OPPOSITION No B 2 436 320

Difusión 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

Ευαγγελος Αρ.Κουζουνης Εταιρια Περιορισμενης Ευθυνης, Ιονιας 25, Περαια, 57019 Θεσσαλονικη, Greece (applicant), represented by Maria Vastaroucha, 1 Valaoritou str., 54626 Thessaloniki, Greece (professional representative).

On 13/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 436 320 is partially upheld, namely for the following contested goods:

Class 3: Cosmetic preparations for the face, hands, nails, hair and body, skin care preparations, soaps, perfumery, essential oils, shampoos and hair lotions, dentifrices.

Class 5: Pharmaceutical preparations, sanitary preparations for medical purposes, dietary supplements for humans, dietetic substances adapted for medical use.

2. European Union trade mark application No 13 030 101 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 13 030 101. The opposition is based on, inter alia, Spanish trade mark registration No 147 793. 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.

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 Spanish trade mark registration No 147 793.

1. The goods and services

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

Class 3: Essences, perfumes, cosmetics and all kinds of goods and preparations for perfumery, toiletries, beauty and dentifrices.

Class 5: Hygiene preparations.

The contested goods and services are the following:

Class 3: Cosmetic preparations for the face, hands, nails, hair and body, skin care preparations, soaps, perfumery, essential oils, shampoos and hair lotions, dentifrices.

Class 5: Pharmaceutical preparations, sanitary preparations for medical purposes, dietary supplements for humans, dietetic substances adapted for medical use, food for babies.

Class 42: Medical services and pharmacological research, laboratory research in the field of cosmetics, research and development of new medicines and cosmetics, clinical trials.

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

Contested goods in Class 3

The contested cosmetic preparations for the face, hands, nails, hair and body are included in the opponent’s broad category of cosmetics. They are identical.

The contested skin care preparations, soaps, essential oils, shampoos and hair lotions are included in the opponent’s all kinds of goods and preparations for perfumery, toiletries, beauty. They are also identical.

The contested perfumery and dentifrices are included in the opponent’s list of goods and they are, therefore, identical.

Contested goods in Class 5

The contested sanitary preparations for medical purposes are also protected by the earlier mark, albeit with a different wording (hygiene preparations). They are identical.

The contested pharmaceutical preparations can be defined as any chemical substances intended for use in the medical diagnosis, cure, treatment or prevention of disease, whereas the opponent’s hygiene preparations are mainly used to sterilise or disinfect. These goods fulfil, in general terms, the same function, namely to improve the medical condition of patients. Furthermore, they are often produced by the same companies and distributed through the same trade channels to the same end users. Therefore, these goods are highly similar.

The contested dietary supplements for humans, dietetic substances adapted for medical use are similar to a low degree to the opponent’s cosmetics. Indeed, although the contested goods are for medical use and as such are usually manufactured by pharmaceutical companies, nowadays companies whose core business is body care in general produce both medical and non-medical products. Indeed, current commercial trends show that pharmaceutical companies and companies whose core business is cosmetics all operate in the field of personal aesthetics and beauty enhancement. The cosmetic industry manufactures cosmetic lines of products that contain active ingredients meant for both dietetic and cosmetic applications simultaneously, whereas the pharmaceutical industry often manufactures cosmetically oriented medicinal products as part of the ‘wellness’ ideology that is widespread at present. Moreover, these goods may have the same sales outlets and distribution channels. For example, pharmacies and specialised beauty clinics also sell medical products such as the contested goods.

This does not apply to the remaining contested goods, food for babies, which refers to substances prepared for special dietary requirements and specifically for babies, with the purpose of treating or preventing disease. Although these goods and the opponent’s goods in Classes 3 and 5 may be found in the same establishments, they have different natures and purposes and are not manufactured by the same companies. They are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 42

The contested services are all related to research and development in the field of medicines and cosmetics. These services are not similar to the opponent’s goods in Classes 3 and 5. The fact that these goods are the object of the contested services is not sufficient for a finding of similarity. They are different in nature, since goods are tangible while services are intangible. Moreover, they do not have the same purpose and they target different publics. Although pharmaceutical companies are heavily involved in research and development activities, they usually do not provide such services to third parties. These goods and services are not complementary, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Furthermore, the goods and services in question are not in competition. Therefore, they are 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 are directed at the public at large and at a professional public. The degree of attention will vary from average for goods in Class 3 to relatively high for health-related goods in Class 5.

