OPPOSITION No B 2 695 495

Difusion consumo S.L., Ronda Santa María 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 Thessaloniki, Greece (applicant), represented by Maria Vastaroucha, 1 Valaoritou str., 54626 Thessaloniki, Greece (professional representative).

On 25/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 695 495 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 994 909. 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

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 are the following:

Class 3: Cosmetics and cosmetic preparations; cosmetic preparations for the hair and scalp; hair preparations and treatments; skin care preparations; hair strengthening treatment lotions; cosmetics for the use on the hair; hair lotion; hair nourishers; hair dressings for men; shampoos; hair tonic; dandruff shampoos, not for medical purposes; oils for cosmetic purposes; oral hygiene preparations; body cleaning and beauty care preparations; perfumery and fragrances; ointments for cosmetic use; cosmetics for personal use; hair care lotions; hair protection lotions; non-medicated hair shampoos; hair tonic [non-medicated]

Class 5: Medicated food supplements; pharmaceuticals and natural remedies; hygienic preparations and articles; food supplements

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 cosmetics and cosmetic preparations; cosmetic preparations for the hair and scalp; hair preparations and treatments; skin care preparations; hair strengthening treatment lotions; cosmetics for the use on the hair; hair lotion; hair nourishers; hair dressings for men; shampoos; hair tonic; dandruff shampoos, not for medical purposes; oils for cosmetic purposes; ointments for cosmetic use; cosmetics for personal use; hair care lotions; hair protection lotions; non-medicated hair shampoos; hair tonic [non-medicated] are included in the broad category of the opponent’s cosmetics and all kinds of goods and preparations for perfumery, toiletries, beauty and dentifrices. Therefore, they are identical.

The contested perfumery and fragrances are identical to the opponent’s essences, perfumes, because they are identically contained in both lists (including synonyms).

The contested oral hygiene preparations are identical to the opponent’s dentifrices, because they are identically contained in both lists (including synonyms).

The contested body cleaning and beauty care preparations overlap with the opponent’s preparations for toiletries and beauty. Therefore, they are identical.

Contested goods in Class 5

The contested hygienic preparations and articles are identical to the opponent’s hygiene preparations in Class 5, because they are synonyms.

The contested pharmaceuticals and natural remedies are similar to the opponent’s cosmetics in Class 3. They may have the same purpose, producers and distribution channels.

The contested medicated food supplements; food supplements are similar to a low degree to the opponent’s cosmetics. 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.

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.

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).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

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 mark is the word ‘EUDERMIN’.

The contested sign is figurative and consists of the verbal elements ‘Evdermia Revolotion’, the first word, ‘Evdermia’, being written in grey standard title case letters and the second word, ‘Revolotion’, written in white standard title case letters and underlined. Moreover, the whole sign is placed against a rectangular yellow background.

The element ‘REVOLOTION’ in the contested sign is the dominant element as it is the most eye-catching.

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, 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.

On the other hand, the verbal element ‘REVOLOTION’ in the contested sign is an invented word. It is also the dominant element of the contested sign due to its position and size.

Visually, the signs coincide in six out of eight letters, ‘E*DERMI*’. However, in the contested sign, the word ‘REVOLOTION’ visually dominates the overall impression, due to its size, compared with the size of the word ‘Evdermia’, its position in the centre of the trade mark and its underlining. As a result of its dominant character, the element ‘REVOLOTION’ will attract the attention of the relevant public, make an impression on them and be remembered by them.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EU/VDERMI’ (the second letter, ‘V’, of the contested sign is likely to be pronounced as the vowel ‘U’, as in Latin words). On the other hand, it differs in the sound of these elements’ last letters, ‘N’ versus ‘A’, and the letters ‘REVOLOTION’.

Therefore, the signs are aurally similar to a low degree.

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.

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

According to settled case-law, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

As seen above, the goods are partly identical and partly similar to different degrees. 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.

The opponent refers to previous decisions of the Office to support its arguments. In this case, the opponent refers to the decision of the Office on the opposition 13/05/2016, B 2 436 320. In that decision, the Office upheld the opposition filed by the opponent in its entirety for goods in Class 3 and almost in its entirety for goods in Class 5.

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.

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings. In that case, the contested sign exclusively consisted of the word ‘evdermia’, whereas in the present case the dominant component of the contested sign is the differing word ‘REVOLOTION’.

The signs are visually and aurally similar to a low degree; the signs coincide in only the string of letters ‘EU/VDERMI*’. Furthermore, on the visual and aural levels, it must be noted, as a first point, that the element ‘REVOLOTION’ has a prominent position within the mark applied for, in the centre. Furthermore, the word ‘EVDERMIA’ is almost illegible because of its size and position. As a result, it is the differing word ‘REVOLOTION’ that will catch the attention of the relevant public and can make an impression on them and be remembered by them.

Therefore, considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods. Therefore, the opposition must be rejected.

The opponent has also based its opposition on Spanish trade mark registration No 2 898 006 for the figurative mark containing the wording ‘EUDERMIN XGEN’. The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains an additional word, ‘XGEN’, which is not present in the contested trade mark. Therefore, this earlier sign differs even more from the contested sign, and a detailed examination of this earlier mark would not change the outcome.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

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.

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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.