OPPOSITION No B 2 908 419

Frey + Lau GmbH, Immenhacken 12, 24558 Henstedt-Ulzburg, Germany (opponent), represented by Stork Bamberger Patentanwälte PartmbB, Meiendorfer Str. 89, 22145 Hamburg, Germany (professional representative)

a g a i n s t

Aniello di Biase, Via Degli Oleandri 40, 80029 Sant'antimo, Italy (applicant)

On 18/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 908 419 is partially upheld, namely for the following contested goods and services:

Class 3: Essential oils and aromatic extracts; floral water; aromatics [essential oils]; food flavourings [essential oils]; food flavorings prepared from essential oils; flavourings for beverages [essential oils]; cake flavourings [essential oils]; flavour enhancers for food [essential oils]; badian essence; mint essence [essential oil]; ethereal essences; ethereal essences and oils; geraniol; fumigating incenses (kunko); aromatic oils; distilled oils for beauty care; ethereal oils; essential oils for soothing the nerves; aromatic essential oils; essential oils of cedarwood; essential oils of lemon; essential oils of sandalwood; emulsified essential oils; blended essential oils; natural essential oils; essential oils for aromatherapy use; essential oils of citron; tea-tree oil; gaultheria oil; jasmine oil; lavender oil; almond oil; peppermint crude oil; pine oil; rose oil; aromatherapy preparations; safrol; essential oils for use in the manufacture of scented products; essential oils for use in manufacturing processes; essential oils for household use; essential oils for industrial use; essential oils for personal use; essential vegetable oils; natural oils for cosmetic purposes; non-medicated oils; aromatherapy oil; skin care oils [non-medicated]; oils for perfumes and scents; scented oils; scented oils used to produce aromas when heated; perfume oils for the manufacture of cosmetic preparations; terpenes [essential oils]; floor wax; prepared wax for polishing; liquid floor polishes; natural floor polishes; furniture polish; spray polish; polishing powders; descaling preparations for household purposes; wood treatment preparations for polishing; rust removing preparations; household fragrances; laundry preparations; scented linen water; anti-smear agents for cleaning purposes; caustic cleaning agents; scouring solutions; cleaning agents for metal; cleaning agents for stone; cleaning agents for deep freezers; dishwasher rinsing agents; agents for removing wax; stain removing agents; ammonia [volatile alkali] [detergent]; starch for cleaning purposes; ammonia for cleaning purposes; canned pressurized air for cleaning and dusting purposes; all-purpose cotton buds for personal use; stain removing benzine; javelle water; household bleach; volcanic ash for cleaning; non-slipping wax for floors; polishing wax; wax for parquet floors; natural floor waxes; polish for furniture and flooring; rinse aids; colorants for toilet purposes; detergent compositions for cleaning golf clubs; floor shining compositions; buffing compounds; lavatory cleaning compositions; cleaning compositions for spot removal; window cleaning compositions; floor buffing compound; polishing creams; furniture cleaner; detergents; litter tray cleaners incorporating a deodorizer; detergents prepared from petroleum; foam detergents; liquid dishwasher detergents; window cleaners [polish]; window cleaners in spray form; cleansers for household purposes; detergents, other than for use in manufacturing operations and for medical purposes; detergents for machine dishwashing; dishwasher detergents in gel form; cleaners for litter trays; whitewall cleaners; toilet cleaners; upholstery cleaners; detergents for household use; toilet bowl detergents; synthetic detergents for clothes; spray cleaners for use on textiles; spray cleaners for household use; dishwashing liquid; time-release solid drain detergent; soap powder; washing-up detergent; reed diffusers; oil of turpentine for degreasing; drying agents for dishwashing machines; impregnated paper tissues for cleaning dishware; fragrances for automobiles; cleaning chalk; non-slipping liquids for floors; cleaning fluids; cleaning fluids for camera lenses; washing liquids; scouring liquids; cleaning fluid for typewriter type; soda lye; polish for musical instruments; chrome polish; floor treatment compositions; pine oils for cleaning floors; natural oils for cleaning purposes; oils for cleaning purposes; wiping cloth impregnated with a cleaning preparation for cleaning eye glasses; cloths impregnated with a detergent for cleaning camera lenses; cloths impregnated with polishing preparations for cleaning; impregnated cloths for polishing; dishwasher tablets; scrubbing powder; dishwasher powder; dewaxing preparations; carpet cleaning preparations; dishwashing detergents; bleaching preparations for household use; bleaching preparations; polishing preparations; grease-removing preparations; preparations for unblocking drain pipes; preparations for unblocking sinks; de-greasing preparations for household purposes; washing preparations; cleaning preparations for plant leaves; floor stripping preparations; cleaning and shining preparations for plant leaves; degreasing preparations with a solvent base; lime removers; antistatic preparations for household purposes; cleaning preparations in the form of foams; oven cleaning preparations; shining preparations for fruit; mould removing preparations; preparations to make shiny the leaves of plants; salt crystal removers; cleaning preparations; floor cleaning preparations; chrome cleaners; cleaning preparations for use on tiles; windscreen cleaning preparations; cleaning preparations for cleansing drains; cleaning preparations for use on masonry; kettle cleaner; fruit and vegetable wash; drain cleaning preparations; drain and sink unblocking preparations; shining preparations [polish]; wallpaper cleaning preparations; wax stripping preparations; spirit gum remover; pet stain removers; degreasers, other than for use in manufacturing processes; preparations for stripping wax from floors; paint stripping preparations; lacquer-removing preparations; colour-removing preparations; varnish-removing preparations; glass cleaning preparations; degreasing preparations for engines; stain removing preparations for use on household goods; perfumes for cardboard; perfumes for ceramics; detergent strengtheners; polishing rouge; wipes incorporating cleaning preparations; eyeglass wipes impregnated with a detergent; pre-moistened towelettes impregnated with a detergent for cleaning; sugar soap; liquid soap for dish washing; saddle soap; soaps for household use; carpet shampoo; stain removers; cleaning solutions for dental ultrasonic sterilization apparatus; eyeglass lens cleaning solutions; alcoholic solvents being cleaning preparations; emulsifying solvent cleaners; solvents for removing paints; solvents for removing varnishes; degreasing solvents, other than for use in manufacturing processes; cleaning agents for household purposes; furbishing preparations; cleaning preparations for animal cages; graffiti removing substances; scouring substances; spray cleaners for freshening athletic mouth guards; scented fabric refresher sprays; pre-moistened towelettes impregnated with dishwashing detergent; cloths impregnated with a detergent for cleaning; floor wax removers [scouring preparations]; paint removing compositions; cleaning preparations impregnated into pads; soap pads; turpentine for degreasing; laundry additives for water softening; laundry additives; washing conservation agents; washing agents for textiles; rinsing agents for laundry; natural starches for laundry purposes; starch glaze for laundry purposes; fabric softeners; laundry blueing; laundry wax; rinsing aids for use when washing clothes; quillaia bark for washing; washing soda, for cleaning; laundry detergents for household cleaning use; biological laundry detergents; commercial laundry detergents; detergent soap; seaweed gelatine for laundry use (funori); dry cleaning fluids; essential oils as perfume for laundry purposes; anti-static dryer sheets; washing preparations for household purposes; laundry glaze; chemical laundry preparations; cleaning preparations for fabrics; color- [colour-] brightening chemicals for household purposes [laundry]; laundry liquids; fabric conditioning preparations; laundry sizing; laundry preparations for attracting dyes; laundry preparations for attracting dirt; laundry bleach; dry-cleaning preparations; smoothing preparations [starching]; laundry soaking preparations; fabric brighteners; starch for laundry purposes; bleaching salts; liquid soap for laundry; laundry soap; soap for brightening textile; bleaching soda; antistatic sprays for clothing; non-medicated mouth washes for pets; cosmetics for animals; deodorants for animals; deodorants for pets; preparations and products for fur care; bath preparations for animals; dental care preparations for animals; skin care products for animals; breath fresheners for animals; shampoos for animals [non-medicated grooming preparations]; shampoos for pets [non-medicated grooming preparations]; body cleaning and beauty care preparations; oral hygiene preparations; perfumery and fragrances; adhesives for cosmetic purposes; adhesives for affixing false hair; seaweed for cosmetology; balms, other than for medical purposes; cotton swabs for cosmetic purposes; massage waxes; slimming aids [cosmetic], other than for medical use; hair piece bonding glue; cosmetics; cosmetics and cosmetic preparations; non-medicated cosmetics; cosmetics for personal use; cosmetics in the form of oils; cuticle cream; massage creams, not medicated; cleaner for cosmetic brushes; make-up pads of cotton wool; bergamot oil; lint for cosmetic purposes; aloe vera gel for cosmetic purposes; massage gels, other than for medical purposes; chalk for cosmetic use; greases for cosmetic purposes; henna [cosmetic dye]; henna powders; lacquer for cosmetic purposes; massage oils and lotions; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; cosmetic kits; oils for toilet purposes; mineral oils [cosmetic]; massage oils, not medicated; oils for cosmetic purposes; massage oils; cotton wool for cosmetic purposes; impregnated cloths for cosmetic use; pumice stone; foot smoothing stones; pumice stones for use on the body; cotton balls for cosmetic purposes; abrasive preparations for use on the body; cosmetic preparations for use as aids to slimming; cosmetic preparations for body care; aloe vera preparations for cosmetic purposes; cosmetic preparations for slimming purposes; non-medicated massage preparations; facial preparations; non-medicated toiletries; sanitary preparations being toiletries; baby care products (non-medicated -); pedicure preparations; nasal cleaning preparations for personal sanitary purposes; cuticle removers; cuticle conditioners; paper hand towels impregnated with cosmetics; impregnated cleaning pads impregnated with cosmetics; impregnated cleaning pads impregnated with toilet preparations; moist wipes impregnated with a cosmetic lotion; spirit gum for cosmetic use; mineral water sprays for cosmetic purposes; tissues impregnated with cosmetic lotions; scalp treatments (non-medicated -); ointments for cosmetic use; deodorants and antiperspirants; make-up; hair preparations and treatments; bath preparations; hair removal and shaving preparations; skin, eye and nail care preparations; soaps and gels; paper hand towels impregnated with cleaning agents; lip neutralizers; body glitters; creamy