CANCELLATION No 42 680 C (INVALIDITY)

Sephora, Société pas actions simplifiée, 41 Rue Ybry, 92200 Neuilly-sur-Seine, France (applicant), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Fisio Consultores, S.L., C/Magallón 12, Santa Fe, 50420 Cadrete, Zaragoza, Spain (EUTM proprietor), represented by Núria Ferràndiz i Umbon, C. Santa Marta, 21, bxos, 08030 Barcelona, Spain (professional representative).

On 07/06/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 17 878 717 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 02/04/2020, the applicant filed an application for a declaration of invalidity against European Union trade mark No 17 878 717 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on, inter alia, French trade mark registration No 4 232 601 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s French trade mark registration No 4 232 601.

a) The goods and services

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 goods and services on which the application is based are, inter alia, the following:

Class 9: Computer software (recorded programs).

Class 35: Advertising; business management; business administration; office functions; business brokerage (concierge services).

Class 41: Publication of electronic books and journals on-line.

Class 42: Design and development of computer hardware and software; software as a service (SaaS).

The contested goods and services are the following:

Class 9: Computer software; computer programs (downloadable software); computer software, recorded; computer software applications, downloadable; application software for mobile phones; electronic publications, downloadable.

Class 35: Advertising; business management; business administration; office functions; business brokerage services; administrative management of physiotherapy clinics; management of physiotherapy clinics for others.

Class 42: Design and development of computer hardware and software; hosting of websites and web portals; hosting platforms on the internet; software as a service (SaaS); platform as a service (PAAS).

Contested goods in Class 9

The contested computer software; computer programs (downloadable software); computer software, recorded; computer software applications, downloadable; application software for mobile phones are identical to the applicant’s computer software (recorded programs), either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

The contested electronic publications, downloadable are similar to the applicant’s publication of electronic books and journals on-line in Class 41 since they are complementary, target the same public, and have the same distribution channels and providers.

Contested services in Class 35

Advertising; business management; business administration; office functions; business brokerage services are identically contained in both lists (including synonyms).

The contested administrative management of physiotherapy clinics; management of physiotherapy clinics for others are included in the applicant’s broader categories business administration and business management, respectively. Therefore, they are identical.

Contested services in Class 42

Design and development of computer hardware and software; software as a service (SaaS) are identically contained in both lists. Therefore, they are identical.

The contested hosting of websites and web portals; hosting platforms on the internet; platform as a service (PAAS) are similar to the applicant’s design and development of computer software since they target the same public, and have the same providers 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 and services found to be identical or similar are directed at business customers with specific professional knowledge or expertise. Some of them, such as the goods in Class 9 and hosting of websites and web portals; hosting platforms on the internet; platform as a service (PAAS) in Class 42, are also directed at the public at large. The degree of attention varies from average to high depending on the degree of specialisation of the goods and services and their price.

c) The signs

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are composed of a meaningless and therefore distinctive verbal element and less distinctive figurative elements of a purely decorative nature. Therefore, in both signs, the verbal element is more distinctive than the figurative elements.

Neither of the signs has elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘*E*(*)ORA’ and differ in their initial letters, ‘S’ of the earlier mark versus ‘H’ in the contested mark, and in the letters ‘PH’ of the earlier sign versus ‘F’ in the contested mark. The signs also differ in their figurative elements, including the graphic depiction of the verbal elements. Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EPHORA’ in the earlier mark and ‘EFORA’ in the contested sign since the letters ‘PH’ and ‘F’ will be pronounced identically, and the initial letter ‘H’ in the contested sign is silent. The vertical alignment of the letters in the contested mark does not prevent the word ‘HEFORA’ from being read as a word. The pronunciation differs in the sound of the initial letter ‘S’ of the earlier sign, which has no counterpart in the contested mark. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 applicant claims that the earlier trade mark enjoys enhanced distinctiveness since it is not descriptive.

It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLY HILLS POLO CLUB et al., EU:T:2015:192, § 49). The applicant has not submitted evidence in order to prove enhanced distinctiveness.

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 and services 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 less distinctive elements in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar, and the degree of attention of the public varies from average to high.

The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a very low degree and aurally similar to a high degree.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 this case, the lesser degree of similarity between the signs is offset by a greater degree of similarity between the goods and services. Moreover, the goods and services considered similar also target the public at large, who have an average degree of attention. Therefore, the Cancellation Division considers that the differences between the signs (as detailed above in section c)) are insufficient to distinguish between the signs, especially when pronounced by the relevant public.

Conclusion

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s French trade mark registration No 4 232 601. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

As the earlier French trade mark registration No 4 232 601 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (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 cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Ana MUÑIZ RODRIGUEZ

Frédérique SULPICE

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.