OPPOSITION No B 2 653 163

Revere Clinics Limited, 3 Century Court, Tolpits Lane, WD18 9RS Watford, United Kingdom (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, LS2 8PA Leeds, United Kingdom (professional representative)

a g a i n s t

Revers Cosmetics Sp. z o. o., ul. Słowikowskiego 39a, 05 090 Raszyn, Poland (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warsaw, Poland (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 653 163 is partially upheld, namely for the following contested goods and services:

Class 3: Cosmetic products; Perfumery; Essential oils; Preparations for washing purposes; Personal deodorants; Breath freshening sprays; Cosmetic products; Shaving preparations; Shaving cream; After-shave preparations; Bath salts, not for medical purposes; Baths (Cosmetic preparations for -); Cologne; Creams (Cosmetic -); Hand creams; Body milks and balms; Masks; Hair waving preparations; Nail polish; Cosmetic lotions; Hair spray; Perfumery oils; Washing pastes; Powder and Mouthwashes; Nail polish; tonics; Gel; Conditioner; Bath preparations; Slimming salts; Masks for cosmetic treatments; Peeling creams; Make up preparations; Cosmetic preparations for slimming purposes; Essential oils; Perfume; Skin care preparations; Lip stick; Lipsticks; Shampoo; Hair preparations and treatments; Eye shadow; Powders; Liquid foundation; Glosses; Mascara; Mascara; Nail polish remover; laundry powders and liquids; Rinsing fluids; Detergents; Windscreen cleaning fluids; Car care products; Liquids for washing surfaces; Sachets for perfuming linen; Laundry soaking preparations; Tissues impregnated with cosmetic lotions; Cleaning preparations; Wheat pastes; Preparations for washing purposes; Soaps; Soaps in liquid form; Grease-removing preparations; Cleaning and polishing preparations for parquet flooring; Polish for furniture and flooring; Polishing preparations; Cosmetics for skin tanning.

Class 5: Sanitary preparations for personal hygiene; Pre-moistened antibacterial wipes; Antibacterial cotton pads for cleansing problematic complexions; Disinfectant swabs; Dressings [medical]; Sanitary towels; Tampons; Pantyliners; Thermal water.

Class 35: Wholesaling and retailing of cosmetics, hygiene articles, perfumes; Wholesaling and retailing via the internet of cosmetics, hygiene articles, perfumes.

2. European Union trade mark application No 14 347 901 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 347 901 for the figurative mark , namely against all the goods in Classes 3 and 5 and some of the services in Class 35. The opposition is based on United Kingdom trade mark registration No 2 545 406 for the word mark ‘REVERE’ and United Kingdom registration No 2 599 575 for the figurative mark . 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 UK trade mark registration No 2 599 575, which is not subject to the obligation of use.

1. The goods and services

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

Class 3: Cosmetics; beauty products; cosmetic preparations; essential oils; soaps; perfumery; hair lotions.

Class 5: Pharmaceutical preparations; pharmaceutical and medicinal skin care preparations; dietary food supplements.

Class 44: Medical services; beauty services; information, advice and consultancy services relating the aforesaid.

The contested goods and services are the following:

Class 3: Cosmetic products; Perfumery; Essential oils; Preparations for washing purposes; Personal deodorants; Breath freshening sprays; Cosmetic products; Shaving preparations; Shaving cream; After-shave preparations; Bath salts, not for medical purposes; Baths (Cosmetic preparations for -); Cologne; Creams (Cosmetic -); Hand creams; Body milks and balms; Masks; Hair waving preparations; Nail polish; Cosmetic lotions; Hair spray; Perfumery oils; Washing pastes; Powder and Mouthwashes; Nail polish; tonics; Gel; Conditioner; Bath preparations; Slimming salts; Masks for cosmetic treatments; Peeling creams; Make up preparations; Cosmetic preparations for slimming purposes; Essential oils; Perfume; Skin care preparations; Lip stick; Lipsticks; Shampoo; Hair preparations and treatments; Eye shadow; Powders; Liquid foundation; Glosses; Mascara; Mascara; Nail polish remover; laundry powders and liquids; Rinsing fluids; Detergents; Windscreen cleaning fluids; Car care products; Liquids for washing surfaces; Sachets for perfuming linen; Laundry soaking preparations; Tissues impregnated with cosmetic lotions; Cleaning preparations; Wheat pastes; Preparations for washing purposes; Soaps; Soaps in liquid form; Grease-removing preparations; Cleaning and polishing preparations for parquet flooring; Polish for furniture and flooring; Creams for leather; Polishing preparations; Cosmetics for skin tanning.

Class 5: Sanitary preparations for personal hygiene; Pre-moistened antibacterial wipes; Antibacterial cotton pads for cleansing problematic complexions; Disinfectant swabs; Dressings [medical]; Sanitary towels; Tampons; Pantyliners; Thermal water.

Class 35: Wholesaling and retailing of cosmetics, hygiene articles, perfumes, and cosmetic accessories and utensils; Wholesaling and retailing via the internet of cosmetics, hygiene articles, perfumes, and cosmetic accessories and utensils.

