OPPOSITION No B 3 046 884

Pepkor UK Retail Ltd, 128 Wigmore Street, W1U 3SA, London, United Kingdom (opponent), represented by Freeths LLP, Colmore Plaza, 20 Colmore Circus, B4 6AT, Birmingham, United Kingdom (professional representative)

a g a i n s t

PepProducts Ltd., 84 Norththumberland Road, Ballsbridge, Ireland (applicant), represented by Patentanwälte Magenbauer & Kollegen Partnerschaft MBB, Plochinger Str. 109, 73730, Esslingen, Germany (professional representative)

On 18/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 884 is partially upheld for all the contested goods and services, except for the following:

Class 35: Retailing in relation to pharmaceutical, medical and veterinary articles, and sanitary preparations, hygienic implements for humans; wholesaling in relation to hygienic implements for humans; online ordering services; arranging commercial transactions, for others, via online shops; consumers (commercial information and advice for -) [consumer advice shop]; marketing research in the fields of cosmetics, perfumery and beauty products; advertising services relating to cosmetics; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes.

2. European Union trade mark application No 17 379 819 is rejected for all the goods and services in Classes 3 and 35, with the exception of the contested services in Class 35 listed above.

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 17 379 819 for the word mark ‘pepProducts’. The opposition is based on European Union trade mark registration No 13 505 748 for the word mark ‘PEP&CO’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR. However, the opponent withdrew Article 8(5) EUTMR as ground for the opposition, by letter on 19/07/2018.

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 and services

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

Class 3: Cosmetics and toiletries; beauty products; bath oils and essences; perfumery; non-medicated toilet preparations; body lotions and creams; massage oils; creams, lotions, emulsions and concentrates for the protection, care and treatment of the skin; cleansers, moisturisers, toners, face masks, serum.

Class 35: Retail and wholesale services relating to cosmetics and toiletries, beauty products, bath oils and essences, perfumery, non-medicated toilet preparations, body lotions and creams, massage oils, creams, lotions, emulsions and concentrates for the protection, care and treatment of the skin, cleansers, moisturisers, toners, face masks, serum, cutlery, scissors, knives, forks, spoons, food preparation implements, oyster openers, non-electric egg slicers, ice picks, flatware, forks, vegetable shredders, carving knives, bread knives, kitchen knives, chef knives, butchers’ knives, whetstones, whetstone holders, knife steels, sharpening instruments, stropping instruments, carving forks, fish bone tweezers, spatulas for general use, hand tools and implements (hand operated), vegetable slicers, non-electric pizza cutters, choppers (knives), blades (hand tools), sugar tongs, ice tongs, non-electric can openers, vegetable peelers, apple corers, cases for protecting all or part of the blade, point or cutting edge of a knife or hand-operated hand tool, garden knives, pruning scissors, hand tools, hunting knives, cutting tools, silverplate, serving utensils, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, lighting and lights, parts and fittings of the aforesaid, jewellery, costume and imitation jewellery, bracelets, wrist bands (bracelets), necklaces, earrings, watches, key rings and jewellery boxes, paste, imitation, fashion, artificial and costume jewels and jewellery, semi-precious stones, decorative articles for personal use, jewellery cases, watches, horological and chronometric instruments, parts and fitting for all the aforesaid goods, furniture, mirrors, picture frames, cushions, baskets, armchairs, beds, bottle racks, chests of drawers, clothes hooks and hangers (not of metals), cupboards, curtain rings, rails and rods, desks, door fittings, dressing tables, chairs, seats, side boards, sofas, shelves for storage, tables, household utensils, dustbins, dusting apparatus, non-electric, hot pots, not electrically heated, deodorising apparatus for personal use, brushes, electric (except parts of machines), comb (electric), bottle openers, electric and non-electric, deep fat fryers, fruit presses, non-electric, for household purposes, griddles (cooking utensils), gridiron supports, garlic presses [kitchen utensils], blenders, non-electric, for household purposes, kitchen grinders, non-electric, mills for domestic purposes, hand-operated, noodle machines, hand-operated, hand-operated cleaning implements, beaters, non-electric, stirring spoons (for kitchen use), cocktail stirrers, scrapers (kitchen implements), scoops (tableware), hot pots, not electrically heated, sieves (household utensils), sifters (household utensils), waffle irons, non-electric, boxes for sweetmeats, butter dishes, bread baskets, domestic, brushes (except paint brushes), china ornaments, buckets, cruets, flasks, grab handles, bottles, bottle openers, electric and non-electric, figurines, statuettes of porcelain, earthenware or glass, glass bowls, painted glassware, vegetable dishes, spice sets, glasses (receptacles), household or kitchen utensils and containers (not of precious metal or coated therewith), napkin holders, insulating flasks, crystal [glassware], cheese-dish covers, cookie jars, ceramics for household purposes, pitchers, decanters, baskets for domestic use, cake moulds, works of art, of porcelain, terra-cotta or glass, kitchenware, cooking pot sets, moulds for kitchen use, combs and sponges, knife rests for the table, mixers, manual (cocktail shakers) shakers, fruit cups, picnic sets, pepper pots, slabs, porcelain and earthenware, lunch boxes, menu card holders, dishware, salad bowls, salt shakers, soap dispensers, basins [bowls], pan-mats, soup bowls, lazy Susans, napkin holders, tea caddies, services [dishes], meal trays, table utensils, pots, toilet paper dispensers and napkin holders, saucers, vases, photophores, wall-mounted soap dishes, sugar bowls, bakeware, textiles and textile goods, not included in other classes, curtains, bed and table covers, duvets, duvet covers, sheets, pillowcases, rugs (travelling), furniture coverings made of fabric, coasters and drink mats, table linen, napkins, table runners, tablemats, throws, rugs (travelling), mats, towels, clothing, footwear, headwear, menswear, ladies’ outerclothing, ladies’ underwear, children’s clothing, clothing, namely, suits, trousers, jeans, culottes, shorts, shirts, t-shirts, blouses, dresses, skirts, kilts, jumpers, cardigans, tank tops, sweaters, sweatshirts, sweatpants, leotards, loungewear, outerwear, namely, jackets, raincoats, overcoats, and wind resistant jackets, formal evening wear, sleepwear, dressing gowns and robes, bathing trunks, swimwear, bikinis, shrugs, scarves, stoles, headscarves, neckties, gloves, mittens, vests, waistcoats, bras, underwear, lingerie, hosiery, suspenders, socks, stockings, pantyhose, footwear, sports footwear, casual footwear, beach footwear, infants’ footwear, headgear, namely, berets, hats, caps, bandanas, children’s headwear, belts, leather belts, fabric belts, toys, games and playthings, plush toys, model cars, jigsaws, electronic games, board games, gymnastic and sporting articles, Christmas tree decorations.

