OPPOSITION No B 2 952 268

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Vanity Care, Via Giulio Verne 1, 24060 Bagnatica, Italy (applicant).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 952 268 is rejected in its entirety.

2. The opponent bears the costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 16 425 316, shown below:

The opposition is based on European Union trade mark registration No 984 245 ‘LIVE’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Within the time limit set for the opponent to substantiate the earlier right and to submit further material, the opponent filed proof of use of its earlier trade mark.

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.

In the present case, the applicant did not request the opponent to submit proof of use of its earlier trade mark. Therefore, the Opposition Division will not assess the proof of use submitted by the opponent, since it was not under obligation to submit it pursuant to Article 47(2) and (3) 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: Preparations for treating, dyeing, colouring, bleaching and styling hair.

The contested goods are the following:

Class 3: Cosmetics for the use on the hair; cosmetics; shampoo-conditioners; shampoos; hair conditioners.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 cosmetics for the use on the hair; cosmetics include as broader categories the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested shampoo-conditioners; hair conditioners are included in the broad category of the opponent’s preparations for treating hair. Therefore, they are identical.

The contested shampoos and the opponent’s preparations for styling hair have the same nature and purpose. They usually are produced by the same manufacturers, target the same relevant public and are distributed through the same channels. Therefore, they are similar to a high degree.

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 are directed at the public at large.

The degree of attention is considered average.

3. The signs

LIVE
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 trade mark is a word mark, consisting of the English word LIVE, which can be used as a verb, an adjective or an adverb. As a verb it means ‘remain alive’ or ‘make one’s home in a particular place or with a particular person’. As an adjective ‘LIVE’ means ‘living, not dead’ or ‘inanimate’. As an adverb it means ‘as or at an actual event or performance’ (information extracted from Oxford Dictionaries on 05/07/2018 at https://en.oxforddictionaries.com/definition/us/live). It will be understood as having the above described meanings by the majority of the relevant public. However, it is not excluded that part of the relevant public might not understand its meaning. The word ‘LIVE’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and it is of average distinctiveness both for the part of the public which perceives its meaning and for the part of the public which might not perceive its meaning.

The contested sign is a figurative trade mark consisting of the elements ‘RE’ and ‘LIFE’ separated by a full stop, the phrase ‘add color to your life’ below them and of a figurative element that resembles a palette of various colours above the verbal element ‘RE.LIFE’.

The elements ‘RE’ and ‘LIFE’ are depicted in bold upper case standard typeface black letters. The verbal element ‘add color to your life’ is depicted in smaller size standard font lower case black letters.

The prefix ‘Re- in English means ‘to return something to its original state’ (information extracted from Cambridge Dictionary on 05/07/2018 at https://dictionary.cambridge.org/dictionary/english/re?q=re-). The word ‘LIFE’ is an English word and it means ‘the period between the birth and death of a living thing, especially a human being or the existence of an individual human being or animal’ (information extracted from Oxford Dictionaries on 05/07/2018 at https://en.oxforddictionaries.com/definition/us/life#life). In relation to the relevant goods such as hair cosmetics the verbal element ‘RE.LIFE’ could be perceived as to renew hair. Therefore, the distinctiveness of the verbal element ‘RE.LIFE’ is below average for the part of the relevant public which understands its meaning.

Part of the relevant public will not attribute any meaning to the verbal element ‘RE.LIFE’ (see by analogy 28/11/2017, T–909/17, NRIM Life Sciences / RYM, EU:T:2017:843, § 41). The verbal element ‘RE.LIFE’ is not descriptive, allusive or otherwise weak in relation to the relevant goods for this part of the relevant public and, therefore, it is of average distinctiveness.

The element ‘RE.LIFE’ due to its size and position is the dominant element in the contested sign.

The expression ‘add color to your life’, in the context of goods such as cosmetics, will be perceived by part of the relevant public which understands English as a mere promotional slogan, and its distinctiveness is therefore below average. However, part of the relevant public which does not understand English will not perceive the meaning of this verbal element and for this part of the public it is distinctive.

The figurative element that resembles a palette of colours in the context of the relevant goods such as cosmetics which usually includes various shades of various colours for makeup or even shampoos which add colour, is weak.

Visually, the signs coincide in the letters ‘LI-E’. However, they differ in the letter that lies between the coinciding letters ‘I’ and ‘E’, namely the letter ‘V’ in the earlier mark and letter ‘F’ in the contested sign’. The signs also differ in the letters ‘RE’ followed by a full stop, the phrase ‘add color to your life’ and a figurative element in the contested sign which have no counterpart in the earlier trade mark.

