OPPOSITION No B 2 849 431

ETAM (société par actions simplifiée), 57-59, rue Henri Barbusse, 92110 Clichy, France (opponent), represented by IPSIDE, 29, rue de Lisbonne, 75008 Paris, France (professional representative)

a g a i n s t

It'S Hanbul Co., Ltd., (Nonhyeon-dong) 634, Eonju-ro, Gangnam-gu, Seoul, Republic of South Korea (applicant), represented by Lambsdorff & Lange Patentanwälte Partnerschaft mbB, Grillparzerstr. 12A, 81675 München, Germany (professional representative).

On 30/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 849 431 is upheld for all the contested goods.

2. European Union trade mark application No 16 011 918 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 16 011 918 for the figurative mark . The opposition is based on European Union trade mark No 13 984 364 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE AND ADMISSIBILITY

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In the present case, the applicant requested that the opponent submit proof of use of the earlier European Union trade mark on which the opposition is based.

The date of filing of the contested trade mark is 04/11/2016. The earlier EUTMR was registered on 17/08/2015. As a consequence, the request for proof of use is inadmissible. The applicant, in this regard, has argued that the earlier mark in question is a so-called repeat application of earlier EUTM No 4 671 533 for an identical mark which also covered certain Class 3 goods that are covered by the current earlier mark. On 13/03/2015, this earlier EUTM No 4 671 533 was partially declared invalid by the Cancellation Division, namely for, inter alia, the goods covered in Class 3, (decision No 9224C, now final), on the basis of non-use. According to the applicant, therefore, a new grace period cannot be triggered but instead the opponent should duly prove use of the earlier mark on which the opposition is based. In support of this argument, the applicant cites a decision of the Board of Appeal of 17/10/2017 (R 1580/2016-4). However, this previous decision is not relevant to the present proceedings since, in the cited case, the opposition was based on two earlier marks, and the Board merely chose to assess the case, unlike the first instance division, on the basis of the earlier mark (in force) that was filed earlier in time, rather than on the second earlier mark that was filed later in time; in addition, no valid proof of use request was made. Consequently, the Board did not enter into the merits of whether the opponent had filed a so-called repeat mark; therefore, the cited decision has no relevance to the present proceedings.

In addition, the applicant also argued that the opposition should have been based on the initial trade mark – earlier EUTM No 4 671 533, however now cancelled for the Class 3 goods – and that the opposition should thus be declared inadmissible.

In this regard, the Opposition Division firstly notes that whether a repeat application of an earlier EUTM was filed in order to avoid the loss of a right as a result of non-use, is a question of bad faith (see e.g. 13/12/2012, T-136/11, Pelikan, EU:T:2012:689, § 27 and § 36 et seq.). Bad faith cannot be a basis for, nor can be taken into account in, opposition proceedings (except for the particular and limited scenario foreseen in Article (3) EUTMR). Consequently, this point cannot be addressed by the Opposition Division. Finally, regardless of the question whether a trade mark registration that has been cancelled from the register could effectively be subject of a valid request for proof of use, in any event, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. The applicant was informed of this by the Office on 28/03/2018. Therefore, the request for proof of use must be in any event considered inadmissible pursuant to Article 10(1) EUTMDR.

Under these circumstances, the arguments of the applicant in this regard must be set aside.

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.

1. The goods

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

Class 3: Cosmetics, cosmetic creams, make-up powder, cosmetic lotions, milks and lotions for removing make-up; make-up preparations, foundation, blusher, lipstick, mascara, eye and eyelid pencils, nail polish, nail polish remover; cosmetics for toilet purposes and for the bath and shower, shower gels, foam baths, cleansing milk for toilet purposes, body care oils and lotions for cosmetic use, shimmer lotions for the body, deodorants for personal use, eaux de toilette, perfumery, scented water; sun creams and lotions (cosmetics).

The contested goods are the following:

Class 3: Cosmetics, functional cosmetics, lipsticks, mascara, makeup foundation, beauty soaps, body lotions, shampoo, toiletries, cosmetic preparations for skin care, essential oil, false eyelashes, dentifrices, perfume, cosmetic soaps, tissues impregnated with cosmetic lotions, beauty masks, cotton buds for cosmetic purposes, make-up removing preparations, perfume oils for the manufacture of cosmetic preparations.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Cosmetics, lipsticks, mascara, makeup foundation are identically contained in both lists of goods.

The contested functional cosmetics, beauty soaps; body lotions, shampoo, cosmetic preparations for skin care, cosmetic soaps, tissues impregnated with cosmetic lotions, beauty masks, make-up removing preparations are included in the broad category of the earlier cosmetics in Class 3 which includes preparations for enhancing or protecting the appearance, odour or fragrance of the body. Therefore, they are identical.

