OPPOSITION No B 2 986 282

New’s Hover Light Industria e Comercio de Cosmeticos Ltda EPP, Av. Antonio Munhoz Bonilha 1386, 02725-000 Sao Paulo, Brazil (opponent), represented by J.M. Toro S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 06/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 986 282 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 061 219 for the word mark ‘New Harmony’. The opposition is based on European Union trade mark registration No 15 670 144 for the figurative mark . 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

On 14/12/2016, the opponent filed a request, which was accepted by the Office, to limit the goods and services of the earlier mark in Classes 3 and 35. Consequently, the goods and services on which the opposition is based are the following:

Class 3: Scented water; Cologne; Hydrogen peroxide for use on the hair; Cosmetics; Cosmetic creams; Perfume; Cosmetic preparations for skin care; Perfumery; Suntan creams; Skin lightening creams; none of the aforesaid goods being hair, scalp or body care products or preparations.

Class 35: Management advisory services related to franchising; Advisory services (Business -) relating to the operation of franchises; Advisory services (Business -) relating to the establishment of franchises; Business administration services for processing sales made on the internet; Online retail store services relating to cosmetic and beauty products; Providing business information via a web site; Sample distribution; Provision of space on web-sites for advertising goods and services; Presentation of goods and services; Mediation of trade business for third parties; Commercial intermediation services; Mediation of contracts for purchase and sale of products; Advisory services relating to the purchase of goods on behalf of business; Sales promotion for others; Mediation and conclusion of commercial transactions for others; none of the aforesaid services being held in the field of hair, scalp or body care.

The contested goods are the following:

Class 2: Coatings; Dyestuffs; Varnish; Varnish; Anti-rust preparations; Preparations for preventing the deterioration of wood; Primers being paints; Preparations for preventing the deterioration of wood; Colorants; Mordants, in particular wood mordants; Thinners for all the aforesaid goods; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists; Coating preparations of plastic being a paste or liquid for surfaces of wood and metal for protection against damp; Mackle, easy to apply; Fillers for smoothing and repairing rough sub-surfaces (paints).

Class 3: Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations for painting and plastering; Scouring solutions.

Class 19: Building materials (non-metallic), included in class 19; Façade mortar; Plastering materials; Plaster for facing; smoothing plaster; Ready mixed mortar; Plaster filling agents; Building lime; Screed; Fillers for building; Asphalt, pitch and bitumen.

Contested goods in Class 2

The contested goods in Class 2 are intended to coat other items for either decorative or protective purposes. They are usually produced by specialised chemical companies.

The opponent’s goods in Class 3 are various types of cosmetic products.

All the contested goods in Class 2 have different natures, purposes and methods of use from all the opponent’s goods in Class 3. The goods have different origins, and are not in competition or complementary. Furthermore, the goods have different consumers and are not produced or manufactured by the same kinds of undertakings.

As stated by the applicant, the goods in Class 2 relate to the painting and plastering industry and are for painting, coating or varnishing or are related to such products and materials; in contrast, the opponent’s goods in Class 3 clearly belong to the cosmetics industry.

Concerning the statement of the opponent that the goods in Classes 2, 3 and 19 can be made from the same raw material and can be provided by the same undertaking or related undertakings, this is not a ground for similarity. Firstly, the Opposition Division disagrees with the statement that they originate from the same undertaking or related undertakings, as this is far from being a market reality or at least is not a market norm. Furthermore, most of the contested goods are in fact finished products that are clearly dissimilar to those in Class 3. The only raw materials, raw natural resins in Class 2, are used primarily in the production of lacquers and varnishes and not for cosmetic purposes. Raw natural resins and all the goods in Class 2 differ in their natures, distribution channels and relevant publics, and they are neither in competition nor complementary. Furthermore, these goods have different consumers and are not produced or manufactured by the same kinds of undertakings. Raw materials cannot be regarded as complementary to finished products on the ground that the raw materials are intended to be turned into the finished products (see, to that effect, 09/04/2014, T‑288/12, Zytel, EU:T:2014:196, § 39); moreover, clearly different products cannot be found similar only because they may contain some identical ingredients.

The services in Class 35 are retail services, advisory services and business support activities, the latter being aimed at helping other businesses to run and improve the performance of their commercial or industrial establishment.

Retail services relating to the sale of particular goods and other goods are not similar; therefore, online retail store services relating to cosmetic and beauty products; none of the aforesaid services being held in the field of hair, scalp or body care are dissimilar to the goods in Class 2. Apart from being different in nature, given that services are intangible whereas goods are tangible, all the goods in Class 2 are clearly different from cosmetic and beauty products, as explained above.

The remaining services in Class 35 are services provided by business professionals to help business consumers in the working or management of a commercial undertaking, or in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services primarily for undertaking communications to the public, declarations or announcements by all means of dissemination. In addition, the fact that the opponent’s goods may be the subject of some of the contested services does not make them similar, since they are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

Considering all the foregoing, the contested goods in Class 2 are dissimilar to all the goods and services of the opponent.

Contested goods in Class 3

The contested bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations for painting and plastering; scouring solutions serve completely different purposes from and have nothing in common with the opponent’s scented water; cologne; hydrogen peroxide for use on the hair; cosmetics; cosmetic creams; perfume; cosmetic preparations for skin care; perfumery; suntan creams; skin lightening creams; none of the aforesaid goods being hair, scalp or body care products or preparations. The contested goods can be summarised as being cleaning preparations for household purposes, whereas the opponent’s goods are cosmetics. They differ in their methods of use, are not complementary or in competition and are normally distributed through different channels (or located in different sections in supermarkets). Finally, although they target the same consumers, they are not normally produced by the same undertakings. Therefore, they are dissimilar.

As stated above, retail services relating to the sale of particular goods and other goods are not similar; moreover, the contested goods in Class 3 are dissimilar to all the opponent’s cosmetic products, as explained above. Therefore, online retail store services relating to cosmetic and beauty products; none of the aforesaid services being held in the field of hair, scalp or body care in Class 35 are dissimilar to the contested goods in Class 3.

The remaining services in Class 35 are also dissimilar to the contested goods in Class 3 for the same reasons as explained above in relation to the contested goods in Class 2.

Contested goods in Class 19

The contested building materials (non-metallic), included in class 19; faēade mortar; plastering materials; plaster for facing; smoothing plaster; ready mixed mortar; plaster filling agents; building lime; screed; fillers for building; asphalt, pitch and bitumen are semi-finished or finished end products for use in building or construction. These goods have nothing in common with any of the opponent’s goods in Class 3 (cosmetics). These goods have different natures, purposes and end users. They are not even complementary or interchangeable and do not originate from the same undertakings. Consequently, they are considered dissimilar.

The contested goods in Class 19 are not similar to the opponent’s services either. Apart from being different in nature, as the goods are tangible whereas the services are intangible, they also have different methods of use and manifestly different purposes. In addition, the analysis as regards all the relevant factors used in the comparison between the opponent’s services in Class 35 and the applicant’s goods in Classes 2 and 3 mentioned above is equally applicable to the comparison with the contested goods in Class 19; therefore, the contested goods in Class 19 are also dissimilar to all the opponent’s services.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion.

Since the goods and services under comparison are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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

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

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

The Opposition Division

Gueorgui IVANOV	Maria SLAVOVA	Dorothée SCHLIEPHAKE

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.