OPPOSITION No B 2 946 104

Lacer, S.A., Sardenya, 350, 08025, Barcelona, Spain (opponent), represented by Pons Consultores de Propriedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

EK-Mobile, Peiner Str. 61, 31319 Sehnde, Germany (applicant).

On 12/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 946 104 is upheld for all the contested goods, namely:

Class 3: Make-up.

2. European Union trade mark application No 16 750 614 is rejected for all the contested goods. It may proceed for the remaining goods.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. 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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 750 614, namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 1 139 496 for the word mark ‘VAPIO’. 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.

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 Spanish trade mark registration No 1 139 496 for the word mark ‘VAPIO’.

1. The goods

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

Class 3: Perfumery, cosmetics and hair lotions.

The contested goods are the following:

Class 3: Make-up.

The contested make-up is included in the broader category of the opponent’s cosmetics. Therefore, they are identical.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered average.

3. The signs

VAPIO	VAPIAO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a word mark, consisting of the verbal element ‘VAPIO’. It has no meaning for the relevant public and it is, therefore, distinctive.

The element ‘VAPIAO’, constituting the contested sign, which is also a word mark, has no meaning for the relevant public. Therefore, it is distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘VAPI(*)O’. They differ in the penultimate letter, ‘A’, in the contested signed, which has no counterpart in the earlier mark. However, this difference is considered insignificant, as the differing letter is placed just before the very end of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the earlier mark will be pronounced as [VA/PI/O], whereas the contested sign will be pronounced as [VA/PI/A/O] or [VA/PI/AO]. Therefore, the signs coincide in the sounds of the letters ‘VAPI(*)O’, but they differ in the slightly longer sound of the sequence of three vowels in the contested sign. Moreover, the signs have the same consonants in the same order (V*P*(*)*) and have similar sequences of vowels (featuring an ‘A’ near the beginning, followed by an ‘I’ close to the middle and an ‘O’ at the end). It follows that the signs have similar rhythms and intonations.

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

Conceptually, neither of the signs has a particular meaning in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical. The consumers are the public at large and their degree of attention is considered average.

The signs are visually highly similar and aurally similar to at least an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs, and the distinctiveness of the earlier mark is normal.

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/services covered are from the same or economically linked undertakings.

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

Therefore, the Opposition Division considers that, due to the visual and aural similarities between the signs, originating from the commonalities analysed above, when consumers encounter the signs at different times, they may assume that the goods found to be identical come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that 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 Spanish trade mark registration No 1 139 496. It follows from the above that the contested trade mark must be rejected for all the contested goods.

As the earlier right Spanish trade mark registration No 1 139 496 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).

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

Klaudia MISZTAL

Mads Bjørn Georg JENSEN

Vít MAHELKA

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.