OPPOSITION No B 3 018 366

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Ingrid Brogaard, Frederiksgade 7, 5500 Middelfart, Denmark and Ian Brogaard, Al Quoz1, Street 8A, Villa 12A, Dubai, United Arab Emirates (applicants).

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

DECISION:

1. Opposition No B 3 018 366 is upheld for all the contested goods.

2. European Union trade mark application No 17 126 401 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 17 126 401 for the figurative mark . The opposition is based on European Union trade mark registration No 4 098 679 for the word mark ‘Lavera’. 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3: Perfumery goods; essential oils; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lipstick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms; deodorants; products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

The contested goods are the following:

Class 3: Perfumes; Natural oils for perfumes; Perfume oils; Perfume; Perfumed soaps; Liquid perfumes.

The contested natural oils for perfumes; perfume oils are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

Perfumes; Perfume; Liquid perfumes are included in the broad category of the opponent’s perfumery goods. Therefore, they are identical.

Perfumed soaps are included in the broad category of the opponent’s cosmetics as the latter ones include preparations for enhancing or protecting the odour or fragrance of the body, while on the other hand soaps for personal use are substances used for washing and cleaning, among others the body and in such a way, enhancing its appearance and odour. Therefore, they are identical.

b) 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 partly directed at the public at large and partly at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Lavera
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 word ‘LAVERA’ that constitutes the earlier mark is meaningful in certain territories, for example in those countries where French or Italian are spoken. Furthermore, part of the public, such as the Spanish-speaking part, may perceive a meaning in the verbal element of the contested sign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which there are no meanings in the marks’ verbal elements, such as the Bulgarian-speaking part of the public.

The earlier sign is a word mark ‘Lavera’. This word has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is figurative and due to its graphical depiction it can be perceived in different ways. Part of the public might perceive the verbal element as ‘LIVERA’ and the preceding part as a purely figurative element and not as a letter, and another part of the public will read this element as ‘OLIVERA’. All the elements are depicted in yellow and the letters are in upper or lower case in a bold standard typeface. As the part of the public that perceives the contested sign as ‘LIVERA’ will be more prone to confusion, and likelihood of confusion for only a part of the public is sufficient, for reasons of procedural economy the analysis of the signs will proceed on the basis of this part of the public.

Part of the figurative element of the contested sign may be associated with a droplet. Bearing in mind that the relevant goods are oils or perfumes, this element is non-distinctive for these goods as it merely indicates that they are liquid. However, the figurative element as a whole is considered to be at least weak as it contains a crescent to which the drop is attached.

Visually, the signs coincide in the letter sequence ‘L*VERA’. However, they differ in their second letters ‘A’ versus ‘I’ and in the graphic representation and weak figurative element of the contested sign. However, 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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛L*VERA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛A’ versus ‘I’. They have the same number of syllables and aural rhythm.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element 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. However, as the conceptual difference lies in a non-distinctive element, this difference has very little, if any, impact on the comparison 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.

d) 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.

e) 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 and they target the public at large and professionals, whose level of attention may vary from average to high. The inherent distinctiveness of the earlier mark is considered normal.

The signs are visually similar to an average degree and aurally similar to a high degree. The conceptual comparison has little, if any, impact on the assessment of likelihood of confusion.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, bearing in mind the principle of imperfect recollection, and the considerable visual and aural similarities between the signs and the identical goods, the Opposition Division finds that there is a likelihood of confusion for the part of the public that will perceive both signs as consisting of fanciful words without any meaning differing in only one letter out of six.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 098 679. It follows that the contested trade mark must be rejected for all the contested goods.

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

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) EUTMR.

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

Boyana NAYDENOVA

Katarzyna ZANIECKA

Martin INGESSON

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.