CANCELLATION No 39 942 C (INVALIDITY)

Etnia Dreams Sociedad Limitada, Plaza Del Ayuntamiento, Número 6, Piso 8, Puerta 15, 46002 Valencia, Spain (applicant), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Serge Poisson, Rue Constant Legrève 61, 1300 Limal, Belgium (EUTM proprietor).

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

DECISION

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

2. European Union trade mark No 15 721 301 is declared invalid for some of the contested goods and services, namely:

Class 3: Cosmetics and cosmetic preparations.

Class 35: Online retail store services relating to cosmetic and beauty products.

3. The European Union trade mark remains registered for the remaining services, namely:

Class 35: Marketing research in the fields of cosmetics, perfumery and beauty products.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 15 721 301 for the word mark ‘Etnik’. The application is based on European Union trade mark registration No 11 017 241 for the word mark ‘ETNIA’, European Union trade mark registration No 11 324 886 for the word mark ‘ETNIA: MAKE UP, MAKE ART’ and Spanish trade mark registration No 1 705 271 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed an invalidity request on 29/11/2019 claiming that due to the high visual and aural similarity of the marks and their conceptual identity for some parts of the public and the identity or similarity of the goods and services in conflict, there is a likelihood of confusion on the part of the public.

The EUTM proprietor, despite having been duly notified of the invalidity application by the Office and invited to comment on it, did not submit any observations in response.

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.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No 11 017 241 for the word mark ‘ETNIA’.

1. The goods and services

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.