face powder; colour cosmetics for the skin; refill packs for cosmetics dispensers; beauty care cosmetics; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of powders; beauty balm creams; washing creams; cosmetic creams and lotions; fluid creams [cosmetics]; baby suncreams; hand cleansers; foams for use in the shower; shower and bath foam; soap free washing emulsions for the body; exfoliating scrubs for the feet; herbal extracts for cosmetic purposes; impregnated tissues for cleaning [non-medicated, for use on the person]; shower and bath gel; body gels; hand gels; henna for cosmetic purposes; beauty milk; non-medicated douches; beauty lotions; glitter in spray form for use as a cosmetics; cleaning masks for the face; face oils; non-medicated foot soaks; artificial pumice stone; pumice stones for personal use; hand powders; cosmetic hair regrowth inhibiting preparations; collagen preparations for cosmetic purposes; phytocosmetic preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; shower preparations; cosmetic breast firming preparations; facial peel preparations for cosmetic use; collagen preparations for cosmetic application; colouring preparations for cosmetic purposes; washing preparations for personal use; cleaning preparations for personal use; non-medicated beauty preparations; hand washes; non-medicated body care preparations; skin care preparations; pre-moistened cosmetic wipes; tissues impregnated with make-up removing preparations; oil removing papers for cosmetic purposes; moist wipes for sanitary and cosmetic purposes; disposable wipes impregnated with cleansing compounds for use on the face; feminine hygiene cleansing towelettes; tissues impregnated with essential oils, for cosmetic use; body cleansing foams; skin cleansing foams; beauty serums; serums for cosmetic purposes; sponges impregnated with toiletries; cosmetic dyes; anti-perspirants in the form of sprays; non-medicated antiperspirants; antiperspirants for personal use; anti-perspirant deodorants; deodorants for the feet; deodorants for body care; deodorants for personal use [perfumery]; deodorants for human beings or for animals; personal deodorants; roll-on deodorants [toiletries]; feminine deodorant sprays; deodorants, for personal use in the form of sticks; foot powder [non-medicated]; antiperspirants [toiletries]; deodorant soap; adhesives for false eyelashes, hair and nails; body art stickers; lipstick cases; make-up bases in the form of pastes; glitter for cosmetic purposes; face glitter; face and body glitter; face powder (non-medicated -); pressed face powder; solid powder for compacts [cosmetics]; powder for make-up; cosmetic white face powder; make-up powder; face powder; face powder in the form of powder-coated paper; loose face powder; cosmetic face powders; colour cosmetics; body paint (cosmetic); cheek colors; eyebrow colors in the form of pencils and powders; face paint; facial concealer; under-eye enhancers; concealers for spots and blemishes; concealers; sun bronzers; colour cosmetics for the eyes; eyes make-up; cosmetic preparations for eyelashes; lip cosmetics; eyebrow cosmetics; cosmetics in the form of rouge; cosmetics in the form of gels; cosmetics in the form of eye shadow; base cream; fair complexion cream; suntan creams; creams for tanning the skin; self tanning creams [cosmetic]; cosmetic creams; sun creams; liners [cosmetics] for the eyes; liquid eyeliners; eyeliner; rouges; cosmetic rouges; creamy rouge; creamy foundation; liquid foundation (mizu-oshiroi); eyebrow gel; skin foundation; make up foundations; make-up removing gels; chalk for make-up; tanning milks [cosmetics]; make-up removing milks; self tanning lotions [cosmetic]; make-up removing lotions; lip glosses; mascara; beauty masks; lip liners; cosmetic eye pencils; cosmetic pencils for cheeks; eyeliner pencils; eye pencils; make-up pencils; eyebrow pencils; eyelid pencils; cosmetic pencils; liquid foundation; decorative transfers for cosmetic purposes; mousses [cosmetics]; cuticle oil; oil baths for hair care; hair moisturising conditioners; conditioners in the form of sprays for the scalp; hair conditioners for babies; hair balsam; baby hair conditioner; conditioning balsam; brilliantine; hair wax; moustache wax; hair styling waxes; hair dyes; refill packs for shampoo dispensers; cosmetics for the use on the hair; conditioning creams; hair creams; creams for fixing hair; hair care creams; hair protection creams; bleaching preparations [decolorants] for cosmetic purposes; hair emollients; hair fixers; gel sprays being styling aids; styling gels; hair gel; gels for fixing hair; hair protection gels; hair moisturisers; hair permanent wave kit; hair spray; hair liquids; cosmetic hair lotions; lotions for beards; hair strengthening treatment lotions; styling lotions; hair lotions; hair care lotions; wave-set lotions; colouring lotions for the hair; hair protection lotions; hair glaze; hair mascara; hair masks; hair care masks; hairstyling masks; mousses [toiletries] for use in styling the hair; mousses being hair styling aids; hair protection mousse; neutralizers for permanent waving; hair nourishers; oils for hair conditioning; combing oil; japanese hair fixing oil (bintsuke-abura); hair fixing oil; styling paste for hair; hydrogen peroxide for use on the hair; hydrogen peroxide for cosmetic purposes; hair powder; stick pomade; hair pomades; pomades for cosmetic purposes; cosmetic preparations for the hair and scalp; hair dyeing preparations; hair straightening preparations; hair waving preparations; permanent waving lotions; hair bleaching preparations; non-medicated preparations for the relief of sunburn; preparations for setting hair; cosmetic hair dressing preparations; detanglers; neutralizing hair preparations; hair dressings for men; preparations for protecting the hair from the sun; hair treatment preparations; hair grooming preparations; hair care preparations, not for medical purposes; permanent waving and curling preparations; preparations for protecting coloured hair; hair frosts; hair tinting preparations; refill packs for hair fixer dispensers; hair conditioner bars; shampoo bars; hair lighteners; styling mousse; hair mousse; shampoos; dandruff shampoo; dandruff shampoos, not for medical purposes; baby shampoo mousse; hair-washing powder; non-medicated shampoos; non-medicated hair shampoos; shampoos for human hair; baby shampoo; shampoos for personal use; dry shampoos; shampoo-conditioners; hair serums; hair care serums; hairstyling serums; cold waving solutions; products for protecting coloured hair; tints for the hair; hair rinses [for cosmetic use]; hair rinses [shampoo-conditioners]; beard dyes; hair tonic; hair tonic [non-medicated]; wax treatments for the hair; hair preservation treatments for cosmetic use; hair texturizers; hair desiccating treatments for cosmetic use; hair permanent treatments; non-medicated body soaks; bath milk; bath foam; foaming bath liquids; baby bubble bath; bath bombs; bath concentrates (non-medicated -); bath creams (non-medicated -); bath herbs; foaming bath gels; bath gel; bath lotions (non-medicated -); baby bath mousse; aromatic oils for the bath; bath oils for cosmetic purposes; non-medicated bath oils; bath oil; bath pearls; bath pearls (non-medicated -); bath powders (non-medicated -); cosmetic preparations for baths; bath preparations, not for medical purposes; non-medicated bath salts; bath salts, not for medical purposes; scented bathing salts; bath soap; bath flakes; bubble bath; bath foams (non-medicated -); aftershave balms; shaving balm; shaving stones; depilatory wax; aftershave moisturising cream; shaving cream; pre-shave creams; depilatory creams; aftershave creams; after-shave emulsions; after-shave gel; shaving gel; aftershave milk; depilatory lotions; after-shave lotions; after-shave preparations; shaving lotion; pastes for razor strops; alum stones [astringents]; shaving stones [astringents]; depilatory preparations; shaving preparations; shaving preparations in liquid form; pre-shaving preparations; shaving soap; shaving sticks [preparations]; shaving foam; shaving sets, comprised of shaving cream and aftershave; shaving sprays; wax strips for removing body hair; cleaning agents for the hands; refill packs for shower gel dispensers; creams (soap -) for use in washing; shower creams; vaginal washes for personal sanitary or deodorant purposes; cleansers for intimate personal hygiene purposes, non medicated; exfoliating scrubs for the hands; bath and shower gels, not for medical purposes; shower gels; gels for cosmetic use; anti-bacterial face washes (non-medicated -); soap products; refill packs for hand soap dispensers; aloe soap; almond soap; body cream soap; industrial soap; liquid soap used in foot bath; shower soap; skin soap; waterless soap; cakes of toilet soap; cakes of soap for body washing; soap; carbolic soaps; soap for foot perspiration; antiperspirant soap; cosmetic soaps; cream soaps; toilet soap; non-medicated toilet soaps; beauty soap; loofah soaps; granulated soaps; soaps in liquid form; soaps in gel form; liquid bath soaps; liquid soaps for hands and face; non-medicated soaps; facial soaps; soaps for body care; hand soaps; soaps for personal use; scented soaps; paper soaps for personal uses; body washes; soap solutions; sponges impregnated with soaps; mouthwashes, not for medical purposes; mouthwash; disclosing tablets for personal use in indicating tartar on the teeth; solid toothpaste tablets; tooth whitening creams; dentifrices; dentifrices and mouthwashes; chewable dentifrices; non-medicated toothpaste; tooth whitening pastes; dentifrices in the form of chewing gum; toothpaste; tooth gel; dentifrice powder; liquid dentifrice; toothpaste in soft cake form; dental bleaching gels; sets of cosmetic oral care products; teeth cleaning lotions; tooth powder; moistened tooth powder; cosmetic preparations for the care of mouth and teeth; chewable tooth cleaning preparations; preparations for cleaning dentures; denture polishes; tooth care preparations; tooth cleaning preparations; breath fresheners; tooth whitening preparations; tooth polish; breath fresheners in the form of chew sticks made from birchwood extracts; mouth [breath] fresheners, not for medical use; non-medicated mouth sprays; mouth sprays, not for medical use; throat sprays [non-medicated]; breath freshening sprays; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; breath freshening strips; teeth whitening strips; eau de cologne; lavender water; toilet water; perfumed toilet waters; scented water; amber [perfume]; aromatics for fragrances; aromatics for perfumes; cedarwood perfumery; bases for flower perfumes; bay rums; scented body lotions and creams; aromatherapy creams; perfumed creams; body deodorants [perfumery]; eau de parfum; toilet water containing snake oil; heliotropine; extracts of flowers [perfumes]; extracts of perfumes; fragrances; fragrances for personal use; ionone [perfumery]; aromatherapy lotions; mint for perfumery; musk [natural]; musk [perfumery]; synthetic musk; natural oils for perfumes; lavender oil for cosmetic use; peppermint oil [perfumery]; rose oil for cosmetic purposes; pomanders [aromatic substances]; fragrance preparations; perfumery; fumigation preparations [perfumes]; natural perfumery; synthetic perfumery; perfumes; liquid perfumes; perfumes for industrial purposes; solid perfumes; cologne impregnated disposable wipes; perfumed tissues; body sprays [non-medicated]; scented body spray; vanilla perfumery; synthetic vanillin [perfumery].

