OPPOSITION No B 3 062 383

The Procter & Gamble Company, One Procter & Gamble Plaza, 45202 Cincinnati, United States of America (opponent), represented by Renate Brunner, Sulzbacher Str. 40, 65824, Schwalbach am Taunus, Germany (employee representative)

a g a i n s t

Jin Oh Joung, #105-2802,12, Yeongdong-daero 138-gil, Gangnam-Gu, Seoul, Republic of Korea and Zenpia Co., LTD, 2F, Etang Bldg, 6, 11-gil, Hakdong-Ro, Gangnam-Gu, Seoul, Republic of Korea (applicants), represented by Louis Pöhlau Lohrentz, Merianstr. 26, 90409 Nürnberg, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 383 is upheld for all the contested goods.

2. European Union trade mark application No 17 873 206 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 17 873 206 for the word mark ‘ZENPIA SECRET KEY’. The opposition is based on European Union trade mark registration No 16 563 447 for the word mark ‘SECRET KEY’. 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3: Cosmetics; beauty masks; lipsticks; soaps; perfumes; essential oils; dentifrices; hair gel; hair lotions; hair care preparations; antiperspirants; deodorants for personal use; all included in Class 3.

The contested goods are the following:

Class 3: Nourishing creams; nail enamel removers; eyebrow pencils; hair powders; lavender perfume; liquid rouges; sachets for perfuming linen; lipsticks; mascara; mask pack; massage gels; massage oil; nail varnish; enamel for nail varnish; varnish-removing preparations; hair oil; hair drying preparations; hair preservation treatment preparations; hair colorants; hair waving preparations; color-removing preparations for hair; water face powder; cosmetic additives for baths; badian essence; antiperspirants; vanishing creams; bath oil; bath powder; white face powder; baby oil; baby powder; cheek rouges; blushers; perfumed powders; dandruff lotions; dandruff creams; bath salts (not for medical purposes); fragrances (not for medical purposes); safrol; sun milk; sunscreen lotions; sunscreen creams; sun oil; sun-tanning preparations; shaving creams; nail polishing powder; nail colorants; nail decolorants; skin milk; skin fresheners; essential oils of citron; eyeliner; eye make-up removers; eye shadows; after-shave lotions; ethereal essences; eau de cologne; deodorants for personal use; common toilet water; lip glosses; lip neutralizers; lip conditioners; lip care preparations; hair creams; cosmetic preparations for slimming purposes; cold creams; cold waving solutions; solid powder for compacts (cosmetics); moustache wax; cleansing creams; depilatory wax; depilatory preparations; beard dyes; permanent waving preparations; neutralizers for permanent waving; foundations creams; permanent waving lotions; lotions; face powder; potpourris perfumes; skin whitening creams; hand creams; perfumes; perfumed oils; hair gel; hair glaze; hair dressings; hair lacquers; hair lotions; hair moisturizers; hair mousse; hair spray; hair conditioners; hair tonic; heliotropine; make-up powder; hydrogen peroxide for cosmetic purposes; greases for cosmetic purposes; petroleum jelly for cosmetic purposes; astringents for cosmetic purposes; cosmetic pencils; cosmetic dye; bath salts for toilet purposes; colorants for toilet purposes; cleansing milk for toilet purposes; talcum powder for toilet use; pomades for cosmetic purposes; gaultheria oil; lavender oil; vanilla perfumery; bergamot oil; ambergris (perfume); ionone (perfumery); jasmine oil; rose oil; clove oil (perfume); geraniol; compound perfumery; mint for perfumery; musk (perfumery); elecampane (perfumery); joss sticks; fumigation preparations (perfumes); adhesives for affixing false hair; false eyelashes; adhesives for affixing false eyelashes; false nails; tissues impregnated with cosmetic lotions; cotton sticks for cosmetic purposes; beauty masks; decorative transfers for cosmetic purposes; adhesives for cosmetic purposes; cotton wool for cosmetic purposes; soap powder; detergents prepared from petroleum for household purposes; dry-cleaning preparations; polishing powder (abrasives); shaving soap; liquid soap; soap for foot perspiration; deodorant soap; preparations for unblocking drain pipes; soap for brightening textile; skin polishing rice bran; liquid detergents; oils for cleaning purposes; cleansers for detergent purposes; laundry soaps; almond soap; glass cleaning preparations; rinses for clothing; windscreen cleaning liquids; toilet bowl detergents; bath soap; beauty soap; shampoos; paper soaps; cream soaps; hair rinses (shampoo-conditioners); cosmetic soaps; breath freshening sprays; mouth washes (not for medical purposes); denture polishes; preparations for cleaning dentures; tooth powders; dentifrices.

