OPPOSITION No B 3 051 928

Jose Oriol Polo Ribas, Ticià, 43, 08035 Barcelona, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Delia Cosmetics Sp. z o.o., ul. Leśna 5, 95‑030 Rzgów, Poland (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 21/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 928 is upheld for all the contested goods.

2. European Union trade mark application No 17 662 305 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods (Class 3) of European Union trade mark application No 17 662 305 for the figurative mark . The opposition is based on, inter alia, Spanish trade mark registration No 1 612 214 for the figurative mark and Spanish trade mark registration No 2 105 223 for the figurative mark .The opponent invoked Article 8(1) (b) EUTMR.

Preliminary remark

The Opposition Division notes that the opposition is based on, inter alia, an earlier right that is at risk (under cancellation), namely European Union trade mark registration No 11 630 548. However, the Office does not find it appropriate to suspend the opposition proceedings and the examination will continue on the basis of the other marks claimed by the opponent.

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 both Spanish trade marks on which the opposition is based:

• Spanish trade mark registration No 1 612 214 for the figurative mark ;

• Spanish trade mark registration No 2 105 223 for the figurative mark .

The Opposition Division finds it appropriate to examine the proof of use in relation to the opponent’s Spanish trade mark registration No 1 612 214.

The date of filing of the contested application is 05/01/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 05/01/2013 to 04/01/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was 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 on which the opposition is based, namely the following:

Spanish trade mark registration No 1 612 214

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery products, essential oils, cosmetics, hair lotions; dentifrices.

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 13/12/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 18/02/2019 to submit evidence of use of the earlier trade marks. On 18/02/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Annexes 1-5: several invoices issued by Dermofarmacia S.A. to different clients in different cities of Spain, dated from 2013 to 2018, which relate to ‘KAMEL’ products. The product prices and the names of the clients are shown. The products include KAMEL DERMO AVENA 750 cc, 144 units; PROTECTOR LABIAL KAMEL, 269 units; KAMEL DERMO FRUITS COCO 750 cc, 12 units, ACEITE CORPORAL AVENA KAMEL 500 ml, 46 units; KAMEL CHAMPÚ, etc.

• Annex 6: undated pictures of ‘KAMEL’ products showing their packaging in Spanish. The products shown are, for example, shampoos, lipstick, lip balms [non-medicated], face and body creams for cosmetic use, soaps, and others hygiene, care and cosmetics products. The mark is clearly depicted as, inter alia, , , , .

• Annexes 7 and 8: catalogues from the opponent of ‘KAMEL’ for hygiene care products, cosmetics and beauty products for hair, for the Spanish market. The mark is clearly depicted as or ; there are also some indications and instructions regarding the products, in Spanish.

• Annex 9: printout from the Internet and screenshots of ‘KAMEL’ products, from the opponent’s website www.kamel.es dated within the relevant period (2014), and another from the website www.bueni.es/salud-belleza/kamelcosmetica within the relevant period (2014), showing the earlier marks ‘KAMEL’ on products for sale. These documents are in Spanish. The mark is reproduced in these documents.

Analysis of the evidence

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).

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office. The documents that have not been translated are considered relevant for the present proceedings as they are invoices, catalogues including photos of products bearing the mark ‘KAMEL’, packaging and, as they are of a self-explanatory nature, the Opposition Division considers that there is no need to request a translation.

The evidence submitted, in particular the invoices, shows that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (Euro) and the addresses in different parts of Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents submitted provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Although the evidence is not particularly exhaustive in terms of the commercial volume, the purpose of the proof of use assessment is not to evaluate the commercial success of a brand. What is relevant is that the opponent shows that the mark has been used on the market with the purpose of creating and/or preserving an outlet for its goods.

The invoices show that a wide range of ‘KAMEL’ branded goods have been sold to various clients during the entire relevant period. The prices and quantities of the invoices are significant. Furthermore, the invoices display frequent sales of the goods. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

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.

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 national 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.

It should be noted that the use of a registered word mark (or any other mark) together with a generic indication of the product or descriptive term will be considered as use of the registered mark. Additions that are just indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods/rendering of the services, do not in general constitute use of a variant but use of the mark itself.

In the invoices, the elements added, such as, ‘dermo’, ‘protector labial’ (lip balm), ‘aceite corporal’ (body oil) or ‘champú’ (shampoo) are descriptive of the characteristics of the goods. The element ‘dermo’ is perceived as an abbreviation of the term ‘dermatología’ (dermatology) and refers to the origin or composition of the goods concerned. The other terms describe the components of the goods in question, as minerals are commonly used in cosmetics. Consequently, additional elements like these do not alter the distinctive character of the mark.