Class 44: Human hygiene and beauty care; body art services; hair styling; cosmetic analysis; colour analysis [beauticians' services]; application of cosmetic products to the body; application of cosmetic products to the face; body art; beauty consultancy; advisory services relating to beauty treatment; consultancy provided via the internet in the field of body and beauty care; consultancy in the field of body and beauty care; depilatory waxing; electrolysis for cosmetic purposes; cosmetic electrolysis; cosmetic electrolysis for the removal of hair; providing public bath facilities; providing information about beauty; providing information in the field of hair styling; providing information relating to beauty salon services; providing information about public bath facilities; providing information about turkish bath facilities; providing bath houses; provision of public bath facilities for personal hygiene; hygienic and beauty care; shampooing of the hair; hair weaving; removal of body cellulite; skin care salons; barbershops; hair salon services; services of a hair and beauty salon; cosmetic make-up services; airbrush tanning services; airbrush tanning services for the human body; skin tanning service for humans for cosmetic purposes; spray tanning services; hair curling services; eyelash curling services; public bath services for hygiene purposes; turkish bath services; barber services; beauty care for human beings; airbrush tanning salon services; slimming salon services; spray tanning salon services; tanning salon and solarium services; eyelash dyeing services; eyebrow dyeing services; make-up consultation and application services; consultancy services relating to beauty; cosmetics consultancy services; consultation services relating to skin care; advice relating to hair care; consultation services in the field of make-up; on-line make-up consultation services; consultancy services relating to cosmetics; make-up consultation services provided on-line or in-person; nail care services; body waxing services for hair removal in humans; body waxing services for the human body; eyebrow threading services; personal hair removal services; beauty care services provided by a health spa; eyelash extension services; hair braiding services; liposuction services; manicuring; manicure and pedicure services; hair perming services; micropigmentation services; eyebrow shaping services; pedicurist services; eyelash perming services; permanent hair removal and reduction services; lhair restoration; nail salon services; hair salon services for women; beauty salon services; hairdressing; hair salon services for men; hair salon services for children; hair salon services for military service members; sauna services; solarium services; hair colouring services; eyelash tinting services; eyebrow tinting services; cosmetic treatment services for the body, face and hair; cosmetic facial and body treatment services; facial beauty treatment services; cellulite treatment services; beauty treatment services especially for eyelashes; make-up services; permanent makeup services; visagists' services; cosmetic body care services; services for the provision of sauna facilities; services for the provision of solarium facilities; services for the care of the scalp; services for the care of the face; services for the care of the skin; hair straightening services; slimming treatment services; services for the care of the hair; services for the care of the feet; personal therapeutic services relating to circulatory improvement; personal therapeutic services relating to fat dissolution; personal therapeutic services relating to hair regrowth; personal therapeutic services relating to cellulite removal; tanning salons; providing hot tub facilities; hair cutting; spas; cosmetic treatment; cosmetic treatment for the hair; cosmetic treatment for the body; cosmetic treatment for the face; depilatory treatment; beauty care; hygienic care for human beings; injectable filler treatments for cosmetic purposes; hair treatment; aromatherapy services.

2. European Union trade mark application No 16 433 501 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own 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 and services of European Union trade mark application No 16 433 501 for the figurative mark . The opposition is based on international trade mark registration No 1 040 704 designating the European Union for the word mark ‘CAPSO’. 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 1: Chemicals for the food industry, namely chemical additives for flavorings and aromatic essences, as far as contained in this class; chemical compounds and chemical compositions for the manufacture of essences and flavorings; chemicals used as essences and flavorings; chemicals as flavor carrier for food and foodstuff, dietary supplements, alcoholic and non-alcoholic beverages, fodder and pharmaceutical preparations; nature identical and artificial flavorings and aromas (chemical preparations) (other than essential oils and flavorings for cakes) for food and beverages as well as for pharmaceutical preparations); all aforementioned goods with the exception of chemical preparations for keeping fresh and preserving foodstuffs.

Class 3: Essential oils, in particular for the preparation of pharmaceutical preparations, fodder and food, in particular beverages; fragrances; flavorings for cakes (essential oils), all the aforementioned goods only for industrial processing and not directed to end consumers.

Class 30: Natural flavorings (other than essential oils) for food and beverages as well as for pharmaceutical preparations; natural aromas (other than essential oils) for food and beverages as well as for pharmaceutical preparations; coffee and tea flavorings; natural essences (other than essential oils) for food and beverages as well as for pharmaceutical preparations; flavorings for cakes (other than essential oils), all the aforementioned goods only for industrial processing and not directed to end consumers.

Class 31: Natural, nature identical and artificial flavorings (other than essential oils) for fodder; aromas (other than essential oils) for fodder; essences (other than essentials oils) for fodder.

The contested goods and services are the following:

