CANCELLATION No 19 521 C (INVALIDITY)

Ahmed Mamdouh Hamid & Co. Fabrique de Nevertari, Société en commandite, La Zone Industrielle Deuxième, Poste de Police, Bourg El Arab, Alexandria, Egypt (applicant), represented by Cabinet Weinstein, 176 avenue Charles de Gaulle, 92200 Neuilly sur Seine, France (professional representative)

a g a i n s t

L’Oreal (UK) Limited, 255 Hammersmith Road, London W6 8AZ, United Kingdom (EUTM proprietor), represented by Carlos Polo & Asociados, Profesor Waksman, 10, 28036 Madrid, Spain (professional representative).

On 08/04/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 15 353 816 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 353 816 ‘SPARKLE CLASH’. The application is based on international registration No 1 166 117 designating the European Union for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested trade mark should be declared invalid because there is a likelihood of confusion with its earlier mark on the part of the relevant public.

The EUTM proprietor replies that there is no likelihood of confusion because the coinciding element is weak.

The applicant did not submit further arguments.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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.

1. The goods

The goods on which the application is based are the following:

Class 3: Cosmetics.

The contested goods are the following:

Class 3: Cosmetics; Make-up preparations.

The contested goods are identical to the applicant’s goods as cosmetics are mentioned identically in both lists and make-up preparations are included in the broader category of cosmetics.

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 are directed at the public at large. The degree of attention is considered to be average

3. The signs

	SPARKLE CLASH
Earlier trade mark	Contested trade mark

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The coinciding element of the signs, ‘SPARKLE’, is an English word which means ‘to shine brightly with flashes of light’. English-speaking consumers will perceive it as a weak element which refers to the shiny/radiant effect obtained by using the cosmetics at issue.

As a weak element of a sign is not perceived by the public as a reliable indication of the commercial origin of the goods, a coincidence in a weak element will not normally lead to a likelihood of confusion. Therefore, the English-speaking part of the public is less prone to confusing the signs under analysis than the non-English-speaking part of the public which would not perceive the coinciding element ‘SPARKLE’ as a weak element. Therefore, for reasons of economy of proceedings which do not harm the interests of either party, the assessment will focus on the perception of the non-English-speaking part of the public.

The applicant argues that the English term ‘SPARKLE’ with the abovementioned meaning will be understood in all European Union Member States because consumers are used to seeing and understanding the meaning of English terms on cosmetic products, but does not adduce convincing evidence in support of these contentions. Furthermore, it argues that the term is weak because it is commonly used in trade marks. The applicant submits some extracts from the databases of national intellectual property offices concerning trade marks which include the term ‘SPARKLE’ for cosmetics (Danish Office, French Office, Italian Office, Finnish Office, UK Office) as well as some printouts from online shopping websites, in German and Spanish, showing cosmetic goods and perfumes sold under trade marks including the word ‘Sparkle’. The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. Furthermore, the printouts submitted do not demonstrate that consumers have been exposed to such a widespread use of the word ‘SPARKLE’ as to have become accustomed to trade marks which include that word. Neither does it show that those consumers understand the meaning of the word. Under these circumstances, the EUTM proprietor’s claims that ‘SPARKLE’ is weak throughout the European Union must be set aside.

In view of the above, the coinciding term ‘SPARKLE’ of the signs is meaningless, and distinctive to a normal degree, for the non-English-speaking public.

The term ‘CLASH’ of the contested sign is a word of English origin, meaning ‘conflict’, which is commonly used in some languages such as French or German whereas it has no meaning in other languages such as Spanish or Italian. This term is distinctive to a normal degree, even where understood as its meaning does not indicate or suggest any qualities of the goods at issue.

The earlier mark, which is figurative, does not include any elements with more visual impact than others. The black background and the slight stylisation of the word ‘SPARKLE’ are commonplace features intended for decorative purposes. The element consisting of an Arabic inscription, placed under the term ‘SPARKLE’, will not be attributed any meaning and will also be perceived as an adornment.

Furthermore, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Conceptually, for a part of the public under analysis, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For another part of the public, including the French-speaking public, the signs are conceptually not similar owing to the meaning of the verbal element ‘CLASH’ of the contested sign, as indicated above.

Visually, the signs coincide in the term ‘SPARKLE’, which is placed first in both of them and which is the only verbal element of the earlier mark. The coinciding element plays a distinctive and independent role in both signs. The signs differ in the distinctive verbal element ‘CLASH’ of the contested sign. They also differ in the figurative elements and the Arabic inscription of the earlier mark which do not constitute significant elements of difference for the reasons previously explained.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, or from top to bottom, which makes the part placed at the left (the top) of the sign (the initial part) the one that first catches the attention of the reader.

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

Aurally, as the vast majority of the public in the relevant territory will not be able to pronounce the Arabic inscription, the earlier mark will be pronounced by its element ‘SPARKLE’ and is, therefore, entirely included at the beginning of the contested sign. The coincidence amounts to two syllables in most relevant languages (or even three at least in Spanish), and the difference lies in the one-syllable sound of the verbal element ‘CLASH’.

Considering the above, the signs are aurally similar to an above average degree.

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 from the perspective of the relevant public. 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 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 identical and for these goods, the public displays a normal degree of attention.

The earlier mark is distinctive to an average degree which affords it a normal scope of protection in the assessment.

The signs are visually similar to an average degree and aurally similar to an above average degree. For a part of the public, they do not convey semantic associations which may help the public differentiate them, whereas for another part of the public, the additional term ‘CLASH’ of the contested sign will be associated with a meaning not present in the earlier mark. However, that meaning does not affect the meaningless, independent, coinciding term and therefore cannot counteract the visual and aural similarities which derive from that term.

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.

In the present case, owing to the coincidence in the independent and distinctive element ‘SPARKLE’, 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 view of the above, a significant part of the relevant public is likely to perceive the identical goods at issue marketed under the signs compared as proceeding from the same or from economically linked undertakings.

Therefore, there is a likelihood of confusion, including a likelihood of association, on the part of the non-English speaking public. 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 declare the contested trade mark invalid.

Consequently, the application is well founded on the basis of the applicant’s international trade mark registration No 1 166 117 designating the European Union. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Boyana NAYDENOVA

Catherine MEDINA

Frédérique SULPICE

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 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.