OPPOSITION No B 3 047 061

Tomil s.r.o., Gen. Svatoně 149/IV, 566 01 Vysoké Mýto, Czech Republic (opponent), represented by Rott, Růžička & Guttmann a Spol., Vyskočilova 1566, 140 00 Praha 4, Czech Republic (professional representative)

a g a i n s t

TB Comércio de Presentes ltda., Rua Colombia 182, Jardim América, 01438-000

Sao Paulo, Brazil (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 061 is partially upheld, namely for the following contested goods:

Class 3: Perfumery; Ethereal oils; Cosmetics; Hair lotions; Perfumes; Perfumed soaps; Cosmetic soaps; Facial soaps; Cakes of toilet soap; antiperspirants [toiletries]; Cosmetic creams; Shampoos; Make-up for the face and body; Make-up preparations for the face and body.

2. European Union trade mark application No 17 515 719 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 515 719 for the word mark ‘TANIA BULHÕES’, namely against all the goods in Class 3. The opposition is based on Czech trade mark registration No 204 717 and international trade mark registration No 704 882 designating Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia, all for the word mark ‘TANIA’. 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.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Czech trade mark registration No 204 717 and international trade mark registration No 704 882 designating Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia, all for the word mark ‘TANIA’.

The date of filing of the contested application is 23/11/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Czech Republic, Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia from 23/11/2012 to 22/11/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Class 3:  Soaps, liquid soaps, body soaps, shampoos, conditioners, bath foams.

Class 5: Air fresheners.

According to Article 10(3) EUTMDR the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 12/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 17/01/2019 to submit evidence of use of the earlier trade marks. This deadline was further extended at the request of the opponent and expired on 17/03/2019. On 05/03/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Item 1 – year 2012

• One invoice and one corresponding delivery note dated 11/12/2012 issued by the opponent to a client in the Czech Republic for goods described as TANIA Naturals nettle shampoo + herbal extracts 500ml and a wholesale quantity of 1140 pieces. The price is given in Czech korunas (Kč).

• Invoice dated 30/11/2012 and delivery note dated 29/11/2012 issued by FLEXON company to the opponent and the opponent’s purchase order of 23/11/2012 for back and front labels of TANIA nettle shampoo, for tens of thousands pieces.

• Cosmetic price list dated 04/06/2012 on which various types of TANIA shampoos are listed.

• Two purchase orders of opponent’s products, in Czech, dated 27/11/2012. The products listed include TANIA shampoos.

Item 2 – year 2013

• Two invoices, dated 23/01/2013 and 17/12/2013 issued by the opponent to clients in the Czech Republic for goods described as TANIA Naturals birch shampoo + herbal extracts 500ml, TANIA Naturals nettle shampoo + herbal extracts 1000ml, TANIA Naturals camomile shampoo + herbal extracts 1000ml, TANIA Naturals birch shampoo + herbal extracts 1000ml and corresponding delivery notes for wholesaling quantities of these products. The price is given in Czech korunas (Kč).

• Invoice dated 18/11/2013 and delivery note dated 07/11/2013 issued by a Czech company FLEXON to the opponent for TANIA nettle shampoo labels, for five thousand pieces and the opponent’s purchase order of 01/11/2013 for back and front labels of TANIA nettle shampoo, for ten of thousand pieces.

• Cosmetic price list dated 01/02/2013 on which various types of TANIA shampoos are listed.

• One purchase order of opponent’s products, in Czech. The products ordered include various TANIA shampoos.

• Opponent’s products catalogue, in Czech, dated 9/2013 in which TANIA shampoos appear .

Item 3 – year 2014

• Two invoices, dated 20/01/2014 and 09/12/2014 issued by the opponent to clients in the Czech Republic for goods described as TANIA Naturals birch shampoo + herbal extracts 500ml, TANIA Naturals nettle shampoo + herbal extracts 500ml and corresponding delivery notes for wholesaling quantities of these products. The price is given in Czech korunas (Kč).

• Invoice dated 31/03/2014 and delivery note dated 28/01/2014 issued by FLEXON company to the opponent for TANIA birch shampoo labels, for 20 thousand pieces and the opponent’s purchase order of 21/03/2014 for back and front labels of TANIA birch shampoo, for 20 thousand pieces.

• Cosmetic products price list and export cosmetics price list dated 22/04/2014 on which various types of TANIA shampoos are listed.

• Products catalogues, in Czech, of three shops: UNIKOM dated 28/04-16/05/2014, which include the offer of , Hruška dated 15/07-21/07/2014 which include the offer and JMB Moravske Budejovice dated 11-24/05/2014, which include the offer .

• Opponent’s products catalogue, in Czech, dated 10/2014, in which TANIA shampoos appear

Item 4 – year 2015

• Two invoices, dated 22/01/2015 and 23/12/2015 issued by the opponent to clients in the Czech Republic for goods described as TANIA 2-in-1 Every Day shampoo and conditioner 500ml, TANIA Naturals nettle shampoo + herbal extracts 1000ml, TANIA Naturals camomile shampoo + herbal extracts 1000ml TANIA Naturals birch shampoo + herbal extracts 100ml and corresponding delivery notes for wholesaling quantities of these products. The price is given in Czech korunas (Kč).

