OPPOSITION No B 2 523 689

Arcana Arzneimittel-Herstellung Dr. Sewerin GmbH & Co. KG, Austernbrede 7-9, 33330 Gütersloh, Germany (opponent), represented by Meissner, Bolte & Partner GBR, Widenmayerstr. 47-50, 80538 München, Germany, (professional representative)

a g a i n s t

Wyspy Piękna Sp. z o.o., pl. Solny 16, 50-062 Wrocław, Poland (applicant).

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

DECISION:

1. Opposition No B 2 523 689 is partially upheld, namely for the following contested goods:

Class 3: Soaps; Washing and bathing products; Skin care and hair care preparations; Powders for sanitary or cosmetic purposes; Depilatories; Exfoliating creams; Make-up preparations; Make-up removing preparations; Beauty masks; Lip-care and colouring preparations; Nail varnish; Nail polish; Hair spray; hair styling and moulding products; Eyelash curling and lengthening preparations; Eyelashes (False -); eyelash glue; Preparations for removing false eyelashes; eye mascara; Sun-tanning preparations and sunscreen preparations; Beauty products for men; cosmetics for medical purposes, Namely shampoos, Deodorants and Cleaning agents for the hands, Including medicated soaps; Cosmetics for animals; Mascara; Beauty products for various parts of the human body, face, eyes, neck, bust, torso, arms, legs and hair, in particular creams, beauty serums, concentrates, serum, ampoules, emulsions, liquids, gels, shampoos, skin oils and balms, cosmetic and essential oils.

2. Community trade mark application No 13 474 416 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 some of the goods and services of Community trade mark application No 13 474 416 namely against all the goods and services in Classes 3 and 44. The opposition is based on, inter alia, Community trade mark registration No 11 866 654. 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 on which the opposition is based are the following:

Class 5: Homeopathic remedies and medicines.

The contested goods and services are the following:

Class 3: Soaps; Washing and bathing products; Skin care and hair care preparations; Powders for sanitary or cosmetic purposes; Bath salts; perfumary; Perfumery; Toilet water and eaux de Cologne; Deodorants; Depilatories; Exfoliating creams; Make-up preparations; Make-up removing preparations; Beauty masks; Lip-care and colouring preparations; Nail varnish; Nail polish; Hair spray; hair styling and moulding products; Eyelash curling and lengthening preparations; Eyelashes (False -); eyelash glue; Preparations for removing false eyelashes; eye mascara; Sun-tanning preparations and sunscreen preparations; Beauty products for men; cosmetics for medical purposes, Namely shampoos, Deodorants and Cleaning agents for the hands, Including medicated soaps; Laundry soap; Cleaning and polishing preparations; Cosmetics for animals; Mascara; Beauty products for various parts of the human body, face, eyes, neck, bust, torso, arms, legs and hair, in particular creams, beauty serums, concentrates, serum, ampoules, emulsions, liquids, gels, shampoos, skin oils and balms, cosmetic and essential oils.

Class 44: Beauty clinics; Beauty salons, wellness centres and hairdressing salons; Aromatherapy; Professional consultancy in the field of cosmetics and cosmetology; Rental of apparatus and devices for beauty salons; Wellness centres.

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

The terms ‘in particular’ or ‘including’, used in the applicant’s opponent’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).

However, the term ‘namely’ shows the relationship of individual goods with a broader category. Thus, it is exclusive and restricts the scope of protection only to the specifically listed goods in the contested application.

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 skin care preparations; powders for sanitary or cosmetic purposes; depilatories; exfoliating creams; make-up preparations; make-up removing preparations; beauty masks; lip-care and colouring preparations; nail varnish; nail polish; eyelash curling and lengthening preparations; eyelashes (false -); eyelash glue; preparations for removing false eyelashes; eye mascara; sun-tanning preparations and sunscreen preparations; beauty products for men; cosmetics for animals; mascara; beauty products for various parts of the human body, face, eyes, neck, bust, torso, arms, legs in particular creams, beauty serums, concentrates, serum, ampoules, emulsions, liquids, gels, skin oils and balms, cosmetic oils are cosmetics, that is, preparations used to enhance or protect the appearance of the human body. On the other hand, the opponent’s homeopathic remedies and medicines are pharmaceuticals preparations that comprise products, such as skin preparations, with medical properties. They may coincide in purpose with cosmetics. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies. Therefore these goods are similar.

The contested cosmetics for medical purposes, namely cleaning agents for the hands, including medicated soaps are similar to the opponent’s homeopathic remedies and medicines as they have the same medicinal purpose. They can coincide in producer, end user and distribution channels.