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 (judgment of 14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE, § 24; and 13/12/2011, R 53/2011-5, Jumbo (fig.) / Device of an elephant (fig.), § 59). In the present case, the contested sign contains both verbal and figurative element, which is moreover weak in relation to the goods and it is more likely that consumers will refer to the contested sign by its verbal elements. Therefore, the verbal elements in the contested sign will have a greater impact than the figurative element.

The verbal element ‘add color to your life’ is weak for the part of the relevant public which perceives it as slogan, however, part of the relevant public will not understand its meaning and it is of average distinctiveness for this part of the relevant public.

The verbal element ‘RE.LIFE’ is of average distinctiveness for part of the public and weak for another part of the public but it is the dominant element in the contested sign. Because of the full stop, it will be perceived as containing two elements whereas the earlier trade mark is one word. The first two letters or the first element ‘RE’ have no counterpart in the earlier trade mark and the second element shares three letters with the earlier trade mark. However, overall visually these common letters appear almost in the middle of the verbal element ‘RE.LIFE’ and only three out of six letters coincide. Moreover, the verbal element below, although it appears in smaller size letters, it is clearly visible and contributes to the overall visual impression created by the contested sign. This applies even more for the part of the relevant public which does not understand its meaning and for which it is distinctive.

Therefore, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LI‑E’, present identically in both signs. The pronunciation differs in the sound of the letters ‛RE’, ‘F’ and ‘V’ in the words ‘LIFE’ versus ‘LIVE’ and in the pronunciation of the words ‘add color to your life’ of the contested sign, which have no counterparts in the earlier mark.

The verbal element ‘RE.LIFE’ is the dominant element in the contested sign and it coincides only in the sound of three letters with the earlier trade mark ‘LIVE’ and these letters are in the middle of the element ‘RE.LIFE’. Moreover, the differing element ‘add color to your life’ is of average distinctiveness for the part of the relevant public.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the above analysis concerning the semantic content of the marks. In its observations the opponent argues that ‘LIVE’ and ‘LIFE’ are identical concepts. As stated above, the word ‘live’ could be perceived as to remain alive or living, not dead or at an actual event or performance whereas the word ‘life’ is the period between the birth and death of a living being. Although it is true that the words ‘live’ and ‘life’ evoke related concepts, they are clearly not identical conceptually. Moreover, the element of the contested sign is ‘RE.LIFE’ which could be perceived as ‘to a give a new life’ and it is even less conceptually similar than the word ‘life’. Account also must be taken that the contested sign contains additional verbal element, namely ‘add color to your life’, which although is weak, still conveys an additional concept.

Therefore, for the part of the relevant public which perceives the meanings of the verbal elements, the signs are conceptually similar to a low degree.

For the part of the relevant public for which neither of the verbal elements of the signs has a meaning, a conceptual comparison is not possible.

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 goods are identical or similar to a high degree. They target the public at large which displays an average degree of attention. The signs are visually and aurally similar to a low degree and conceptually they are similar to a low degree for part of the relevant public.

As stated above in section c) of this decision, visually and aurally the only commonality between the signs lies in the coincidence between the letters ‘LI’ and ‘E’. However, the most dominant element of the contested sign ‘RE.LIFE’, which contains these coinciding letters, contains two parts ‘RE’ and ‘LIFE’ separated by a full stop, whereas the earlier mark is a one word. Moreover, the coinciding letters ‘LI’ and ‘E’ appear in the second part or in the middle of the verbal element ‘RE.LIFE’. Furthermore, the contested sign contains additional verbal and figurative elements which contribute to the overall impression given by the contested sign and despite the low distinctive character will be perceived by the consumers when encountering the contested sign visually and aurally. Account must also be taken of the fact that for part of the relevant public the verbal element ‘add color to your life’ is of average distinctiveness. And the presence of these words below the dominant element ‘RE.LIFE’ will keep the signs further apart for this part of the public.

The opponent argues that the signs will be associated because of the conceptual identity between the words ‘LIVE’ and ‘LIFE’. However, despite a conceptual connection between these words for the public that understands them, they are not identical in any aspect of the comparison (visual, aural and conceptual) and the contested mark contains a number of additional elements. In particular the additional ‘RE.’ preceding the word ‘LIFE’ in the contested mark gives the mark a sufficient distance from the earlier mark, which is further supported by the remaining additional elements, even though their distinctiveness is lower.

Taking into account that there are additional elements in the contested sign and the comparison between the signs must be made assessing each of the marks as a whole, it is considered that the coincidence in three letters perceived visually and aurally and conceptual similarity of one of the elements of the contested sign to the earlier trade mark, are not sufficient to find likelihood of confusion (including likelihood of association). The above mentioned similarities between the signs are not sufficient to find likelihood of confusion (including likelihood of association) even for identical or highly similar goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Rhys MORGAN

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.