The contested goods and services are the following:

Class 3: Cosmetics and cosmetic preparations; cosmetic preparations for bath and shower; functional cosmetics; decorative cosmetics; fluid creams [cosmetics]; lotions for face and body care; body milks; body cleaning and beauty care preparations; non-medicated body care preparations; bubble bath; soaps for body care; douching preparations for personal sanitary or deodorant purposes [toiletries]; hair and body wash; hair care preparations, not for medical purposes; oils for hair conditioning; hair gel; conditioning preparations for the hair; deodorants for body care; roll-on deodorants [toiletries]; hair preparations and treatments; tints for the hair; hair bleaching preparations; hair spray; preparations for setting hair; hair masks; skin masks [cosmetics]; body moisturisers; facial washes [cosmetic]; moisturising preparations; cosmetic facial lotions; skin care lotions [cosmetic]; pre-moistened cosmetic wipes; impregnated cleaning pads impregnated with cosmetics; impregnated cloths for cosmetic use; make-up pads of cotton wool; sponges impregnated with toiletries; skin emollients; make-up for the face and body; make-up preparations; henna [cosmetic dye]; skin whitening preparations [cosmetic]; concealers; powder compact refills [cosmetics]; cosmetic eye pencils; eyelid shadow; cosmetic pencils; liners [cosmetics] for the eyes; mousses [cosmetics]; lip stains [cosmetics]: lip stains [cosmetics]; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; nail tips [cosmetics]; nail hardeners [cosmetics]; nail primer [cosmetics]; nasal cleaning preparations for personal sanitary purposes; hair removal and shaving preparations; after-shave preparations; pre-shaving preparations; shaving cream; depilatory creams; sanitary preparations being toiletries; temporary tattoo’s for cosmetic purposes; cosmetic kits; cleaner for cosmetic brushes; sun protecting creams [cosmetics]; sun protecting creams [cosmetics]; sun bronzers; sun-tanning gels; after-sun oils [cosmetics]; after-sun oils [cosmetics]; tanning milks [cosmetics]; sun care preparations; sun protectors for lips; cosmetic foams containing sunscreens; sun-tanning gels; after-sun oils [cosmetics]; creams for tanning the skin; massage oils; massage waxes; non-medicated massage preparations; massage candles for cosmetic purposes.

Class 35: Mail order retail services for cosmetics; online retail services relating to cosmetics; online retail store services relating to cosmetic and beauty products; retailing in relation to pharmaceutical, medical and veterinary articles, and sanitary preparations, hygienic implements for humans, beauty implements for humans, toiletries and hair products; wholesaling in relation to hygienic implements for humans and beauty implements for humans; online ordering services; arranging commercial transactions, for others, via online shops; consumers (commercial information and advice for -) [consumer advice shop]; commercial information and advice services for consumers in the field of make-up products; marketing research in the fields of cosmetics, perfumery and beauty products; advertising services relating to cosmetics; providing consumer product advice relating to cosmetics; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes.

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 massage oils are identically included in the opponent’s list of goods in Class 3.

