OPPOSITION No B 2 900 523

Società Italo Britannica L.Manetti-H.Roberts & C. p.A., Via Pellicceria 8, 50123 Firenze, Italy (opponent), represented by Saglietti Bianco S.r.l., Corso Vittorio Emanuele II n. 82, 10121 Torino, Italy (professional representative)

a g a i n s t

Magali Bataillier, 7 rue Chevaliers de Malte, 31620 Fronton, France (applicant), represented by Cabinet @Mark, 16 rue Milton, 75009 Paris, France (professional representative).

On 02/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 900 523 is upheld for all the contested goods, namely:

Class 3: Cosmetics; make-up preparations; lipstick; nail polish; make-up removing preparations; perfumery; perfume; toilet water; cologne; scented bases; essential oils; potpourris [fragrances]; incense; skincare cosmetics; nail care preparations; lotions for cosmetic purposes; skin creams (cosmetics); cosmetic masks; hair lotion; wax (depilatory -); shaving preparations; shaving soap; shave lather; after-shave preparations; dentifrices; cosmetic soaps; toilet soap; shampoo; shower gels; bath gel; foam bath preparations; cleansing milk for toilet purposes.

2. European Union trade mark application No 16 373 301 is rejected for all the contested goods. It may proceed for the remaining uncontested goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 373 301 for the word mark ‘BILBOQUET’, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 14 116 156 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 116 156.

a) The goods

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

Class 3: Pedicure preparations; tissues impregnated with cosmetic lotions; dentifrice; teeth cleaning lotions; tooth cleaning preparations; body deodorants [perfumery]; balms other than for medical purposes; cosmetics for use on the skin; washing creams; hand cleansers; foams for use in the shower; foot scrubs; shower and bath gel; douching preparations for personal sanitary or deodorant purposes [toiletries]; hair preparations and treatments; washing preparations for personal use; cleaning preparations for personal use; hand washes; body cleansing foams; cleaning agents for the hands; shower creams; body cream soap; deodorant soap; shower soap; soap; cosmetic soaps; cream soaps; disinfectant soap; soaps in gel form; liquid bath soaps; liquid soaps for hands and face; hand soaps; soaps for personal use; body shampoos; sponges impregnated with soaps; bath foam; foaming bath liquids; bath concentrates (non-medicated -); bath creams (non-medicated -); foaming bath gels; bath gel; bath lotions (non-medicated -); bubble bath; bath soap; anti-perspirant deodorants; deodorants for body care; antiperspirants [toiletries]; body sprays; body mask cream; facial washes [cosmetic]; skin cleansers; exfoliants for the cleansing of the skin; moisturizing milk; bath lotion; cosmetic facial lotions; skin lotion; cleansing lotions; skin cleansing lotion; body masks; waterproof sunscreen; cleansing foam; hair balsam; hair creams; conditioning creams; hair care lotions; detanglers; shampoos; hair mousse; body talcum powder; shampoo-conditioners; shampoos for personal use; dry shampoos; hair spray; aftershave balms; shaving balm; depilatory wax; depilatory creams; aftershave moisturising cream; shaving cream; depilatory preparations; after-shave emulsions; after-shave preparations; shaving soap; shaving sprays; hair protection mousse; dandruff shampoos, not for medical purposes; bath preparations, not for medical purposes; barrier creams; exfoliant creams; perfumed creams; sun creams; suntan creams; creams for tanning the skin; aftershave creams; cosmetic creams; night cream; day creams; cosmetic nourishing creams; body cream; eye cream; skin cream; face creams for cosmetic use; hand creams; anti-wrinkle cream; hair protection creams; skin cleansing cream; cosmetics in the form of creams; creams for firming the skin; cosmetic hand creams; skin whitening creams; creams for cellulite reduction; moisturising skin creams [cosmetic]; pre-shave creams; skin care creams [cosmetic]; skin conditioning creams for cosmetic purposes; lip cream; face cream (non-medicated -); non-medicated cleansing creams; oils for cosmetic purposes; scented oils; sun-tanning oils; essential oils; oils for hair conditioning; oils for toilet purposes; bath oil; body oils [for cosmetic use]; combing oil; cosmetics in the form of oils; body oil spray; skin care oils [cosmetic]; cleansing milks for skin care; body milks; cosmetics in the form of milks; tanning milks [cosmetics]; cosmetic sun-protecting preparations; cosmetics for protecting the skin from sunburn; sunscreen; sun block preparations; sun protecting creams [cosmetics]; facial cleansing milk; hand oils (non-medicated -); skin cleansing cream [non-medicated]; hair fixing oil; nail cream.

