OPPOSITION No B 2 489 501

Proya Cosmetic Co. LTD, Rm1605, Area D, No.1 Building, EAC, Legend City of World Trade Center, Xihu District, Hangzhou City, Zhejiang, People’s Republic of China (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Iron & Smith Kft., Szada, Ipari park út 6., 2111, Hungary (applicant), represented by András Krajnyák ABK - Dr. Krajnyák & Partner Law and Patent Office, Logodi u. 5-7., 1012 Budapest, Hungary (professional representative).

On 22/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 489 501 is upheld for all the contested goods.

2. Community trade mark application No 13 291 901 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 Community trade mark application No 13 291 901. The opposition is based on Community trade mark registration No 13 439 328. The opponent invoked 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.

1. The goods and services

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

Class 3: Laundry preparations; cleaning preparations; shoe wax; abrasive paper; essential oils; cosmetics; cosmetic kits; dentifrices; incense; cosmetics for animals.

Class 21: Containers for household or kitchen use; glassware for household purposes; porcelain not included in other classes; china ornaments; combs; toothbrushes; cosmetic utensils; mops; insulating flasks; toilet utensils.

Class 44: Aromatherapy services; food nutrition consultation; beauty salons; massage; health spa services; visagists' services; gardening; aquaculture services; opticians' services; nursing homes.

The contested goods are the following:

Class 3: Abraders; essential oils and aromatic extracts; tailors' and cobblers' wax; toiletries; cleaning and fragrancing preparations; animal grooming preparations

Class 5: Dental preparations and articles; medical and veterinary preparations and articles; hygienic preparations and articles; pest control preparations and articles; dietary supplements and dietetic preparations.

Class 21: Tableware, cookware and containers; unworked and semi-worked glass, not specified for use; brushes and brush-making articles; gardening articles; cosmetic and toilet utensils and bathroom articles; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; cleaning articles.

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

The term ‘such as’ used in the applicant’s list of goods indicates that the specific goods 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 Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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.

Contested goods in Class 3

Essential oils; cleaning preparations are identically contained in both lists of goods and services (including synonyms).

The contested aromatic extracts are included in the broader category of the opponent’s essential oils. Therefore, they are identical.

The contested abraders; toiletries and animal grooming preparations respectively include, as broader categories the opponent’s abrasive paper; cosmetics; cosmetics for animals. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested cobblers’ wax overlaps with the opponent’s shoe wax. Since these goods cannot be clearly separated, they are considered identical.

The contested fragrancing preparations are highly similar to the opponent’s cosmetics. This is because they have a similar purpose, namely to provide beauty care. In addition, they may coincide in their channels of distribution (pharmacies or perfumeries) and producers and they target the same relevant public.

The contested tailors’ wax has close connections to the opponent’s shoe wax. This is because they coincide in nature as they both consist of paste or cream. In addition, they are likely to come from the same undertaking and be provided through the same distribution channels (for example, haberdasheries). Therefore, the goods are considered similar.

Contested goods in Class 5

The contested dental preparations and articles have close connections to the opponent’s dentifrices in Class 3. This is because they coincide in their purpose, namely to provide dental healthcare. Moreover, they may target the same relevant public and be provided through the same channels of distribution (for example, pharmacies). Consequently, they are similar.

The contested medical and veterinary preparations and articles are similar to the opponent’s cosmetics; cosmetics for animals in Class 3. This is because they have a similar purpose, namely to provide health or beauty care. In addition, they have the same channels of distribution (pharmacies or specialized stores for animal care) and may target the same average consumers.

The contested hygienic preparations and articles have close connections with the opponent’s cosmetics in Class 3. This is because they are all goods which are used for nursing, cleaning and caring for the skin. In addition, they may come from the same undertaking as nowadays companies whose core business is body care produce both cosmetics and hygienic products. Since these goods have a similar purpose and are of a similar nature, can coincide in their distribution channels and are offered through the same sales outlets, it is considered that they are similar.

The contested dietary supplements and dietetic preparations are similar to the opponent’s food nutrition consultation in Class 44. The goods and services at issue may coincide in their distribution channels and end consumers. Moreover, the opponent’s services can be offered in the same stores where the applicant’s goods are sold, namely clinics and beauty centres. Furthermore, these goods and services are often complementary.

