OPPOSITION No B 2 401 514

Laboratoire Motima, 19, rue de Passy, 75016 Paris, France (opponent), represented by Strato-Ip, 18, rue Soleillet, 75020 Paris, France (professional representative)

a g a i n s t

Young Living Essential Oils Lc, 3125 W. Executive Pkwy., Lehi, UT 84043, United States of America, (applicant), represented by Dr. Norbert Olesch, Mechthildenstr.31, 80639 München, Germany (professional representative).

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

DECISION:

1. Opposition No B 2 401 514 is upheld for all the contested goods.

2. European Union trade mark application No 12 887 221 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 887 221. The opposition is based on French trade mark registration No 103 720 177. The opponent invoked Article 8(1)(b)  EUTMR.

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

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

1. The goods

The goods, inter alia, on which the opposition is based are the following:

Class 3: Nail care preparations; hair lotions; soaps; perfumery; essential oils; cosmetics; dentifrices.

The contested goods are the following:

Class 3: Soaps; perfumary, essential oils, aromatherapy oils, fragrances, massage oils, dentifrices; perfumery; essential oils; aromatherapy oils; massage oils; fragrances; cosmetics; dentifrices.

Contested goods in Class 3

Soaps; Perfumary, essential oils; dentifrices; perfumery; essential oils; cosmetics; dentifrices; fragrances; fragrances are identically contained in both lists of goods (including synonyms).

The contested aromatherapy oils, massage oils, aromatherapy oils; massage Oils are included in the broad category of, or overlap with, the opponent’s essential oils. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

3. The signs

V Cyst	V-6
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression 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 marks are word marks with no dominant elements.

The earlier mark contains two elements, a letter V and letter sequence CYST as its second element. The letter V is perceived with its literal meaning. The element CYST has no meaning, since such a word or abbreviation does not exist in French language.

The contested sign contains a letter V, perceived with its literal meaning, followed by a hyphen and a number six, perceived with its literal meaning.

The marks have no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in their first elements ‘V’. The signs furthermore coincide in that they both are composed of two elements. However, they differ in their second elements ‘CYST’ and ‘6’, in addition to the hyphen used in the contested mark.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the first letter V and in the larger part of the elements CYST (pronounced SIST:) and ‘6’ (pronounced SIS). The hyphen is not pronounced. The pronunciation differs only very slightly in the pronunciation of the last letter/sound T in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘V’ included in both signs, will be perceived with its literal meaning as explained above. To that extent, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

The goods were considered to be identical. The similarities and dissimilarities of the signs were examined above.

The signs have been found to be similar to the extent that they coincide in the elements V in their beginnings. Both marks also coincide aurally, to a high degree, in the pronunciation of their second elements. The coincidences of the first, separately standing letters V and in the aural high similarity in both marks will thus result in confusion between them.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323).

It also constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface, or adding terms or elements to them) in order to name new lines of products, or to create a modernised version of it. In this case, since the marks coincide in their first, distinctive elements, and differ in their endings, they can be seen as two versions of the same mark, with the variations used to refer to different lines of products, and therefore as coming from the same undertaking.

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods found identical, come from the same undertaking or economically linked undertakings.

Contrary to the arguments of the applicant, it is noted, that the earlier mark has been properly substantiated. Furthermore, and contrary to the arguments of the applicant, the earlier mark is not subject to proof of use since at the date of publication of the contested trade mark, it had not been registered for at least five years.

It is also noted, that the earlier mark is a word mark. Therefore it is the word that is protected and not written form. The applicant’s arguments in respect of an incorrect use of the earlier mark in a different form are therefore rejected. In addition, the Opposition Division is not entitled to form an opinion in respect of possible cancellation actions against the earlier mark, as insisted by the applicant. This is the competency of French national office, where the mark is registered.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 103 720 177. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI SERRANO

Erkki Münter

Begoña URIARTE VALIENTE

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.