OPPOSITION No B 3 049 132

Susanne Lang Fragrance Inc., 670 Caledonia Road, Suite 101, M6H4V9 Toronto, Canada (opponent), represented by Casalonga Alicante S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Lip Lab Sp. z o.o., Dzielna 7a/41, 00-154 Warsaw, Poland (applicant).

On 07/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 132 is upheld for all the contested goods.

2. European Union trade mark application No 17 767 021 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 767 021 for the figurative mark . The opposition is based on European Union trade mark registration No 15 449 184 for the word mark ‘LIP LAB’. The opponent invoked Article 8(1)(a) and (b) 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.

a) The goods

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

Class 3: Cosmetics; make-up; lip gloss; lip liner; lipstick; lip masks; lip crayons; lip pencils; lip tints; lip primers; lip cream; lip scrubs; lip wipes; lip oil; blush; mascara; eye liner; eye shadow; face powder; pressed face powder; foundation make-up.

The contested goods are the following:

Class 3: Lipsticks; sun blocking lipsticks [cosmetics]; lip cream; lip glosses; lip stains [cosmetics]; cosmetics; non-medicated cosmetics; nail tips [cosmetics]; mousses [cosmetics]; concealers; functional cosmetics; liners [cosmetics] for the eyes; make-up; natural cosmetics; organic cosmetics; colour cosmetics; tonics [cosmetic]; sun bronzers; self-tanning preparations [cosmetics]; moisturising concentrates [cosmetic]; mineral oils [cosmetic]; cosmetic moisturisers; eyebrow cosmetics; cosmetic preparations for eyelashes; moisturising gels [cosmetic]; toning creams [cosmetic]; self tanning creams [cosmetic]; cosmetics for the use on the hair; cosmetics containing panthenol; cosmetics containing keratin; cosmetics for children; emollient preparations [cosmetics]; decorative cosmetics; nail cosmetics; fluid creams [cosmetics]; lip cosmetics; body cream; sun protecting creams [cosmetics]; nail varnish remover [cosmetics]; cosmetics for use in the treatment of wrinkled skin; cosmetics in the form of gels; cosmetics in the form of lotions; lip coatings [cosmetic]; skin make-up; facial scrubs [cosmetic]; powder compacts [cosmetics]; colour cosmetics for the eyes; cosmetics in the form of milks; night creams [cosmetics]; cosmetics for personal use; sun-tanning preparations [cosmetics]; suntan lotion [cosmetics]; facial toners [cosmetic]; face creams for cosmetic use; cosmetics in the form of rouge; colour cosmetics for the skin; skin masks [cosmetics]; cosmetic preparations for skin care; cosmetics in the form of oils; cosmetics in the form of creams; cosmetic facial lotions; make-up for the face; suntanning oil [cosmetics]; after-sun oils [cosmetics]; compacts containing make-up; nail primer [cosmetics]; cosmetics and cosmetic preparations; tanning milks [cosmetics]; beauty care cosmetics; cosmetics containing hyaluronic acid; moisturising body lotion [cosmetic]; moisturising skin creams [cosmetic]; facial moisturisers [cosmetic]; skin whitening preparations [cosmetic]; skin care oils [cosmetic]; bath pearls; sun blocking oils [cosmetics]; skin care creams [cosmetic]; nail hardeners [cosmetics]; sun blocking preparations [cosmetics]; cosmetics for the treatment of dry skin; cosmetics for use on the skin; moisturising skin lotions [cosmetic]; skin lightening compositions [cosmetic]; cosmetics in the form of powders; nail base coat [cosmetics]; sun-tanning gels; body oils [for cosmetic use]; colour cosmetics for children; cosmetic kits; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; anti-aging moisturizers used as cosmetics; slimming aids [cosmetic], other than for medical use; pores tightening mask packs used as cosmetics; body and facial creams [cosmetics]; body and facial gels [cosmetics]; solid powder for compacts [cosmetics]; facial cleansers [cosmetic]; cosmetics in the form of eye shadow; scented body spray; powder compact refills [cosmetics]; non-medicated cosmetics and toiletry preparations; skin care lotions [cosmetic]; sun protectors for lips; make-up for compacts; facial washes [cosmetic]; self tanning lotions [cosmetic].

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.

All the contested goods can be divided in categories of goods belonging to the market sector of cosmetics and personal hygiene. The relevant categories of goods are:

Toiletries; make-up, skin, eye and nail care preparations, hair preparations treatments, bath preparations, body cleaning and beauty care preparations, oral hygiene preparations and perfumery and fragrances; removal and shaving preparations; perfumery and fragrances; soaps and gels; skin, eye and nail care preparations; hair preparations and treatments; deodorants and antiperspirants; make-up; oral hygiene preparations; essential oils and aromatic extracts.

The opponent’s goods cover products belonging to the same sector of cosmetics and personal hygiene and coincide in numerous relevant criteria such as their nature, purpose, method of use etc. Based on this, none of the contested goods can be considered dissimilar.

The contested scented body spray and nail tips are related to the opponent’s cosmetics since they have the same purpose (in a broadly sense) and are produced by the same companies, target the same end user and are being sold through the same channels of distribution. Moreover, in the case of the nail tips they can be complementary. Therefore, these goods are at least similar.

As regards lip cream and make-up, they are identically contained in both lists of goods.