• Invoice dated 30/11/2015 and delivery note dated 26/11/2015 issued by FLEXON company to the opponent for TANIA birch shampoo labels, and the opponent’s purchase order of 19/11/2015 for back and front labels of TANIA nettle and camomile shampoo, for tens of thousands pieces.

• Cosmetic products price list and export cosmetics price list dated 08/09/2015 on which various types of TANIA shampoos are listed.

• One purchase order of opponent’s products, in Czech. The products listed include various types of TANIA shampoos.

• Products catalogues, in Czech, of two shops: COOP JEDNOTA BOSKOVICE, dated 02/09-15/09/2015, which include the offer of , Hruška dated 24/03-30/03/2015 which include the offer

• Opponent’s products catalogue dated 2/2015, in Romanian, in which TANIA shampoos appear .

Item 5 – year 2016

• Two invoices, in Czech, dated 03/02/2016 and 06/12/2016 issued by the opponent to clients in the Czech Republic for various types of TANIA shampoos and corresponding delivery notes for wholesaling quantities of these products. The price is given in Czech korunas (Kč).

• Invoice dated 30/08/2016 and delivery note dated 25/08/2016, in Czech, issued by FLEXON company to the opponent for TANIA camomile shampoo labels, and the opponent’s purchase order of 17/08/2016 for back and front labels of TANIA camomile shampoo, for ten of thousand pieces.

• Cosmetic products price list and export cosmetics price list dated 08/09/2015 on which various types of TANIA shampoos are listed.

• One purchase order of opponent’s products, in Czech, undated. The products listed include various types of TANIA shampoos.

• Products catalogues, in Czech, of two shops: JIP, dated 24/08-04/09/2016, which include the offer of , GREY dated 27/06-24/07/2016 which include the offer

• Opponent’s products catalogue dated 09/2016, in Czech, in which TANIA shampoos appear .

Item 6 – year 2017

• Two invoices, in Czech, dated 09/02/2017 and 16/11/2017 issued by the opponent to clients in the Czech Republic for various types of TANIA shampoos and corresponding delivery notes for wholesaling quantities of these products. The price is given in Czech korunas (Kč).

• Invoice dated 16/10/2017 and delivery note dated 12/10/2017, in Czech, issued by FLEXON company to the opponent for TANIA birch shampoo labels, and the opponent’s purchase order of 05/10/2017 for back and front labels of TANIA birch shampoo, for thousands of pieces.

• Cosmetic products price list dated 10/10/2017 and export cosmetics price list dated 27/02/2017 on which various types of TANIA shampoos are listed.

• One purchase order of opponent’s products, in Czech, undated. The products listed include various types of TANIA shampoos.

• Products catalogues, in Czech, of DROGERIE Ústí, dated 01/05-31/05/2017, which include the offer of .

• Opponent’s products catalogue dated 10/2017, in Czech, in which TANIA shampoos appear .

Place of use

The invoices, price lists and product flyers show that the place of use is the Czech Republic. This can be inferred from the language of the documents (Czech), the currency mentioned (Czech korunas) and some addresses in the Czech Republic. This was, moreover, contented by the opponent in its submission of 05/03/2019:

‘Goods bearing the TANIA trademark are sold in a number of European Union countries. In view of the fact that proper use of the trademark must be assessed irrespective of the borders of the individual EU countries, we submit documents only from the Czech Republic.’

Therefore, the evidence relates to the relevant territory of earlier Czech trade mark registration No 204 717.

However, there is not sufficient evidence regarding the remaining territories, namely the countries designated under international trade mark registration No 704 882 (Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia).

The case-law of the European Court of Justice quoted by the opponent is only applicable to earlier European Union trade marks, not national trade marks.

According to Article 47(2) and (3) EUTMR, trade marks must be used in the territory where they are protected (European Union for EUTMs, the territory of the Member State for national marks or Benelux for Benelux marks and the territories of the relevant countries for international registrations)¹.

Just one catalogue in Romanian originating from the opponent is clearly not sufficient to prove use of the trade mark TANIA in the relevant territories of the earlier international trade mark registration (Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia).

Therefore, the evidence submitted does not prove genuine use of the earlier international trade mark registration No 704 882 designating Bulgaria, Croatia, Hungary, Poland, Romania and Slovakia and the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR, insofar as these earlier rights are concerned.

Time of use

The majority of the evidence is dated within the relevant period. Therefore, the time of use is also satisfactorily demonstrated.