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.

Lipsticks; antiperspirants; deodorants for personal use; perfumes; hair gel; hair lotions; beauty masks; dentifrices are identically contained in both lists of goods.

The contested nourishing creams; nail enamel removers; eyebrow pencils; hair powders; liquid rouges; mascara; mask pack; nail varnish; enamel for nail varnish; varnish-removing preparation; hair oil; hair drying preparations; hair preservation treatment preparations; hair colorants; hair waving preparations; color-removing preparations for hair; water face powder; cosmetic additives for baths; vanishing creams; bath oil; bath powder; white face powder; baby oil; baby powder; cheek rouges; blushers; perfumed powders; bath salts (not for medical purposes); sun milk; sunscreen lotions; sunscreen creams; sun oil; sun-tanning preparations; shaving creams; nail polishing powder; nail colorants; nail decolorants; skin milk; skin fresheners; eyeliner; eye make-up removers; eye shadows; after-shave lotions; lip glosses; lip neutralizers; lip conditioners; lip care preparations; hair creams; cosmetic preparations for slimming purposes; cold creams; cold waving solutions; solid powder for compacts (cosmetics); moustache wax; cleansing creams; depilatory wax; depilatory preparations; beard dyes; permanent waving preparations; neutralizers for permanent waving; foundations creams; permanent waving lotions; lotions; face powder; skin whitening creams; hand creams; hair glaze; hair dressings; hair lacquers; hair moisturizers; hair mousse; hair spray; hair conditioners; hair tonic; make-up powder; hydrogen peroxide for cosmetic purposes; greases for cosmetic purposes; petroleum jelly for cosmetic purposes; astringents for cosmetic purposes; cosmetic pencils; cosmetic dye; bath salts for toilet purposes; colorants for toilet purposes; cleansing milk for toilet purposes; talcum powder for toilet use; pomades for cosmetic purposes; tissues impregnated with cosmetic lotions; decorative transfers for cosmetic purposes; skin polishing rice bran; shampoos; hair rinses (shampoo-conditioners) are included in the broad category of the opponent’s cosmetics and are therefore considered identical.

The contested lavender perfume; sachets for perfuming linen; fragrances (not for medical purposes); eau de cologne; common toilet water; potpourris perfumes; perfumed oils; heliotropine; vanilla perfumery; ambergris (perfume); ionone (perfumery; clove oil (perfume); compound perfumery; mint for perfumery; musk (perfumery); elecampane (perfumery); joss sticks; fumigation preparations (perfumes) are included in the broad category of the opponent’s perfumes and are therefore considered identical.

The contested soap powder; shaving soap; detergents prepared from petroleum for household purposes; liquid soap; soap for foot perspiration; deodorant soap; soaps for brightening textiles; liquid detergents; cleansers for detergent purposes; laundry soaps; almond soap; rinses for clothing; bath soap; beauty soap; paper soaps; cream soaps; cosmetic soaps are included in the broad category of the opponent’s soaps and are therefore considered identical.

The contested dandruff lotions; dandruff creams are included in the broad category of the opponent’s hair care preparations and are therefore considered identical.

The contested massage gels; massage oil; essential oils of citron; ethereal essences; gaultheria oil; lavender oil; bergamot oil; jasmine oil; rose oil; geraniol are included in the broad category of the opponent’s essential oils and are therefore identical. The contested badian essence; safrol are aromatic extracts and similar to this category as they usually coincide in producer, relevant public and distribution channels.