The contested goods are the following:

Class 3: Cosmetics; make-up preparations; lipstick; nail polish; make-up removing preparations; perfumery; perfume; toilet water; cologne; scented bases; essential oils; potpourris [fragrances]; incense; skincare cosmetics; nail care preparations; lotions for cosmetic purposes; skin creams (cosmetics); cosmetic masks; hair lotion; wax (depilatory -); shaving preparations; shaving soap; shave lather; after-shave preparations; dentifrices; cosmetic soaps; toilet soap; shampoo; shower gels; bath gel; foam bath preparations; cleansing milk for toilet purposes.

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.

Essential oils; skin creams (cosmetics); hair lotion; wax (depilatory -); shaving soap; after-shave preparations; dentifrices; cosmetic soaps; toilet soap; shampoo; shower gels; bath gel; foam bath preparations are identically contained in both lists of goods (including synonyms).

The contested perfumery; perfume; cologne; potpourris [fragrances]; incense are similar to the opponent’s essential oils. All of them could be produced by the same companies to be used in, inter alia, perfume burners. Furthermore, these goods are often sold together in the same shops and target the same public.

The opponent’s goods include cosmetics for use on the skin, which are ‘beauty preparations; make-up’ (information extracted from Collins Dictionary on 26/11/2020 at https://www.collinsdictionary.com/dictionary/english/cosmetics). These kinds of products belong to the same sector as the remaining contested goods, namely cosmetics; make-up preparations; lipstick; nail polish; make-up removing preparations; toilet water; scented bases; skincare cosmetics; nail care preparations; lotions for cosmetic purposes; cosmetic masks; shaving preparations; shave lather; cleansing milk for toilet purposes. Even though some of the contested goods may coincide in numerous relevant criteria – such as their nature, purpose, method of use, their complementarity, or whether they are in competition – or may even be identical, these goods clearly belong to one homogeneous sector of products on the market. The majority of them are at least produced by the same companies, target the same end users and share the same channels of distribution. Therefore, the remaining contested goods in Class 3 are at least similar to the opponent’s cosmetics for use on the skin.

b) 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 relevant goods found to be identical or similar are directed at the public at large displaying an average degree of attention at the time of the purchase (21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 38; 14/04/2011, T-466/08, ACNO FOCUS, EU:T:2011:182, § 49).

c) The signs

	BILBOQUET
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 element ‘BILBOA’ is meaningless for the majority of the relevant public and hence distinctive. The element ‘BILBOQUET’ in the contested mark has no meaning for the relevant public and is, therefore, distinctive in relation to the goods involved.

The earlier sign is written in black capital letters. Since its stylisation is rather standard, it will not take away the attention from the verbal element.

Visually and aurally, the signs coincide in the string of letters/phonemes ‘BILBO*’, which is most of the letters/phonemes forming the earlier trade mark and the first five letters/phonemes of the contested sign. However, they differ in the last letter/phoneme ‘A’ of the earlier mark versus ‘QUET’ of the contested sign.

From a visual perspective, the signs also differ in the stylisation of the verbal element of the earlier trade mark that will be merely perceived as graphical means of bringing the verbal element to the attention of the public and therefore, as explained above, its impact on the comparison of the signs will be limited.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the majority of the relevant public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.

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. 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 partly identical and partly similar. They target the public at large with an average degree of attention. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to at least an average degree, whereas the conceptual comparison remains neutral. Indeed, the verbal element of the earlier trade mark ‘BILBOA’ is almost totally included at the beginning of the contested sign ‘BILBOQUET’, and the differences between the signs mainly lie in their final parts.

Account is 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).

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 European Union trade mark registration No 14 116 156. It follows that the contested trade mark must be rejected for all the contested goods.

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. In any case, for the sake of completeness, the opponent has not filed any evidence in support of this ground, as already mentioned.

As the earlier European Union trade mark registration No 14 116 156 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights 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

Marta GARCÍA COLLADO

Carlos MATEO PEREZ

Saida CRABBE

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.