‘Y’ and ‘I’; therefore, the marks are also similar in the pronunciation of their final vowels. The pronunciation differs only in the sound of the first letter, ‛T’, of the earlier sign, which has ‘L’ as its counterpart in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances 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).

The conflicting goods and services are identical, similar to various degrees and dissimilar, and the degree of attention is average. The signs are visually similar to an average degree and aurally similar to a high degree because they differ in their first and last letters, ‛T-Y’ and ‘L-I’, respectively. However, for the Italian public, the difference in the last letters, ‘I’ and ‘Y’, has a limited impact when assessing the likelihood of confusion, as explained above.

Therefore, considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 14 274. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

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

COSTS

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

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

The Opposition Division

Claudia ATTINÀ

Ana MUÑIZ RODRÍGUEZ

Adriana VAN ROODEN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.