Class 3: Essential oils and aromatic extracts; floral water; aromatics [essential oils]; food flavourings [essential oils]; food flavorings prepared from essential oils; flavourings for beverages [essential oils]; cake flavourings [essential oils]; flavour enhancers for food [essential oils]; badian essence; mint essence [essential oil]; ethereal essences; ethereal essences and oils; geraniol; fumigating incenses (kunko); aromatic oils; distilled oils for beauty care; ethereal oils; essential oils for soothing the nerves; aromatic essential oils; essential oils of cedarwood; essential oils of lemon; essential oils of sandalwood; emulsified essential oils; blended essential oils; natural essential oils; essential oils for aromatherapy use; essential oils of citron; tea-tree oil; gaultheria oil; jasmine oil; lavender oil; almond oil; peppermint crude oil; pine oil; rose oil; aromatherapy preparations; safrol; essential oils for use in the manufacture of scented products; essential oils for use in manufacturing processes; essential oils for household use; essential oils for industrial use; essential oils for personal use; essential vegetable oils; natural oils for cosmetic purposes; non-medicated oils; aromatherapy oil; skin care oils [non-medicated]; oils for perfumes and scents; scented oils; scented oils used to produce aromas when heated; perfume oils for the manufacture of cosmetic preparations; terpenes [essential oils]; abrasives; flexible abrasives; industrial abrasives; starch for abrasive purposes; carbides of metal [abrasives]; silicon carbide [abrasive]; sandpaper for sharpening drawing pencils; polishing paper; emery paper; sandpaper; abrasive paper; floor wax; prepared wax for polishing; corundum [abrasive]; granular corundum; sandpaper pads for sharpening drawing pencils; diamantine [abrasive]; grinding foils; abrasive granules; sanding gloves; liquid floor polishes; natural floor polishes; furniture polish; spray polish; abrasive paste; smoothing stones; polishing stones; scouring powders; general purpose scouring powder; polishing powders; grinding preparations for semiconductors; descaling preparations for household purposes; wood treatment preparations for polishing; adhesive removers; rust removing preparations; floor finish removers; abrasive rolls; abrasive sand; emery; abrasive strips; sandcloth; emery cloth; glass cloth [abrasive cloth]; tripoli stone for polishing; tailors' and cobblers' wax; shoemakers' wax; tailors' wax; cobblers' wax; household fragrances; leather and shoe cleaning and polishing preparations; laundry preparations; vehicle cleaning preparations; scented linen water; anti-smear agents for cleaning purposes; caustic cleaning agents; scouring solutions; cleaning agents for metal; cleaning agents for stone; cleaning agents for deep freezers; dishwasher rinsing agents; agents for removing wax; stain removing agents; ammonia [volatile alkali] [detergent]; starch for cleaning purposes; ammonia for cleaning purposes; canned pressurized air for cleaning and dusting purposes; all-purpose cotton buds for personal use; stain removing benzine; javelle water; household bleach; volcanic ash for cleaning; non-slipping wax for floors; polishing wax; wax for parquet floors; natural floor waxes; polish for furniture and flooring; rinse aids; colorants for toilet purposes; detergent compositions for cleaning golf clubs; floor shining compositions; buffing compounds; lavatory cleaning compositions; cleaning compositions for spot removal; window cleaning compositions; floor buffing compound; polishing creams; furniture cleaner; detergents; litter tray cleaners incorporating a deodorizer; detergents prepared from petroleum; foam detergents; liquid dishwasher detergents; window cleaners [polish]; window cleaners in spray form; cleansers for household purposes; detergents, other than for use in manufacturing operations and for medical purposes; detergents for machine dishwashing; dishwasher detergents in gel form; cleaners for litter trays; whitewall cleaners; toilet cleaners; upholstery cleaners; detergents for household use; toilet bowl detergents; synthetic detergents for clothes; spray cleaners for use on textiles; spray cleaners for household use; dishwashing liquid; time-release solid drain detergent; soap powder; washing-up detergent; reed diffusers; oil of turpentine for degreasing; drying agents for dishwashing machines; impregnated paper tissues for cleaning dishware; fragrances for automobiles; cleaning chalk; non-slipping liquids for floors; cleaning fluids; cleaning fluids for camera lenses; washing liquids; scouring liquids; cleaning fluid for typewriter type; soda lye; polish for musical instruments; chrome polish; floor treatment compositions; pine oils for cleaning floors; natural oils for cleaning purposes; oils for cleaning purposes; wiping cloth impregnated with a cleaning preparation for cleaning eye glasses; cloths impregnated with a detergent for cleaning camera lenses; cloths impregnated with polishing preparations for cleaning; impregnated cloths for polishing; dishwasher tablets; scrubbing powder; dishwasher powder; dewaxing preparations; carpet cleaning preparations; dishwashing detergents; bleaching preparations for household use; bleaching preparations; polishing preparations; grease-removing preparations; preparations for unblocking drain pipes; preparations for unblocking sinks; de-greasing preparations for household purposes; washing preparations; cleaning preparations for plant leaves; floor stripping preparations; cleaning and shining preparations for plant leaves; degreasing preparations with a solvent base; lime removers; antistatic preparations for household purposes; cleaning preparations in the form of foams; oven cleaning preparations; shining preparations for fruit; mould removing preparations; preparations to make shiny the leaves of plants; salt crystal removers; cleaning preparations; floor cleaning preparations; chrome cleaners; cleaning preparations for use on tiles; windscreen cleaning preparations; cleaning preparations for cleansing drains; cleaning preparations for use on masonry; kettle cleaner; fruit and vegetable wash; drain cleaning preparations; drain and sink unblocking preparations; shining preparations [polish]; wallpaper cleaning preparations; wax stripping preparations; spirit gum remover; pet stain removers; degreasers, other than for use in manufacturing processes; preparations for stripping wax from floors; paint stripping preparations; lacquer-removing preparations; colour-removing preparations; varnish-removing preparations; glass cleaning preparations; degreasing preparations for engines; stain removing preparations for use on household goods; perfumes for cardboard; perfumes for ceramics; detergent strengtheners; polishing rouge; wipes incorporating cleaning preparations; eyeglass wipes impregnated with a detergent; pre-moistened towelettes impregnated with a detergent for cleaning; sugar soap; liquid soap for dish washing; saddle soap; soaps for household use; carpet shampoo; stain removers; cleaning solutions for dental ultrasonic sterilization apparatus; eyeglass lens cleaning solutions; alcoholic solvents being cleaning preparations; emulsifying solvent cleaners; solvents for removing paints; solvents for removing varnishes; degreasing solvents, other than for use in manufacturing processes; cleaning agents for household purposes; furbishing preparations; cleaning preparations for animal cages; graffiti removing substances; scouring substances; spray cleaners for freshening athletic mouth guards; scented fabric refresher sprays; pre-moistened towelettes impregnated with dishwashing detergent; cloths impregnated with a detergent for cleaning; floor wax removers [scouring preparations]; paint removing compositions; cleaning preparations impregnated into pads; soap pads; turpentine for degreasing; shoe polish applicators containing shoe polish; shoe wax; boot wax; detergent compositions for cleaning shoes; preservative creams for leather; shoe polish and creams; shoe cream; leather dressings; creams for leather; leather polishes; shoe polish; shoe black [shoe polish]; pastes for cleaning shoes; cleaning preparations for leather; leather preservatives [polishes]; shoe cleaners [preparations]; leather bleaching preparations; laundry additives for water softening; laundry additives; washing conservation agents; washing agents for textiles; rinsing agents for laundry; natural starches for laundry purposes; starch glaze for laundry purposes; fabric softeners; laundry blueing; laundry wax; rinsing aids for use when washing clothes; quillaia bark for washing; washing soda, for cleaning; laundry detergents for household cleaning use; biological laundry detergents; commercial laundry detergents; detergent soap; seaweed gelatine for laundry use (funori); dry cleaning fluids; essential oils as perfume for laundry purposes; anti-static dryer sheets; washing preparations for household purposes; laundry glaze; chemical laundry preparations; cleaning preparations for fabrics; color- [colour-] brightening chemicals for household purposes [laundry]; laundry liquids; fabric conditioning preparations; laundry sizing; laundry preparations for attracting dyes; laundry preparations for attracting dirt; laundry bleach; dry-cleaning preparations; smoothing preparations [starching]; laundry soaking preparations; fabric brighteners; starch for laundry purposes; bleaching salts; liquid soap for laundry; laundry soap; soap for brightening textile; bleaching soda; antistatic sprays for clothing; carnauba wax for automotive use; automobile wax; detergents for automobiles; windscreen cleaning liquids; automobile polishes; automobile cleaners; car shampoos; non-medicated mouth washes for pets; cosmetics for animals; deodorants for animals; deodorants for pets; preparations and products for fur care; bath preparations for animals; dental care preparations for animals; skin care products for animals; breath fresheners for animals; shampoos for animals [non-medicated grooming preparations]; shampoos for pets [non-medicated grooming preparations]; body cleaning and beauty care preparations; oral hygiene preparations; perfumery and fragrances; adhesives for cosmetic purposes; adhesives for affixing false hair; seaweed for cosmetology; balms, other than for medical purposes; cotton swabs for cosmetic purposes; massage waxes; slimming aids [cosmetic], other than for medical use; hair piece bonding glue; cosmetics; cosmetics and cosmetic preparations; non-medicated cosmetics; cosmetics for personal use; cosmetics in the form of oils; cuticle cream; massage creams, not medicated; cleaner for cosmetic brushes; make-up pads of cotton wool; bergamot oil; lint for cosmetic purposes; aloe vera gel for cosmetic purposes; massage gels, other than for medical purposes; chalk for cosmetic use; greases for cosmetic purposes; henna [cosmetic dye]; henna powders; lacquer for cosmetic purposes; massage oils and lotions; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; cosmetic kits; oils for toilet purposes; mineral oils [cosmetic]; massage oils, not medicated; oils for cosmetic purposes; massage oils; cotton wool for cosmetic purposes; impregnated cloths for cosmetic use; pumice stone; foot smoothing stones; pumice stones for use on the body; cotton balls for cosmetic purposes; abrasive preparations for use on the body; cosmetic preparations for use as aids to slimming; cosmetic preparations for body care; aloe vera preparations for cosmetic purposes; cosmetic preparations for slimming purposes; non-medicated massage preparations; facial preparations; non-medicated toiletries; sanitary preparations being toiletries; baby care products (non-medicated -); pedicure preparations; nasal cleaning preparations for personal sanitary purposes; cuticle removers; cuticle conditioners; paper hand towels impregnated with cosmetics; impregnated cleaning pads impregnated with cosmetics; impregnated cleaning pads impregnated with toilet preparations; moist