OPPOSITION No B 3 054 977

Jacques Bogart, Société anonyme, 76/78, Avenue des Champs Elysées, 75008 Paris, France (opponent), represented by Cabinet Marek, 28, rue de la Loge, 13002 Marseille, France (professional representative)

a g a i n s t

LS the brand B.V., Herengracht 39 B, 1015 BB Amsterdam, the Netherlands (applicant), represented by Parker Advocaten, Willemsparkweg 84, 1071 HL Amsterdam, the Netherlands (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 977 is upheld for all the contested goods.

2. European Union trade mark application No 17 879 004 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 17 879 004 for the word mark ‘APRIL MORNING’. The opposition is based on French trade mark registration No 3 544 743 for the word mark ‘APRIL’. 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.

The applicant requested that the opponent submit proof of use of French trade mark No 3 544 743 for the word mark ‘APRIL’.

The date of filing of the contested application is 22/03/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 22/03/2013 to 21/03/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 3: Perfumes ; soaps ; essential oils ; cosmetics ; hair lotions.

Class 35: Retail sale, mail order and Internet sales of perfumery and cosmetics in small, medium and large sales outlets.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 19/03/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 19/05/2019 to submit evidence of use of the earlier trade mark. On 10/04/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: Six invoices dated between 17/12/2015 and 11/12/2018 issued by the company Distribal to three different companies in France. The invoices are in French. They include references to different products described as ‘APRIL Mango Apricot’, ‘APRIL Bilberry Rasberry’, ‘APRIL Rose Camelia’, ‘APRIL scented coconut’, ‘APRIL Verbena orange blossom’ or ‘APRIL Vanilla caramel’ for bubble bath, shower gel, body scrub, body milk, body balm, hand cream. The evidence shows sales of approximately 17.900 items for EUR 86.000 including the around 550 items for EUR 5000 from the invoice of 11/12/2018.

• Item 2: Eight pictures showing packaging for cosmetics and bath products, namely hydrating gel, cream, lifting serum, sheet mask, hand cream, body scrub, body milk, cleaning wipes, bubble bath, shower gel, body balm. On the packaging, the word 'April' is represented as follows: . The pictures are undated.

• Items 3 and 4: A series of pictures of the interiors and exteriors of perfumery shops. On some of them the word ‘APRIL’ is visible on packaging and on the exterior of a shop. On some of the pictures are furthermore promotional messages in French, one with an offer valid until April 2017. Most of the pictures are undated. Allegedly some pictures were taken in October 2016 and in January 2017.

• Item 5: An extract of the April Perfumery Facebook page and of a French supermarket (Carrefour) page of 2017:
  
  

• Item 6: Two press clips of ‘Premium Beauty News’ and ‘CercleFinance.com’ of 2016 and 2017 respectively mentioning that the mark ‘April’ owns more than 30 stores in France.

The applicant contests the evidence of use filed by the opponent, in particular the submitted invoices, on the grounds that it does not originate from the opponent itself but from another company.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence at issue filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by the company that issued the invoices, i.e. the sale of the goods under the invoices, was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

All above listed documents show that the place of use is France. This can be inferred from their language. Furthermore, the invoices are issued to clients with addresses in France, which is an additional indication that the place of use is France. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, some are undated. One invoice is dated after the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period, namely the invoice, confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is close in time to the relevant period and it shows continuity of use over time. As for the undated evidence, in particular the photos of goods bearing the mark, their primary role is to show how the mark is actually affixed on the goods.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

Even though the evidence is not particularly exhaustive with respect to the commercial volume factor, it is noted that the purpose of the proof of use assessment is not to evaluate the commercial success of a brand. What is relevant is that the opponent shows that the mark has been used in an outward manner with the purpose of creating and/or preserving an outlet for its goods.

Moreover, the assessment of the extent of use shown should be based on all relevant factors, which should be considered jointly and interdependently. The invoices show that a wide range of APRIL branded goods have been sold to different clients in France during the relevant period. It is duly considered that the goods as a whole are not particularly expensive. However, it is clear that in some of the invoices the quantities purchased are quite significant, (often between 50 and 200 units, while sometimes the quantities exceed 400 or more items per product per invoice). Furthermore, the promotional messages show that various goods under the APRIL brand have been advertised through the entire relevant period.

