OPPOSITION No B 3 055 257

Guerlain, 68, Avenue des Champs-Elysées, 75008 Paris, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

HP Brand Lab eingetragener Kaufmann, Bahnhofstraße 8, 56068 Koblenz, Germany, (applicant), represented by Görg, Kennedyplatz 2, 50679 Köln, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 055 257 is upheld for all the contested goods.

2. European Union trade mark application No 17 871 310 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 17 871 310 for the word mark ‘Kisskit’. The opposition is based on, inter alia, European Union trade mark registration No 522 086 for the word mark ‘KISS-KISS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In its submissions of 10/01/2019, the applicant states that the opponent did not sufficiently furnish proof that its earlier trade marks have been put to genuine use. However, the Opposition Division notes that the applicant did not submit any request for proof of use of the opponent’s earlier marks (French trade mark registration No 93 485 640 for the word mark ‘KISS KISS’ and European Union trade mark registration No 522 086 for the word mark ‘KISS-KISS’). For the sake of completeness, it is noted that even if the statement in the applicant’s submissions of the above-mentioned date were to be considered as a request for proof of use of the opponent’s earlier marks, it was not made by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use would be inadmissible pursuant to Article 10(1) EUTMDR. For this reason, the applicant’s arguments regarding the alleged lack of use of the earlier marks are not relevant and must be set aside.

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 522 086 for the word mark ‘KISS-KISS’, since this right has the broadest territorial scope and covers the same goods in Class 3 as the other earlier right invoked.

a) The goods

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

Class 3: Soaps, cosmetics, perfumery, essential oils, hair lotions, dentifrices.

The contested goods are the following:

Class 3: Cosmetics; Beauty care cosmetics; Make-up; Toiletries; Cleaning and fragrancing preparations; Essential oils and aromatic extracts; Perfumes; Cosmetics for the use on the hair; Hair preparations and treatments; Nail cosmetics.

Cosmetics; essential oils; perfumes are identically contained in both lists of goods (including synonyms).

The contested cleaning preparations include, as a broader category, the opponent’s soaps. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fragrancing preparations overlap with the opponent’s perfumery. Therefore, they are identical.

The contested beauty care cosmetics; make-up; toiletries; cosmetics for the use on the hair; nail cosmetics are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested hair preparations and treatments include, as a broader category, the opponent’s hair lotions. Since the Office cannot dissect ex officio the broader categories of the contested goods, they are considered identical to the opponent’s goods.

The contested aromatic extracts overlap with the opponent’s essential oils. Therefore, they are identical.

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 are directed at the public at large.

The opponent argues that, as the goods covered by the contested sign target the public at large and are consumed generally, the degree of attention will be low when purchasing the relevant products. Moreover, the opponent refers to two previous decisions of the Office (B 2 661 794 and B 1 993 768) to support its arguments in this regard. The Office is, however, 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

As the relevant goods are not inexpensive goods purchased on a daily basis, the degree of attention cannot be deemed low, but must be considered average. It follows that the opponent’s arguments in this respect must be set aside.

c) The signs

KISS-KISS	Kisskit
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.

As regards the contested sign, although it is composed of one verbal element, the relevant 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). In the present case, the average consumer will, therefore, contrary to the applicant’s argument, analyse the contested sign as explained below, and not only perceive the contested sign (and the earlier mark) as a whole.

The signs’ common component, ‘Kiss’, is meaningful in certain territories, for example in those countries where English is understood. ‘Kiss’, inter alia, means ‘the act of kissing; a caress with the lips’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/kiss on 10/07/2019).

The applicant argues that the earlier marks are descriptive, since the term ‘Kiss Kiss’ clearly refers to the purpose of cosmetics (including lipsticks), namely lip care/lip colouring.

Although a kiss is given using the lips and although some of the relevant goods may be used on the lips (e.g. cosmetics), this connection is not sufficiently clear to consider the signs’ common component, ‘Kiss’, to have a low distinctive character in relation to the relevant goods. Therefore, contrary to the applicant’s argument, this component’s distinctiveness is normal. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The contested sign’s remaining component, ‘kit’, means, inter alia, ‘a group of items that are kept together, often in the same container, because they are all used for similar purposes’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/kit on 10/07/2019). As this component may serve to designate a possible characteristic of the relevant goods, namely that they are sold as a group of items, it is descriptive and non-distinctive in relation to all of the goods in question.

Both signs are word marks. A word mark is a sign consisting entirely of letters, words or associations of words, written in printed characters in a normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). In the case of word marks, the word is therefore protected regardless of the typeface used and regardless of whether it is written in upper-case or lower-case letters.

Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements, since both signs are word marks, and since word marks do not contain dominant elements per se. However, 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.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the earlier mark will be perceived as two kisses, whereas the contested sign as a whole expresses a kit for kissing, it must be borne in mind that there is a conceptual link between the signs to the extent that both marks will be associated with ‘kiss’. The marks differ conceptually only in the fact that this concept is contained twice in the earlier mark and in the non-distinctive element ‘kit’ of the contested sign. Consequently, the marks are conceptually highly similar.

Visually and aurally, the signs coincide in (the sound of) ‘Kiss(*)ki**’. They differ in the hyphen in the earlier mark (which will have no effect on the pronunciation) and in (the sound of) their endings, ‘SS’ in the earlier mark and ‘t’ in the contested sign.

Therefore, contrary to the applicant’s arguments, the signs are visually similar to an average degree and aurally highly similar.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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. Reference is made to the analysis in section c) regarding the component ‘KISS’, including the rebutted arguments of the applicant. The fact that this component is repeated with a hyphen in between both components does not alter the findings made above.

In its observations, the applicant further argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘KISS’. In support of its argument, the applicant refers to several trade mark registrations, some of which are registered in or designate the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘KISS’. Under these circumstances, the applicant’s claims must be set aside. For this reason, it is not necessary to address the opponent’s argument that that the aforementioned evidence is not in the language of the proceedings.

Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

As concluded above, the goods are identical, and the relevant public is the public at large paying an average degree of attention. Moreover, the signs are conceptually highly similar, visually similar to an average degree and aurally highly similar, and the distinctiveness of the earlier mark is considered to be normal.

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). As the signs coincide in their first six letters and only differ in the hyphen in the earlier mark and in their endings as explained above, a likelihood of confusion cannot be excluded in this case, contrary to the applicant’s arguments.

Therefore, considering all the above, there is a likelihood of confusion on the part of the English-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 opponent’s European Union trade mark registration No 522 086. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark, due to its extensive use as claimed by the opponent. The result would be the same, even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, namely European Union trade mark registration No 522 086, 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 (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

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

Inés GARCÍA LLEDÓ

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.