The contested cosmetics for medical purposes, namely deodorants and the contested beauty products for various parts of the human body, face, eyes, neck, bust, torso, arms, legs, in particular … essential oils are aromatherapy preparations commonly used as natural remedies or with a medical purpose. These goods have certain similarities with the opponent’s homeopathic remedies and medicines as they may have the same general purpose, namely personal care. They have the same distribution channels, since they can be found in pharmacies or other specialised shops, and they target the same relevant public. Therefore, they are similar to a low degree.

The contested hair care preparations; hair spray; hair styling and moulding products; cosmetics for medical purposes, namely shampoos; beauty products for various parts of the human body, … hair, in particular creams, beauty serums, concentrates, serum, ampoules, emulsions, liquids, gels, shampoos are also preparations for the personal care of the hair. Therefore, they are similar to a low degree to the opponent’s homeopathic remedies and medicines as they can coincide in producer, end user and distribution channels.

The contested soaps; washing and bathing products are substances to clean the body. These goods have certain similarities with the opponent’s homeopathic remedies and medicines as they may have the same general purpose, namely personal care. They have the same distribution channels, since they can be found in pharmacies or other specialised shops, and they target the same relevant public. Therefore, they are similar to a low degree.

The contested laundry soap; cleaning and polishing preparations are used to clean or polish (a surface) by washing and rubbing. These contested goods have nothing in common with the opponent’s homeopathic remedies and medicines. They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

The contested bath salts; perfumary; perfumery; toilet water and eaux de cologne; deodorants are fragrances used in toiletry. These contested goods have nothing in common with the opponent’s homeopathic remedies and medicines. They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

Contested services in Class 44

The contested beauty clinics; beauty salons, wellness centres and hairdressing salons; aromatherapy; wellness centres are places offering beauty and pleasant treatments and information on makeup. The contested professional consultancy in the field of cosmetics and cosmetology provides users with advice and information on beauty products. The contested rental of apparatus and devices for beauty salons are services by which a person or company lens for a price apparatus and devices for beauty salons to another person or company.

These contested services have nothing in common with the opponent’s homeopathic remedies and medicines. By their nature services are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. These goods and services have a different nature, intended purpose and method of use. Their producers or providers, distribution channels and relevant public are also different. Furthermore, they are neither complementary nor in competition. Consequently, 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 similar to various degrees are directed at the public at large and at the professionals of medicine. The degree of attention may vary from average to high considering the specific nature of some of the relevant goods.

3. The signs

ARCANA
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 single-word sign consisting of the six lettered word ‘ARCANA’ and the contested sign is a figurative mark depicting the six lettered word ‘ARKANA’ placed between a black curved wavy line, wider in the centre and narrowing towards the ends and a black reversed triangle, the top edge of which is similar to the line above the word.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 non-English and -Spanish speaking territories such as Estonia, Latvia, Lithuania, Czech Republic, Slovenia, Hungary or Bulgaria that perceive the words ‘ARCANA’ and ‘ARKANA’ as meaningless terms.

Both words in the signs are meaningless for the relevant public and the figurative elements in the contested sign convey no meaning.

Therefore, neither of the signs have any element that could be considered clearly more distinctive than other elements.

Equally, neither of the marks have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs comprise each a word of six letters that coincides in the letters ‘A-R-*-A-N-A’ in the same position. However, they differ in the letter ‘C’ in the earlier mark which is replaced by the letter ‘K’ in the contested sign. The signs also differ in the additional figurative elements of the contested sign.

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).

Most of the letters composing the words in the marks coincide. Only a letter in a central position, which is the part that more often goes unremarked in a sign, is different.

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

Aurally, irrespective of their different pronunciation rules, the pronunciation of the signs coincides in the sound of the letters ‘A-R-*-A-N-A’ present identically in both signs.

Therefore, the signs are aurally highly similar for the relevant public.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and 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).

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, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and 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).

As has been concluded above, the contested goods were found similar to various degrees and dissimilar to those of the earlier mark and are directed at the public at large whose degree of attention is deemed at least average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the range of goods which have been found similar.

The marks in dispute have been found to be visually similar to an average degree, aurally similar to a high degree and conceptually with no relevance.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, consumers normally perceive a mark as a whole and do not analyse its details.

This is all the more true when, as in the present case, the signs have no concept for the relevant public that could serve to deflect consumers’ attention from the identical letters in the marks.

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 Community trade mark registration. 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 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) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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

• international trade mark registration No 641 780 for the word mark ‘ARCANA’ designating the Benelux countries, France and Italy.

• German trade mark registration No 1 135 364 for the word mark ‘ARCANA’

Since these marks are identical to the one which has been compared and cover 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 goods and services.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Steve HAUSER

Loreto URRACA LUQUE

María Belén IBARRA DE DIEGO

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.