OPPOSITION No B 3 004 259

Just Italia S.p.A, Via Cologne, 12, 37023 Grezzana, Fraz. Stallavena (VR), Italy (opponent), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042, Cento (FE), Italy (professional representative)

a g a i n s t

Livetogive Ltd, 139 Newton Road Great Barr, B43 6BE, Birmingham, United Kingdom - Jit Singh 139 Newton Road, B43 6BE Birmingham, United Kingdom (applicants), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis 3 – 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 004 259 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 197 311 for the figurative mark . The opposition is based on, inter alia, Italian trade mark registration No 2 010 901 891 396 for the word mark ‘JUST’. 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.

Proof of use of the earlier marks was requested by the applicants. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 Italian trade mark registration No 2 010 901 891 396.

a) The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 35: Advertising; business management; business administration; office functions.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

The contested goods and services are the following:

Class 3: Toiletries; body cleaning and beauty care preparations; perfumery and fragrances; abrasive preparations for use on the body; adhesives for cosmetic purposes; adhesives for affixing false hair; aloe vera gel for cosmetic purposes; aloe vera preparations for cosmetic purposes; balms, other than for medical purposes; chalk for cosmetic use; cosmetic kits; cleaner for cosmetic brushes; cosmetic preparations for body care; cosmetic preparations for slimming purposes; cosmetics; cosmetics and cosmetic preparations; cosmetics containing keratin; cosmetics for personal use; cosmetics in the form of oils; cosmetics containing hyaluronic acid; cosmetics containing panthenol.

Class 8: Hygienic and beauty implements for humans and animals; hair styling appliances; manicure and pedicure tools; clippers for personal use [electric and non electric]; hair cutting and removal implements; body art tools; cuticle scissors; electric hair crimper; electric hair straightening irons; electric irons for styling hair; eyelash curlers; eyelash separators; hand tools for exfoliating skin; hand tools for removing hardened skin; hand tools for use in beauty care; hand-operated apparatus for the cosmetic care of eyebrows; manual clippers; pedicure implements; hand-pumped sprayers.

Class 21: Cosmetic and toilet utensils and bathroom articles.

Class 35: Online retail store services relating to cosmetic and beauty products.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

just
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 term ‘JUST’, which in Italian is meaningless and is, therefore, distinctive.

The contested sign is figurative. It consists of three letters, namely ‘JST’, depicted using black ordinary capital letters. The first letter ‘J’ is slightly longer than the others. Also, under the letters ‘ST’ it lies, after a thin horizontal line, the word ‘COSMETICS’, depicted in rather small black capital letters.

While the three letters ‘JST’ are meaningless, and therefore distinctive, the word ‘COSMETICS’ is almost identical to its equivalent in Italian, namely ‘cosmetici’, and in view of the fact that the goods and services are all related to cosmetics or at least to beauty care, it is deemed to be a weak if not a very weak element.

Furthermore, this word is secondary, since the element ‘JST’ in the contested sign is the dominant element as it is the most eye-catching.

Account must be taken of the fact that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letters ‘JST’, which form the dominant element of the contested sign and three out of four letters of the earlier mark ‘just’.

However, they differ in the second letter ‘u’ of the earlier mark, in the additional weak and secondary element ‘COSMETICS’ of the contested sign, as well in the merely decorative horizontal line that in the contested sign divides the two verbal elements.

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

Aurally, the pronunciation of the signs although they coincide in the letters ‘JST’ only coincides in some of their sounds. In fact, while the earlier mark will be pronounced as a plain word, having a vowel as second letter, it is likely to expect that the dominant element ‘JST’ of the contested sign will be pronounced as an acronym letter by letter. Furthermore, the signs differ in the additional weak and secondary element ‘COSMETICS’ of the contested sign.

Consequently, the signs are deemed to be aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign’s weak element ‘COSMETICS’ 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, although limitedly to a very weak element.

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.

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 and services 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services in Classes 3, 8, 21 and 35 covered by the trade marks in dispute have been assumed to be identical. They are directed at the public at large whose degree of attention is expected to be average.

The signs are visually similar to an average degree and aurally similar to a low degree, in as far as they comprise three identical letters. Conceptually, the signs’ element which plays a relevant role, namely the letters ‘JST’ in the contested sign and ‘just’ in the earlier mark cannot be compared, being devoid of any semantic content. Additional difference arise from the presence of the word ‘COSMETICS’ in the contested sign, which is nevertheless at least a weak and secondary element.

It also very important to consider that in the present case the signs in dispute are rather short and, as a result, consumers will perceive the differences between them more easily (23/09/2009, T-391/06, S-HE, EU:T:2009:348, § 69).

The earlier mark has only four letters. Three of them coincide with the letters ‘JST’ of the trade mark application. It is considered however that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. In fact, the additional letter ‘u’ renders the earlier mark a ‘real word’, pronounceable as such even in Italian, where it is not expected to be generally understood. On the contrary, the letters ‘JST’ are three consonants which will be most likely understood as an acronym, and perceived and pronounced accordingly.

This difference is crucial because it makes the two signs of a different nature, clearly perceivable by the consumers.

The fact that the signs do not coincide in one letter and, most importantly, that the differing letter is the only vowel in the two signs is sufficient to avoid a finding of likelihood of confusion under the present circumstances, because it is reasonable to assume that the relevant consumers, even taking into account the principle of imperfect recollection, will not be led to believe that the goods and services in question come from the same undertaking or economically linked undertakings.

Although the marks under comparison have some similarities, the differences between them are then sufficiently striking to avoid a likelihood of confusion, even in relation to goods and services assumed to be identical.

Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the following earlier trade mark:

 Italian trade mark registration No 1991900180767 for the figurative mark .

The other earlier right invoked by the opponent is less similar to the contested sign. This is because it contains further figurative elements (the two semi-circles around the word element JUST depicted in slightly stylised form) and the additional word ‘ITALIA’, which are not present in the contested application. Moreover, it covers a narrower scope of goods. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services

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

Riccardo RAPONI

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

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.