OPPOSITION No B 3 051 783

Dr. Grandel GmbH, Pfladergasse 7-13, 86150 Augsburg, Germany (opponent), represented by Patent- und Rechtsanwälte Ullrich & Naumann Partnerschaftsgesellschaft MBB, Schneidmühlstraße 21, 69115 Heidelberg, Germany (professional representative)

a g a i n s t

Gowoonsesang Cosmetics Co. Ltd., 20, Seohyeon-ro 210, beon-gil, Bundang-gu, Seongnam-si Gyeonggi-do, Republic of Korea (applicant), represented by Antinghams Solicitors, First Floor Offices, 54-56 Bell Street, RG9 2BG Henley-On-Thames, United Kingdom (professional representative).

On 07/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 783 is upheld for all the contested goods.

2. European Union trade mark application No 17 792 011 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 17 792 011 (fig.). The opposition is based on European Union trade mark registration No 9 133 539 (fig.). 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.

1. The goods

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

Class 3: Cosmetics, perfumery, essential oils, soaps, dentifrices.

The contested goods are the following:

Class 3: Functional cosmetics; anti-aging cosmetic preparations; mask pack for cosmetic purposes; make-up removers, gel, lotions and creams; cosmetics for use on the skin; color correcting skin creams; cosmetics for personal use; anti-wrinkle creams; skin whitening preparations; hand lotions; hand creams; lip balms; beauty balm creams for covering blemishes; exfoliant cosmetics, namely, creams; skin moisturizers; body care cosmetics; beauty care cosmetics; make-up for the body; moisturizing creams; cosmetics containing sun block; sun block preparations; cosmetics for hair and scalp; sun creams for use on babies; cosmetics using natural substances; foundation; facial cleansers.

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

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

The contested goods in Class 3 are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The applicant states that the relevant goods are ‘functional cosmetics’, which have a special function as they target consumers with specific dermatological requirements, and consequently the relevant public will show a higher degree of attention. However, it is settled case-law that the degree of attention in relation to goods in Class 3 is average (13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394, § 51; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 38) Therefore, the applicant’s argument cannot be accepted.

The degree of attention for the relevant goods is average.

3. The signs

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).

Both signs are figurative. The earlier mark is composed of a black rectangular background, of a purely decorative nature, against which the upper-case letters ‘D’ and ‘G’ are written in white, and, in the bottom left corner the upper-case letter ‘R’ is written in a smaller bold white typeface; this letter is connected to the letter ‘D’. The letters ‘D’ and ‘G’ occupy almost the entire rectangle; they are stylised in such a way that they slightly overlap in the middle. They form the dominant element in the mark by virtue of their central position and size.

The letters in the earlier mark will be associated with letters of the alphabet by part of the relevant public. However, the combination of these letters has no clear meaning for part of the public and they are distinctive in relation to the relevant goods. In the Opposition Division’s view, a non-negligible part of the relevant public will understand the sign as ‘Dr G’. In this respect, the public, in general, will try to read a combination of letters in such a way that it results in a word having a meaning for them. For this part of the public, the combination of the letter ‘D’ and the smaller letter ‘R’ may be understood as ‘Dr’, which is a common abbreviation for ‘Doctor’ throughout the EU. Given that the relevant goods are cosmetics with health-related qualities (e.g. sunblock creams), the element ‘Dr’ could be understood as alluding to the health-related properties of the goods, so this element is considered to have a slightly lower than average degree of distinctiveness. In contrast, the letter ‘G’ has no meaning in relation to the relevant goods and is considered to have normal distinctiveness.