wipes impregnated with a cosmetic lotion; spirit gum for cosmetic use; mineral water sprays for cosmetic purposes; tissues impregnated with cosmetic lotions; scalp treatments (non-medicated -); ointments for cosmetic use; deodorants and antiperspirants; make-up; hair preparations and treatments; bath preparations; hair removal and shaving preparations; skin, eye and nail care preparations; soaps and gels; paper hand towels impregnated with cleaning agents; lip neutralizers; body glitters; creamy face powder; colour cosmetics for the skin; refill packs for cosmetics dispensers; beauty care cosmetics; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of powders; beauty balm creams; washing creams; cosmetic creams and lotions; fluid creams [cosmetics]; baby suncreams; hand cleansers; foams for use in the shower; shower and bath foam; soap free washing emulsions for the body; exfoliating scrubs for the feet; herbal extracts for cosmetic purposes; impregnated tissues for cleaning [non-medicated, for use on the person]; shower and bath gel; body gels; hand gels; henna for cosmetic purposes; beauty milk; non-medicated douches; beauty lotions; glitter in spray form for use as a cosmetics; cleaning masks for the face; face oils; non-medicated foot soaks; artificial pumice stone; pumice stones for personal use; hand powders; cosmetic hair regrowth inhibiting preparations; collagen preparations for cosmetic purposes; phytocosmetic preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; shower preparations; cosmetic breast firming preparations; facial peel preparations for cosmetic use; collagen preparations for cosmetic application; colouring preparations for cosmetic purposes; washing preparations for personal use; cleaning preparations for personal use; non-medicated beauty preparations; hand washes; non-medicated body care preparations; skin care preparations; pre-moistened cosmetic wipes; tissues impregnated with make-up removing preparations; oil removing papers for cosmetic purposes; moist wipes for sanitary and cosmetic purposes; disposable wipes impregnated with cleansing compounds for use on the face; feminine hygiene cleansing towelettes; tissues impregnated with essential oils, for cosmetic use; body cleansing foams; skin cleansing foams; beauty serums; serums for cosmetic purposes; sponges impregnated with toiletries; cosmetic dyes; anti-perspirants in the form of sprays; non-medicated antiperspirants; antiperspirants for personal use; anti-perspirant deodorants; deodorants for the feet; deodorants for body care; deodorants for personal use [perfumery]; deodorants for human beings or for animals; personal deodorants; roll-on deodorants [toiletries]; feminine deodorant sprays; deodorants, for personal use in the form of sticks; foot powder [non-medicated]; antiperspirants [toiletries]; deodorant soap; adhesives for false eyelashes, hair and nails; body art stickers; lipstick cases; make-up bases in the form of pastes; glitter for cosmetic purposes; face glitter; face and body glitter; face powder (non-medicated -); pressed face powder; solid powder for compacts [cosmetics]; powder for make-up; cosmetic white face powder; make-up powder; face powder; face powder in the form of powder-coated paper; loose face powder; cosmetic face powders; colour cosmetics; body paint (cosmetic); cheek colors; eyebrow colors in the form of pencils and powders; face paint; facial concealer; under-eye enhancers; concealers for spots and blemishes; concealers; sun bronzers; colour cosmetics for the eyes; eyes make-up; cosmetic preparations for eyelashes; lip cosmetics; eyebrow cosmetics; cosmetics in the form of rouge; cosmetics in the form of gels; cosmetics in the form of eye shadow; base cream; fair complexion cream; suntan creams; creams for tanning the skin; self tanning creams [cosmetic]; cosmetic creams; sun creams; liners [cosmetics] for the eyes; liquid eyeliners; eyeliner; rouges; cosmetic rouges; creamy rouge; creamy foundation; liquid foundation (mizu-oshiroi); eyebrow gel; skin foundation; make up foundations; make-up removing gels; chalk for make-up; tanning milks [cosmetics]; make-up removing milks; self tanning lotions [cosmetic]; make-up removing lotions; lip glosses; mascara; beauty masks; lip liners; cosmetic eye pencils; cosmetic pencils for cheeks; eyeliner pencils; eye pencils; make-up pencils; eyebrow pencils; eyelid pencils; cosmetic pencils; liquid foundation; decorative transfers for cosmetic purposes; mousses [cosmetics]; cuticle oil; oil baths for hair care; hair moisturising conditioners; conditioners in the form of sprays for the scalp; hair conditioners for babies; hair balsam; baby hair conditioner; conditioning balsam; brilliantine; hair wax; moustache wax; hair styling waxes; hair dyes; refill packs for shampoo dispensers; cosmetics for the use on the hair; conditioning creams; hair creams; creams for fixing hair; hair care creams; hair protection creams; bleaching preparations [decolorants] for cosmetic purposes; hair emollients; hair fixers; gel sprays being styling aids; styling gels; hair gel; gels for fixing hair; hair protection gels; hair moisturisers; hair permanent wave kit; hair spray; hair liquids; cosmetic hair lotions; lotions for beards; hair strengthening treatment lotions; styling lotions; hair lotions; hair care lotions; wave-set lotions; colouring lotions for the hair; hair protection lotions; hair glaze; hair mascara; hair masks; hair care masks; hairstyling masks; mousses [toiletries] for use in styling the hair; mousses being hair styling aids; hair protection mousse; neutralizers for permanent waving; hair nourishers; oils for hair conditioning; combing oil; japanese hair fixing oil (bintsuke-abura); hair fixing oil; styling paste for hair; hydrogen peroxide for use on the hair; hydrogen peroxide for cosmetic purposes; hair powder; stick pomade; hair pomades; pomades for cosmetic purposes; cosmetic preparations for the hair and scalp; hair dyeing preparations; hair straightening preparations; hair waving preparations; permanent waving lotions; hair bleaching preparations; non-medicated preparations for the relief of sunburn; preparations for setting hair; cosmetic hair dressing preparations; detanglers; neutralizing hair preparations; hair dressings for men; preparations for protecting the hair from the sun; hair treatment preparations; hair grooming preparations; hair care preparations, not for medical purposes; permanent waving and curling preparations; preparations for protecting coloured hair; hair frosts; hair tinting preparations; refill packs for hair fixer dispensers; hair conditioner bars; shampoo bars; hair lighteners; styling mousse; hair mousse; shampoos; dandruff shampoo; dandruff shampoos, not for medical purposes; baby shampoo mousse; hair-washing powder; non-medicated shampoos; non-medicated hair shampoos; shampoos for human hair; baby shampoo; shampoos for personal use; dry shampoos; shampoo-conditioners; hair serums; hair care serums; hairstyling serums; cold waving solutions; products for protecting coloured hair; tints for the hair; hair rinses [for cosmetic use]; hair rinses [shampoo-conditioners]; beard dyes; hair tonic; hair tonic [non-medicated]; wax treatments for the hair; hair preservation treatments for cosmetic use; hair texturizers; hair desiccating treatments for cosmetic use; hair permanent treatments; non-medicated body soaks; bath milk; bath foam; foaming bath liquids; baby bubble bath; bath bombs; bath concentrates (non-medicated -); bath creams (non-medicated -); bath herbs; foaming bath gels; bath gel; bath lotions (non-medicated -); baby bath mousse; aromatic oils for the bath; bath oils for cosmetic purposes; non-medicated bath oils; bath oil; bath pearls; bath pearls (non-medicated -); bath powders (non-medicated -); cosmetic preparations for baths; bath preparations, not for medical purposes; non-medicated bath salts; bath salts, not for medical purposes; scented bathing salts; bath soap; bath flakes; bubble bath; bath foams (non-medicated -); aftershave balms; shaving balm; shaving stones; depilatory wax; aftershave moisturising cream; shaving cream; pre-shave creams; depilatory creams; aftershave creams; after-shave emulsions; after-shave gel; shaving gel; aftershave milk; depilatory lotions; after-shave lotions; after-shave preparations; shaving lotion; pastes for razor strops; alum stones [astringents]; shaving stones [astringents]; depilatory preparations; shaving preparations; shaving preparations in liquid form; pre-shaving preparations; shaving soap; shaving sticks [preparations]; shaving foam; shaving sets, comprised of shaving cream and aftershave; shaving sprays; wax strips for removing body hair; cleaning agents for the hands; refill packs for shower gel dispensers; creams (soap -) for use in washing; shower creams; vaginal washes for personal sanitary or deodorant purposes; cleansers for intimate personal hygiene purposes, non medicated; exfoliating scrubs for the hands; bath and shower gels, not for medical purposes; shower gels; gels for cosmetic use; anti-bacterial face washes (non-medicated -); soap products; refill packs for hand soap dispensers; aloe soap; almond soap; body cream soap; industrial soap; liquid soap used in foot bath; shower soap; skin soap; waterless soap; cakes of toilet soap; cakes of soap for body washing; soap; carbolic soaps; soap for foot perspiration; antiperspirant soap; cosmetic soaps; cream soaps; toilet soap; non-medicated toilet soaps; beauty soap; loofah soaps; granulated soaps; soaps in liquid form; soaps in gel form; liquid bath soaps; liquid soaps for hands and face; non-medicated soaps; facial soaps; soaps for body care; hand soaps; soaps for personal use; scented soaps; paper soaps for personal uses; body washes; soap solutions; sponges impregnated with soaps; mouthwashes, not for medical purposes; mouthwash; disclosing tablets for personal use in indicating tartar on the teeth; solid toothpaste tablets; tooth whitening creams; dentifrices; dentifrices and mouthwashes; chewable dentifrices; non-medicated toothpaste; tooth whitening pastes; dentifrices in the form of chewing gum; toothpaste; tooth gel; dentifrice powder; liquid dentifrice; toothpaste in soft cake form; dental bleaching gels; sets of cosmetic oral care products; teeth cleaning lotions; tooth powder; moistened tooth powder; cosmetic preparations for the care of mouth and teeth; chewable tooth cleaning preparations; preparations for cleaning dentures; denture polishes; tooth care preparations; tooth cleaning preparations; breath fresheners; tooth whitening preparations; tooth polish; breath fresheners in the form of chew sticks made from birchwood extracts; mouth [breath] fresheners, not for medical use; non-medicated mouth sprays; mouth sprays, not for medical use; throat sprays [non-medicated]; breath freshening sprays; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; breath freshening strips; teeth whitening strips; eau de cologne; lavender water; toilet water; perfumed toilet waters; scented water; amber [perfume]; aromatics for fragrances; aromatics for perfumes; cedarwood perfumery; bases for flower perfumes; bay rums; scented body lotions and creams; aromatherapy creams; perfumed creams; body deodorants [perfumery]; eau de parfum; toilet water containing snake oil; heliotropine; extracts of flowers [perfumes]; extracts of perfumes; fragrances; fragrances for personal use; ionone [perfumery]; aromatherapy lotions; mint for perfumery; musk [natural]; musk [perfumery]; synthetic musk; natural oils for perfumes; lavender oil for cosmetic use; peppermint oil [perfumery]; rose oil for cosmetic purposes; pomanders [aromatic substances]; fragrance preparations; perfumery; fumigation preparations [perfumes]; natural perfumery; synthetic perfumery; perfumes; liquid perfumes; perfumes for industrial purposes; solid perfumes; cologne impregnated disposable wipes; perfumed tissues; body sprays [non-medicated]; scented body spray; vanilla perfumery; synthetic vanillin [perfumery].

