OPPOSITION No B 3 058 615

Migros-Genossenschafts-Bund (Kooperative), Limmatstr. 152, 8005 Zürich, Switzerland (opponent), represented by MLL Bruxelles, 222 Avenue Louise, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Beauty Brands Concept Spółka z Ograniczoną Odpowiedzialnością, Ul. Żytnia 19, 05-506 Lesznowola, Poland (applicant)

On 20/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 615 is upheld for all the contested goods.

2. European Union trade mark application No 17 866 019 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 17 866 019 , namely against all the goods in Class 3. The opposition is based on international trade mark registration No 1 254 464  designating, inter alia, Germany. 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.

The opposition is based on international trade mark registration No 1 254 464 designating more than one Member State. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating Germany.

1. The goods

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

Class 3: Sunscreen preparations

The contested goods are the following:

Class 3: Cosmetics; Skincare cosmetics; Body cleaning and beauty care preparations; Non-medicated beauty preparations; Skin care preparations; Exfoliants for the care of the skin; Cosmetic moisturisers; Cosmetics for use in the treatment of wrinkled skin; Creams for firming the skin; Skin whitening creams; Skin conditioners; Slimming aids [cosmetic], other than for medical use; Lotions for cellulite reduction; Creams for cellulite reduction; Soaps; Soaps for body care; Non-medicated toilet soaps; Soap free washing emulsions for the body; Washing creams; Washing liquids; Wipes impregnated with a skin cleanser; Skin cleansers [cosmetic]; Exfoliants; Exfoliant creams; Body scrub; Artificial tanning preparations; After sun moisturisers; Make-up preparations; Make-up removing preparations; Nail polish; Nail varnish for cosmetic purposes; Nail hardeners [cosmetics]; Cuticle oil; Nail care preparations; Nail varnish removers; Cosmetics for the use on the hair; Hair preparations and treatments; Hair moisturisers; Hair preparations and treatments; Shampoo; Hair nourishers; Styling lotions; Styling lotions; Tooth care preparations; After-sun lotions; Sun-tanning gels; After-sun oils [cosmetics]; Sun-tanning oils; Sun-tanning gels; Creams for tanning the skin; Douching preparations for personal sanitary or deodorant purposes [toiletries].

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; soaps and gels; skin, eye and nail care preparations; hair preparations and treatments; make-up; body and oral cleaning and beauty care preparations.

The opponent’s goods cover products belonging to the same sector of cosmetics. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods or that they are even identical, these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that all the contested goods are at least similar to a low degree to 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 found to be at least similar to a low degree are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs coincide fully in their sole verbal element ‘SUN LOOK’. In the event a meaning were to be attributed to this words by the German public, it would be immaterial in the present case since the degree of distinctiveness of the signs' verbal elements is irrelevant as they are the same in both marks and because the only differentiating, elements of the signs, merely reside in their simple label of a decorative nature, which are non-distinctive.

It follows that the signs are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the common element ‘SUN LOOK’, or if not, the conceptual similarity would not influence this assessment.

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

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).

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).

The goods have been found similar to – at least – a low degree. The signs are almost identical and the earlier mark enjoys a normal degree of distinctiveness.

The only differing elements between the signs, namely their labels are clearly of a secondary nature within the overall impression of the signs. The near identity of the signs justifies the conclusion that there is a likelihood of confusion including for those goods deemed similar to a low degree. It is possible that the average consumer may be led to believe that the same undertaking is responsible for the production of those goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 254 464 designating Germany.

It follows from the above that the contested trade mark must be rejected.

As the above mentioned 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 remaining designations of the international trade mark registration invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Likewise, 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Rosario GURRIERI

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.