OPPOSITION No B 3 050 426

Sephora, 41 Rue Ybry, 92200 Neuilly-sur-Seine, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Ming Xing Fang, NO.64, New village, Tongcun Town, Kaihua County, Zhejiang, People’s Republic of China (applicant), represented by Al & Partners S.r.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 11/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 426 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all of the goods of European Union trade mark application No 17 757 816 for the word mark ‘PHOERA’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 788 398 and French trade mark registration No 3 023 240, both for the word mark ‘SEPHORA’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 788 398.

a) The goods

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

Class 3: Cosmetics, toiletries (not for medical purposes), make-up preparations; cosmetic pencils.

The contested goods are the following:

Class 3: Lipsticks; lip gloss; cotton swabs for cosmetic purposes; beauty masks; nail varnish; false eyelashes; cosmetic kits; cosmetics; cotton wool for cosmetic purposes; cosmetic pencils; make-up removing preparations; eyebrow cosmetics; make-up powder; eyebrow pencils; lip balm; nail art stickers; lipstick cases; rouge; eye shadow; varnish-removing preparations.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Cosmetics; cosmetic pencils are identically contained in both lists of goods.

The contested lipsticks; lip gloss; beauty masks; nail varnish; cosmetic kits; make-up removing preparations; eyebrow cosmetics; make-up powder; eyebrow pencils; lip balm; nail art stickers; rouge; eye shadow; varnish-removing preparations are included on the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested false eyelashes are highly similar to the opponent’s cosmetics because they have the same purpose of enhancing the appearance of the human body and are complementary. They share distribution channels and are directed at the same consumers. They are also provided by the same manufacturers.

The contested cotton swabs for cosmetic purposes; cotton wool for cosmetic purposes are similar to the opponent’s cosmetics. The latter includes preparations for enhancing or protecting the appearance, odour or fragrance of the body, while cotton swabs/wool for cosmetic purposes are a soft mass of cotton used for applying liquids or creams to or removing them from the skin. Cotton swabs/wool for cosmetic purposes are used to apply cosmetics to or remove them from the face or body and are therefore complementary to cosmetics. In addition, these goods usually have the same producers, relevant public and distribution channels.

The contested lipstick cases are objects used to hold or store lipsticks. Therefore, they are complementary to the opponent’s cosmetics, which include lipsticks. Furthermore, they are offered through the same distribution channels (often next to each other). They target the same end user and are normally produced by the same manufacturers. Therefore, they are similar.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

SEPHORA	PHOERA
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).

In the present case, the Opposition Division finds it appropriate to focus the further examination of the signs in relation to the part of the relevant public in France since none of the signs have any meaning in French, and are therefore considered to have a normal degree of distinctiveness. More importantly, the evidence submitted regarding the reputation of the earlier mark is strongest for France, as will later on be explained in section d) of this decision. Consequently, this focus on the French public is the most advantageous scenario for the opponent.

It is remarked that 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, the letters of the contested sign, PHOERA, are in theory all included in the earlier mark. However, it must be noted that they are all represented in different positions, except for the last two letters ‘RA’.

While the coinciding sequence of the three letters ‘PHO’ appear at the beginning of the contested sign (‘PHOERA’), it is rather placed in the middle of the earlier mark (‘SEPHORA’). Furthermore, while on one hand the letter ‘E’ appears as the fourth letter in the contested sign (‘PHOERA’), it is on the other hand the second letter of the earlier mark (‘SEPHORA’). In addition, the earlier mark has an additional letter ‘S’ that is placed in the very beginning the mark, which has no counterpart in the contested sign.

Therefore, due to the coinciding letters being more or less shuffled around into rather different positions in the signs, the visual similarities of the signs are quite limited, also taking into account that the signs in fact have different beginnings.

Consequently, the signs are considered, at most, visually similar to a low degree.

Aurally, the earlier mark will be pronounced as ‘SE/FO/RA’ and the contested sign as ‘FO/E/RA’. The signs only coincide in their last syllable, ‘RA’. They differ in their remaining syllables. Although the syllable ‘FO’ (‘PHO’) is present in both marks, it does not contribute to any significant similarity between the signs as it is placed differently in both signs, namely at the beginning of the contested sign while in the middle of the earlier mark.

Therefore, the signs are only considered aurally similar to a low degree.

