OPPOSITION No B 2 933 771

Erboristeria Magentina S.r.l., Via Pessione, 14, 10046 Poirino (TO), Italy (opponent), represented by Buzzi, Notaro & Antonielli D'Oulx, Corso Vittorio Emanuele II, 6, 10123 Torino, Italy (professional representative)

a g a i n s t

Beáta Baníková, Podolské nábř. 1, 14700 Praha 4 – Podolí, Czech Republic (applicant), represented by Denisa Dudová, Vršovická 478/51, 100 00 Praha 10 –Vršovice, Czech Republic (professional representative).

On 09/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 933 771 is upheld for all the contested goods and services, namely

Class 3: Fragrances; Fragrances for personal use; Room perfumes in spray form; Aromatics for fragrances; Ethereal essences; Ethereal oils; Bath herbs; Cosmetic kits; Kits of herbal cosmetics; Scented body lotions and creams; Cosmetic masks; Cleansing masks; Skin cleansers; Skin care lotions [cosmetic]; Skin care oils [cosmetic]; Skin moisturisers; Lotions, for cosmetic purposes, from fruits or vegetables; Base cream; Hand creams; Lip cream; Face creams for cosmetic use.

Class 35: Retailing, mail order and electronic trade (online shopping) via communications networks (the internet) of fragrances, ethereal essences, bath herbs, cosmetic kits, lotions.

2. European Union trade mark application No 16 268 005 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 268 005 for the word mark ‘ELFIE’, namely for all the goods in Class 3 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 16 131 773 for the figurative mark . 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.

1. The goods and services

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

Class 3: Essential oils; Essential oils; Scented oils; Oils for cosmetic purposes; Cosmetic creams; Body cream; Face creams for cosmetic use; Skin cream; Shampoo; Reed diffusers; Air fragrancing preparations; Conditioning preparations for the hair; Perfume water; Cosmetics; Hair care creams; Massage creams, not medicated; Perfumed creams; Antiperspirants [toiletries]; Shower and bath foam; Cosmetic masks; Aromatic oils; Massage oils; Hair preparations and treatments; Bath preparations; Body cleaning and beauty care preparations; Perfumery and fragrances; Soaps.

The contested goods and services are the following:

Class 3: Fragrances; Fragrances for personal use; Room perfumes in spray form; Aromatics for fragrances; Ethereal essences; Ethereal oils; Bath herbs; Cosmetic kits; Kits of herbal cosmetics; Scented body lotions and creams; Cosmetic masks; Cleansing masks; Skin cleansers; Skin care lotions [cosmetic]; Skin care oils [cosmetic]; Skin moisturisers; Lotions, for cosmetic purposes, from fruits or vegetables; Base cream; Hand creams; Lip cream; Face creams for cosmetic use.

Class 35: Retailing, mail order and electronic trade (online shopping) via communications networks (the internet) of fragrances, ethereal essences, bath herbs, cosmetic kits, lotions.

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 Fragrances; Fragrances for personal use; Room perfumes in spray form; Aromatics for fragrances; Ethereal essences; Ethereal oils; Bath herbs; Cosmetic kits; Kits of herbal cosmetics; Scented body lotions and creams; Cosmetic masks; Cleansing masks; Skin cleansers; Skin care lotions [cosmetic]; Skin care oils [cosmetic]; Skin moisturisers; Lotions, for cosmetic purposes, from fruits or vegetables; Base cream; Hand creams; Lip cream; Face creams for cosmetic use are identical to the opponent’s Essential oils; Air fragrancing preparations; Cosmetics; Bath preparations; Perfumery and fragrances, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. Since this is the case here, as could be seen above, the contested Retailing, mail order and electronic trade (online shopping) via communications networks (the internet) of fragrances, ethereal essences, bath herbs, cosmetic kits, lotions are considered similar to a low degree to the opponent’s fragrances; essential oils; bath preparations; 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 and services found to be identical or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise (for example in relation to ethereal essences).

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, or terms and conditions of the goods and services purchased.

3. The signs

	ELFIE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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 reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public since the word ‘ELFI’ of the earlier mark is meaningful in Italian and the Opposition Division considers that this increases the likelihood of confusion between the signs.

The word ‘ELFI’ of the earlier mark will be perceived by the relevant public as a plural form of the Italian word ‘ELFO’ meaning in English ‘ELF’ – ‘A supernatural creature of folk tales, typically represented as a small, elusive figure in human form with pointed ears, magical powers, and a capricious nature’. The distinctiveness of this word is average since it has no connotations with the goods at issue.

The word ‘ELFIE’ of the contested sign will be associated by the relevant Italian public with the word ‘ELFI’ given its high resemblance. The distinctiveness of this word is also average.

As regards the stylisation of the earlier mark, it is considered that it will be perceived by consumers as having a purely decorative nature and, as such, it will have a limited impact on the public as an indicator of a commercial origin.

The figurative element of the earlier mark will be perceived by the relevant public as an elf playing a fife. The distinctiveness of the figurative element is average since it has no connotation with the goods covered by the mark.

In addition, account must be 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).

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘ELFI’ and differ in the final letter of the contested sign, ‘E’. They also differ in the earlier mark’s figurative element and in the stylisation of the verbal element of the sign. The word ‘ELFI’ is the sole verbal element of the earlier mark and it is fully included in the contested sign.

In conclusion, even if the figurative element in the earlier mark is not negligible in terms of size and the contested sign includes an additional letter, namely ‘E’, these differentiating elements cannot counterbalance the visual similarity in the common and distinctive verbal element ‘ELFI’. Also, contrary to the applicant’s allegations, there is no reason to assume that the final letter ‘E’ would add originality to the contested sign to exclude the similarity between the signs.

Therefore, overall the signs must be considered visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛E-L-F-I*’, present identically in both signs. The pronunciation differs in the sound of one additional final letter, ‛*-E’, of the contested sign. The difference in sound created by this further sound is minimal.

Therefore, the signs are aurally similar to a high degree, as the pronunciation differs rather slightly and only in the final parts of the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by the relevant public as referring to elves, the signs are conceptually similar to 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.

d) 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eleventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

The goods are identical and the services are similar to a low degree.

The marks are visually similar to at least an average degree, aurally and conceptually highly similar. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attention may vary from average to high.

Therefore, in an overall assessment, taking into account that the sole verbal distinctive element of the earlier mark is entirely contained in the contested sign with the addition of one final letter, it is reasonable to assume that when confronted with the contested sign in relation to identical goods and even similar to a low degree services consumes are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings. Contrary to the applicant’s allegations, the dissimilar final letter of the contested sign does not have a particularly strong impact either aurally or visually because of its position at the end of the mark. Additionally, account must be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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 reject the contested application.

It follows from the above that the contested trade mark must be rejected for all the contested goods and services.

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 , 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

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.