OPPOSITION No B 3 051 045

Pai Skincare, 18 Colville Road, W3 8BL London, United Kingdom (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, B16 8QQ Birmingham, United Kingdom (professional representative)

a g a i n s t

Beauty System Pharma, Via G. Berchet 16, 35131 Padova, Italy (applicant).

On 28/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 045 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 652 801 ‘HAPAI’, namely against all the goods and services in Classes 3, 5, 35 and 44. The opposition is based on United Kingdom trade mark registration No 2 590 111 and European Union trade mark registration No 11 119 088, both for the word mark ‘PAI’ and covering the same list of goods and services in Classes 3, 4, 35 and 44. The opponent invoked Article 8(1)(b) EUTMR. Initially, the opponent also invoked Articles 8(4) and 8(5) EUTMR and based the opposition also on United Kingdom non-registered trade mark ‘PAI’ used for organic skincare products; skincare spa services; retail of skincare products, but in its observations of 03/10/2018, it withdrew the opposition based on these grounds.

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: Skin care products [cosmetic]; skincare preparations; non-medicated toilet preparations; cosmetics; toiletries; beauty products; soaps; preparations for body care [toiletries]; preparations for care of the hair [toiletries]; preparations for care of the nails [cosmetic]; preparations for care of the nails [toiletries]; preparations for care of the skin [cosmetic]; preparations for care of the skin [toiletries]; cleansing creams; face scrubs (non-medicated-); facial scrubs; facial scrubs [cosmetic]; facial toners [cosmetic]; skin toners; moisturizers [cosmetic]; body moisturizers; skin moisturizers; moisturizers; skin conditioners; massage creams, not medicated; massage lotions and oils; moisturising lotions and creams; facial cleansers; skin cleansers and hydrators; beauty serums; beauty masks; cleansing facial masks; face and body masks; face creams; body creams; body lotions; shaving creams; after shave lotions and gels; perfumes; colognes; essential oils; fragrances; eau de toilette; perfumery; deodorants; anti-perspirants [toiletries]; talcum powders; toothpaste; products for mouth care (non-medicated-); hair care products; bath gels; bath salts; bath oils; shower gels; shampoos; conditioners for treating the hair; hair grooming preparations; foundation; face powder; lipstick; lip balm; eye cream; eye gels; eye makeup; eye makeup remover; make-up remover; nail care preparations; nail polish; suntanning and sunscreening preparations; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; make-up removal cloths impregnated with cosmetics.

Class 4: Candles; tealights; wicks; wicks for lighting.

Class 35: Advertising; business management; the promotion and management of shops; business consultancy, information or advice; marketing services; distribution of samples; retail services, namely the providing of services enabling customers and consumers to conveniently view, select and purchase personal care products online, in retail outlets or through other points of sale; online retail sales services offered via a global communication network, mail order retail services, retail store services, all connected with the sale of personal care products namely skin care products, skincare preparations, cosmetics, toiletries, beauty products, soaps, preparations for the body, hair, scalp, skin, eyes and nails, cleansing creams, scrubs masques, toners, conditioners and moisturizers, body massage creams and oils, moisturising creams, lotions, cleansers, serums and toners, facial masks, face creams, body creams, body lotions, shaving creams, after shave creams and lotions, skin toners, perfumes, colognes, essences, essential oils, fragrances, eau de toilette, scented room fragrances, incense sticks, potpourri, perfumery, home fragrance products, deodorants, anti perspirants, talcum powders, toothpaste, mouth care products, hair care products, bath gels, bath salts, bath oils, shower gels, shampoos, conditioners, grooming preparations, foundation, face powder, lipsticks and lip balms, lip make-up, eye care products, eye makeup, make-up remover, nail care preparations, nail polish, sunscreen and suntan oils and creams, cotton sticks for cosmetic purposes, cotton wool for cosmetic purposes, muslin cloths for cosmetic purposes, parts, fittings and accessories for the foregoing.

Class 44: Medical and healthcare services; advisory services relating to beauty treatment; beauty care for human beings; beauty therapy treatments; salons (beauty -); spa services; manicure services; massage services; aromatherapy services; physical therapy; mental health services; hypnotherapy; psychotherapy; meditation services; acupuncture; aromatherapy services; chiropractic services; osteopathy; health care relating to homeopathy; physiotherapy.

The contested goods and services are the following:

Class 3: Cosmetics.

Class 5: Pharmaceutical drugs.

Class 35: Online retail services relating to cosmetics.

Class 44: Cosmetic treatment.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise such as doctors and pharmacists.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. For goods which affect one’s state of health, such as pharmaceuticals, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

c) The signs

PAI	HAPAI
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom and 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).

All of the marks are word marks.

The earlier marks, ‘PAI’, carry a meaning for a part of the relevant public. Specifically, in Portuguese, the term means ‘father’, whilst, in Latvian and Estonian, it refers to ‘caress’ and ‘fondling’. For the remaining part of the public, the word lacks any clear meaning. In both scenarios, the earlier marks are distinctive to an average degree.

The contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in letter sequence ‘PAI’ which is the whole of the earlier marks and is the second syllable in the contested mark. However, they differ in the first syllable ‘HA’ of the contested mark which has no counterpart in the earlier signs. The difference between the signs is placed at the beginning, and 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.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in letter sequence ‘PAI’ which is the whole of the earlier marks and is the second syllable in the contested mark. However, they differ in the first syllable of the contested mark which has no counterpart in the earlier signs, namely ‘HA’ or ‘A’ if the letter ‘H’ is mute as for example in Spanish. The rhythm and intonation of the marks are different. The contested sign has five letters and is divided into two syllables. This is almost double that of the earlier marks which have only three letters and one syllable.

Therefore, the signs are aurally similar to an average degree for part of the public, such as those who speak Spanish and to a low degree for the rest of the public.

Conceptually, for part of the public such as Estonian-, Latvian- or Portuguese-speakers, only the earlier marks will be associated with a concept, whilst the contested sign is meaningless. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for those parts of the relevant public.

For the rest of the public, neither of the signs has a 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.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks must be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 goods and services are assumed to be identical and target the public at large and business customers with specific professional knowledge or expertise such as doctors and pharmacists. The degree of attention may vary from average to high.

The signs coincide visually and aurally in the letter sequence ‘PAI’ which is the entirety of the earlier marks and is the second syllable in the contested mark. The difference between the signs consists in the first syllable ‘HA’ of the contested mark which has no counterpart in the earlier sign. The fact that the signs have different letters at the beginning is very important as consumers pay more attention to the beginnings of signs. Moreover, the earlier mark is a short sign and the shorter a sign, the more easily the public is able to perceive all of its single elements and small differences (two letters in the present case) may frequently lead to a different overall impression. For part of the public, as detailed in section c), the signs are not conceptually similar, whilst for the other part of the public the conceptual aspect does not influence the assessment of the similarity of the signs as none of the signs will be associated with a meaning.

Although the signs coincide in some letters, the Opposition Division finds, when comparing the marks overall, that there are sufficient differences to outweigh the similarities between them. Even taking into account the principle of imperfect recollection, consumers are unlikely to confuse the marks, especially that part of the public which displays a higher degree of attention.

The opponent refers to previous decisions of the Office to support its arguments, (01/02/2000, B 94 997). 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Solveiga BIEZA

Francesca DRAGOSTIN

Birute SATAITE- GONZALEZ

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.