The contested perfume is included in the broad category of the earlier perfumery. Therefore, these goods are considered identical.

Cosmetics are similar to cotton sticks for cosmetic purposes. On the one hand cosmetics includes preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand cotton sticks for cosmetic purposes are a cotton tipped swab used for cleaning a small area or for applying or removing creams or make-up to the skin. Cotton sticks for cosmetic purposes therefore are used to clean or apply or remove cosmetics from the face or body, and are therefore complementary to cosmetics. Additionally they usually coincide in producer, relevant public and distribution channels.

The contested false eyelashes are similar to a high degree to the earlier cosmetics because they have the same purpose; they are complementary and they coincide in distribution channels, in end user and in producer.

The contested essential oil and perfume oils for the manufacture of cosmetic preparations are similar to the earlier cosmetics as these contested goods are fragrant liquid aroma compounds that are used (among others) for scenting cosmetic products, for aromatherapy and as a skin care cosmetic by mixing it with another body lotion. Also, they are often one of the main ingredients in many cosmetics. Additionally, they usually coincide in relevant public, distribution channels, and producer.

The contested dentifrices are similar to the earlier cosmetics. On the one hand cosmetics includes preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand dentifrices are paste, powder or liquid preparations used for cleaning teeth, for personal hygiene purposes, for beautification purposes or to make the breath smell pleasant. Consequently, these goods are held similar as they have the same purpose, namely to enhance or protect the appearance or the odour of the body, including the teeth. Additionally, they usually coincide in relevant public and distribution channels.

The contested cotton buds for cosmetic purposes are similar to the earlier cosmetics. This is because cotton buds for cosmetic purposes are cotton tipped swabs used for cleaning a small area or for applying or removing creams or make-up to the skin. Cotton buds for cosmetic purposes therefore are used to clean or apply or remove cosmetics from the face or body, and are therefore complementary to cosmetics. Additionally they usually coincide in producer, relevant public and distribution channels.

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 (to a high or average degree) are mainly directed at the public at large. The degree of attention is considered to be average (see e.g. 14/04/2011, T-466/08, ACNO FOCUS, EU:T:2011:182, § 49).

3. The signs

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 sole letter ‘E’ depicted in a somewhat stylised, black, bold and italic font, recalling the fifth letter of the Greek alphabet ‘epsilon’; it could also be perceived as a (stylised) mirrored projection of the number ‘3’.

The Office follows the approach that single letters can have an independent conceptual meaning. The Court has confirmed this approach (08/05/2012, T‑101/11, ‘G’, EU:T:2012:223, § 56, appealed as 21/03/2013, C‑341/12 P, G, EU:C:2013:206). In the present case, the letter ‘E’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and is considered distinctive.

In this regard, the applicant argues that the distinctiveness of the earlier mark is below average and refers to a previous Office decision (03/10/2013, R 329/2013-4) related to an appeal filed against the decision of 13/12/2012 in opposition B 1 663 411, in which the Board of Appeal held that the distinctive character of EUTM No 4 671 533 – for the same figurative mark as the earlier mark in the present oppositions and covering (inter alia) identical and similar goods in Class 3 – was below average since “single letters, even if they have no meaning with respect to the goods and services claimed, do not enjoy the same distinctive character per se as letter combinations or words”. For the sake of completeness, the Opposition Division also notes that in the appeal against this decision before the General Court (15/03/2016, T-645/13, G, ECLI:EU:T:2016:145), in reply to the plaintiff’s pleas alleging the infringement of Article 8(1)(b) of EUTMR No 207/2009 (while, however, in this regard, the plaintiff’s arguments exclusively related to infringement of Article 4 EUTMR No 207/2009), the General Court only held that the Board of Appeal had not stated that a single letter, on itself, could not be a valid mark nor that it had applied different rules to assess the likelihood of confusion between single letter marks but had applied the same criteria that apply to other word marks; hence the above mentioned plea of the plaintiff was merely rejected as not founded.

In this regard, first of all, it must be noted that 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In any event, the Opposition Division notes that the current Office practice, as expressed by the Guidelines, in line with the case law established in the Alpha case (09/09/2010, C-265/09 P, α, EU:C:2010:508) is that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (§33-39). Although that judgment deals with absolute grounds, the current Office practice considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter trade marks. The Office considers the ruling to mean that, when establishing the distinctiveness of an earlier mark, it is not correct to rely on assumptions such as a priori statements that consumers are not in the habit of perceiving single letters as trade marks. The General Court has since stated in a number of cases that a trade mark containing a single letter can indeed be inherently distinctive (08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51). Furthermore, in its judgment of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphic representation would be protected (see § 38 and 49). Consequently, whilst registered earlier trade marks consisting of a single letter represented in standard characters enjoy a presumption of validity, ultimately their degree of inherent distinctiveness will have to be assessed with reference to the goods and/or services concerned.