Class 44: Human hygiene and beauty care; agriculture, aquaculture, horticulture and forestry services; animal grooming services; animal healthcare services; human healthcare services; body art services; hair styling; hire of roller-towel apparatus; cosmetic analysis; colour analysis [beauticians' services]; application of cosmetic products to the body; application of cosmetic products to the face; body art; beauty consultancy; advisory services relating to beauty treatment; consultancy provided via the internet in the field of body and beauty care; consultancy in the field of body and beauty care; depilatory waxing; electrolysis for cosmetic purposes; cosmetic electrolysis; cosmetic electrolysis for the removal of hair; providing public bath facilities; providing information about beauty; providing information in the field of hair styling; providing information relating to beauty salon services; providing information about public bath facilities; providing information about turkish bath facilities; providing bath houses; provision of public bath facilities for personal hygiene; provision of washroom facilities; providing portable toilets for events; provision of public conveniences; hygienic and beauty care; shampooing of the hair; leasing skin care equipment; leasing of showers; rental of sanitation facilities; rental of machines and apparatus for use in beauty salons or barbers' shops; hire of washroom facilities; rental of portable toilets; rental of mobile sanitary facilities; hair weaving; removal of body cellulite; skin care salons; barbershops; hair salon services; services of a hair and beauty salon; cosmetic make-up services; airbrush tanning services; airbrush tanning services for the human body; skin tanning service for humans for cosmetic purposes; spray tanning services; hair curling services; eyelash curling services; public bath services for hygiene purposes; turkish bath services; barber services; beauty care for human beings; airbrush tanning salon services; slimming salon services; spray tanning salon services; tanning salon and solarium services; eyelash dyeing services; eyebrow dyeing services; make-up consultation and application services; consultancy services relating to beauty; cosmetics consultancy services; consultation services relating to skin care; advice relating to hair care; consultation services in the field of make-up; on-line make-up consultation services; consultancy services relating to cosmetics; make-up consultation services provided on-line or in-person; nail care services; body waxing services for hair removal in humans; body waxing services for the human body; laser hair removal services; eyebrow threading services; personal hair removal services; beauty care services provided by a health spa; eyelash extension services; hair braiding services; liposuction services; manicuring; manicure and pedicure services; hair perming services; micropigmentation services; eyebrow shaping services; pedicurist services; eyelash perming services; laser skin tightening services; permanent hair removal and reduction services; laser skin rejuvenation services; hair restoration; nail salon services; hair salon services for women; beauty salon services; hairdressing; hair salon services for men; hair salon services for children; hair salon services for military service members; sauna services; solarium services; eyebrow tattooing services; hair colouring services; eyelash tinting services; eyebrow tinting services; cosmetic treatment services for the body, face and hair; cosmetic facial and body treatment services; facial beauty treatment services; cellulite treatment services; beauty treatment services especially for eyelashes; make-up services; permanent makeup services; visagists' services; cosmetic body care services; services for the provision of sauna facilities; services for the provision of solarium facilities; services for the care of the scalp; services for the care of the face; services for the care of the skin; hair straightening services; slimming treatment services; services for the care of the hair; services for the care of the feet; personal therapeutic services relating to circulatory improvement; personal therapeutic services relating to fat dissolution; personal therapeutic services relating to hair regrowth; personal therapeutic services relating to cellulite removal; tanning salons; providing hot tub facilities; hair cutting; spas; cosmetic treatment; cosmetic treatment for the hair; cosmetic treatment for the body; cosmetic treatment for the face; depilatory treatment; beauty care; hygienic care for human beings; cosmetic laser treatment for hair growth; injectable filler treatments for cosmetic purposes; cosmetic laser treatment of spider veins; cosmetic laser treatment of skin; cosmetic laser treatment of varicose veins; cosmetic laser treatment of unwanted hair; cosmetic laser treatment of toenail fungus; hair treatment; tattooing of pets for identification purposes; body piercing; laser removal of tattoos; tattoo parlors; body piercing services; tattooing; cosmetic laser treatment of tattoos; farming (crops); farming (animals); horticulture, gardening and landscaping; tree surgery; cultivation of grapes for winemaking; agricultural consultancy; professional consultancy relating to agriculture; technical consultation in the fields of feeding and raising fish, shrimp and other farm-raised marine life; consultancy relating to agriculture, horticulture and forestry; consultancy relating to tree planting; termite control in agriculture; rat extermination in agriculture; vermin exterminating for agriculture, horticulture or forestry, and providing information relating thereto; pest control in agriculture; vermin exterminating for agriculture, aquaculture, horticulture and forestry; providing information relating to the spreading of fertilizers; providing information relating to weed killing; providing information relating to farming equipment rental; providing information about agriculture, horticulture, and forestry services; providing information relating to the use of fertilizers; providing online information about agriculture, horticulture, and forestry services; providing information relating to vermin exterminating for agriculture, horticulture or forestry; fumigation in agriculture; infestations (control of -), fleas [in agriculture]; insecticide spraying for horticulture; insecticide spraying for agricultural, horticultural and forestry purposes; insecticide spraying for forestry; branding of animals; rental of agricultural spraying machinery; farming equipment rental; tree planting for carbon offsetting purposes; tree planting; forest habitat restoration; sowing of seeds; agricultural services relating to environmental conservation; agriculture, horticulture and forestry services relating to the recultivation of industrial wastelands; agriculture services; information services relating to the use of fertilisers used in forestry; information services relating to the use of chemicals used in agriculture; information services relating to the use of chemicals used in forestry; aquaculture services; agriculture, horticulture and forestry services; beekeeping services; cultivation advisory services relating to agriculture; consultancy and advisory services relating to agriculture, horticulture and forestry; advisory and consultancy services relating to weed, pest and vermin control in agriculture, horticulture and forestry; advisory and consultancy services relating to the use of agricultural and horticultural fertilizers; advisory and consultancy services relating to the use of fertilizers in agriculture, horticulture and forestry; advisory and consultancy services relating to the use of manure in agriculture, horticulture and forestry; agricultural advice; advisory and consultancy services relating to the use of non-chemical treatments for sustainable agriculture and horticulture; pest control services for agriculture, horticulture and forestry; information services relating to the use of manures used in agriculture; information services relating to the use of manures used in forestry; information services relating to the use of fertilisers used in agriculture; agricultural information services; pest control services for agriculture, aquaculture, horticulture and forestry; deep sea fishing services; reforestation services; tree nurseryman services; forestry services; fish farming services; veterinary and agricultural services; aerial spreading of fertilisers; aerial spreading of agricultural chemicals; fertilizer spreading; spreading of agricultural chemicals; surface spreading of fertilizers; aerial and surface spreading of fertilizers and other agricultural chemicals; control of infestations of fleas in agriculture; insecticide spraying in agriculture; spraying of crop protection products for agricultural purposes; provision of trial plots for crop testing; provision of trial plots for crop testing by chemical application; farm seeding by air; farming services; services for the drilling of seeds; information services relating to farming; horse farms; breeding of thoroughbred horses; compilation of information relating to birds; advice relating to the feeding of animals; advice relating to the breeding of animals; provision of information relating to birds; artificial insemination of animals; leasing of livestock; horse breeding services; cattle farming services; cattle breeding services; cat breeding services; pig breeding services; sheep breeding services; poultry breeding services; horse breeding and stud services; stud services; stud services for cattle; animal feed rationing service; breeding and stud services; horse stud services; landscape design; floral design services; rental of gardening implements; hiring of flowers; hire of interior plants; laying of artificial turf; cultivation of plants; advisory services relating to the laying of turf; flower arranging; gardening advice; consultancy relating to the cultivation of plants; garden or flower bed care; plant care services [horticultural services]; care of potted plants; weed killing; weed control; providing information relating to the rental of potted plants; providing information relating to garden tree planting; providing information regarding plant and flower identification for horticultural purposes; providing information relating to the rental of lawnmowers; providing information about gardening; gardening; gardening information and advice; planting of flora; garden maintenance; lawn care; rental of plants; rental of potted plants; rental of lawnmowers; horticulture; garden tree planting; landscape gardening of floral displays for the interior of buildings; information services relating to flora; information services relating to the use of manures used in horticulture; information services relating to the use of fertilisers used in horticulture; information services relating to the use of chemicals used in horticulture; plant nursery services; rental of flower arrangements; cultivation advisory services relating to horticulture; advisory services relating to water gardening; advisory services relating to horticulture; advisory services relating to the selection of turf; yard care services; grass cutting services; floristry; gardener and gardening services; landscape gardening; greenhouse services; spreading of horticultural chemicals; laying of turf; destruction of parasites for agriculture, horticulture and forestry; weed killing for agriculture, horticulture and forestry; tree nurseries; advisory services relating to the design of turf; consultancy relating to landscape design; planning [design] of gardens; design of gardens and landscapes; landscape gardening design for others; landscape architecture services; advisory services relating to the design of gardens; wreath making; pet bathing services; animal beautician services; animal beautician services for dogs; animal beautician services for cats; advisory services relating to the care of pet animals; advisory services relating to the care of animals; services for the care of pet animals; hygienic and beauty care for animals; grooming salon services for pet animals; dog grooming services; pet beauty salon services; animal clipping; hiring of veterinary instruments; surgery; animal hospitals; care of birds; care of fish; semen extraction (animal -); shoeing horses and maintaining horses' hooves; providing information relating to animal breeding; providing information relating to veterinary services; insertion of subcutaneous microchips into pets for purposes of tracking and identification; canine massage; equine massage; rental of ultrasonic diagnostic apparatus; physical rehabilitation; animal performance testing services; laboratory analysis services relating to the treatment of animals; veterinary surgical services; advisory services relating to the care of birds; advisory services relating to the care of fish; veterinary advisory services; services for the care of pet fish; services for the care of pet birds; in vitro fertilization services for animals; medical information services provided via the internet; information services relating to the veterinary pharmaceutical industry; information services relating to veterinary pharmaceuticals; veterinary information services provided via the internet; artificial insemination services; x-ray services; x-ray technician services; farrier services; pet hospital services; weight reduction services; veterinary services (professional consultancy relating to -); sterilising of animals; genetic testing of animals; dentistry; mental health services; opticians' services; pharmaceutical services; fitting of hearing aids; acupuncture services; speech and hearing therapy; home-visit nursing care; assisting individuals to stop smoking; health care relating to chiropraxis; health care relating to fasting; health care relating to homeopathy; chiropractic; health advice and information services; nutrition consultancy; advice relating to allergies; advice relating to the personal welfare of elderly people [health]; consultation relating to bio-rhythms; health counselling; nutrition counseling; professional consultancy relating to health; professional consultancy relating to health care; nutrition and dietetic consultancy; health screening; treatment of allergies; rehabilitation for substance abuse patients; herbalism; physiotherapy; providing information relating to acupuncture; providing information relating to chiropractics; providing information relating to physical examinations; providing information relating to dietary and nutritional supplements; providing information about dietary supplements and nutrition; providing information relating to traditional japanese massage; providing information relating to moxibustion; providing information relating to dietary and nutritional guidance; providing nutritional information about food; providing breastfeeding information; provision of information relating to nutrition; providing health care information by telephone; providing online medical record services other than dentistry; providing smoking cessation treatment services; providing weight loss program services; provision of health care services in domestic homes; providing physical rehabilitation facilities; providing long-term care facilities; managed health care services; dietary and nutritional guidance; hydrotherapy; health assessment surveys; information relating to massage; providing health information; hypnotherapy; speech therapy; massage; massage and therapeutic shiatsu massage; traditional japanese massage; hot stone massage; deep tissue massage; sports massage; thai massage; monitoring of patients; moxibustion; naprapathy; rental of hospital equipment; arranging of accommodation in sanatoria; arranging of accommodation in rest homes; arranging of accommodation in convalescent homes; genetic counseling; counseling relating to occupational therapy; osteopathy; health risk assessment surveys; diet planning and supervision; weight reduction diet planning and supervision; family planning; therapeutical pilates; preparation of reports relating to health care matters; weight-reduction programmes (planning of -); rehabilitation of alcohol addicted patients; rehabilitation of narcotic addicted patients; rehabilitation of drug addicted patients; reflexology; alcohol screening for medical purposes; homeopathic clinical services; health centre services; laboratory analysis services relating to the treatment of persons; aromatherapy services; outpatient and inpatient care services; home nursing aid services; home health care services; health care services offered through a network of health care providers on a contract basis; health care in the nature of health maintenance organizations; health spa services; human tissue bank services; oxygen bar services; nursing home services; rest home services; respite care services in the nature of home nursing aid; respite care services in the nature of nursing aid services; information services relating to health care; convalescent home services; medical and healthcare clinics; health clinic services; dietetic advisory services; dietetic counselling services [medical]; consulting services relating to health care; health care consultancy services [medical]; consultancy services relating to slimming; advisory services relating to weight control; advisory services relating to weight loss; nutritional advice; professional consultancy relating to nutrition; lactation consulting services; advisory services relating to diet; cryotherapy services; dietician service; electro therapy services for physiotherapy; stress management services; lymphodrainage services; foot massage services; meditation services; microdermabrasion services; hospice services; midwife services; reflexology services; sanatorium services; respite care (provision of); insomnia therapy services; occupational therapy and rehabilitation; music therapy services; occupational therapy services; voice and speech therapy services; trichology services; hydrotherapy home services; health hydro services; pathology services relating to the treatment of persons; light therapy services; medical and healthcare services; hospital nursing home services; addiction treatment services; services for the planning of weight reduction programmes; reiki services; services rendered by a dietician; health care relating to acupuncture; health care relating to osteopathy; health care relating to hydrotherapy; health care relating to naturopathy; health care relating to relaxation therapy; health care relating to therapeutic massage; health care relating to remedial exercise; therapy services; cupping therapy services; genetic testing of animals for diagnostic or treatment purposes; exercise facilities for health rehabilitation purposes (provision of -); supervision of weight reduction programmes; development of individual physical rehabilitation programmes; thalassotherapy; anti-smoking therapy; music therapy for physical, psychological and cognitive purposes; fitness testing; autogenic training; weight control treatment; therapeutic treatment of the body; therapeutic treatment of the face; weight control evaluation; hiring of dental instruments; advice relating to dentistry; advisory services relating to dental instruments; dental consultations; providing information relating to dentistry; mounting gemstones in dentures; cosmetic dentistry; veterinary dentistry; sedation dentistry; dental assistance; dental clinic services; dental hygienist services; orthodontic services; behavioural analysis for medical purposes; personality testing [mental health services]; psychiatric testing; art therapy; psychological counseling of staff; counselling relating to the psychological relief of medical ailments; counselling relating to the psychological treatment of medical ailments; psychiatric consultation; psychological counseling; psychological examination; provision of information relating to psychology; provision of information relating to behavioural modification; providing psychological treatment; providing mental rehabilitation facilities; preparation of psychological reports; holistic psychotherapy; conducting of psychological assessments and examination; psychological care; psychological counseling services in the field of sports; consultancy services relating to personal behaviour; consultancy relating to integral psychology; psychological diagnosis services; psychological testing services; occupational psychology services; individual and group psychology services; services of a psychologist; psychotherapy services; psychotherapists' services; psychological treatment; personality assessment services [mental health services]; psychological assessment and examination services; psychological assessment services; psychiatric services; preparing psychological profiles; preparation of psychological profiles for medical purposes; psychological therapy for infants; psychological testing for medical purposes; psychometric testing for medical purposes; personality testing for psychological purposes; eyeglass-fitting; fitting of optical lenses; fitting of contact lenses; sight-testing [opticians'] services; information services relating to contact lenses; vision screening services; optometric services; pharmaceutical advice; pharmacy advice; dispensing of pharmaceuticals; providing information to patients in the field of administering medications; provision of information relating to medicine; providing information relating to the preparation and dispensing of medications; provision of pharmaceutical information; preparation of prescriptions in pharmacies; preparation of prescriptions by pharmacists; consultancy and information services provided via the internet relating to pharmaceutical products; consultancy and information services relating to biopharmaceutical products; consultancy and information services relating to pharmaceutical products.

