OPPOSITION No B 3 064 000

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

a g a i n s t

Shri Shubham Limited, 909, Unit 9, 9/F, Block A, Hunghom Commercial Centre, 39 Ma Tau Wai Road, Hunghom, Kowloon, Hong Kong (applicant), represented by Charlie Bason, Venture Proof Limited, Crest House, 102-104 Church Road, TW11 8PY Teddington, United Kingdom (professional representative).

On 18/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 000 is upheld for all the contested goods.

2. European Union trade mark application No 17 887 815 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 17 887 815 for the word mark ‘SELASFORA’. The opposition is based on French trade mark registration No 4 232 601 and European Union trade mark registration No 15 359 086 for the figurative mark . 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 4 232 601.

a) The goods

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs, optical discs; compact discs, DVDs and other digital recording media; calculating machines, data processing equipment, computers; tablet computers, smartphones, electronic book readers; computer software (recorded programs); peripherals adapted for use with computers; detectors; smart cards [integrated circuit cards].

Class 14: Jewelry; jewellery, precious stones; horological and chronometric instruments; jewel cases; watch straps, watch chains, watch springs or watch glasses; key rings [trinkets or fobs].

Class 18: Travelling bags; wallets; purses; credit card cases [wallets]; casual bags; net bags for shopping.

Class 24: Fabrics; bed blankets; fabrics; elastic woven material; velvet; make-up removal cloths [textile], other than impregnated with cosmetics.

Class 25: Footwear.

The contested goods are the following:

Class 9: Wearable digital electronic communication devices; smart rings; smart bracelets; smart bands; smart jewellery, namely, wearable digital electronic communication devices in the form of jewellery; application software for wearable digital electronic communication devices.

Class 14: Jewellery; fashion jewellery; articles of fashion jewellery for the wrist, neck and ankle, namely bangle bracelets, necklaces, neck chains, ankle bracelets; gemstone jewellery; bracelets [jewellery]; necklaces [jewellery]; ankle bracelets; jewellery rope chains for anklets; charms; necklace charms; clasps for jewellery; easy release clasps for jewellery; fashion jewellery pouches; fitted jewellery pouches.

Class 18: Carrying bags; reusable shopping bags; backpacks; fashion handbags; handbags, purses and wallets; bags; pouches; holders in the nature of cases for keys, wallets for keys, banknote holders, coin holders, key holders, credit card holders, card holders, luggage label holders, document holders, ticket holders, personal item holders; all the aforesaid goods excluding of leather and animal hides.

Class 24: Cloth; cloths; fabrics; textile material.

Class 25: Footwear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 9

The contested wearable digital electronic communication devices; smart rings; smart bracelets; smart bands; smart jewellery, namely, wearable digital electronic communication devices in the form of jewellery are highly similar to the earlier smartphones. They are often offered by the same companies which produce synced devices, and thus they are also complementary to each other. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use.

The contested application software for wearable digital electronic communication devices is highly similar to the earlier computer software (recorded programs). They are often offered by the same companies and sold through the same distribution channels. Furthermore, they have same nature and same method of use.

Contested goods in Class 14

Jewellery is identically contained in both lists of goods.

The contested fashion jewellery; articles of fashion jewellery for the wrist, neck and ankle, namely bangle bracelets, necklaces, neck chains, ankle bracelets; gemstone jewellery; bracelets [jewellery]; necklaces [jewellery]; ankle bracelets; jewellery rope chains for anklets; charms; necklace charms; clasps for jewellery; easy release clasps for jewellery are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested fashion jewellery pouches; fitted jewellery pouches are complementary accessories to conserve and carry of jewellery goods. They may have the same producers, end users and distribution channels with the opponent’s jewellery. Therefore, they are similar.

Contested goods in Class 18

The contested reusable shopping bags all the aforesaid goods excluding of leather and animal hides overlap with the opponent’s net bags for shopping. The contested bags; carrying bags; backpacks; fashion handbags; handbags; pouches all the aforesaid goods excluding of leather and animal hides overlap with the opponent’s casual bags. The contested credit card holders, card holders all the aforesaid goods excluding of leather and animal hides overlap with the opponent’s credit card cases [wallets]. The contested banknote holders, coin holders all the aforesaid goods excluding of leather and animal hides overlap with the opponent’s purses. Therefore, they are identical.

The contested wallets for keys; wallets all the aforesaid goods excluding of leather and animal hides are included in the broad category of the opponent’s wallets. The contested purses all the aforesaid goods excluding of leather and animal hides are included in the broad category of the opponent’s purses. Therefore, they are identical.

The contested holders in the nature of cases for keys, key holders, luggage label holders, document holders, ticket holders, personal item holders; all the aforesaid goods excluding of leather and animal hides are, at least, similar to the opponent’s credit card cases [wallets] since they have same method of use, usual origin of the goods and distribution channels.

Contested goods in Class 24

Fabrics are identically contained in both lists of goods.

The contested cloth; cloths are included in the broad category of the opponent’s fabrics. Therefore, they are identical.

The contested textile material includes, as a broader category, the opponent’s fabrics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

Footwear is identically contained in both lists of goods.

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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the frequency of purchase and the price of the relevant goods.

c) The signs

	SELASFORA
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 consists of the verbal element ‘SEPHORA’ in a slightly-stylised type face and a figurative element comprising four short black horizontal strokes which are placed to the right of the verbal element 'SEPHORA'.

The verbal element ‘SEPHORA’ of the earlier mark and the verbal element ‘SELASFORA’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive to a normal degree.

The figurative element of the earlier mark, which will be perceived as having a decorative purpose, is distinctive to a normal degree since it is not related to the relevant goods.

The earlier mark has no element that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the sequence of letters ‘S-E-*-*-*-*-O-R-A’. However, they differ in the sequence of letters ‘P-H’ (of the earlier mark) and in the figurative element of the earlier mark and the string of letters ‘L-A-S-F’ of the contested sign.

Taking into account that the coincidence of letters appears both in the beginning and at end of the verbal elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘S-E-*-*-*-F-O-R-A’ and ‘S-E-P-H-O-R-A’ present identically in both signs because, in French, the letters ‘P-H’ that came side by side are pronounced identically as the letter ‘F’. The pronunciation differs in the sound of the letters ‘L-A-S’ of the contested sign.

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

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 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.

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).

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).

In present case, the goods are partly identical and partly similar. They target the public at large as well as at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high. The distinctiveness of the earlier mark is normal. The signs are visually similar to an average degree, aurally similar to an above average degree, and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 232 601. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark No 4 232 601 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

Benoit VLEMINCQ

Ali KUÇUKŞAHİN

Begoña URIARTE VALIENTE

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.