Account must furthermore be taken of the fact that the letter in the earlier mark per se is meaningless and has no descriptive connotation as regards the goods concerned since it does not convey any information about them.

Therefore, in the present case, since it cannot be established that the letter in the earlier mark or the earlier mark as a whole has a meaning or is allusive to the goods in question, the Opposition Division concludes that the earlier mark in the present proceedings must be considered of normal distinctiveness.

The contested sign is also a figurative mark, consisting of the letter ‘E’ depicted in a somewhat stylised, black, bold font, likewise recalling the Greek letter ‘epsilon’ or a mirrored projection of a number ‘3’. Below the letter ‘E’, in a much smaller size and in a grey and fairly standard font, is depicted the term ‘nature’. The same reasoning as above as regards the distinctiveness of the letter ‘E’ applies to the contested sign. Hence it is considered meaningless and arbitrary, thus of normal distinctiveness.

The English or French term ‘nature’ in the contested sign, on the other hand, will be recognised and understood throughout the European Union, either because they understand English/French or because the term will be associated with the same concept by the rest (i.e. the non-English/non-French- speaking part) of the relevant public due to the similarities of this word to its equivalents in various languages, such as ‘natur’ in Danish, German and Swedish, ‘natura’ in Italian and Polish, ‘natură’ in Romanian or ‘natuur’ in Dutch. The same goes for the Spanish and Portuguese equivalent ‘naturaleza’. In addition, Finnish-speaking consumers will understand the word also on account of the existence of words in Finnish that have ‘NATUR-’ as their origin, namely ‘naturelli’ (an adjective which means ‘natural’). Although there is no such similar equivalent in for instance Greek language, the Greek- speaking consumers are in any event likely to associate it with nature, as this word is commonly used on the market for all kinds of products, pointing to the importance of having for instance a natural composition or relating to nature. Consequently, and bearing in mind that the relevant goods are related to cosmetics, beauty and hygiene, ‘nature’ will be perceived by the relevant public as referring to something that comes from nature. It is thus at best weak for these goods, as it will simply be perceived as an indication of the fact that they are composed of natural ingredients, have had a minimum of processing or preservative treatment or use natural methods. Furthermore, due to its smaller size and position, the element ‘nature’ is also less visually eye-catching (secondary) than the element ‘E’ which will have thus as stronger impact on consumers than ‘nature’.

Conceptually, as both signs will be perceived as the (stylised) letter ‘E’/‘epsilon’ or a stylised mirrored projection of the number ‘3’, while the additional term ‘nature’ in the contested sign is at best of limited distinctiveness (in addition to being secondary) and thus not able to create a significant conceptual difference between the signs, the signs are to be considered conceptually similar to a very high degree.

Visually, the signs coincide in that they both contain a representation of a letter (or a stylised mirrored ‘3’), depicted in a black, bold font which merely differs in the remaining aspects of their respective stylisation. The signs differ further in that the contested sign contains the additional term ‘nature’ (which is, however, at best, of limited distinctiveness, in addition to being secondary).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, and regardless of the way they are perceived, the earlier mark and the dominant element of the contested sign are pronounced identically and the pronunciation of the signs differs in the ‘nature’ in the contested sign - if pronounced at all considering the limited distinctiveness and secondary positon of this additional term.

Consequently, the signs are aurally similar to at least a high 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 is considered normal.

5. 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/services covered are from the same or economically linked undertakings.

With the exception of some aspects of its stylisation, the earlier mark is included in its entirety in the contested sign, in which it is the more distinctive and the dominant element. Furthermore, the signs are visually similar to a high degree, aurally similar to a high degree, at least, and conceptually similar to a very high degree. The goods are partly identical and partly similar (to an average or a high degree) and the attention of the relevant consumers will be average.

Account must also be 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).

In the present case, it is indeed 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 (with natural ingredients or produced with natural methods only) that it designates.

Considering all the above, the small differences between the signs (confined to secondary elements and aspects), are certainly incapable of counteracting their similarity to enable the relevant public with an imperfect recollection to safely distinguish between them in relation to identical or similar goods.

For the sake of completeness, while – as seen above under section d) – the earlier mark is held to be of normal distinctiveness, the Opposition Division notes that the result would even be the same where the distinctiveness of the earlier mark would have been lower than average, as argued by the applicant. This is because evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Indeed, the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). The fact remains that, according to the case-law, the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the perception of the relevant public (10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 35), as is the case in the present proceedings.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public under analysis. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 984 364. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Martina GALLE

Edith VAN DEN EEDE

Francesca CANGERI SERRANO

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.