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OPPOSITION DIVISION |
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Davines S.p.A., Via Ravasini, 9/A, 43100 Parma, Italy (opponent), represented by Francesco Terrano, Viale Ciro Menotti, 21, 41121 Modena, Italy (professional representative)
a g a i n s t
Maxmix Produtos De Beleza Ltda – Epp, Av. Autonomistas, nº 3.847, sala 5, Osasco – SP, São Paulo, Brasil (applicant), represented by Garrigues IP S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative).
On 28/08/2019, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 633 975 is upheld for all the contested goods.
2. European Union trade mark application No 14 608 723 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 14 608 723
(figurative m
ark).
The opposition is based on,
inter alia,
European trade mark registration
No 11 375 086
(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.
a) The goods
The goods on which the opposition is based are the following:
Class 3: Perfumery, essential oils, cosmetics, hair lotions; Shampoos; Shampoos, conditioners; Hair glossers; Hair relaxing preparations; Hair pomades; Hair moisturisers; Hair moisturising conditioners; Hair styling preparations; Lotions for hair care; Hair wax; Disciplining treatments for the hair; Conditioning preparations for the hair; Hair conditioning preparations; Hair emollients; Hair care gels; Hair spray; Gels for use on the hair; Dyes (Cosmetic -); Hair colorants; Coloring preparations for cosmetic purposes; Hair dyes; Bleaching preparations [decolorants] for cosmetic purposes; Bleaching preparations for the hair; Color-removing preparations; Oils for toilet purposes; Soaps; Cakes of toilet soap; Deodorants; Deodorant soap; Body moisturizers; Skin care milks; nutritional creams (non-medicated- ); Body moisturizers; Body cream; body emulsions; Cream masks for the body; Body oil; Body butter; Body oil spray; Talc; Body talc; Facial cream; Facial lotions; Facial masks; Beauty masks; Facial packs for toilet purposes; Facial moisturizers [cosmetic]; Shaving gel; Shave foam; Shaving creams; After-shave lotions; Shaving preparations; Cosmetic preparations; Creams (Cosmetic -); Oils for cosmetic purposes; Lotions for cosmetic purposes; Pre-moistened cosmetic wipes; Tissues impregnated with cosmetic lotions; Skin conditioners; Skin care (Cosmetic preparations for -); Massage oils, not medicated; Massage creams, not medicated; Make-up preparations; Cosmetics suntanning preparations; Sunscreen creams; Non-medicated bath oils; Bath powder; Baths (Cosmetic preparations for -); Bath salts; Depilatories; Dentifrices; Nail care preparations; Perfumes; Eau de toilet.
The contested goods are the following:
Class 3: Cosmetics.
Cosmetics are identically contained in both lists of goods.
b) 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 whose degree of attention is considered to be average.
c) The signs
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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 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 consisting of the verbal element ‘davines’ written in a stylised typeface, whereby the first letter ‘d’ is stylised in a fanciful matter and the remaining letters are in a relatively standard typeface. The verbal element has no meaning for the relevant public, and is therefore distinctive. The earlier mark has no element that could be considered more dominant than other elements.
The contested sign is a figurative mark consisting of the verbal element ‘Davene’ written in a mildly stylised typeface, and located underneath a figurative element that looks like flower petals of different sizes, all in black. The verbal element has no meaning for the relevant public, and is therefore distinctive. Contrary to the opponent’s view that the figurative element is dominant, the Opposition Division is of the opinion that the contested sign has no element that could be considered more dominant than other elements. Indeed, the contested sign does not contain an element which is visually more outstanding than the other, the verbal and figurative elements visually playing an equally important role. Moreover, 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 a result, the figurative elements in both signs will have a lesser impact on the consumer than the verbal elements.
The applicant implies that the signs are short. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The signs in the present proceedings have six and seven letters respectively, whereas the Office considers signs with three or less than three letters/numbers as short signs. Therefore, the Opposition Division considers the signs in the case at hand not to be short signs.
Visually, the signs coincide in their first three letters ‘dav’ in an identical sequence, and in their fifth and sixth letters ‘ne’. However, they differ in their fourth letter, namely ‘i’ in the earlier mark versus ‘e’ in the contested sign, and in the last letter ‘s’ of the earlier mark, that has no counterpart in the contested sign. With regard to this last letter ‘s’, it should be borne in mind that 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, this letter’s impact will be rather limited.
The signs also differ in their stylisation, and in the figurative element of the contested sign that has no counterpart in the earlier mark.
The verbal elements of the signs thus coincide in five out of six letters of the contested sign which appear in the same sequence.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‘Dav*ne*’, present identically in both signs. They differ in the pronunciation of their fourth letters, which are both vowels, namely ‘i’ and ‘e’ respectively, but this difference is not particularly striking taking into account that they are placed between identical consonants and play the same role within the signs. They also differ in the sound of the last letter ‘s’ of the contested sign, however, for a part of the public only. It must indeed be borne in mind that at least a part of the relevant public, in particular French consumers, will not pronounce this letter. For this public, both signs have the same structure, both when the sixth letter ‘e’ is pronounced (there being a consonant-vowel-consonant-vowel-consonant-vowel-structure) and when this letter is not pronounced (there being a consonant-vowel-consonant-vowel-consonant-structure), and therefore have the same rhythm and intonation for at least part of the relevant public.
Therefore, the signs are aurally similar to at least an average degree.
The applicant refers to a previous decision of the Office to support its argument that the differences between the signs are striking enough to attract the relevant consumer’s attention. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The cited opposition decision of 19/11/2008, in B 1 077 504, ‘MULTICON/MULTISAN’, can be distinguished from the present proceedings. In the cited decision, the Opposition Division considered that the consonants C/S do not belong to the same group of consonants in terms of sonic features and the vowels O/A have to be stressed, whereas in the present proceedings, the consonants that precede and come after the vowels are the same. Moreover, the applicant did not argue why these vowels would be stressed.
Conceptually, the public in the relevant territory will perceive the figurative element of the earlier mark as flower petals, whereas the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
The applicant claims that the different pronunciation of the syllables of the respective signs is conceptually relevant as it stresses the differences existing between the marks. The pronunciation of signs however has no relevance for their comparison on a conceptual level.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) 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.
The opponent asserted that the earlier mark, as a whole, may be qualified as a strong mark possessing a high distinctive character. However, it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). The opponent did not submit any evidence of acquired distinctiveness and therefore the Opposition Division cannot conclude a higher than normal degree of distinctiveness.
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.
e) 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 or services covered are from the same or economically linked undertakings.
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 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).
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).
The goods in conflict are identical. The public’s degree of attention is average. The earlier mark enjoys an average distinctive character, which affords it a normal scope of protection in the assessment.
The signs are visually similar to an average degree and aurally at least similar to an average degree. Conceptually, the signs are not similar; however, the difference lying in a figurative element has a rather limited impact. Therefore, the fact that the signs differ in this element is not sufficient so as to rule out a likelihood of confusion.
Against that background, when encountering the trade marks in question, the average consumer may be confused and assume that the goods covered come from the same or economically linked undertakings.
Therefore,
the opposition is well founded on the basis of the opponent’s
European Union
trade mark registration No 11
375 086
.
As the opposition is fully upheld on the basis of the earlier EUTM, the Opposition Division does not have to proceed with the examination of the other earlier mark on which the opposition is based, as said examination will not affect the outcome of the present decision.
It follows that the contested trade mark must be entirely rejected.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Nicole CLARKE
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Christophe DU JARDIN |
Biruté SATAITE-GONZALEZ
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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.
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