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.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with for some of the goods for which it is registered, namely cosmetics, toiletries (not for medical purposes), make-up preparations; cosmetic pencils in Class 3. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The contested sign was filed on 01/02/2018. Therefore, the opponent is required to show enhanced distinctive character of the earlier mark before this date.

The opponent submitted the following evidence for the EU:

Appendix I: Articles and presentations related to the Sephora brand and Company in France and in the European Union and also worldwide. Most of the documents are in French and are not translated except for a few titles. Among these documents is an issue of the French magazine ‘cosmétiquemag’ dated February 2018, with a special edition for Sephora having the translated title of ‘Sephora the success’, including in the same issue article with the translated title ‘And Sephora invented the world mark’, ‘France, the spearhead’. An article of the Magazine Challenges dated 08/01/2015, where a translation of a few words is made, is claimed to state that Sephora is a world leader in the distribution of beauty products, that it has a 30.5% of market shares in France, information of annular turnover number (the numbers for the turnover as well as the relevant years cited is unclearly presented in the submissions) and that the flagship on the Champs Elysees receives 3.5 million visitors per year:

The appendix includes an internet article from ‘businessoffachion.com’ dated 10/07/2015 stating that ‘Sephora has 27 percent of the beauty retail market in France’.

Appendix II: Copies of two oral presentations relating to the results of two surveys performed in France dated September 2013 and April 2015. They were conducted among 1000 respondents respectively in the age group of 18-65 and 15-65 years old. Parts of the surveys are presented in English, and parts in French. They present a spontaneous awareness of Sephora of 79% in 2013 and 81% in 2015. The presentations only include the results from the survey and do not include the actual surveys and the questions as presented to the respondents.

Appendix III: Copies of press clippings showing the use of SEPHORA and promotional activities between the years 2002-2018. These press clippings relate to France, Germany, Spain, Bulgaria, Greece, Italy, Netherlands, Poland, Czech Republic, Romania, Denmark, Portugal and Sweden. The clippings have not been translated, but it is apparent that they show the mark SEPHORA used both in relation to their own beauty products and retail services of third party beauty products.

In addition, in its observations, the opponent states that its trade mark ‘SEPHORA’ was adopted in 1993 and has consequently been used in France and other countries of the EU for more than 20 years. In 2018, the Sephora brand was present in more than 30 countries (amongst them France, Germany, Italy, Spain, Poland, Czech Republic, Bulgaria and Sweden) and had more than 800 points of sale in Europe.

Furthermore, the opponent informs that the 2017 annual revenues are estimated to 5 Billion Euros and that 39% of these revenues relates to Europe, which amount to approximately 2 Billion Euros. It further states that Sephora has almost 1/3 of the beauty retail market in France.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark had acquired a high degree of distinctiveness for the claimed goods in Class 3 through its use.

As the opponent remarks in its observations; ‘Sephora proposes in its shops not only cosmetics and perfumes articles bearing different trade marks, as Sephora has developed its own cosmetic and make up products branded SEPHORA’. In this regard, it must be noted that in relation to the retail of products of various third party brands, the trade mark SEPHORA is merely used in relation to retail services in Class 35. While for the retailing of products of its own brand SEPHORA, it is in addition use for the goods themselves, such as cosmetics and perfumery in Class 3. In the present case, the relevant goods under consideration are cosmetics, toiletries (not for medical purposes), make-up preparations; cosmetic pencils in Class 3, and not the retail services in Class 35 as such.

In its observations, the opponent mainly refers to Sephora as a beauty retailer, as it states that Sephora, which was founded in 1969, has become an international beauty leader and one of the world’s biggest beauty retailers. Also, as regards the market share information for France, the opponent has noted that Sephora has almost 1/3 of the beauty retail market. Furthermore, the submitted article of the Magazine Challenge dated 08/01/2015 in Annex I indicates that ‘LVMH subsidiary Sephora is a world leader in the distribution of beauty products’. The opponent also submitted an article from businessoffashion.com dated 10/07/2015 stating that Sephora ‘has become the world’s biggest beauty retailer’ and that it ‘has 27 percent of the beauty retail market in France’.