The rest of the contested goods in this class either fall into the broad category of the opponent’s cosmetics (e.g. the contested cosmetic preparations for bath and shower; functional cosmetics) or into that of the opponent’s toiletries (e.g. the contested pre-moistened cosmetic wipes; impregnated cleaning pads impregnated with cosmetics), and are therefore identical.

Contested services in Class 35

The contested mail order retail services for cosmetics; online retail services relating to cosmetics; online retail store services relating to cosmetic and beauty products; retailing in relation to beauty implements for humans, toiletries; wholesaling in relation to beauty implements for humans are identical to the opponent’s retail and wholesale services relating to cosmetics and toiletries, beauty products, as they are synonymous.

The contested retailing in relation to hair products is identical to the opponent’s retail services relating to cosmetics, since both these retail services, are offered in relation to identical goods (inasmuch as hair products fall into the broad category of cosmetics).

The contested commercial information and advice services for consumers in the field of make-up products; providing consumer product advice relating to cosmetics are similar to the opponent’s cosmetics, since they can coincide in purpose, are complementary, can coincide in distribution channels and are directed at the same consumers

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 also applies to wholesale services, and to the retail and wholesale services by mail order or online.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised, and the contested advertising services relating to cosmetics are therefore dissimilar to all of the opponent’s goods, including cosmetics.

It follows that the rest of the contested services in Class 35, are dissimilar to the goods and services of the opponent, since they differ in nature, purpose, method of use, distribution channels/points of sale, are neither complementary nor in competition, are not directed at the same consumers, and are not likely to originate from the same kind of undertakings.

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 found to be identical or similar are directed at both, the public at large and professionals.

The degree of attention is likely to be average.

c) The signs

PEP&CO	pepProducts
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 implies that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57)

The differing elements ‘products’ and ‘&CO’ are attributed a concept by, amongst others, the English-speaking part of the public, for whom these elements are void of distinctive character (see explanations below). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since it is considered to be the best-case-scenario for likelihood of confusion to arise.

Consumers will clearly identify that the signs are formed by various elements with individual concepts, and will mentally dissect the earlier mark into ‘PEP’, ‘&’ and ‘CO’, and the contested sign into ‘pep’ and ‘Products’.

‘PEP’ is meaningless, ‘&’ means ‘and’, and ‘CO’ is the abbreviation for ‘Company’, ‘&CO’ can be understood as indicating that someone/something called ‘PEP’ is accompanied by or forms part of a group. The word ‘Products’ is the English term used to refer to, inter alia, the goods/services that a company produces/offers.

Taking into account the definitions above, and the kind of goods and services involved, the words ‘PEP’/’pep’ are of average distinctive character, since they are meaningless and therefore do not give consumers any information as regards the characteristics of the goods and services involved. The elements ‘&CO’ and ‘Products’ are totally void of distinctive character, since ‘&CO’ is perceived as a reference to the kind of company/producer of the goods and services, and is not useful for consumers trying to identify their commercial origin, and ‘Products’ is a descriptive term for any kind of goods/services offered.

According to the above, ‘PEP’/’pep’ are the only distinctive elements in both marks, and consumers will concentrate their attention on them, in order to identify their commercial origin.

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. This reinforces the impact of the coinciding beginnings ‘PEP’/’pep’ in the signs under comparison.

Visually and aurally, the signs coincide in the distinctive beginnings ‘PEP’/’pep’ and differ in the endings ‘&CO’ and ‘Products’. Following the explanations above on the distinctiveness or otherwise of each of the elements forming the signs, and the position they occupy within them, it is considered that the marks are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coinciding beginnings are meaningless, and the conceptual differences are found in the non-distinctive endings. Even if their impact is reduced, they cannot be ignored. Based on this, it is considered that the signs are conceptually not similar.

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, despite the presence of the non-distinctive ‘&CO’, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services compared are partly identical, partly similar and partly dissimilar. They are directed at both, the public at large and professionals, who will pay an average degree of attention.

The signs are visually, aurally and conceptually highly similar. The coincidences are found in the distinctive beginnings and the differences in the non-distinctive endings.

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 this case, it is considered that the coincidences between the marks, together with those parts of the goods and services involved that are identical or similar, are clearly enough to outweigh the dissimilarities between them.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The opponent refers to previous decisions of the Office to support its arguments in relation to the comparison of goods and services. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent cannot be used to contradict the findings of the similarity tool (www.euipo.europa.eu/sim/), in line with which the comparison of goods and services in section a) above has been carried out, since they refer to signs and/or goods and services which are different from the ones involved. Therefore, the same reasoning cannot be followed, nor the same outcome reached.

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 No 13 505 748 for the word mark ‘PEP&CO’. 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.

The rest of the contested services 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 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

María Clara IBÁÑEZ FIORILLO

María del Carmen SUCH SANCHEZ

Marcel DOLIESLAGER

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.