OPPOSITION No B 2 722 059

Revuele Ltd., Bratin Dol. Str., bl. 26A, en. B, floor 4, app.27, 1330 Sofia, Krasno Selo Region, Bulgaria (opponent), represented by IP Consulting LTD., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).

a g a i n s t

Prostemics CO., LTD., Kyoungwon Bldg., Nonhyun-dong, 708, Eonju-ro, Gangnam-gu, 06061 Seoul, Republic of Korea, (applicant), represented by Schoppe, Zimmermann, Stöckeler, Zinkler, Schenk & Partner mbB Patentanwälte, Radlkoferstr. 2, 81373 München, Germany (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 722 059 is upheld for all the contested goods.

2. European Union trade mark application No 15 183 403 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 183 403 . The opposition is based on, inter alia, international trade mark registration No 1 119 310 designating Bulgaria . 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, inter alia, the following:

Class 3: Cosmetics, hair lotions.

The contested goods are the following:

Class 3: Depilatory preparations; non-medicated preparations for the care of skin, hair and scalp; cosmetic preparations for the hair and scalp; hair fixers; hair powders; hair oils; hair spray; cosmetics; shampoos; hair essences; hair rinses; gels and oils for tanning (cosmetics); depilatory creams; functional cosmetics; scalp stimulating preparations (not for medical use); toners for scalp (not for medical use); skin care lotions.

The contested goods are various cosmetics and cosmetic preparations used on the skin and body, as well as for the purposes of scalp health and hair beauty. As such these goods identically contain or overlap with the earlier mark’s cosmetics. Therefore, they are identical.

b) Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large, as well as at professionals to the extent that they are involved in the beauty care industry. The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 element ‘VELVET’ contained in both signs has no meaning for the relevant public and is, therefore, distinctive.

Likewise, the expression ‘on the ground’ depicted in the contested sign is likely to remain meaningless for the majority of the Bulgarian speakers and will be thus distinctive as a whole.

By contrast, the figurative element in the contested sign, illustrated on top of the verbal elements, will be associated with a concept, namely a head of a deer. Since this figurative element does not have any descriptive or allusive relation to the goods in question (cosmetics), it is endowed with a normal degree of distinctiveness.

Account is nevertheless taken of the fact 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). Consequently, the said device of the contested sign may be paid less attention by consumers who will rely on the verbal element/s of the sign instead.

As regards the stylisation and additional figurative elements used in both signs, this component of the earlier mark is barely present and consists of a plain rectangle, whereas in the contested sign it concerns (in addition to the above discussed device), only a colourful stylisation of the letters, which main purpose is simply to embellish the verbal elements. Consequently, this aspect of the signs will also have a rather limited impact on their overall perception.

While the earlier mark has no dominant element, the verbal element ‘VELVET’ in the contested sign overshadows the other verbal elements by virtue of its central position and much bigger size. Consequently, this verbal element may be considered the visually dominant element of the contested sign.

Visually and aurally, the signs coincide in the verbal element ‘VELVET’, whereas they differ in the remaining verbal expression in the contested sign, as well as in its figurative device. Additionally, both signs bear some stylisation, as referred to above.

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 or from top to bottom, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. As may be seen above, the coinciding verbal element ‘VELVET’ is the first element in the contested sign that will primary catch consumer’s attention (in addition to being the dominant verbal element of the sign).

Therefore, in the light of the above, the signs are considered visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the earlier mark as explained above, 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.

As the signs have been found similar in two aspects of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

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 as a whole.

e) 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 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 goods are found identical and the degree of attention paid by both, general consumers and professionals, will be average. The earlier mark is considered to enjoy a normal degree of inherent distinctiveness in relation to the goods.

As established above, the signs are visually and aurally similar to an average degree, this on account of their coinciding verbal element ‘VELVET’, which constitutes the sole and distinctive verbal element of the earlier mark and the dominant verbal element of the contested sign. As has been explained, the differing expression in the contested sign remains in a secondary position and as such will have less impact on the overall perception of the sign. Likewise, the figurative element introducing a concept may be paid less attention than the verbal element ‘VELVET’, which will be in any case seen as the badge of origin of the goods in question.

In principle, 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/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In particular, it cannot be excluded that the additional verbal and figurative elements of the contested sign may be seen by consumers as modification of the already existing mark or launching a new commercially related mark as response to the diversity and dynamics of the cosmetics market. In that sense, the Opposition Division cannot deny that the coincidences between the signs are likely to bring consumers into confusion about the origin of the said goods.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 119 310 designating Bulgaria. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right designating Bulgaria leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other territories invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Tzvetelina IANTCHEVA

Manuela RUSEVA

Sofia MARTINEZ SACRISTAN

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.