OPPOSITION No B 3 048 380

Instytut Badawczo-Rozwojowy ‘Biogened’ Spółka z ograniczoną odpowiedzialnością, ul. Pojezierska 99, 91-342 Łódź, Poland (opponent), represented by WTS Rzecznicy Patentowi - Witek, Snieżko i Partnerzy, ul. Tamka 34/25, 00-355 Warszawa, Poland (professional representative)

a g a i n s t

Beauty Brands Concept Spółka z ograniczoną odpowiedzialnością, ul. Żytnia 19, 05-506 Lesznowola, Poland (applicant).

On 24/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 380 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 484 007 ‘HYDRO IN-PLOSION’. The opposition is based on Polish trade mark registrations No 168 599 for the word mark ‘HYDRAIN 2’ and No 277 475 for the word mark ‘HYDRAIN3 Ulga dla suchej skóry’. 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.

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 Polish trade mark registration No 168 599.

a) The goods

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

Class 3: Cosmetics; preparations for protection, care and beautification of the skin of the face, body, hands and feet, lips and nails; soaps and cleaning preparations; perfumery goods; essential oils; hair washing, styling, care, beautification and colouring preparations; dentifrices and mouthwashes.

The contested goods are the following:

Class 3: Cosmetics; skincare cosmetics; body cleaning and beauty care preparations; non-medicated beauty preparations; skin care preparations; exfoliants for the care of the skin; cosmetic moisturisers; cosmetics for use in the treatment of wrinkled skin; creams for firming the skin; skin whitening creams; skin conditioners; slimming aids [cosmetic], other than for medical use; lotions for cellulite reduction; creams for cellulite reduction; soaps; soaps for body care; non-medicated toilet soaps; soap free washing emulsions for the body; washing creams; washing liquids; wipes impregnated with a skin cleanser; skin cleansers [cosmetic]; exfoliants; exfoliant creams; body scrub; artificial tanning preparations; after sun moisturisers; make-up preparations; make-up removing preparations; nail polish; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; cuticle oil; nail care preparations; nail varnish removers; cosmetics for the use on the hair; hair preparations and treatments; hair moisturisers; hair preparations and treatments; shampoo; hair nourishers; styling lotions; styling lotions; tooth care preparations; after-sun lotions; sun-tanning gels; after-sun oils [cosmetics]; sun-tanning oils; sun-tanning gels; creams for tanning the skin; douching preparations for personal sanitary or deodorant purposes [toiletries].

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods 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 at issue are aimed at average consumers who display an average degree of attention (16/12/2015, T‑356/14, Kerashot, EU:T:2015:978, § 20‑25).

c) The signs

HYDRAIN 2	HYDRO IN-PLOSION
Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

According to the Polish Dictionary (see https://sjp.pwn.pl/szukaj/hydro.html) the element ‘HYDR(O)’, which constitutes the beginning of the marks under comparison, will be perceived by the relevant public as a prefix used to indicate water, liquid or fluid. It is therefore reasonable to assume that the relevant public will perceive this as a reference to the characteristics of the relevant goods, namely that the cosmetics are in liquid form or that they provide sufficient liquid or moisture for consumers’ skin. Therefore, it is non-distinctive.

For the general public in Poland ‘IN-PLOSION’ is meaningless and distinctive to an average degree for the designated goods. Considering the above, this is the only distinctive element in the contested sign.

The number ‘2’ in the earlier mark most likely will be perceived by a vast majority of the relevant public as a reference to either 2nd generation or a 2nd step in a process of using multiple products. Therefore, this element is non-distinctive for the goods at issue.

Visually, the marks differ in the ‘-AIN 2’ of the earlier mark and ‘-O IN-PLOSION’ of the contested sign. The marks coincide in their first parts ‘HYDR-’. Taking into account that the differences between the signs pertain to distinctive elements (except the number ‘2’, as referred to above), the signs are considered similar to at best a low degree.

Aurally, the contested mark will be pronounced as ‘hy/dro/in/plo/sion’ and the earlier one as ‘hy/dra/in/dwa’. Although they coincide in their first letters, the contested sign is articulated in a longer manner. Moreover, the sequence of syllables, rhythm and intonation of the signs is quite different. Therefore, the degree of aural similarity is at most very low, taking into account the distinctiveness issues.

Conceptually, neither of the signs as a whole has a meaning for the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Even though the element ‘HYDR(O)’ in both marks and the number ‘2’ in the earlier mark will be associated with the meanings referred to above, this has no impact on the conceptual comparison of the signs because these elements are non-distinctive and cannot indicate the commercial origin of the goods in question.

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 in question from the perspective of the public in the relevant territory. Even considering what was stated in section c) of this decision, the distinctiveness of the earlier mark as a whole is normal.

e) Global assessment, other arguments and conclusion

It has been assumed in previous sections of the decision that the contested goods are identical to the opponent’s goods. It has also been concluded that the signs have some visual and aural similarities, though there are also significant visual, aural differences between the marks. The earlier mark is considered to have a normal degree of distinctiveness.

Although the coinciding letters are placed at the beginning of the signs, and the first component of marks may be more likely to catch the consumer’s attention than its following components, this consideration cannot apply in all cases. It cannot, in any event, undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them.

Taking into account that the signs have at best a low degree of visual similarity and at most, low level of aural similarity, and the earlier mark has no more than a normal distinctive character, there is no likelihood of confusion on the part of the relevant public, even considering the identity of the goods.

The similarities are only letters that are non-distinctive while the differences are clearly perceptible and comprise distinctive elements. Therefore, these differences are sufficient to enable the consumer to safely distinguish between the signs even taking into account the identity of the goods.

The opponent’s arguments regarding the similarities between the signs are not convincing and are not able to overturn the above conclusion.

Therefore, the Opposition Division considers that the similarities between the signs are not sufficient to lead to a likelihood of confusion or association on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark ‘HYDRAIN3 Ulga dla suchej skóry’. This mark is even less similar to the contested mark than the previously compared earlier mark. This is because it contains additional words, namely ‘Ulga dla suchej skóry’, which are not present in the contested trade mark, although they are not very distinctive (they mean ‘a relief for dry skin’ in Polish). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Klaudia MISZTAL

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.