The contested pest control preparations and articles are similar to a low degree to the opponent’s gardening services in Class 44. This is because they have a similar purpose. The applicant’s goods are used in the process of minimizing or removing a wide range of undesirable insects and other pests which can be found in various plants. The opponent’s gardening is the practice of growing and cultivating plants (flowers, fruits, vegetables) as part of horticulture. In this sense, the goods and services may target the same average consumers and be complementary.

Contested goods in Class 21

The contested tableware, cookware overlap with the opponent’s glassware for household purposes. Since these goods cannot be clearly separated, they are considered identical.

The contested containers include as a broader category the opponent’s containers for household or kitchen use. Therefore, they are identical.

Cosmetic and toilet utensils are identically contained in both lists of goods and services.

The contested bathroom articles overlap with the opponent’s toilet utensils. Since these goods cannot be clearly separated, they are considered identical.

The contested brushes include as a broader category the opponent’s toothbrushes. Therefore, they are identical.

The contested statues, figurines, plaques and works of art, made of materials such as porcelain, included in the class overlap with the opponent’s porcelain not included in other classes. Since these goods cannot be clearly separated, they are considered identical.

The contested cleaning articles include as a broader category the opponent’s mops. Therefore, they are identical.

The contested unworked and semi-worked glass, not specified for use has close connections with the opponent’s glassware for household purposes. This is because they might be complementary to each other, in the sense that the applicant’s goods would be indispensable for the production of the opponent’s goods. Moreover, it would not be unusual for the companies involved in producing ‘unworked or semi-worked glass’ also to manufacture such goods as ‘glassware for household purposes’. Therefore, the Office considers that the goods under comparison are similar.

The contested gardening articles are similar to the opponent’s gardening services in Class 44. This is because they are complementary in the sense that the applicant’s goods are used for the provision of the opponent’s services. Moreover, they may target the same average consumers and have a similar ultimate purpose.

The contested statues, figurines, plaques and works of art, made of materials such as terra-cotta or glass, included in the class are similar to the opponent’s porcelain not included in other classes. This is because they may have a similar purpose, namely to decorate a place. In addition, they may be offered by the same undertaking and target the same relevant public.

The contested brush making articles are similar to a low degree to the opponent´s toothbrushes. This is because they coincide partially in nature and intended purpose and may be manufactured by the same undertaking.

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 and services found to be identical or similar are directed at the public at large. As some of the goods and services at issue are specialised, such as tailors’ and cobblers’ wax; animal grooming preparations; unworked and semi-worked glass, not specified for use; food nutrition consultation, they are also directed at business customers with specific professional knowledge or expertise in the field of beauty, healthcare or crafts. The degree of attention is considered to vary from average to higher than average.

3. The signs

	PROYA
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark, consisting of a verbal element written in a stylised typeface which would be perceived by the majority of the relevant public as ‘PROYA’.

The contested sign is a word mark, consisting of the verbal element ‘PROYA’.

The element ‘PROYA’ has no meaning for the public in the relevant territory. Therefore, its distinctiveness must be seen as normal.

Consequently, the marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye‑catching) than other elements.

Visually, the signs coincide in the verbal element ‘PROYA’, which was found to have normal distinctiveness for the relevant goods and services. The signs only differ in the stylisation of this element in the earlier sign, which has no counterpart in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, both signs consist of two identical syllables – ‘PRO’ and ‘YA’. Irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in these syllables and therefore, the signs are aurally identical.

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 and services 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

According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) CTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and 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).

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. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but 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, § 26; 30/06/2004, T 186/02, Dieselit, EU:T:2004:197, § 38).

The relevant public for the conflicting goods in question includes the public at large whose level of attention will vary from average to higher than average.

The inherent distinctiveness of the earlier mark considered as a whole is normal.

The conflicting marks were found to be visually highly similar and are aurally identical.

As discussed above in section c) in this decision, the earlier mark is a figurative mark consisting of the verbal element ‘PROYA’ written in a stylised typeface, which has no concept for the relevant goods and services. The contested sign is a word mark which consists solely of the verbal element ‘PROYA’.

As the goods and services are identical or similar and due to the high visual similarity and aural identity between the marks, in accordance with the principle of interdependence mentioned above, it must be concluded that a likelihood of confusion exists on the part of the public even in relation to the goods found to be similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 13 439 328. It follows that the contested trade mark must be rejected for all the contested goods.

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 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), (6) and (7)(d)(i) CTMIR, 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

Deirdre QUINN

Gueorgui IVANOV

Richard Bianchi

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.