Extent of use

The documents filed, namely the invoices, the delivery notes and the presence of the TANIA products in flyers of various supermarkets in the Czech Republic, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The opponent is not obliged to reveal the total volume of sales, turnover figures or its

market share. It is sufficient to establish that it has seriously tried to acquire a commercial position in the relevant market.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence shows that the mark has been used in a trade mark sense, in accordance with its function, affixed directly on the goods.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case the trade mark ‘TANIA’ is used in a slightly stylised dark blue/green characters, in title case. The stylisation of the sign does not alter the distinctive character of the mark as registered.

Therefore, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

However, it does not show genuine use of the trade mark for all the goods covered by it and on which the opposition is based, as listed above.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark only for the following goods:

Class 3: Shampoos.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted is sufficient to prove genuine use only of the earlier Czech trade mark registration and only for part of the goods for which it is registered.

Therefore, the Opposition Division will only consider the earlier Czech trade mark registration No 204 717 for the word mark ‘TANIA’, registered for shampoos in Class 3, in its further examination of the opposition.

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

The goods on which the opposition is based and for which use has been proven are the following:

Class 3: Shampoos.

The contested goods are the following:

Class 3: Perfumery; Ethereal oils; Cosmetics; Hair lotions; Perfumes; Perfumed soaps; Cosmetic soaps; Facial soaps; Cakes of toilet soap; Nail varnish; Dusting powder; Talcum powder, for toilet use; Body talcum powder; Antiperspirants [toiletries]; Cosmetic creams; Shampoos; Make-up for the face and body; Make-up preparations for the face and body.

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

Shampoos are identically contained in both lists of goods.

The contested cosmetics; hair lotions include, as a broader category, the opponent’s shampoos. Therefore they are identical.

The contested ethereal oils are similar to the opponent’s shampoos as they usually coincide in producer, relevant public and distribution channels.

The contested perfumery; perfumes; perfumed soaps; cosmetic soaps; facial soaps; cakes of toilet soap; antiperspirants [toiletries]; cosmetic creams; make-up for the face and body; make-up preparations for the face and body are similar to a low degree to the opponent’s shampoos, as they as they coincide in relevant public and distribution channels.

However, the remaining contested goods, namely nail varnish; dusting powder; talcum powder, for toilet use; body talcum powder are usually produced by different companies than the opponent’s shampoos. They have different natures, purposes and methods of use. They are neither in competition nor complementary (in the sense that one is indispensable for the use of the other). The mere fact that they target the same general public cannot lead to any degree of similarity. Therefore they are dissimilar.

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 found to be identical or similar (to varying degrees) are directed at the public at large.

The degree of attention will be average.

3. The signs

TANIA	TANIA BULHÕES
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 and the contested sign are both word marks, ‘TANIA’ versus ‘TANIA BULHÕES’.

The coinciding word ‘TANIA’ will be perceived by the relevant public as a foreign female given name, albeit rather unusual and infrequently used. As it is not related to the relevant goods, it is distinctive to an average degree.

The element ‘BULHÕES’ in the contested sign has no meaning for the relevant public. Taking into account its position after the element ‘TANIA’ which will be recognised as a female given name, it will be perceived as a foreign surname. As it is not related to the relevant goods, it is distinctive to an average degree.

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.

Visually and aurally, the signs coincide in the word/sound ‘TANIA’, being the reproduction of the entirety of the earlier mark as the initial element of the contested sign. The signs differ in (the sound of) the second verbal element of the contested sign, ‘BULHÕES’.

Therefore, taking into account the importance of the beginning of the signs, they are similar to an average degree.

Conceptually, as both signs convey a concept of the same foreign female given name and the contested sign additionally include meaningless element that will be perceived as a surname, they are similar to an average degree.

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.

The applicant argues that the element ‘TANIA’ is non-distinctive because it means ‘cheap’ in Polish and therefore will be perceived as information about the value of the products in question. However, since the relevant territory is the Czech Republic and, as explained above, the word ‘TANIA’ conveys only the meaning of a female given name, this argument of the applicant must be considered unfounded.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to varying degrees and partly dissimilar. The earlier sign is distinctive to an average degree. The signs are visually, aurally and conceptually similar to an average degree on account of the common element ‘TANIA’ perceived as a female given name, albeit unusual in the Czech Republic.

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.

When two signs share the same first name and one of the two also contains a surname, if this given first name is likely to be perceived as uncommon in the relevant territory, the likelihood of confusion cannot be excluded. In such cases, the presence of this uncommon element is likely to be the focus of the consumers’ attention so that they could be misled into attributing the same commercial origin to the goods/services concerned (05/10/2011, T‑421/10, Rosalia/Rosalia de Castro, EU:T:2011:565 §50-51).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark ‘TANIA BULHÕES’ as a sub-brand, a variation of the earlier mark ‘TANIA’, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark ‘TANIA’ has a low degree of distinctive character given that many trade marks include this element. In support of its argument the applicant refers to several trade mark registrations in the European Union and the Member States.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘TANIA’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of Czech trade mark registration No 204 717.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna BAKALARZ

Anna ZIOLKOWSKA

Kieran HENEGHAN

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.