The contested breath freshening sprays; mouth washes (not for medical purposes); denture polishes; preparations for cleaning dentures; tooth powders are at least similar to the opponent’s dentifrices because they are all preparations for the care of the mouth and teeth. Besides having the same purpose, they can be made by the same manufacturer, are usually sold in the same sections of supermarkets and target the same relevant public.

The contested false eyelashes; false nails are similar to a high degree to the opponent’s cosmetics as they have the same purpose, namely the embellishment of the face or body. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested adhesives for affixing false hair; adhesives for affixing false eyelashes; cotton sticks for cosmetic purposes; adhesives for cosmetic purposes; cotton wool for cosmetic purposes are at least similar to a low degree to the opponent’s cosmetics because they coincide at least in distribution channels, relevant public and manufacturers. They can also be complementary (cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes are used to clean or apply/remove cosmetics from the face/body).

The contested dry-cleaning preparations; polishing powder (abrasives); preparations for unblocking drain pipes; oils for cleaning purposes; glass cleaning preparations; windscreen cleaning liquids; toilet bowl detergents are at least similar to a low degree to the opponent’s soaps because they have the same purpose and usually coincide in distribution channels and relevant public.

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 or similar to varying degrees are consumer goods that are directed at the public at large. The degree of attention is considered to be average.

3. The signs

SECRET KEY	ZENPIA SECRET KEY
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 common verbal element ‘SECRET KEY’ is meaningful in certain territories, for example in those countries where English is understood, where it will be perceived as a meaningful expression. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking-part of the public.

The opponent claimed that the expression ‘SECRET KEY’ in relation to the relevant goods may suggest the concept of a ‘secret weapon’ or a somehow exclusive tool to achieve the results promised by the product bearing the mark. However, too many mental steps have to be taken in order to reach this conclusion. In any event, the comparison of the signs will be done focussing on the English-speaking-part of the public for whom the coinciding expression ‘SECRET KEY’ does not create any link with the relevant goods and is consequently distinctive to a normal degree.

The verbal element ‘ZENPIA’ in the contested sign will most likely be perceived as the name of the company offering the relevant goods. This is because the use of the name of the provider/designer is a common practice in the field of cosmetics. Although this element is distinctive, it plays a somewhat secondary role in the sign’s overall impression.

Visually and aurally the signs coincide in the expression ‘SECRET KEY’, present identically in both signs and they differ in the additional verbal element ‘ZENPIA’ of the contested sign, with no counterpart in the earlier mark.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, both signs will be associated with the same concept to the extent of the coinciding expression ‘SECRET KEY’.

Therefore, the signs are conceptually 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.

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

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 covered are from the same undertaking or economically linked undertakings.

The goods are identical and similar to varying degrees and target the public at large, who has an average degree of attention. The signs are visually and aurally similar to an average degree and conceptually highly similar. The distinctiveness of the earlier mark is average.

The earlier mark is completely contained in the contested sign where it also constitutes an independent and distinctive expression. The only difference between the signs is confined to the element ‘ZENPIA’, which plays a secondary role in the sign, as explained in section c) of this decision and consequently is of lesser impact.

The contested sign will most likely be perceived by the relevant public 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). Consumers could be led to believe that the owner of the earlier mark has launched a new line of cosmetics or perfumes, either through its undertaking or an economically linked undertaking named ‘Zenpia’.

The additional verbal element ‘ZENPIA’ in the contested sign forms the beginning of the mark, which is the part that consumers normally focus on, because the public reads from left to right. However, in the present case, this element will rather be perceived as an indicator of the provider of the goods and people will focus their attention on the specific name of the product line, namely ‘SECRET KEY’. The addition of the word element ‘ZENPIA’ is not sufficient for consumers to safely distinguish between the signs when they encounter them in the market.

In addition, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145).

Considering all the above, there is a likelihood of confusion, including a likelihood of association 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 16 563 447. It follows that the contested trade mark must be rejected for all the contested goods.

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

Valeria ANCHINI

Sylvie ALBRECHT

Sofía SACRISTÁN MARTÍNEZ

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.