OPPOSITION No B 3 054 403

Laboratorios Exitenn, S.L., Polígono Industrial La Cova Alt Millars, 9-13, 46940 Manises (Valencia), Spain (opponent), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain (professional representative)

a g a i n s t

Cosmelite Venture, 19 Rue du boulevard Royal, 2453 Luxembourg, Luxembourg (applicant), represented by Mark & Law, 7 rue des Aulnes - Bâtiment B, 69410 Champagne au Mont d'Or, France (professional representative).

On 25/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 403 is upheld for all the contested goods.

2. European Union trade mark application No 17 799 719 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 17 799 719 for the word mark ‘COSMELITE’, namely against all the goods in Class 3. The opposition is based on, inter alia, Spanish trade mark registration No 2 545 696 for the word mark ‘COSMELITTE’. The opponent invoked Article 8(1)(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.

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 Spanish trade mark registration No 2 545 696, since this trade mark covers a broader scope of goods in Class 3.

a) The goods

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

Class 3: Preparations for bleaching and other substances for laundry; preparations for cleaning, polishing, degreasing and scraping, soaps, perfumes, essential oils, cosmetics, hair lotions, toothpaste.

The contested goods are the following:

Class 3: Cosmetics; custom-made cosmetics; sun-tanning creams, gels, oils and lotions (cosmetics); preparations for protecting the hair and lips from the sun; gels for accelerating, enhancing or prolonging sun tans; sunscreen preparations for cosmetic purposes; foams, patches containing sun screen and sun block for use on the skin; water-resistant sunscreens, sunblock; sun-tanning and after-sun oils, gels and milks (cosmetics); creams, oils, gels and moisturizing milk; skin lightening creams; cosmetics for skin, hair and nail care; creams, balms, lotions and pomades for cosmetic purposes; cosmetic preparations for slimming purposes; baths (cosmetic preparations for -); aloe vera preparations for cosmetic purposes; hair-waving preparations; cosmetics; make-up removing preparations; make-up preparations; dyes (cosmetic -); bleaching preparations [decolorants] for cosmetic purposes; cosmetic pencils; eyebrow pencils; lip gloss; lipstick; wax (depilatory -); moustache wax; depilatory preparations; petroleum jelly for cosmetic purposes; massage gels, other than for medical purposes; dental bleaching gels; oils and grease for cosmetic purposes; oils for toilet purposes; essential oils; almond milk for cosmetic purposes; cleansing milk for toilet purposes; hair lacquers and nail varnish; after-shave preparations; hair lotion; mascara; cosmetic masks; transfers (decorative -) for cosmetic purposes; cosmetic kits; false eyelashes and nails; make-up powder; shaving preparations; varnish-removing preparations; smoothing preparations [starching]; bath salts, not for medical purposes; shampoo; dry shampoos; hair and beard colorants; henna [cosmetic dye]; colorants for toilet purposes; hydrogen peroxide for cosmetic purposes; pet shampoos, deodorants and cosmetics; perfumery; oils for perfumes and scents; cologne; toilet water; extracts of flowers [perfumes]; make-up; perfume; air fragrancing preparations; cotton and cotton wool for cosmetic purposes; tissues impregnated with cosmetic lotions; cotton sticks for cosmetic purposes; make-up pads of cotton wool; breath freshening strips; pumice stone; astringents for cosmetic purposes; shaving stones [astringents]; alum stones [astringents]; deodorants for human beings or for animals; dentifrices; douching preparations for personal sanitary or deodorant purposes [toiletries]; dentures (preparations for cleaning -); denture polishes; toiletries; antiperspirants [toiletries]; mouth washes, not for medical purposes; shaving soap; almond soap; bar soap; soaps; antiperspirant soap; deodorant soap.

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 of the contested goods are at least similar to an average degree, if not identical, since they coincide at least in their purpose, namely to enhance or protect the appearance or the odour of the body, as well as their relevant public and distribution channels.

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 at least similar to an average degree are directed at the public at large whose degree of attention is considered to be average.

c) The signs

COSMELITTE	COSMELITE
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).

The elements ‘COSMELITTE’ and ‘COSMELITE’ of the earlier mark and the contested sign, respectively, have no meaning as a whole for the relevant public and are, therefore, distinctive. Having said this, the beginning of both signs ‘COSME-’ could suggest ‘cosmetic’ (‘cosmético’ in Spanish) to the relevant public, since consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Bearing in mind that the relevant goods are all related to cosmetics, this part of the sign is non-distinctive.

Visually, the signs coincide in the letters ‘COSMELIT*E’, which make up the whole of the contested sign and almost all of the earlier mark, which only differs in an additional letter ‘T’ towards the end of the sign.

Therefore, the signs are visually highly similar.

Aurally, the signs are pronounced identically.

Conceptually, as already mentioned neither of the signs has a meaning as a whole. Although the coinciding beginning ‘COSME’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. 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.

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 a non‑distinctive component in the mark, 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).

In the present case, the goods are at least similar to an average degree, if not identical, and are directed at the general public with an average degree of attention. The signs are visually highly similar and aurally identical, while a conceptual comparison is not possible. The earlier mark has a normal degree of inherent distinctiveness.

Account is 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). In this case, the coincidences between the two signs are overwhelming, since they differ only in an additional letter ‘T’ in the earlier mark.

Considering all the above, 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 2 545 696. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 2 545 696 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

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

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.