3. The signs

EUDERMIN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier sign is a word mark, ‘EUDERMIN’. The contested sign is figurative and includes the verbal element ‘Evdermia’ in standard title case white letters inside an oval shaded from light to dark blue.

The element ‘DERM(I)’, present in both marks, could be perceived as referring to ‘dermis’, a layer of skin between the epidermis and subcutaneous tissues. However, it should be noted that the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. The fact that the element ‘DERM(I)’ is placed in the middle of the verbal elements of the marks and surrounded by other, meaningless, elements renders it less noticeable. Therefore, the Opposition Division considers that the coinciding element ‘DERM(I)’ would be, at most, allusive of the nature of the relevant goods.

Neither of the marks has any element which could be considered more dominant (visually eye‑catching) than other elements.

Visually, the signs coincide in the letters ‘E*DERMI*’, placed in the same position. Since the earlier sign is a word mark, it is irrelevant whether it is depicted in upper or lower case letters. The signs differ only in their second and last letters, ‘U’ and ‘N’ in the earlier mark versus ‘V’ and ‘A’ in the contested mark, and in the figurative element of the contested mark.

With regard to the latter difference, it must be noted that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EU(V)DERMI’ (the second letter, ‘V’, of the contested sign is likely to be pronounced as the vowel ‘U’, as in Latin words) and differs only in the sound of the signs’ last letters, ‘N’ versus ‘A’. The length of the signs is the same and so are their rhythm and intonation.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs as a whole 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.

Part of the public may perceive the element ‘DERMI’, placed in the middle of the signs, as having the abovementioned meaning, namely as alluding to skin-related goods. For this part of the public, the signs are similar to an average degree.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

The appreciation of the 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).

As seen above, the goods and services are partly identical or similar and partly dissimilar. The signs are similar to the extent they both include a single verbal element, having most of their letters in common. The fact that part of the public may perceive the coinciding element ‘DERMI’ as alluding to skin-related goods does not mean that this element lacks any distinctive character.

Even if this were the case, the finding of a weak distinctive character in some aspects of the earlier trade mark in relation to the goods does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In any event, in the case at issue, the earlier mark as a whole is distinctive to a normal degree for the relevant public and the similarities between the marks go beyond the element ‘DERMI’.

The differences between the marks are limited to their second letters, ‘U’ versus ‘v’, with this difference perceived only visually, and their final letters, ‘N’ versus ‘a’. The Opposition Division is of the view that these differences cannot outweigh the similarities between the marks.

Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Opposition Division considers that the similarity between the signs is sufficient to lead to a likelihood of confusion between the marks, even for the goods for which a higher degree of attention is displayed and for those that are similar only to a low degree.

The applicant argues that it owns several Greek trade mark registrations and one EUTM registration containing the word ‘Evdermia’, which coexist with the opponent’s earlier marks.

According to case law,

… the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical.

(11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86.)

In this regard it should be noted that formal co‑existence on national or European Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/EU level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also argues that it intends to use the contested mark as a ‘house mark’, always appearing with an additional mark on the goods.

In this regard, it should be noted that, in contrast to trade mark infringement cases, the examination of the likelihood of confusion carried out by the Office is a prospective examination, in which the particular facts and the specific nature of use of the marks are crucial. In other words, the Office must take into account those circumstances in which it is normal to expect the type of goods covered by the marks to be marketed. Therefore, the particular circumstances in which the goods concerned are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (see, in this regard, 15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59). Therefore, this argument of the applicant has to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

The opponent has also based its opposition on Spanish trade mark registration No 2 898 006, , for goods in Class 3. Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those dissimilar goods and services.

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

Frédérique SULPICE

Begoña URIARTE VALIENTE

Gueorgui IVANOV

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.