OPPOSITION No B 2 902 420

Mary Kay Inc., 16251 N. Dallas Parkway, Addison, Texas 75001, United States of America (opponent), represented by Cabinet Lavoix, 2, place d’Estienne d’Orves, 75441 Paris cedex 09, France (professional representative)

a g a i n s t

Nicolas Ngoc Vu, 10 Rue Fronval, 78140 Velizy-Villacoublay, France (applicant).

On 30/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 902 420 is upheld for all the contested goods.

2. European Union trade mark application No 16 410 102 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 410 102 for the word mark ‘FEARLESSLY KIND’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 12 592 721 for the word mark ‘LIVE FEARLESSLY’. 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

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

Class 3: Cosmetics; non-medicated skin care preparations; non-medicated toiletries; fragrances for personal use; none of the aforesaid being hair and/or scalp products.

The contested goods are the following:

Class 3: Perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soap; personal deodorants; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoo; gels, mousses, balms and preparations in aerosol form for hair styling and hair care; hair spray; hair-colouring and hair-decolorizing preparations; permanent waving and curling preparations; essential oils.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 contested bath and shower gels and salts not for medical purposes; toilet soap; personal deodorants are included in the broad category of, or at least overlap with, the opponent’s non-medicated toiletries; none of the aforesaid being hair and/or scalp products. Therefore, they are identical.

The contested sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations are included in the broad category of the opponent’s cosmetics; none of the aforesaid being hair and/or scalp products. Therefore, they are identical.

The contested cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands include, as a broader category, the opponent’s cosmetics; none of the aforesaid being hair and/or scalp products. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods. Therefore, they are identical.

The contested perfumes, eaux de toilette are included in the broad category of the opponent’s fragrances for personal use; none of the aforesaid being hair and/or scalp products. Therefore, they are identical.

The contested essential oils are similar to a high degree to the opponent’s cosmetics; none of the aforesaid being hair and/or scalp products because they have the same purpose. In addition, they have the same distribution channels and producers. Finally, they target the same relevant public.

The contested shampoo; gels, mousses, balms and preparations in aerosol form for hair styling and hair care; hair spray; hair-colouring and hair-decolorizing preparations; permanent waving and curling preparations are similar to a high degree to the opponent’s non-medicated skin care preparations; none of the aforesaid being hair and/or scalp products. These goods have the same general purpose, which is to enhance or protect the appearance or odour of the consumers. These goods are produced by the same undertakings and are sold in the same outlets. In addition, they target the same public.

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 degree are everyday consumer goods aimed at average consumers who display an average level of attention (see, for parallel reasoning, 16/12/2015, T‑356/14, Kerashot, EU:T:2015:978, § 20-25).

3. The signs

LIVE FEARLESSLY	FEARLESSLY KIND
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.

The marks or their elements are meaningful in certain territories, for example in those countries where Danish, Deutsch, English, German or Slovakian is understood. To avoid the examination of different possible meanings or the lack of such, the Opposition Division finds it appropriate to focus the comparison of the signs on the parts of the relevant public among which these languages are not spoken, such as the French- and Spanish-speaking parts of the public.

The word elements of the marks are meaningless for the relevant public (in relation to the word ‘LIVE’, see 05/09/2017, R 2218/2016-5, LIVE FAST AND DYE YOUR HAIR / LIVE, § 28). These words have an average degree of distinctiveness.

Visually and aurally, the signs coincide in the word ‘FEARLESSLY’ and in the second letter, ‘I’, of their additional words, namely ‘LIVE’ in the earlier mark and ‘KIND’ in the contested sign. However, they differ in three out of four letters of these differing words.

The signs have the same length and the same rhythm, having 11 out of 14 letters in common. Moreover, they both include the word ‘FEARLESSLY’, which has an independent distinctive role in each of the marks. However, it is preceded by ‘LIVE’ in the earlier mark, while in the contested sign it is the first word and is followed by ‘KIND’.

Given the foregoing, the marks are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the 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.

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 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.

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 contested goods are partly identical and partly similar to a high degree to the opponent’s goods. The signs are visually and aurally similar to an average degree, while the conceptual comparison has no influence.

The earlier mark has an average degree of distinctiveness. The relevant public will display an average degree of attention.

The marks are similar overall, due to the presence of the identical word ‘FEARLESSLY’, which has an independent distinctive role in each of the marks. In addition, this word is much longer than the other word in each mark (10 letters versus 4 letters).

Moreover, it is consistent case-law that, when the goods covered by the marks at issue are identical or highly similar, the degree of difference between the signs must be high to exclude a likelihood of confusion. In the present case, the fact that the marks at issue contain the identical longer word ‘FEARLESSLY’ leads to the conclusion that the signs are sufficiently similar overall that the relevant public might believe that the goods found to be identical or similar to a high degree have the same trade origin or come from economically or industrially linked undertakings.

Furthermore, 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).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the marks at issue denote two brand lines of goods provided under the umbrella brand ‘FEARLESSLY’.

Considering all the above, there is a likelihood of confusion on the part of the French- and Spanish-speaking parts of the 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 reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 592 721. It follows that the contested trade mark must be rejected for all the contested goods.

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, he 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

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Francesca DRAGOSTIN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.