OPPOSITION No B 2 938 879

Eugene Perma France, Bâtiment C D, 10, rue James Watt, 93200 Saint-Denis, France (opponent), represented by Cabinet Beau de Lomenie, 158, rue de L’Université, 75340 Paris Cédex 07, France (professional representative)

a g a i n s t

Biovene Cosmetics S.L., Rambla de Catalunya 38, 08007 Barcelona, Spain (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 29/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 938 879 is upheld for all the contested goods.

2. European Union trade mark application No 16 523 102 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 523 102 . The opposition is based on European Union trade mark registration No 1 739 226 for the word mark ‘BIORENE’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The date of filing of the contested application is 29/03/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/03/2012 to 28/03/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Soaps; soap products; perfumery, cosmetic creams, perfume, perfume extracts, eau de Cologne, essential oils, cosmetics, make-up and make-up removing preparations, nail varnish, depilatory preparations; hair lotions; hair creams, hair gels, hair lacquers, hair mousse; preparations for setting and waving hair, shampoo, brilliantines, hair fixing preparations, hair dyes, preparations for permanent waves and their neutralisers; preparations for straightening hair and their neutralisers; preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes, bleaching and lightening preparations for the hair; hair colours.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 16/05/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/07/2018 to submit evidence of use of the earlier trade mark. On 17/07/2018, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following.

• Screen shots: in Annex 1

41 pages from the opponent’s website www.eugeneperma.com (in French) dated March 2018, showing the variety of products available under the trade mark ‘BIORENE’, all of them for hygiene, care and beauty of the hair.

• Invoices: in Annexes 3, 7 and 9

Over 40 invoices in French and Spanish, 29 issued by the opponent to different customers in Belgium, France and Luxembourg and 15 issued by the opponent’s subsidiary in Spain to different customers in that country. These invoices refer to products under different trade marks, among them several items clearly marked ‘BIORENE’, all of them for hygiene, care and beauty of the hair.

Most of these invoices fall within the relevant period of time, having been issued between 12/01/2015 and 03/02/2017. The quantities in the invoices vary, while the prices (in euros) have been redacted.

• Price lists: in Annexes 2 and 6

Tariffs in euros for various territories listing products under different trade marks, among them several items clearly marked ‘BIORENE’, all of them for hygiene, care and beauty of the hair. Only the following fall within the relevant period: price lists for France dated January 2016 and January 2017 and for Belgium and Luxembourg dated March 2015, January 2016 and January 2017. All of them are written in French.

• Press articles: in Annexes 4 and 5

Press articles from French magazines and websites, in which the trade mark ‘BIORENE’ clearly appears in relation to products for hygiene, care and beauty of the hair.

Of these press articles, five fall within the relevant period, 2013-2016:

• LSA, 17/11/2016

• Madame Figaro, 23/03/2015

• Maxi, 14/03/2016-20/03/2016

• L’UsineDigitale, 04/03/2016

• LSA, 21/05/2013

The remaining article in Annex 4 is dated outside the relevant period. The press release in Annex 5, in French, has no indication of the date or the source.

• Advertising material: in Annex 8

Brochures about ‘BIORENE’ products for the hygiene, care and beauty of the hair, for the Belgian and French markets. The currency mentioned is euros.

Only the following fall within the relevant period:

• OUTIROR, October 2016

• di beauty&care, February 2014.

Assessment of the evidence

The applicant argued that not all the items of evidence indicated genuine use in terms of time and extent of use of the goods for which the earlier mark was registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The invoices (Annexes 3, 7 and 9), price lists (Annexes 2 and 6), brochures (Annex 8) and press articles (Annexes 4 and 5) show that the place of use is the European Union. This can be inferred from the language of the documents (Dutch, French and Spanish), the currency mentioned (euros) and the addresses in Belgium, Spain, France, and Luxembourg. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period: most of the invoices dated between 2015 and 2016, some of the price lists (2015-2016), the press articles (2013, 2015 and 2017) and the brochures (2014 and 2016).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. For example, the invoices dated outside the relevant period were issued during 2017. Therefore, they indicate that the mark has been continuously used, in particular during a few months after the end of the relevant period (28/03/2017).

Therefore, the evidence submitted, despite the applicant’s opinion, sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

When assessed together, the documents submitted, in particular the invoices, price lists, press articles and brochures, provide the Opposition Division with sufficient information concerning the territorial scope, the duration and the frequency of use.

Despite the applicant’s opinion, the quantities of products mentioned in the invoices submitted are not insignificant. Although the invoices indicate a short duration of use (referring to only three of the five years constituting the relevant period, 2015, 2016 and 2017), firstly, it is not necessary to prove use during the entire relevant period, and, secondly, they show use of the EUTM in several Member States, namely, Belgium, Spain, France, and Luxembourg. Therefore, they show regular use within the relevant period in a significant part of the relevant territory.

This evidence is corroborated by the press articles and advertising material from preceding years, namely 2013 and 2014. There are several pictures showing actual use of the earlier trade mark on hair products in the price lists, press articles and advertising material. The brochures provided are issued in Dutch, French and Spanish and the products’ price lists refer to various European territories.

Those factors support the conclusion, in the context of a global assessment, that the extent of use was fairly significant, in the sense that they demonstrate the opponent seriously attempted to create or maintain a position in the relevant market and clearly exclude token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use: use as a trade mark

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The earlier mark is a word mark used also in a figurative form, namely slightly stylised, with the addition of a fancy vowel ‘O’ and in a different colour depending on the background, .