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; abrasives; almond oil; gaultheria oil; jasmine oil; lavender oil; rose oil; oil of turpentine for degreasing; oils for cleaning purposes; oils for perfumes and scents; oils for toilet purposes; cedarwood (essential oils of -); lemon (essential oils of -); ethereal oils; oils for cosmetic purposes; cosmetic preparations for slimming purposes; eyelashes (adhesives for affixing false -); adhesives for affixing false hair; adhesives for cosmetic purposes; breath freshening sprays; shaving preparations; grinding preparations; drying agents for dishwashing machines; eau de cologne; lavender water; toilet water; scented water; canned pressurized air for cleaning and dusting purposes; ammonia [volatile alkali] detergent; smoothing preparations [starching]; laundry starch; starch glaze for laundry purposes; musk [perfumery]; amber [perfume]; antistatic preparations for household purposes; antiperspirants [toiletries]; aromatics [essential oils]; cake flavourings [essential oils]; flavorings for beverages [essential oils]; air fragrancing preparations; astringents for cosmetic purposes; color-brightening chemicals for household purposes [laundry]; bluing for laundry; balms other than for medical purposes; baths (cosmetic preparations for -); varnish-removing preparations; shoe wax; whiting; leather bleaching preparations; sachets for perfuming linen; leaves of plants (preparations to make shiny the -); shining preparations [polish]; lip glosses; sun-tanning preparations [cosmetics]; furbishing preparations; hair waving preparations; silicon carbide [abrasive]; carbides of metal [abrasives]; eyebrow cosmetics; volcanic ash for cleaning; non-slipping wax for floors; laundry wax; tailors' wax; shoemakers' wax; wax (depilatory -); mustache wax; floor wax; polishing wax; waxes for leather; shampoos; dry shampoos; shampoos for pets; laundry blueing; leather preservatives [polishes]; corundum [abrasive]; quillaia bark for washing; cosmetics; cosmetics for animals; skin whitening creams; creams (cosmetic -); boot cream; polishing creams; skin care (cosmetic preparations for -); floor wax removers [scouring preparations]; scouring solutions; bleaching preparations [decolorants] for cosmetic purposes; dentifrices; depilatories; degreasers other than for use in manufacturing processes; scale removing preparations for household purposes; make-up removing preparations; deodorants for pets; deodorants for human beings or for animals; rust removing preparations; detergents other than for use in manufacturing operations and for medical purposes; diamantine [abrasive]; douching preparations for personal sanitary or deodorant purposes [toiletries]; polish for furniture and flooring; mouth washes, not for medical purposes; badian essence; bergamot oil; mint essence [essential oil]; ethereal essences; emery; extracts of flowers [perfumes]; flower perfumes (bases for -); fumigation preparations [perfumes]; dental bleaching gels; massage gels other than for medical purposes; geraniol; laundry glaze; greases for cosmetic purposes; cotton wool for cosmetic purposes; heliotropine; cotton sticks for cosmetic purposes; incense; ionone [perfumery]; shaving soap; almond soap; soap; antiperspirant soap; soap for foot perspiration; disinfectant soap; deodorant soap; medicated soap; soap for brightening textile; petroleum jelly for cosmetic purposes; nail polish; hair spray; lacquer-removing preparations; breath freshening strips; eyebrow pencils; pencils (cosmetic -); almond milk for cosmetic purposes; cleansing milk for toilet purposes; javelle water; soda lye; windscreen cleaning liquids; cleaning dentures (preparations for -); dry-cleaning preparations; cleaning preparations; non-slipping liquids for floors; hair lotions; after-shave lotions; lotions for cosmetic purposes; scented wood; make-up; make-up preparations; mascara; beauty masks; mint for perfumery; transfers (decorative -) for cosmetic purposes; cosmetic kits; neutralizers for permanent waving; cloths impregnated with a detergent for cleaning; emery paper; sandpaper; polishing paper; wallpaper cleaning preparations; abrasive paper; pastes for razor strops; cakes of toilet soap; nail art stickers; perfumery; perfumes; hydrogen peroxide for cosmetic purposes; eyelashes (cosmetic preparations for -); false eyelashes; cobblers' wax; pumice stone; shaving stones [astringents]; alum stones [astringents]; polishing stones; smoothing stones; lipsticks; paint stripping preparations; make-up powder; pomades for cosmetic purposes; potpourris [fragrances]; laundry preparations; sunscreen preparations; aloe vera preparations for cosmetic purposes; unblocking drain pipes (preparations for -); laundry bleach; denture polishes; polishing preparations; stain removers; laundry soaking preparations; polishing rouge; safrol; bleaching salts; bath salts, not for medical purposes; washing soda, for cleaning; bleaching soda; fabric softeners for laundry use; talcum powder, for toilet use; sandcloth; emery cloth; glass cloth; terpenes [essential oils]; dyes (cosmetic -); colorants for toilet purposes; hair dyes; beard dyes; color-removing preparations; cleaning chalk; tissues impregnated with cosmetic lotions; toiletries; turpentine, for degreasing; tripoli stone for polishing; false nails; nail care preparations; joss sticks.

The contested goods and services are the following:

Class 3: Cosmetics and cosmetic preparations.

Class 35: Marketing research in the fields of cosmetics, perfumery and beauty products; online retail store services relating to cosmetic and beauty products.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 3

The contested cosmetics and cosmetic preparations are identically contained in the applicant’s list of goods (including synonyms).

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested online retail store services relating to cosmetic and beauty products are similar to the applicant’s cosmetics because the goods subject of the contested services are the same as, include as a broader category, or at least overlap with the applicant’s goods and are therefore, identical to them.

The remaining contested services, marketing research in the fields of cosmetics, perfumery and beauty products, are not similar to the goods on which the application is based. The contested services are the collection and analysis of information about a particular market to assess the viability of a product or service. These services are provided by specialist companies such as business consultants or advertising companies which study their client’s needs and provide information and advice for the marketing of their goods and services. Such professionals will not produce or sell the applicant’s goods. These contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods, such as cosmetics, perfumery and beauty products, may be the subject of the contested services is insufficient for finding similarity. Consequently, the contested marketing research in the fields of cosmetics, perfumery and beauty products in Class 35 differs from the applicant’s goods in Class 3 in all the relevant criteria. Therefore, they are dissimilar.

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 are directed at the public at large whose degree of attention in relation to these goods and services is considered to be average.