The numbers provided by the opponent are prima facie quite impressive and substantial, including those for the market share in France, annual revenues and survey results (in particular for France). However, there are multiple factors that compromise their evidential value. The main challenge with the evidence submitted relates to the fact that it does not provide sufficient information regarding the recognition of the SEPHORA brand specifically for the relevant cosmetic/perfumery goods as claimed in Class 3 (and not for beauty retail services). There are also additional deficiencies with the submitted evidence that will be elaborated below.

Firstly, the sales revenue numbers provided by the opponent in the observations have not been supported by independent documentation and, secondly, these numbers refer to Europe as a whole and not for the relevant territory being the EU only. Lastly, as mentioned above, the sales revenue numbers for the relevant goods in Class 3 remain unknown, as the numbers are not specified for the goods in Class 3 and the retail services in Class 35.

Furthermore, as for the surveys, these are missing a crucial factor as they do not provide the Opposition Division with the questions that were presented to the respondents. The results themselves are of insignificant value for the current assessment unless accompanied by the corresponding questions that lead to such numbers. More importantly, it is clear from the survey that it mainly aims at studying retailers within the beauty sector and not producers of beauty, see e.g. terms in the survey referring to ‘studied retailers’ and ‘broad range of brands’.

Taking the above into consideration, the evidence by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness as a result of its reputation in relation the claimed goods in Class 3 neither for France nor any of the remaining member states of the EU.

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, § 16, EU:C:1998:442, § 29).

In the present case, the goods are partly identical and partly similar to varying degrees. The relevant public consists of the public at large, which is considered to have an average degree of attention. The earlier mark enjoys an average degree of inherent distinctiveness.

The signs are visually and aurally similar to a low degree. The conceptual aspect of the comparison remains neutral. The signs only have their two last letters, ‘RA’, in common that are identically positioned. Although they additionally have the letters ‘PHO’ and ‘E’ in common, these will not be perceived as contributing to a likelihood of confusion between the signs as these letters are all represented in different positions. In addition, the earlier mark has an additional letter ‘S’ that is placed in the very beginning the mark, which has no counterpart in the contested sign. The signs therefore differ in their beginnings, where the attention of the public is in general more focused.

Therefore, the overall impressions given by the signs are dominated by their differences, which are considered sufficient to exclude any likelihood of confusion between them despite the finding that some of the goods are identical.

The opponent refers to previous decisions of the Office to support its arguments, namely EUIPO decisions No B 2 449 711 of 30/08/2016, EPFORA v SEPHORA, and No B 2 690 884 of 05/05/2017, SELASFORA v SEPHORA. 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as they have clear factual differences. In the previous cases referred to the signs share more commonalities, especially in the aural aspect, in terms of having far more similar syllables represented in the same positions of the signs, while in the present case the signs only identically coincide in their last syllable, ‘RA’. Therefore, it cannot be duly expected that these cases have the same outcome.

Considering all the above, there is no likelihood of confusion on the part of the French-speaking public. Furthermore, the assessment has been made from the perspective of the French-speaking public as it is the most advantageous scenario for the opponent. None of the signs have any meaning in the remaining part of the relevant territory, and the absence of a likelihood of confusion equally applies to the remaining part of the public of the EU.

Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

- French trade mark registration No 3 023 240 for the word mark ‘SEPHORA’, in relation to which the opposition is based on the following goods:

Class 3: Make-up preparations; Make-up removing preparations; Cosmetic preparations for skin care; Tissues impregnated with cosmetic lotions; False nails; False eyelashes; Adhesives and decorative transfers for cosmetic purposes; Lipcare preparations; Lipsticks; Eye pencils; Eyebrow pencils.

Since this sign is identical to the one that has been compared, the outcome of the comparison of the signs and of the assessment of likelihood of confusion cannot be different. Therefore, no likelihood of confusion exists with respect to French trade mark registration No 3 023 240.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. As concluded above, the evidence to prove the reputation of the earlier marks at issue refers mainly to the opponent’s activities in the beauty retail sector.

Despite showing some use of the mark ‘SEPHORA’ in relation to the goods for which they were registered, such as in the various magazine articles, the evidence does not provide any indication of the degree of recognition of ‘SEPHORA’ by the relevant public for the relevant goods. As a result, the evidence does not show that ‘SEPHORA’ is known by a significant part of the relevant public in relation to the goods for which the earlier trade marks were registered. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and 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.

The Opposition Division

Claudia MARTINI

Tu Nhi VAN

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.