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

Cosmetic products (listed twice); perfumery; essential oils (listed twice); soaps are identically contained in both lists of goods (despite minor differences in their wording).

The contested preparations for washing purposes (listed twice); washing pastes; laundry powders and liquids; detergents; liquids for washing surfaces; laundry soaking preparations; cleaning preparations; wheat pastes; cleaning preparations for parquet flooring overlap with the earlier soaps. Therefore, they are identical.

The contested soaps in liquid form are included in the broad category of the earlier soaps. Therefore, they are identical.

The contested cologne; perfume are included in the broad category of the earlier perfumery. Therefore, they are identical.

The contested hair preparations and treatments include, as a broader category, the earlier hair lotions. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested personal deodorants; shaving preparations; shaving cream; after-shave preparations; bath salts, not for medical purposes; baths (cosmetic preparations for -); creams (cosmetic -); hand creams; body milks and balms; masks; hair waving preparations; nail polish (listed twice); cosmetic lotions; hair spray; tonics; gel; conditioner; bath preparations; slimming salts; masks for cosmetic treatments; peeling creams; make up preparations; cosmetic preparations for slimming purposes; skin care preparations; lip stick; lipsticks; shampoo; eye shadow; powders; liquid foundation; glosses; mascara (listed twice); nail polish remover; tissues impregnated with cosmetic lotions; cosmetics for skin tanning are included, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested perfumery oils overlap with the earlier essential oils. Therefore, they are identical.

The contested breath freshening sprays; powder and mouthwashes are products used for cleaning and improving the health and beauty of the mouth. They are similar to the opponent’s cosmetics as they have the same purpose. Furthermore, they can coincide in producer, relevant public and distribution channels.

The contested windscreen cleaning fluids; car care products are similar to the earlier soaps because they have the same purpose, to clean, and they coincide in end user.

The contested grease-removing preparations; polish for furniture and flooring; polishing preparations; rinsing fluids; polishing preparations for parquet flooring are similar to the earlier soaps because all of these products are agents used for cleaning. To that extent, their purpose is similar to that of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Therefore, these goods are considered similar.

Sachets for perfuming linen of the contested mark are specific household fragrances. They have the same purpose that the opponent’s soaps, in the sense that soap is also used to improve the smell of an object treated with soap. They also coincide in end users and distribution channels. Therefore, these goods are considered lowly similar.

The opponent’s goods and services include cosmetics, soaps and perfumery in Class 3, pharmaceutical preparations and dietary food supplements in Class 5 and medical and beauty services and related consultancy in Class 44. The contested creams for leather are used for restoring or preventing the deterioration of leather goods. The opponent’s goods and services in Classes 3, 5 and 44 have no relevant commonalities with the contested creams for leather. There is a fundamental difference in the nature and purpose. They neither target the same public nor move through the same distribution channels. Furthermore, there is no complementarity or interchangeability either. Therefore the contested creams for leather are dissimilar to all the opponent’s goods and services in Classes 3, 5 and 44.

Contested goods in Class 5

The opponent’s pharmaceutical preparations are, in general, substances or preparations that can be prepared in pharmacies and are used in medical treatments or to improve the health of people. The contested sanitary preparations for personal hygiene; pre-moistened antibacterial wipes; antibacterial cotton pads for cleansing problematic complexions; disinfectant swabs; dressings [medical]; sanitary towels; tampons; pantyliners; thermal water are products for health or hygiene-related purposes or used in medicine. These goods and the opponent’s pharmaceutical preparations are often available through the same outlets, are produced by the same undertakings and target the same customers. As a result, these goods are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The principles set out above apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested wholesaling and retailing of cosmetics, hygiene articles, perfumes; wholesaling and retailing via the internet of cosmetics, hygiene articles, perfumes are similar to a low degree to the earlier cosmetics.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. The contested cosmetic accessories and utensils are not identical to the opponent’s goods in Classes 3 and 5. Therefore, they are considered dissimilar.

The opponent’s services in Class 44 are medical, beauty services and related consultancy that are provided by professional individuals such as doctors or by undertaking specialised in such services. None of these services coincide in any relevant point of contact with the contested wholesaling and retailing of cosmetic accessories and utensils; wholesaling and retailing via the internet of cosmetic accessories and utensils. These services have a different nature and purpose, and are provided by different service providers. They do not target the same relevant public, neither use the same distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another. Therefore, they are considered dissimilar.

In its arguments, the applicant claims that the parties in dispute operate in different fields and are not in competition, therefore there is no possibility of confusion despite the fact that the marks in question belong to similar classes. The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71 ). Consequently, the applicant’s argument in this regard must be set aside.

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 to varying degrees are directed at the public at large, such as the goods in Class 3, and at the public at large and a more specialised public with specific knowledge and expertise, such as medical professionals and pharmacists, for the goods in Class 5.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

The degree of attention is considered to vary from average, for instance for the goods in Class 3, to high, for the goods in Class 5.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is United Kingdom.

