OPPOSITION No B 3 059 576

Edgewell Personal Care Brands, LLC, 6 Research Drive, 06484 Shelton, United States of America (opponent), represented by Friedrich Graf Von Westphalen & Partner Mbb, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Ningbo Ruizi Personal Care Products Co., Ltd., No.191, Laojie Road, Guyaopu Village Zhangqi Town, Cixi, Zhejiang, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 059 576 is partially upheld, namely for the following contested goods:

Class 21: Cosmetic utensils; brushes; combs.

2. European Union trade mark application No 17 874 420 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 874 420 . The opponent subsequently limited the extent of the opposition to some of the goods in Class 21. The opposition is based on, inter alia, French trade mark registration No 4 315 699 ‘SCHICK EXACTA’. 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 French trade mark registration No 4 315 699.

1. The goods

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

Class 8: Razors and razor blades.

The contested goods, after a limitation of the extent of the opposition, requested by the opponent on 17/12/2018, are the following:

Class 21: Brushes; water apparatus for cleaning teeth and gums; toothbrushes, electric; toothbrush cases; toothpicks; cosmetic utensils; cleaning instruments, hand-operated; deodorising apparatus for personal use; combs.

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.

The contested cosmetic utensils; brushes; combs are similar to the opponent’s razors. The contested goods cover goods such as shaving brushes. There is a close link between these goods insofar as they are used for shaving. They have the same purposes of beautification and beauty care, are sold through the same distribution channels and target the same end users. Therefore, these goods are considered similar.

The contested water apparatus for cleaning teeth and gums; toothbrush cases; toothpicks; toothbrushes, electric; deodorising apparatus for personal use; cleaning instruments, hand-operated are dissimilar to the opponent’s razors and razor blades. Contrary to the opponent’s argument, even though some of the goods may come from the same manufacturers, the goods at issue are usually not displayed in the same sections of stores, they have different natures and their purposes are not the same, hence they are neither complementary nor in competition.

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 similar are directed at the public at large.

The degree of attention is average.

3. The signs

SCHICK EXACTA
Earlier trade mark	Contested sign

The relevant territory is France.

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 contested sign is a figurative mark consisting of the verbal element ‘Schick’ written in a black standard typeface. The letter ‘k’ is extended backwards to underline the previous letters.

The coinciding element ‘SCHICK’ has no meaning and is therefore distinctive to an average degree in relation to the relevant goods.

The word ‘EXACTA’ of the earlier mark will be understood by the relevant public, given its close resemblance to the French word ‘exact’, as referring to ‘correct in every detail’ (information extracted from CNTRL on 22/05/2019 at https://www.cnrtl.fr/definition/exact). Bearing in mind that the relevant goods are razors, it is allusive of some of the characteristics of the goods, for example that the goods allow you to have an accurate and correct shave. Therefore, it is considered to be weak.

Visually and aurally, the signs coincide in the element ‘SCHICK’ which has an average degree of distinctiveness. This element constitutes the first element of the earlier mark and the only verbal element of the contested sign. In this context, it must be pointed out that 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 and from top to bottom, which makes the part placed at the left or on the top of the sign (the initial part) the one that first catches the attention of the reader. The signs differ in the weak element, ‘EXACTA’, of the earlier mark and in the slight stylisation of the contested sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘EXACTA’ of the earlier mark 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 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 a weak element in the mark, 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services (eleventh recital of the EUTMR). It must be appreciated globally, taking into account all 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 similarities and differences between the signs have been established. Some of the goods are similar and the degree of attention of the relevant public is average.

The earlier mark and the contested sign are be similar to the extent that they have in common the verbal element ‘SCHICK’, which constitutes the only element of the contested sign and the most distinctive element of the earlier mark. The differences between the signs are confined to the element ‘EXACTA’ of the earlier mark, which was found to be weak, and to the slight stylisation of the contested sign. These are not sufficient to distract the consumers’ attention from the fact that the sole verbal element of the contested sign is entirely contained in the beginning of the earlier mark.

Therefore, it is reasonable to assume that when encountering the contested sign in relation to similar goods, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

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 partly well founded on the basis of the opponent’s French trade mark registration No 4 315 699.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on French trade mark registration No 4 315 701 for the word mark ‘SCHICK SILK EFFECT’.

Since this mark covers the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Birgit FILTENBORG

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.