Moreover, the Court took the view that, if no colour is claimed in the application, the use of different colour combinations must be allowed, as long as the letters contrast against the background. Accordingly, representations of the sign which do not alter the arrangement of the letters, or the contrast of colour, constitute genuine use. This applies in the present case as the distinctive character of the earlier mark is still based on the large black letters ‘KAMEL’.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods 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 light of the above, the evidence shows genuine use of the trade marks for the following goods in Class 3: soaps; cosmetics, hair lotions. These goods are contained in the list of goods of Spanish trade mark registration No 1 612 214.

Therefore, the Opposition Division will only consider the abovementioned goods for this mark 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 for which the use has been proven are the following:

Class 3: Soaps, cosmetics, hair lotions.

The contested goods are the following:

Class 3: Cosmetics; colouring preparations for cosmetic purposes; eyebrow colors; eyelash dye; hair preparations and treatments; cosmetics for the use on the hair; hair grooming preparations; hair emollients; preparations for setting hair; hair tinting preparations; hair glaze; hair dyes; wave-set lotions; hair dyeing preparations; hair-waving preparations; hair bleaching preparations; neutralizing hair preparations; shampoos; hair conditioners; hair straightening preparations; hair treatment preparations.

The contested cosmetics are identically included in the opponent’s specification.

The contested colouring preparations for cosmetic purposes; eyebrow colors; eyelash dye are included in the opponent’s cosmetics. They are identical.

The rest of the contested goods, cosmetics for the use on the hair; hair grooming preparations; hair emollients; preparations for setting hair; hair tinting preparations; hair glaze; hair dyes; wave-set lotions; hair dyeing preparations; hair-waving preparations; hair bleaching preparations; neutralizing hair preparations; shampoos; hair conditioners; hair straightening preparations; hair treatment preparations are identical to the opponent’s hair lotions or cosmetics, as they overlap with, or are included in, the opponent´s goods.

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 are identical and the relevant public is the public at large with an average level of attention (16/12/2015, T‑356/14, Kerashot / K KERASOL, EU:T:2015:978, § 23). As regards some of the goods such as hair lotions, it must be held that they are everyday consumer goods aimed at the general public, but also at professionals in the sector, namely hairdressers.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Although the first letter of the earlier mark is incomplete, the mark contains the legible letters ‘KAMEL’ in stylised white upper-case letters on a black rectangular background.

The contested sign depicts the letters ‘Cameleo’ in black standard characters.

Neither of the marks have any meaning, as they are not descriptive or allusive to the extent that their distinctiveness would be affected and they are not otherwise weak in relation to the goods in question, therefore, they are distinctive.

Moreover, the black square is banal and is unable to detract from the dominance of the component ‘KAMEL’ (12/06/2018, T‑136/17, cotecnica MAXIMA (fig.) / MAXIM Alimento Superpremium (fig.), EU:T:2018:339, § 33).

When comparing figurative signs in terms of their verbal elements, the Office considers them similar when they share a significant number of letters in the same position and when they are not highly stylised or when they are stylised in the same or a similar manner. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (18/06/2009, T‑418/07, LiBRO, EU:T:2009:208; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C‑42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed).

Visually, the marks share the letters ‘AMEL’ and differ in their first letter and ending of the contested sign (eo). The stylisation of the verbal elements does not preclude visual similarity because the typeface of the verbal elements is legible, although ‘KAMEL’ of the earlier mark is quite stylised.

In light of the foregoing, the signs are visually similar to a low degree.

Aurally, the pronunciation coincides in the sound of /kamel/ identically contained in both signs. It differs in the remaining letters /eo/ of the contested sign.

The element /kamel/ at the beginning of the contested sign will be pronounced clearly and will be identified as an element of phonetic similarity (23/05/2019, T‑837/17, SkyPrivate (fig.) / SKY et al., EU:T:2019:351, § 44). The fact that the signs have a different length and number of syllables does not change that phonetic similarity, since they share their beginnings (16/05/2019, T‑354/18, SkyFi / SKY et al., EU:T:2019:33, § 83). It follows that phonetically the signs have an above-average degree of similarity.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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.

5. Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The goods at issue are identical. The marks have been deemed visually similar to a low degree and aurally similar to an above-average degree. Furthermore, the signs are conceptually neutral. The earlier trade mark has a normal degree of distinctive character for the goods at issue and the relevant public’s degree of attention is average.

The similarity mentioned is due to the component ‘K(C)AMEL’. The differences between the signs do not prevent them from being visually and aurally similar, whereas there are no conceptual differences that could help to distinguish between the signs.

It is also well established case-law that the average consumer normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52) and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (16/7/2014, T‑324/13, Femivia, EU:T:2014:672, § 48).

Considering all the above, and applying the interdependence principle together with the fact that all of the goods are identical, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 612 214.

It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Peter QUAY

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.