The contested sign is composed of the letters ‘Dr’, a full stop and a large upper-case letter ‘G’, all in a standard font and underlined by a short black line, which is purely decorative, and below it are the words ‘MY SKIN MENTOR Dr.G’. The element ‘Dr.’ will be perceived as an abbreviation of ‘Doctor’, as it is a widely used term. The letter ‘G’ will be understood, in this context, as the initial letter of a doctor’s name. The larger ‘Dr.G’ is clearly more dominant than other elements. Given that the relevant goods are cosmetics (with health-related qualities, e.g. sunblock creams), the element ‘Dr.’ could be understood as allusive to the health-related properties of some of the goods, so this element is considered to have a slightly lower than average degree of distinctiveness. In contrast, the letter ‘G’ has no meaning in relation to the relevant goods and is considered to have a normal degree of distinctiveness. The words ‘MY SKIN MENTOR Dr.G’ will be understood by the English-speaking part of the relevant public as ‘counsellor for skin health Dr.G’. Given that the relevant goods are cosmetics, the verbal element ‘Dr’ is allusive to the goods, and is considered to have a slightly lower than average degree of distinctiveness. For the remaining part of the public this word, and the letter ‘G’, have an average degree of distinctiveness, but due to their position and size, they will likely be overlooked.

Visually, the signs coincide in the letters ‘D’, ‘G’ and ‘R’. However, they differ in their stylisation; the white letters and black background of the earlier mark and the black letters, upper-case letter ‘R’, full stop and underline of the contested sign. They also differ in the contested sign’s secondary words ‘MY SKIN MENTOR Dr.’, which have a slightly lower than average degree of distinctiveness, and in the secondary letter ‘G’.

Therefore, as the signs coincide in all the letters of the earlier sign and of the contested sign’s dominant element, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, and even though the signs consist of the same three letters, the pronunciation of the signs may differ. The earlier sign will be pronounced as individual letters by part of the public, while another part of the public will associate the letters ‘D’ and ‘R’, recognise the abbreviation and pronounce the earlier sign as ‘Doctor G’, as explained above. The abbreviation in the contested sign will be pronounced as the word it represents, and therefore the contested sign will be pronounced as ‘Doctor G’, and the contested sign’s secondary elements will likely not be pronounced.

Therefore, the signs are aurally not similar for the part of the public that does not recognise ‘Dr G’ in the earlier sign, and they are aurally identical for the part of the public that recognises the abbreviation ‘Dr’ in both signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, the earlier mark will be associated with the letters of the alphabet that they represent, without a clear meaning, whereas in the contested sign the element ‘Dr.’ will be associated with the concept of ‘doctor’ and the letter ‘G’ with the initial letter of the name of the doctor in question. For this part of the public, while the meaning of the contested sign ‘Dr.G’ will be perceived, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. As stated before in section c) the secondary words of the contested sign will likely be overlooked.

For the part of the relevant public that recognises the abbreviated expression ‘Dr G’ in both signs, the signs are conceptually identical. For the part of the relevant public that recognises the abbreviated expression ‘Dr G’ in both signs, and the secondary elements ‘MY SKIN MENTOR Dr.G’, the signs are conceptually similar.

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, despite the presence of an element with a slightly lower than average degree of distinctiveness in the mark for a part of the relevant public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (Recital 11 of the EUTMR). It must be appreciated globally, taking into account all the factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Class 3 are identical.

The signs are visually similar to a low degree. They are conceptually and aurally not similar for the part of the public that does not understand ‘Dr. G’ in the earlier mark. The signs are aurally and conceptually identical for the part of the public that understands ‘Dr G’ in both signs and does not understand the secondary elements of the contested sign. And the signs are aurally and conceptually similar for the part of the public that understands ‘Dr G’ in both signs and also the secondary elements of the contested sign. They coincide in all their letters, ‘D’, ‘G’ and ‘R’, and differ only in their quite standard stylisation, upper/lower case of the letter ‘R’ and black/white colour, and in the secondary verbal elements of the contested sign. Account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public that understands ‘Dr G’ in both signs. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public. Consequently, the Opposition Division considers that there is a likelihood that this part of the public will confuse or associate the signs at issue and believe that the goods come from the same undertaking or from economically-linked undertakings.

Indeed, it is highly conceivable that, in the present case, the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark 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).

Considering all the above, and the average degree of attention paid by the public, 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 European Union trade mark registration No 9 133 539. 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)EUTMR.

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

Andrea VALISA

Aurelia PEREZ BARBER

Justyna GBYL

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.