However, the use of the mark in this way does not alter the distinctive character of the earlier mark as registered, namely as the word mark ‘BIORENE’, since the stylisation is minimal and is unable to divert attention away from the verbal element.

In view of the above, the Opposition Division considers that the evidence does show use of the sign in accordance with its function and as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

The evidence shows genuine use of the trade mark, at least for the following goods:

Class 3: Preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 3: Preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes.

The contested goods are the following:

Class 3: Cosmetics.

The contested cosmetics include, as a broader category the opponent’s preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

BIORENE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign has no meaning for the relevant public, and is, therefore, distinctive.

The word ‘BIOVÈNE’ in the contested sign is the dominant element as it is the most eye-catching because of its position and dimension. It is distinctive, as it has no meaning for any of the relevant goods (although in some languages, such as German or Italian, it may be perceived as a voluntary misspelling for biological cosmetics for the treatment of vein issues). The word ‘BARCELONA’ has a limited impact because of its much smaller size and lower position, but also because it can be allusive of the characteristics of the goods (e.g. where they are produced and/or designed) and, therefore, is of lower-than-average degree of distinctiveness. Therefore, the most distinctive element in this mark is ‘BIOVÈNE’.

Although consumers in general perceive trade marks as a whole, they tend to break verbal elements down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, it is likely that the prefix ‘BIO’, present in both signs, will be perceived by the relevant public as a commonly used abbreviation for the word ‘biological’. This element will be associated with the idea of something natural (e.g. as regards the ingredients/composition) and/or environmentally friendly (e.g. as regards the way in which it is produced). Therefore, it is non-distinctive for the goods involved, since any beauty or care product can have organic constituents. However, despite the fact that the signs contain beginnings with limited distinctiveness, their similarity will not be ignored by consumers.

Visually, the signs coincide in the string of letters ‘BIO*ENE’. They differ in the letters ‘R’ and ‘V’ in the earlier mark and the contested sign respectively, and in the accent ‘È’ of the latter mark which is, nevertheless, of very small visual impact.

They further differ in the additional word ‘BARCELONA’ and in the line preceding and following this word which, contrary to the applicant’s opinion, is merely decorative and serves to frame the word it accompanies. It is void of distinctive character, and its impact is very limited.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘BIO*ENE’ (regardless of the presence or absence of the accent).

The pronunciation differs in the sound of the fourth letters, ‘R’ and ‘V’ in the earlier mark and in the contested sign respectively. Nevertheless, this difference is mitigated by the position of these differing letters in the middle of the signs.

The signs further differ in the additional word ‘BARCELONA’ in the contested sign. However, it is not likely to be pronounced due to its reduced impact within the mark, for the reasons explained above (i.e. size, position and low degree of distinctiveness) (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342; 03/06/2015, T‑544/12, PENSA PHARMA, EU:T:2015:355; 03/06/2015, T‑546/12, Pensa, EU:T:2015:355).

The applicant argued that ‘the marks sound to the ear completely different’ and referred to a previous decision of the Office, namely 27/06/2006, B 731 853, TANA/TANIT, to support its arguments. However, that case is not relevant to the present proceedings. The signs are not comparable to the ones in the present case, since the differences are not confined to one single letter, but two, and they occur in a different position.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the distinctive parts of the signs as a whole do not have any meaning for the public in the relevant territory, they evoke the concept of ‘biological’. However, considering that the common element ‘BIO’ is non-distinctive in relation to the cosmetics in question, its impact is rather limited. The public in the relevant territory will also perceive the term ‘BARCELONA’ of the contested sign as a city in Spain, being, for the same reasons, of limited impact.

Therefore, the marks are conceptually similar to a low degree.

In its observations the applicant argued that ‘the signs at stake are once again very dissimilar from a conceptual standpoint’ and referred to previous decisions of the Board of Appeal to support its arguments. However, the cases cited (11/09/2007, R 1595/2006‑2, MIMS / MIMO et al. and 20/10/2009, R 692/2009‑2, amival (FIG. MARK) / anibal (FIG. MARK)) are not relevant to the present proceedings because the signs at issue in those cases are not comparable to the present ones. In both those cases, one of the signs under comparison has a meaning: in the first case ‘MIMO’ is the Spanish term for ‘care, delicacy’, and in the second case ‘ANIBAL’ (the Spanish for Hannibal) refers to a well-known ancient warrior. Therefore, the applicant’s arguments in that regard cannot succeed.

4. Distinctiveness of the earlier mark

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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, despite the presence of a non-distinctive prefix in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and they target the public at large, which has an average degree of attention.

The marks at issue are visually and aurally similar to an average degree, as they coincide in six out of seven letters of the sole or more distinctive parts of the marks, and conceptually similar to a low degree, to the extent that they both begin with the non-distinctive prefix ‘BIO’. The earlier sign has a normal degree of distinctiveness.

Evaluating likelihood of confusion implies some interdependence between the relevant factors (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17) The coincidences between the marks, together with the identity of the goods involved are clearly enough to counteract their differences, and to lead consumers to confusion as regards the commercial origin of those goods.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division considers that the differences between the signs, found in parts or elements of reduced impact, for the reasons explained above, are clearly not sufficient to outweigh the strong visual and aural similarities between them. Therefore, it is concluded that the relevant public could believe that the goods found to be identical come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 739 226. It follows that the contested trade mark must be rejected for all the contested goods.

As the opposition is totally successful on the basis of the opponent’s preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes, there is no need to examine the validity of the proof of use filed by the opponent in relation to the remaining goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Sofía SACRISTÁN MARTÍNEZ

Manuela RUSEVA

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.