OPPOSITION No B 3 044 313

Mystic Nails Hungary Bt., Árvíz utca 61, 6724 Szeged, Hungary (opponent)

a g a i n s t

Nails 4 Us - International S.A., Rua De Inglaterra, 340, 2765-013 Estoril, Portugal (applicant), represented by Luís Mendes, Av. Álvares Cabral, n.º 84 - 2.º, 1250-018 Lisboa, Portugal (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 044 313 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 488 719 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 488 719 for the figurative mark . The opposition is based on European Union trade mark registration No 11 700 631 for the word mark . The opponent invoked Articles 8(1)(a) and (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.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 16/11/2017.

The earlier European Union trade mark registration No 11 700 631 was registered on 26/08/2013. Therefore, the request for proof of use is inadmissible.

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 on which the opposition is based are the following:

Class 3: Nail polish; goods for the care of the nails; nail tips (cosmetics); false nails; pedicure preparations; hand oils (non-medicated- ); hand lotion (non-medicated- ); nail hardeners (cosmetics); creams for the nails; cuticle oils; nail varnish remover; nail varnish; nail care preparations.

Class 8: Manicure implements; pedicure implements; nail files.

The contested goods and services are the following:

Class 3: Beauty care cosmetics; cosmetics in the form of creams; make-up; body deodorants [perfumery]; perfumery; perfumes; pedicure preparations; skin, eye and nail care preparations; nail glitter; nail cosmetics; nail strengtheners; nail gel; eyelashes; false eyelashes; false nails; false toenails; nail varnish for cosmetic purposes.

Class 44: Beauty consultancy; beauty care of feet; beauty care for human beings; beauty salon services; eyelash tinting services; eyebrow tinting services; nail care services; beauty care; manicuring; manicure and pedicure services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Nail care preparations; false nails; nail varnish for cosmetic purposes are identically contained in both lists of goods (including synonyms).

The contested beauty care cosmetics; cosmetics in the form of creams; pedicure preparations; nail glitter; nail cosmetics; nail strengtheners; nail gel are included in the broad category of, or overlap with, the opponent’s goods for the care of the nails. Therefore, they are identical.

The contested false toenails are included in the broad category of the opponent’s false nails. Therefore, they are identical.

The contested skin care preparations include, as a broader category, the opponent’s hand oils (non-medicated-). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested make-up; body deodorants [perfumery]; perfumery; perfumes; eye care preparations are similar to the opponent’s hand oils (non-medicated-), as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested eyelashes; false eyelashes are similar to the opponent’s nail tips (cosmetics) and false nails, as they may coincide in producer, relevant public and distribution channels.

Contested services in Class 44

The contested beauty consultancy; beauty care for human beings; beauty salon services; beauty care are similar to the opponent’s goods for the care of the nails, as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested beauty care of feet; pedicure services are similar to the opponent’s pedicure preparations, as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Likewise, the contested nail care services; manicuring; manicure services are similar to the opponent’s nail care preparations, as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested eyelash tinting services; eyebrow tinting services are similar to a low degree to the opponent’s goods for the care of the nails, as they may coincide in producer/provider, relevant public and distribution channels.

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 (to varying degrees) are directed at the public at large. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased/provided.

c) The signs

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 verbal elements ‘MYSTIC NAILS’ in the earlier mark and ‘THE NAILMAKERS’ in the contested sign are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the French- and Spanish-speaking part of the public.

The earlier mark is a figurative mark consisting of the letters ‘MN’ in a stylised typeface in bold upper case letters, being the last stroke of the letter ‘M’ coinciding with the first stroke of the letter ‘N’. Below these letters, the words ‘MYSTIC NAILS’ appear in slightly stylised uppercase letters.

The contested sign is a figurative mark consisting of the letters ‘NM’ in stylised typeface in upper case letters and also with a coincidence of the last stroke of the letter ‘N’ with the first stroke of the letter ‘M’. Below these letters there are the words ‘THE NAILMAKERS’ in stylised uppercase letters with the letters ‘N’ and ‘M’ in bold.

The element ’MN’ of the earlier mark has no meaning in relation to the relevant goods for the relevant public and is, therefore, distinctive.

The word ‘MYSTIC’ of the earlier mark is an English word which refers to something esoteric or mysterious and will be associated with the same meaning for the relevant public, due to the similarity to the equivalents words in French, ‘mystique’, and in Spanish, ‘místico’. Since this word does not have any meaning in relation to the relevant goods, this word is distinctive.

The word ‘NAILS’ has no meaning for the relevant public and is, therefore, distinctive.

The element ‘NM’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘THE NAILMAKERS’ does not have any meaning either for the relevant public and is also distinctive.

The element ‘MN’ in the earlier mark overshadows the other verbal elements of the sign by virtue of its central position and size. This element is the visually dominant element of the earlier mark.

Likewise, the element ‘NM’ in the contested sign is the dominant element of the sign, as it is the most eye-catching for the same reasons as in the previous paragraph regarding the earlier mark.

Visually, the marks coincide in the letters which constitute the dominant element in both signs, that is the letter ’M’ and the letter ‘N’. The marks also coincide in the letters ‘NAIL’ of the last words in both signs. Moreover, the signs have the same structure in two levels with the dominant element in the first level composed of the letters ‘MN’ vs. ‘NM’ in uppercase with a similar typeface and with the coincidence of the last stroke of the first letter with the first stroke of the last letter. The second level of the signs includes non-dominant verbal elements in uppercase displayed in a much smaller size compared to the letters above. However, the marks differ in the order in which the common letters ‘M’ and ‘N’ are placed and in the word/letters ‘MYSTIC ****S’ of the earlier mark and ‘THE ****MAKERS’ of the contested sign, which correspond to non-dominant elements in both signs.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /M/ and /N/, present identically in both signs which correspond to the dominant elements in both signs. The pronunciation also coincides in the sound of the letters /NAIL/ included in the non-dominant verbal elements in both signs. The pronunciation differs in the order in which the dominant elements are read, as well as, in the rest of the sounds of the letters of the non-dominant elements of the signs, that is, the word/letters /MYSTIC****S/ of the earlier mark and /THE****MAKERS/ of the contested sign.

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

Conceptually, although the public in the relevant territory will perceive one meaning in the earlier mark, 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.

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. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods and services have been found partly identical and partly similar to varying degrees to the opponent’s goods. They are directed at the public at large whose level of attention is considered to vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to a high degree, aurally similar to an average degree and they are not conceptually similar.

From a visual point of view the signs have the same structure in the sense of having a dominant element composed of the same two letters, and that, despite its different order, they are displayed together in the same way with a similar typeface. These dominant elements are placed above some other verbal elements depicted in uppercase of a much smaller size with some of the letters also in common. Therefore, the impression created by the relevant consumer is very similar.

In addition to the above, it is considered that the visual aspects of the marks are more significant than the aural ones in respect of the relevant goods and services in Classes 3 and 44. The goods in Class 3 are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). The services in Class 44 are also usually chosen visually, e.g. after seeing an offer for the services on the Internet or on a leaflet or on a shop sign in the street. Consequently, the fact that the marks have a high degree of visual similarity has a particular importance in the present case.

Therefore, in spite of the differences in some of the word elements and letters, there is a likelihood of confusion, because the visual coincidences are overwhelming, as explained above.

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).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those services that are similar even only to a low degree. The high visual similarity of the signs outweighs the low similarity of these services.

Considering all the above, there is a likelihood of confusion on the part of the French- and Spanish-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 11 700 631. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

The Opposition Division

Vít MAHELKA

Victoria DAFAUCE MENENDEZ

Chantal VAN RIEL

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.