Consequently, the submitted evidence shows that the mark has been continuously and regularly used for a wide range of goods and product lines on the entire relevant territory, the accumulation of which factors compensate for the commercial volumes shown. Moreover, the opponent has expressly indicated that the invoices are examples only and do not intend to show all volumes sold on the territory.

Consequently, even though not particularly exhaustive, the Opposition Division finds that the documents filed, namely the invoices, promotional messages in French and the press clips, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the representation of ‘APRIL’ on the packaging of the various goods is in a rather standard typeface, which in no way prevents consumers from clearly grasping the word being represented. In addition to ‘APRIL’, the packagings contain other verbal elements, which are always in a different row below ‘APRIL’ and with smaller letters, which indicates that the addition stands for the specific product-line. This in fact is a quite standard practice in the branding of cosmetic products. Moreover, nothing in the stylisation of the mark on the packaging of the goods prevents consumers from clearly reading the represented verbal component and perceiving it as a separate commercial origin identifier. Thus, the evidence shows that the mark has been used in accordance with its function and as registered.

As for the goods for which use is shown, it is considered that the submitted materials show use for different cosmetics products. As seen from the invoices, when read together with the information on the packaging of the respective products, the mark has been used on various creams, bubble baths, shower gels, body scrubs, body milks, body balms, hand creams. It is clear from the case-law that the opponent is not under the obligation to show use of its mark for any and all possible variations of goods that fall under the broad category for which its mark is protected. In this case, the opponent has shown use for various cosmetics products, which is considered sufficient to show use for the entire category of cosmetics.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory at least for the goods in Class 3, namely cosmetics.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and services

The goods on which the opposition is based and for which use has been proven are, inter alia, the following:

Class 3: Cosmetics.

The contested goods are the following:

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

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 soaps; hair lotions are included in the broad category of the earlier cosmetics. Therefore, they are identical.

The contested cosmetics are identically contained in both lists of goods.

The contested essential oils are similar to the earlier cosmetics because they coincide in distribution channels, target the same end user and are usually produced by the same undertakings.

The contested perfumery are similar to the earlier cosmetics because they coincide in distribution channels, have the same purpose, target the same end-user and coincide in producer.

It is relevant to note that for the purposes of the above comparison it is the goods as applied for and not their possible or actual use that are relevant. The applicant’s claim on dissimilarity in this connection should, therefore, be set aside. Moreover, the comparison takes into account the goods of the opponent for which use has been considered proven.

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 are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

APRIL	APRIL MORNING
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 earlier mark and the contested sign are word marks as indicated above. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters, or in a combination thereof. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom,EU:T:2008:165, § 43). Furthermore, intended or actual uses of the marks at issue could be relevant only as far as the earlier mark is concerned in the context of a proof of use assessment. In this vein, it is irrelevant how the applicant intends or even uses its mark, since this might change over time subject to the preferences of the mark´s owner. As for the earlier mark, as shown above, the way the mark has been use qualifies for use as registered.

The signs’ elements ‘APRIL’ and ´MORNING’ are relatively basic English words and will be perceived at least by a significant part of the relevant public with their respective meanings. These elements are distinctive since their meaning is not related to the relevant goods.

Account must also be taken of the fact 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Taking into account all the above considerations and the distinctiveness of the signs’ elements, they are visually and aurally similar to an average degree on account of the fact, that the earlier sign is entirely reproduced at the beginning of the contested sign. Conceptually, the signs are similar to an average degree at least for a significant part of the public given the coincidences between their initial and distinctive element, ‘APRIL’. The differentiating element ‘MORNING’ will have less of an impact on consumers for the reasons explained above.

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

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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 identified. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trademarks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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/services covered are from the same or economically linked undertakings.

In the present case, the goods are partly identical and partly similar. They target the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree and conceptually similar to an average degree for at least a significant part of the public. The earlier mark has a normal degree of distinctiveness. Even if we assume that there is a part of the public that will not recognise any meaning in one or all elements of the signs at issue, this may have no impact on the outcome, since the fact that the signs would be neutral on conceptual level may not offset the visual and aural similarities.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark 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).

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the relevant public. 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 French trade mark registration. 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 (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

Teodora Valentinova TSENOVA-PETROVA

Matthias KLOPFER

Sandra IBAÑEZ

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.