The remaining contested goods are identical to the opponent’s cosmetics, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 target the public at large. The degree of attention is average.

c) The signs

LIP LAB
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 word ‘lip’, common to both signs, is an English word meaning ‘one of the two soft, red edges of the mouth’ which, in relation to at least some of the goods (e.g. lipstick, lip glosses and cosmetics), is clearly descriptive of the nature or intended purpose of some goods (cosmetics for lips) resulting in a very limited distinctive character, if any. However, this word will be perceived as meaningless by a part of the consumers in the relevant territory. The Opposition Division finds it appropriate to focus its comparison on the part of the public for whom this element does not convey any meaning and is, therefore, normally distinctive such as for example a (significant) part of the Italian and Spanish-speaking consumers.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public.

The contested sign is made up of the words forming the earlier mark ‘Lip’ (in pink) and ‘Lab’ (in black), accompanied by a lips’ figurative element. In the bottom right of these elements is depicted in a significantly smaller size the expression ‘create your lipstick’, which is clearly secondary.

The English word ‘lip’ (included in the signs) is meaningless for the relevant public, as noted above. The equivalent words in Italian and Spanish (i.e. ‘labbra’ and ‘labio’, respectively) as well as those to refer to the linked word ‘lipstick’ (i.e. ‘rosetto’ and ‘pintalabios’) are very different and, therefore, this word (which does not form part of the basic English vocabulary) is not likely to be understood by the majority of the consumers. Consequently, it is distinctive to an average degree.

The English word ‘lab’ (also included in both signs) may be perceived as the abbreviation of the word ‘laboratorio’, which is the Italian and Spanish equivalent for the word ‘laboratory’, having also the meaning of ‘a building or a room where scientific experiments, analyses and research are carried out. In this sense this element may allude to the origin of the goods. However, due to the specific abbreviation, that in these languages is not common as in English, this element is deemed to be distinctive to a below-average degree. It is also plausible that the relevant consumers will not attribute any particular meaning to this word in this context and that the signs’ expression ‘LIP LAB’ is perceived just as a fanciful words with a good monosyllabic sounding. This is especially due to the distance with the original word ‘laboratorio’ which may require a mental step in order to make the semantic connection. For this part of the public the element ‘lab’ would be of average distinctiveness.

It must be borne in mind that the above considerations regarding the distinctiveness of the elements are rather immaterial, since the identically contained expressions of the signs, ‘LIP LAB’, are on equal footing as concerns their distinctiveness. Consequently, it is the differences in the additional elements of the contested sign what is decisive for the comparison of the signs in the present case.

The depiction of the lips print of the contested sign will be perceived as such. Its distinctiveness is very low for most of the goods, as it directly alludes to their characteristics or intended purpose (lip cosmetics). Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative components (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). This also applies as to the stylisation of its word elements, which is essentially confined to the use of a specific pink typeface for the word ‘Lip’. Therefore, the figurative elements of the contested sign will have, in any case, less weight than its verbal elements.

The slogan in English ‘create your lipstick’ is meaningless as a whole for the relevant public. Although it is expected that the word ‘create’ will be associated with similar words in the relevant languages (e.g. ‘creare’ in Italian, ‘crear’ in Spanish and ‘creativo’ in both) and that the pronoun ‘your’ will be also understood or recognised as such (as it is a rather basic English word), the word ‘lipstick’ is meaningless. Therefore, the whole expression does not convey a complete or concrete meaning. Based on this, it is considered to have an average distinctive character. Regardless its distinctiveness, the impact of this element is very limited due to its very secondary importance in account of its smaller size and subordinated position.

Visually, the signs coincide in the expression forming the earlier mark ‘Lip Lab’, which is the most important element in the contested sign due to its position, co-dominance and intrinsic distinctiveness. The signs differ in the additional elements of the contested sign, namely the lips’ device, the typeface and the expression ‘create your lipstick’ which are less distinctive or, in the case of the slogan, very secondary for the reasons given above.

Therefore, the signs are visually similar an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words LIP/LAB, present identically in the signs. Given the secondary character of the expression ‘create your lipstick’, it is likely that it may be omitted -at least by part of the public- since consumers generally refer only to the dominant elements in complex trade marks.

Therefore, if the slogan is pronounced the signs are aurally highly similar and, if not, identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Neither of the signs has a meaning as a whole. However, for part of the public the signs will be associated with the meaning conveyed by the coinciding word ‘lab’. Therefore, the signs are conceptually similar to a low degree despite its below-average distinctive character. The presence of the contested sign’s additional elements cannot alter that conclusion. For those consumers perceiving the earlier mark as fanciful, although they may perceive the additional meanings of the contested sign (e.g. the concept of the lips device and the individual words of the slogan), the signs are not conceptually similar as one of the signs will not be associated with any meaning.

Since 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, despite that at least for part of the public the distinctiveness of the element ‘LAB’ may be lower than average, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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).

The contested goods are partly identical and partly similar and they target the public at large. The degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally similar to a high degree (or identical) and conceptually not similar or similar to a low degree. The contested sign entirely reproduces the earlier mark ‘LIP LAB’ as its most important element for the reasons given above. The presence of the contested sign’s figurative elements and the slogan below, which are less distinctive and secondary (respectively), is clearly not sufficient to counterbalance the commonalities between the signs and exclude a likelihood of confusion.

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 undertaking or economically-linked undertakings. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, although the relevant public may detect the additional elements of the contested sign, the likelihood that the public may perceive the contested sign as a restyling of the earlier mark is very real.

Considering all the above, there is a likelihood of confusion on the part of the Italian- 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 European Union trade mark registration No 15 449 184 It follows that the contested trade mark must be rejected for all the contested goods.

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).

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.

The Opposition Division

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Andrea VALISA

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.