3. The signs

ETNIA	Etnik
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 marks under comparison are word marks. The protection of a word mark concerns the word as such as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation). As this is the case here, it is irrelevant whether the word marks are depicted in lower-case letters or in upper-case letters, or in a combination thereof.

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). 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.

Due to the proximity of the contested mark ‘Etnik’ to existing words in some languages (e.g. ‘ethnic’ in English, ‘etnic’ in Romanian, ‘étnico’ in Spanish), this mark may be associated with the meaning of ‘ethnic’ (i.e. ‘relating to a population subgroup with a common national or cultural tradition’) by the consumers in some parts of the relevant territory, such as the English, Romanian and Spanish-speaking consumers. It is not likely to be perceived with any meaning in some other languages, such as Bulgarian.

The earlier mark ‘ETNIA’ will be perceived by the Spanish-speaking public as ‘ethnicity’ (i.e. ‘the fact or state of belonging to a social group that has a common national or cultural tradition’). It will be perceived as meaningless in other languages, such as Bulgarian and English.

In any case these words constituting the marks are of average distinctiveness in relation to the relevant goods and services, as they have no clear connection to them or their essential characteristics.

Since the earlier mark may be associated with a clear meaning by the consumers in some parts of the relevant territory but the contested sign has no meaning for some of these consumers (such as the English-speaking part of the public), this introduces a conceptual difference between the marks for that part of the public. In some cases the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 56), as is the case here with the English-speaking public. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on those consumers who will either see a similar meaning in both marks (such as the Spanish-speaking public) or will not see a meaning in any of the marks under comparison (such as the Bulgarian-speaking public).

Conceptually, reference is made to the above assertions concerning the semantic content conveyed by the marks for the parts of the relevant public taken into consideration.

Consequently, there is a conceptual link between the signs for the part of the public that will associate ‘Etnik’ and ‘ETNIA’ with an adjective or a noun relating to certain common characteristics and traits of a human group (such as the Spanish-speaking consumers). The marks are conceptually at least highly similar for that part of the public.

Neither of the signs has a meaning for other parts of the public in the relevant territory taken into consideration (such as the Bulgarian-speaking part of the public). Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

Visually and aurally, the signs coincide in the string of letters ‘ETNI*’ and their respective sounds, present identically in both marks as the first four out of the five letters of the marks. They differ in their last letters, ‘A’ in the earlier mark and ‘K’ in the contested sign, and in their sounds.

Consequently, even bearing in mind that the signs are relatively short, the difference in their last letter does not preclude that the signs are visually and aurally similar at least to an 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, 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 exact meaning for any of the goods 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

In the present case, the goods and services under comparison are partly identical or similar and partly dissimilar. The earlier mark has a normal degree of inherent distinctiveness in relation to the relevant goods. The relevant public’s degree of attention will be average.

The signs are visually and aurally similar at least to an average degree on account of the coinciding letters ‘ETNI*’ and they differ in one letter at the end of each mark. The marks may be associated with a very similar meaning by a part of the relevant public and will be conceptually neutral for another part.

Considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Cancellation Division considers that the visual, aural and, for a part of the public, conceptual similarities between the signs are sufficient to lead to a likelihood of confusion between them for identical or similar goods and services.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion at least on the part of the public that sees related meanings in both of the marks, such as the Spanish-speaking consumers, or do not see a meaning in any of the marks, such as the Bulgarian-speaking consumers in the relevant territory. 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.

Therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 11 017 241.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of the goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these services cannot be successful.

The applicant has also based its cancellation application on earlier European Union trade mark registration No 11 324 886 for the word mark ‘ETNIA: MAKE UP, MAKE ART’ and Spanish trade mark registration No 1 705 271 for the figurative mark , both registered for goods in Class 3. Since these marks cover the same or a narrower scope of goods, the outcome cannot be different for services for which the cancellation application has already been rejected. There can be no likelihood of confusion in respect of either of these two earlier marks in relation to the remaining contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

María Belén IBARRA DE DIEGO

Boyana NAYDENOVA

Nicole CLARKE

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.