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

The term ‘in particular’, used in the opponent’s list of goods in Class 3, 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).

However, the term ‘namely’, used in the opponent’s list of goods in Class 1 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 3

The earlier mark’s essential oils in Class 3 are natural oils typically obtained by distillation and containing the characteristic odour of the plant or other source from which they have been extracted. They carry a distinctive scent or essence frequently used in aromatherapy, household cleaning products, personal beauty care and natural medicine treatments.

The earlier mark’s fragrances in Class 3 are substances either intended to impart a pleasant scent and/or eliminate unpleasant smells from a human or an animal body, a room, laundry, etc.

In light of the above definitions, the Opposition Division finds it appropriate to first ascertain the goods which are dissimilar to the opponent’s goods.

The contested abrasives; flexible abrasives; industrial abrasives; starch for abrasive purposes; carbides of metal [abrasives]; silicon carbide [abrasive]; sandpaper for sharpening drawing pencils; polishing paper; emery paper; sandpaper; abrasive paper; corundum [abrasive]; granular corundum; sandpaper pads for sharpening drawing pencils; diamantine [abrasive]; grinding foils; abrasive granules; sanding gloves; abrasive paste; smoothing stones; polishing stones; scouring powders; general purpose scouring powder; grinding preparations for semiconductors; adhesive removers; floor finish removers; abrasive rolls; abrasive sand; emery; abrasive strips; sandcloth; emery cloth; glass cloth [abrasive cloth]; tripoli stone for polishing; tailors' and cobblers' wax; shoemakers' wax; tailors' wax; cobblers' wax; leather and shoe cleaning and polishing preparations; shoe polish applicators containing shoe polish; shoe wax; boot wax; detergent compositions for cleaning shoes; preservative creams for leather; shoe polish and creams; shoe cream; leather dressings; creams for leather; leather polishes; shoe polish; shoe black [shoe polish]; pastes for cleaning shoes; cleaning preparations for leather; leather preservatives [polishes]; shoe cleaners [preparations]; leather bleaching preparations; vehicle cleaning preparations; carnauba wax for automotive use; automobile wax; detergents for automobiles; windscreen cleaning liquids; automobile polishes; automobile cleaners; car shampoos are dissimilar to the opponent’s goods in Class 3. The contested goods which fall into a broad category of abrasives are mostly rough substances that are used to clean hard surfaces in the household. The remaining dissimilar goods are used for maintenance of leather and shoes or cleaning vehicles. Although it cannot be ruled out that some of these contested goods may be distributed to the same stores or sale spots as the opponent’s goods in Class 3, for example via big drug store retailers, it must be born in mind that they serve generally different purposes and have different methods of use. Furthermore, the goods do not coincide in their relevant public and the relevant consumers do not expect them to originate from the same undertakings. They are not in competition with each other and they are not interchangeable goods.

Moreover, these contested goods are also dissimilar to the remaining earlier mark’s goods in Class 1 (mostly chemical additives for flavourings and aromatic essences), 30 (mostly flavourings and aromas for food, beverages as well as for pharmaceutical preparations) and 31 (mostly flavourings, aromas, essences for fodder). They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

The Opposition Division will now ascertain the goods which are identical or similar to the opponent’s goods.

Essential oils (in the applicant’s list of goods referred to also as ethereal essences and oils; aromatic oils; aromatherapy oils) are identically contained in both lists of goods.

