OPPOSITION No B 2 923 814

Beiersdorf AG, Unnastr. 48, 20253 Hamburg, Germany (opponent), represented by Bomhard IP, S.L., C/ Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Bio Organics Cosmetics International Pty Ltd, PO BOX 7303, 3193 Beaumaris, Australia (applicant), represented by Pintz & Partners LLC, Csepreghy utca 2. II. em., 1085 Budapest, Hungary (professional representative).

On 27/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 814 is upheld for all the contested goods.

2. European Union trade mark application No 16 526 212 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 16 526 212 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 12 183 968 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier European Union trade mark registration No 12 183 968.

1. The goods

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

Class 3: Soaps; cosmetics, shampoos; tissues impregnated with cosmetic lotions.

The contested goods are the following:

Class 3: Bath salts, not for medical purposes; cosmetic preparations for baths; cakes of toilet soap; cosmetics; cosmetic creams; eau de cologne; lotions for cosmetic purposes; cleansing milk for toilet purposes; shampoos; cosmetic preparations for skin care; toiletries.

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.

All the contested goods are at least similar to the opponent’s earlier cosmetics in Class 3, either because they have the same purpose and coincide in their usual producer, relevant public and distribution channels (e.g. the contested eau de cologne), or because they are identically contained in both lists (cosmetics) or because the opponent’s broad category includes the contested goods (e.g. the contested cosmetic creams).

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

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

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘BABY’ is a very basic English word meaning ‘a very young child; a young or newly born animal’ (https://en.oxforddictionaries.com/definition/baby) and will most likely be understood as such, at least by a substantial part of consumers in the relevant territory (05/07/2012, T-466/09, ECLI:EU:T:2012:346, § 40; R 883/2010-2, § 39). In relation to the goods at issue, it will be associated with a characteristic of the goods (adapted for babies or young children, or – by extension - for sensible persons): hence, this element is of very limited distinctiveness, if any, in relation to all the relevant goods. The verbal elements ‘NVEY’ and ‘NIVEA’ are meaningless for a substantial part of the relevant territory (such as for the part of the average public that does not understand the Italian or Spanish, where the adjective ‘niveo-/-a’ may convey a meaning: see online dictionaries Real Academia Espanola: https://dle.rae.es/?id=QXVW7XX and Treccani: http://www.treccani.it/vocabolario/niveo/, extracted on 25/03/2019) and are thus of normal distinctiveness for that part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark is a figurative mark, composed of the verbal element ‘NIVEA’ in a fairly standard, white bold font against a blue circular background, depicted above the term ‘BABY’ in a – in the view of the Opposition Division, contrary to the applicant’s view – not overly stylised, pink font. The contested sign is a figurative mark, composed of the verbal element ‘NVEY’ in black and slightly stylised upper case letters, depicted above the term ‘baby’ in a not overly stylised, black bold font. As seen above, the more distinctive elements of the signs under comparison are their first verbal elements, ‘NIVEA’, and ‘NVEY’, respectively. The figurative aspects of the signs will be perceived as being of a rather decorative nature and are thus of weaker, if not devoid of, distinctiveness; in any event they will have limited impact given that 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). In the present case, the public will certainly refer to the signs by their verbal elements, which will have a much stronger impact on the consumers than the figurative components.

Furthermore, none of the signs has elements that are more visually eye-catching (dominant) than other elements.

This means that both visually and aurally, the Opposition Division considers, contrary to the applicant’s view, that the signs are similar at least to an average degree since the relevant consumer under analysis will rather notice the coincidences in the signs’ normally distinctive and meaningless verbal elements, the string of letters ‘N(*)VE(*)’ – that, in addition, constitutes the first element to be read in both signs (which first catches the consumers’ attention) as well as their more distinctive element – , and in their structure (one meaningless term – ‘N(I)VE(A/Y)’ depicted above the term ‘baby’), than their differences, i.e. the additional vowel(‘I’) in the middle of the earlier mark, the different letter (‘A’/’Y’) at the end of the first elements, and the signs’ secondary and decorative figurative aspects (which are furthermore not relevant for the aural comparison).

Conceptually, as none of the more distinctive elements with the most impact are meaningful, a conceptual comparison between these elements is not possible for the public taken under analysis as detailed above so that the conceptual aspect cannot significantly influence the assessment of the similarity of the signs. At best, on account of the common but, at most, very weak element ‘baby’, the signs are conceptually similar to a very low degree only.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a (at most) weak (if not, non‑distinctive) element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

As has been concluded above, the contested goods in Class 3 were found at least similar and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually and aurally similar to an average degree.

Account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, 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. In the present case, consumers may reasonably assume that the signs at issue distinguish different lines of products originating from the same undertaking or from connected entities. It is usual for the same mark to be configured in various different ways according to the type of product which it designates. Furthermore, it is also common for the same manufacturer or provider to use sub-brands, in order to distinguish its various lines from one another.

In its observations of 05/07/2018, the applicant argues that the marks under comparison are used in such a different lay out, position and size on the packaging of their respective products that there cannot be any confusion for consumers. However, in the assessment of likelihood of confusion, the Opposition Division is bound by the signs as registered and cannot proceed to analyse their actual use. Therefore, this argument of the applicant must be set aside.

Furthermore, the applicant refers to a previous decision of the Office with the same opponent, to support its argument that the signs are visually dissimilar. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. In view of the above, it follows that, even if the previous decision submitted to the Opposition Division related to the same opponent, it clearly concerned a different opposing mark, so that this decision is not relevant to the present proceedings.

Finally, the applicant also argues that its NVEY brand had acquired a reputation in the EU prior to the date of filing of the contested application for Class 3 goods; that it has been sold in the EU since 2006 and that therefore the opponent has had the chance to dispute the application twelve years ago. In support of this argument, the applicant merely submitted (as Annexes 2 -3) an extract of an online trade journal, BW Confidential, dated 28/01/2014, mentioning the launch of Nvey Eco products (of Australian origin) in 2005 (without specifying the territory), as well as an extract of the website <greenhotelparis.com> dated 15/01/2015, mentioning that Nvey Eco was launched in 2005 and that the Australian made products are now (i.e. as of January 2015) available in Mademoiselle Bio shops, France.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, the Opposition Division concludes that the differences between the signs in question are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could believe, for instance, that the goods designated by the conflicting signs distinguish different product lines coming from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the public under analysis as detailed above. 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, so that there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 183 968. It follows that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the above cited earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier trade mark compared above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Furthermore, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTM.

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

Andrea VALISA

Edith VAN DEN EEDE

Justyna GBYL

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.