OPPOSITION No B 3 040 436

Yodeyma Parfums, S.L., Felix Boix, 7-1ª planta, 28036 Madrid (Madrid), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Cara Pharmacy Unlimited, Station Road, Ballyshannon, Ireland (applicant), represented by Cruickshank, 8A Sandyford Business Centre Sandyford, 18 Dublin, Ireland (professional representative).

On 15/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 040 436 is partially upheld, namely for the following contested goods and services:

Class 3: Non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices, toiletries.

Class 35: Retail store pharmacy as well as the aforementioned services provided online all related to and connected with the sale of perfumery, cosmetic or beauty products.

Class 44: Hygienic and beauty care for humans; advisory services relating to beauty; advice relating to cosmetics.

2. European Union trade mark application No 17 249 111 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 249 111 . The opposition is based on European Union trade mark registration No 5 048 871 ‘KARA’. 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

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

Class 3: Perfumery and cosmetics.

The contested goods and services are the following:

Class 3: Cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices, toiletries.

Class 35: Retail store pharmacy as well as the aforementioned services provided online all related to and connected with the sale of pharmaceutical and prescription drugs, healthcare, wellbeing, nutrition, babycare and childcare, perfumery, sanitary, cosmetic or beauty products, pharmaceutical, medical, and medical-related preparations and substances, plasters, dressings, tapes, surgical cloths, swabs and tissues, disinfectants, surgical and medical apparatus and instruments, first aid kits, inhalers for medical use, syringes, needles, surgical masks, gloves for medical or surgical purposes, products and machines for household use, domestic, electrical and electronic equipment, luggage, umbrellas, walking sticks, hot water bottles, picture frames, combs, sponges, brushes, clothing, footwear, toys for infants, photographic equipment and apparatus, mobility vehicles; information, advice and consultancy relating to any of the aforesaid services.

Class 44: Pharmacy services; pharmacy advice; pharmacy advisory services; hygienic and beauty care for humans; medical services; dispensing of pharmaceuticals; advisory services relating to pharmacy, pharmaceuticals, health and beauty; advice relating to cosmetics; advice relating to allergies; provision of medical information; healthcare services; medical analysis for the diagnosis and treatment of persons; preparation and dispensing of medications; health advice and information services; advisory services relating to health; nutritional advisory and consultation services; advisory services relating to pharmaceuticals; advisory services relating to medical problems; advisory services relating to pharmacies; advisory services relating to medical services.

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.

Contested goods in Class 3

The contested non-medicated soaps; perfumery, non-medicated cosmetics, non-medicated hair lotions; toiletries are identical to the opponent’s Perfumery and cosmetics, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested essential oils; non-medicated dentifrices are similar to cosmetics as they either have the same purpose (dentifrices) or producer (essential oils). They also usually coincide in relevant public and distribution channels.

The contested cleaning, polishing, scouring and abrasive preparations are dissimilar to the opponent’s perfumery and cosmetics. On the one hand cosmetics and perfumery include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand cleaning, polishing, scouring and abrasive preparations are substances used for household washing, polishing, scouring and cleaning. Therefore one set of goods is for personal use on the body, while the other is for household use for treating floors, bathrooms, domestic items, laundry, etc. They are clearly dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail store pharmacy as well as the aforementioned services provided online all related to and connected with the sale of perfumery, cosmetic or beauty products (the latter includes as a broad category the cosmetics) are similar to a low degree to the opponent’s perfumery and cosmetics.

On the other hand, the contested retail store pharmacy as well as the aforementioned services provided online all related to and connected with the sale of pharmaceutical and prescription drugs, healthcare, wellbeing, nutrition, babycare and childcare, sanitary, pharmaceutical, medical, and medical-related preparations and substances, plasters, dressings, tapes, surgical cloths, swabs and tissues, disinfectants, surgical and medical apparatus and instruments, first aid kits, inhalers for medical use, syringes, needles, surgical masks, gloves for medical or surgical purposes, products and machines for household use, domestic, electrical and electronic equipment, luggage, umbrellas, walking sticks, hot water bottles, picture frames, combs, sponges, brushes, clothing, footwear, toys for infants, photographic equipment and apparatus, mobility vehicles; information, advice and consultancy relating to any of the aforesaid services and the opponent’s perfumery and cosmetics are not similar. Apart from being different in nature, since all the services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. The information and advice services refer to services where consumers are provided information about the retail services. This is not the purpose of the opponent’s goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