The contested aromatic extracts; aromatics [essential oils]; food flavourings [essential oils]; food flavorings prepared from essential oils; flavourings for beverages [essential oils]; cake flavourings [essential oils]; flavour enhancers for food [essential oils]; badian essence; mint essence [essential oil]; ethereal essences; geraniol; fumigating incenses (kunko); distilled oils for beauty care; ethereal oils; essential oils for soothing the nerves; aromatic essential oils; essential oils of cedarwood; essential oils of lemon; essential oils of sandalwood; emulsified essential oils; blended essential oils; natural essential oils; essential oils for aromatherapy use; essential oils of citron; tea-tree oil; gaultheria oil; jasmine oil; lavender oil; almond oil; peppermint crude oil; pine oil; rose oil; aromatherapy preparations; safrol; essential oils for use in the manufacture of scented products; essential oils for use in manufacturing processes; essential oils for household use; essential oils for industrial use; essential oils for personal use; essential vegetable oils; natural oils for cosmetic purposes; non-medicated oils; skin care oils [non-medicated]; oils for perfumes and scents; scented oils; scented oils used to produce aromas when heated; perfume oils for the manufacture of cosmetic preparations; terpenes [essential oils]; essential oils as perfume for laundry purposes; natural oils for perfumes; lavender oil for cosmetic use; peppermint oil [perfumery]; rose oil for cosmetic purposes are included in the broad category of or overlap with the opponent’s essential oils. Therefore, they are identical.

Fragrances are identically contained in both lists of goods.

The contested floral water; household fragrances; fragrances for automobiles; perfumery; fragrances for personal; perfumes for cardboard; perfumes for ceramics; eau de cologne; lavender water; toilet water; perfumed toilet waters; scented water; amber [perfume]; aromatics for fragrances; aromatics for perfumes; cedarwood perfumery; bases for flower perfumes; bay rums; eau de parfum; toilet water containing snake oil; heliotropine; extracts of flowers [perfumes]; extracts of perfumes; ionone [perfumery]; mint for perfumery; musk [natural]; musk [perfumery]; synthetic musk; fragrance preparations; perfumery; natural perfumery; synthetic perfumery; perfumes; liquid perfumes; perfumes for industrial purposes; solid perfumes; vanilla perfumery; synthetic vanillin [perfumery] are included in the broad category of or overlap with the opponent’s fragrances. Therefore, they are identical.

The Opposition Division considers that the remaining contested goods, namely those falling into broad categories of the cleaning preparations (such as laundry preparations); animal grooming preparations (such as non-medicated mouth washes for pets; cosmetics for animals); toiletries (such as oral hygiene preparations); body cleaning and beauty care preparations (such as deodorants and antiperspirants; make-up; hair preparations and treatments; bath preparations; hair removal and shaving preparations; skin, eye and nail care preparations; soaps and gels) are at least lowly similar to the opponent’s goods in Class 3 (essential oils and/or fragrances). These goods can coincide in at least the producers, relevant public and distribution channels. For the sake of completeness, it should be pointed out that the applicant did not put forward any arguments to the contrary.

Contested services in Class 44

The contested human hygiene and beauty care; body art services; hair styling; cosmetic analysis; colour analysis [beauticians' services]; application of cosmetic products to the body; application of cosmetic products to the face; body art; beauty consultancy; advisory services relating to beauty treatment; consultancy provided via the internet in the field of body and beauty care; consultancy in the field of body and beauty care; depilatory waxing; electrolysis for cosmetic purposes; cosmetic electrolysis; cosmetic electrolysis for the removal of hair; providing information about beauty; providing information in the field of hair styling; providing information relating to beauty salon services; providing information about public bath facilities; providing information about turkish bath facilities; providing bath houses; hygienic and beauty care; shampooing of the hair; hair weaving; removal of body cellulite; skin care salons; barbershops; hair salon services; services of a hair and beauty salon; cosmetic make-up services; airbrush tanning services; airbrush tanning services for the human body; skin tanning service for humans for cosmetic purposes; spray tanning services; hair curling services; eyelash curling services; public bath services for hygiene purposes; turkish bath services; barber services; beauty care for human beings; airbrush tanning salon services; slimming salon services; spray tanning salon services; tanning salon and solarium services; eyelash dyeing services; eyebrow dyeing services; make-up consultation and application services; consultancy services relating to beauty; cosmetics consultancy services; consultation services relating to skin care; advice relating to hair care; consultation services in the field of make-up; on-line make-up consultation services; consultancy services relating to cosmetics; make-up consultation services provided on-line or in-person; nail care services; body waxing services for hair removal in humans; body waxing services for the human body; eyebrow threading services; personal hair removal services; beauty care services provided by a health spa; eyelash extension services; hair braiding services; liposuction services; manicuring; manicure and pedicure services; hair perming services; micropigmentation services; eyebrow shaping services; pedicurist services; eyelash perming services; permanent hair removal and reduction services; hair restoration; nail salon services; hair salon services for women; beauty salon services; hairdressing; hair salon services for men; hair salon services for children; hair salon services for military service members; sauna services; solarium services; hair colouring services; eyelash tinting services; eyebrow tinting services; cosmetic treatment services for the body, face and hair; cosmetic facial and body treatment services; facial beauty treatment services; cellulite treatment services; beauty treatment services especially for eyelashes; make-up services; permanent makeup services; visagists' services; cosmetic body care services; services for the provision of sauna facilities; services for the provision of solarium facilities; services for the care of the scalp; services for the care of the face; services for the care of the skin; hair straightening services; slimming treatment services; services for the care of the hair; services for the care of the feet; personal therapeutic services relating to circulatory improvement; personal therapeutic services relating to fat dissolution; personal therapeutic services relating to hair regrowth; personal therapeutic services relating to cellulite removal; tanning salons; providing hot tub facilities; hair cutting; spas; cosmetic treatment; cosmetic treatment for the hair; cosmetic treatment for the body; cosmetic treatment for the face; depilatory treatment; beauty care; hygienic care for human beings; injectable filler treatments for cosmetic purposes; hair treatment; (in general terms all the services falling into broad category of human hygiene and beauty care); are similar to the opponent’s essential oils as they have the same purpose. Moreover, they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested aromatherapy services are lowly similar to the opponent’s essential oils as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

All the remaining contested services falling into broad categories of the laser treatments (such as cosmetic laser treatment of spider veins; cosmetic laser treatment of toenail fungus), body modification services (such as body piercing; tattoo parlors; eyebrow tattooing services) agriculture, aquaculture, horticulture and forestry services (such as farming (crops, animals), horticulture, gardening and landscape); animal grooming and healthcare services (such as pet bathing services; veterinary healthcare services); human healthcare services (such as dentistry, mental health services, opticians’ services, pharmaceutical services) and other services, namely hire of roller-towel apparatus; provision of washroom facilities; providing portable toilets for events; provision of public conveniences; leasing skin care equipment; leasing of showers; rental of sanitation facilities; rental of machines and apparatus for use in beauty salons or barbers' shops; hire of washroom facilities; rental of portable toilets; rental of mobile sanitary facilities are considered dissimilar to all the earlier mark’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different purpose and target different publics. They do not have the same origin. They are neither in competition nor complementary to each other.

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 various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

CAPSO
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the contested sign are meaningful English words. Furthermore, owing to the fact that the earlier mark starts with letter ‘C’ which in some EU-languages is read as [c], the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public who will pronounced the letter ‘C’ in both marks with the same sound.

The term ‘SO’ of the contested sign will be perceived by the relevant public either as an adverb (e.g. used in front of adjectives and adverbs to emphasize the quality that they are describing/ used to refer back to something that has just been mentioned) or as a conjunction (e.g. to introduce the result of the situation or the reason for doing the thigh that you have just mentioned) (see Collins English Dictionary online). The term ‘CAP’ will be understood as, among other meanings, a soft, flat hat with a curved part at the front which is called a peak (see Collins English Dictionary online). Bearing in mind the goods and services at stake, the distinctiveness of these elements (either separately or as juxtaposition) should be seen as normal in relation to the relevant goods and services because there is no material connection between the goods and services and the concepts explained above.

The word ‘ORIGINAL’ in the contested sign will be perceived by the relevant public as a reference to something genuine, new, fresh or inventive and so it is descriptive of the characteristics of the goods and services at stake. Furthermore, this element is secondary owing to its position and size in the mark.

In light of the foregoing, the terms ‘SO’ and ‘CAP’ are considered not only the most distinctive elements of the contested sign but also, along with two vertical lines (the latter of a purely decorative nature), the visually dominant elements of the contested sign. To this extent, it must be recalled 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 term ‘CAPSO’ of the earlier mark as a whole has no meaning for the relevant public. Thus, its distinctiveness in relation to the goods and services concerned is normal.

Visually and aurally, the signs coincide in the (sound of the) words ‘SO’ and ‘CAP’, placed in inverted order, which, written together, form the whole earlier mark, and to this extent the marks are similar. Furthermore, these coinciding terms form the most distinctive and co-dominant elements of the contested sign. On the other hand, the signs differ in the additional (sound of the) element ‘ORIGINAL’ and two vertical lines (both devoid of distinctive character for the reasons set forth above) of the contested sign.

In light of the above, the signs are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

A likelihood of confusion (including a likelihood of association) 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.

The contested goods and services are partly identical, partly similar to different degrees and partly dissimilar to the earlier mark’s goods. The relevant public is the public at large with an average level of attention. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to an average degree whereas from the semantic perspective the marks are not similar. To this regard, it should be pointed out that even though the contested sign has a concept for the part of the relevant public, this fact does not offset overall similarity between the marks.

In addition, account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the 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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 040 704 designating the European Union. 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 the goods and services found to be identical or similar to different degrees to the earlier mark’s goods.

For the sake of completeness, the Opposition Division duly notes that the applicant furnished some documents in Italian which is not admissible since it is not in the language of the present proceedings.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vita VORONECKAITĖ

Klaudia MISZTAL

Carlos MATEO PÉREZ

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.