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 mark is a figurative mark composed by the word ‘REVERE’ with the letter ‘V’ being larger in size and featuring a figurative silhouette of a face in profile.

The word ‘REVERE’ will be understood as ‘feel deep respect or admiration for (something)’ (information extracted from Oxford Dictionaries online on 17/05/2018 at www.oxforddictionaries.com). Despite its positive connotations, the word is rather unusual in the context of the goods and services at issue. The word is distinctive to an average degree for the goods in classes 3, 5, and 44 as it is not descriptive or otherwise weak/non-distinctive.

The figurative silhouette of a face may evoke some properties or characteristics of the relevant goods and services (e.g. goods and services that are to be applied in the face) which is likely to decrease the impact of this element in the overall impression of the sign. Furthermore, despite the relatively prominent position of this element in the sign, the Opposition Division notes 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).

As regards the dominance of the elements in the earlier mark, it is considered that none of them, neither the word ‘REVERE’ nor the letter ‘V’ with the silhouette of a face in profile, can be clearly considered more visually eye-catching than the other.

The contested sign is a figurative mark composed the word ‘REVERS’ and the verbal element ‘BEAUTY AND CARE’ in a smaller typeface below. The word ‘REVERS’ will be perceived as ‘the turned-back edge of a garment revealing the undersurface, especially at the lapel’ (information extracted from Oxford Dictionaries online on 17/05/2018 at www.oxforddictionaries.com). It cannot be excluded, as argued by the opponent that the word is meaningless for part of the public. In any case, it is considered distinctive to an average degree as it is not descriptive, allusive or otherwise weak/non-distinctive for the relevant goods and services.

The verbal element ‘BEAUTY AND CARE’ is considered non-distinctive as it describes the nature of the contested goods and services which are related to assist with the beautification and/or care of the consumers. Moreover, the word ‘REVERS’ is the dominant element of the sign as it is the most eye-catching due to its size and position. Therefore, and contrary to the applicant’s argument, the impact of the verbal element ‘BEAUTY AND CARE’ in the sign is very limited, if any at all.

Visually, the signs coincide in the sequence of letters ‘REVER*’. However they differ in the last letter, ‘E’ for the earlier mark, ‘S’ for the contested sign, the stylisation of the letter ‘V’ of the earlier mark and, as explained above, the less dominant and non-distinctive verbal element ‘BEAUTY AND CARE’.

The distinctive elements of the marks are both composed of six letters, the five initial letters being identical. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, it is considered that the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REVER*’, present identically at the beginning of both signs. However, the pronunciation differs in the sound of the last letter, ‘E’ versus ‘S’ and the less dominant and non-distinctive element ‘BEAUTY AND CARE’. For the same reasons as explained above, the differences at the end of the signs are less noticeable/memorable.

Therefore, it is considered that the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, for the part of the public that will understand the word ‘REVERS’, the signs will be associated with a dissimilar meaning. For the other part of the public, the word ‘REVERS’ is meaningless. Therefore, for this part of the public the signs are conceptually not 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 that could impair the distinctiveness of the sign 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

In the present case, the contested goods and services are identical, similar to varying degrees or dissimilar to the opponent’s goods. The signs are visually at least similar to an average degree, aurally similar to a high degree and conceptually not similar or with a dissimilar meaning depending on the relevant public. The differences identified between the signs, mainly confined to the stylised letter V featuring the silhouette of face and the additional non-distinctive verbal element ‘BEAUTY AND CARE’ and dissimilar meanings, are not sufficient to outweigh the visual and aural similarities to the extent that a likelihood of confusion on the part of the public could safely be excluded. The Opposition Division notes that despite the signs will be associated with a dissimilar meaning by part of the public, the visual and aural similarities prevail over the conceptual dissimilarity between the signs.

When encountering the signs at issue, despite paying a higher than average degree of attention in connection with part of the goods and services, the public may overlook the differences in the signs and assume that they denote that the goods and services, even those similar to a low degree, are produced/provided by the same undertaking, or economically linked undertakings, and that the marks simply have different graphic depictions

The applicant cites earlier case law (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528) in support of its arguments that the comparison should be based on the overall impression of the marks and not be limited to a single element and marks must be compared with regards to their visual, phonetic and conceptual similarities. The applicant also refers to others cases (14/10/2003, T-292/01), (06/07/2004, T-117/02), (05/04/2006, T-344/03) in which it was stated that likelihood of confusion must be assessed with particular consideration of their distinguishing and dominant elements. The Opposition Division notes that, as analysed in section c) of this decision, the marks have indeed been considered as a whole, bearing in mind in particular their distinctive and dominant components. Additionally, the likelihood of confusion has been assessed globally, taking into account all the relevant factors. Therefore, the argument is 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 UK trade mark registration No 2 599 575.

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

The opponent has also based its opposition on United Kingdom trade mark registration No 2 545 406 for the word mark ‘REVERE’. Since this mark covers the same or a narrower scope of goods and services, 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 and there is no need to examine the evidence of use submitted in relation to this trade mark registration.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Jorge ZARAGOZA GOMEZ

Vita VORONECKAITE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.