Contested services in Class 44

The contested hygienic and beauty care for humans; advisory services relating to beauty; advice relating to cosmetics are similar to cosmetics in Class 3 as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested pharmacy services; pharmacy advice; pharmacy advisory services; medical services; dispensing of pharmaceuticals; advisory services relating to pharmacy, pharmaceuticals, health; advice relating to allergies; provision of medical information; healthcare services; medical analysis for the diagnosis and treatment of persons; preparation and dispensing of medications; health advice and information services; advisory services relating to health; nutritional advisory and consultation services; advisory services relating to pharmaceuticals; advisory services relating to medical problems; advisory services relating to pharmacies; advisory services relating to medical services are all medical or related services which are dissimilar to the opponent’s perfumery and cosmetics. On the one hand cosmetics and perfumery include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand the medical and related services relate to curing the persons from illness. Furthermore, apart from being different in nature, since all the services are intangible whereas goods are tangible, they serve different needs. They also have different origins and distribution channels.

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 and services found to be identical or similar to varying degrees are directed at the public at large.

The degree of attention is average.

3. The signs

KARA
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 elements KARA/CARA are not meaningful in certain territories, for example in those countries where Spanish, Italian or Portuguese is not widely understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, in order to take into account the implications of the aforementioned in the comparison.

The earlier mark is a word mark. The contested mark contains a word element CARA and underneath it, in very small letters, the words PHARMACY & BEAUTY. All words are written in white upper case letters and placed on a black rectangular background, outlined with a thin white line.

The element KARA of the earlier word mark and CARA of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

In the contested sign, the element PHARMACY refers to a shop or a department in a shop where medicines and often cosmetics or beauty care products are sold and the word BEAUTY refers to the state or quality of being beautiful, while the ampersand is a mere punctuation mark. Considering that all the goods and services relate to beauty care, related products and advice and to a place where all these can be obtained, it is considered that these words and the ampersand are non-distinctive. In any event, considering their very small size and placement, they are secondary if not even negligible in the overall composition of the mark. The banal label like background, colours and thin line are mere embellishment and do not possess any distinctiveness.

The element CARA in the contested sign is the dominant element as it is the most eye-catching by virtue of its central position and size.

Visually, the signs coincide in the letter sequence ARA of their distinctive, (and dominant in case of the contested sign) word elements and differ in the first letter K/C. The signs further differ in the non-distinctive and also secondary word elements PHARMACY & BEAUTY and the figurative elements of the contested sign.

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

Aurally, in English, the letter C in the beginning of the words is pronounced as the letter K. Therefore, the pronunciation of KARA/CARA in the signs coincides. The pronunciation differs in the non-distinctive and also secondary word elements PHARMACY & BEAUTY, whereas the ampersand is pronounced as ‘and’. Moreover, due to their small size and position at the bottom of the mark and the fact that they are descriptive or non-distinctive indications, these elements most likely will not be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the words PHARMACY & BEAUTY will evoke a concept, it is not sufficient to establish any conceptual dissimilarity, as these elements are non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services have been found partially identical and partially similar to varying degrees and partially dissimilar. The signs are visually similar to an average degree, aurally to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

The marks coincide in the letter sequence ARA of their first, distinctive and dominant elements KARA/CARA, which is unrelated to the goods and services in question.

The consideration that the consumers pay more attention to the beginning of the mark cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

The differences are in the second word elements PHARMACY & BEAUTY of the contested sign, all which were found non-distinctive and secondary if not negligible due to their small size.

The similarities between the signs are sufficient in the present case to cause at least part of the public to believe that the conflicting identical and similar to varying degrees goods and services come from the same or economically linked undertakings.

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).

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. Due to the sufficient level of similarity between the marks, the contested trade mark must also be rejected for the services found similar to a low degree.

The rest of the contested goods and service are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rosario GURRIERI

Erkki Münter

Christophe DU JARDIN

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.