OPPOSITION No B 3 052 311

DADO-cosmed GmbH, Lindenstraße 15, 75365, Calw, Germany (opponent), represented by KLAKA, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Blue Dot sp. z o. o. sp. k., Belwederska 20/22, 00-762 Warszawa, Poland (applicant), represented by Katarzyna Izabela Kręźlewicz, ul. L. Staffa 9/100, 01-891 Warszawa,

Poland (professional representative).

On 22/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 311 is upheld for all the contested goods.

2. European Union trade mark application No 17 888 111 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 17 888 111 for the figurative mark . The opposition is based on European Union trade mark registration No 229 591 for the word mark ‘PURDERM’. 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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

a) The goods

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

Class 3: Perfumery, cosmetics, in particular face lotions, skin creams, cosmetic face masks, body and face powders, skin and sun protection oils, lipsticks and shaving lotions, hair care preparations, in particular hair lotions and hairdressing creams; soaps.

The contested goods are the following:

Class 3: Cosmetics.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Cosmetics are 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 are directed at the public at large.

The degree of attention is average.

c) The signs

PURDERM
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).

For part of the relevant public the earlier mark ‘PURDERM’ and the verbal element ‘PUREDERM’ of the contested sign do not convey any specific meaning and are, therefore, distinctive.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Therefore, it cannot be excluded that for another part of the public the signs might evoke the meaning of ‘clean skin’. This is because the signs’ initial letters ‘PUR’ or ‘PURE’ have the meaning of ‘clean’ in various European languages (e.g. French and English) and the public in those territories will perceive them with the same, because they are very close equivalents to each other. The part ‘DERM’, which is identical for both signs, will be perceived as referring to ‘skin’, at least in the same territories where the initial part of the signs will be perceived as meaningful. In such a case, bearing in mind that the relevant goods are cosmetic products, the degree of distinctiveness of the verbal elements either on their own or in conjunction with one another in both signs is very weak, as they will be perceived as indicating the intended purpose of the goods, namely to make/keep the skin clean.

Due to the verbal elements having the same concept in both signs, their degree of distinctiveness is the same, irrespective of whether their meanings will be perceived or not by different parts of the public, and therefore it has no impact on the comparison.

Conceptually, for part of the public in the relevant territory that does not perceive any meaning in either of the signs, a conceptual comparison is not possible, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs. Conversely, for the part of the public that will perceive in the elements ‘PURDERM’ and ‘PUREDERM’ the meaning of ‘clean skin’, the signs are conceptually identical, because the difference in the letter ‘E’ in the element ‘PUR/E’ (regardless of its omission, especially in respect of some of the relevant languages) will not affect the perception of the concept by the relevant public.

Aurally, part of the public, as the English-speaking public, will pronounce both signs identically. Other parts of the public, for example the Spanish-speaking public, may pronounce all the letters, so in the contested sign there will be one letter ‘E’ more. Therefore, the signs are either identical or highly similar in their aural aspect.

Visually, the signs coincide in ‘PUR*DERM’ which is the entire earlier mark. However, they differ in the additional letter ‘E’ in the middle part of the contested sign, as well as in the slightly stylised type font and in the red background. However, the difference in the letter ‘E’ is not striking as it is in the middle part of a relatively long word and can easily be omitted by the relevant public. The red background and the stylised type font are elements of purely decorative character.

Therefore, the signs are visually similar to a high degree.

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.

Considering what has been stated above in section c) of this decision, the earlier trade mark might be of very weak to average distinctive character in relation to the goods and in respect of the particular language in a particular part of the relevant territory.

e) 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 that 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).

In the present case, the goods are identical and the signs have been found visually similar to a high degree, aurally identical or highly similar, and depending on the language of the public, the conceptual aspect either does not influence the assessment or the signs are conceptually identical.

In its observation the applicant claimed that the earlier mark, considering the goods in question and the meaning of its elements, is of very weak distinctive character and to that extent its protection is also very limited.

While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to the identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

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

The applicant supports its observation that the earlier mark has a low distinctive character, and therefore no likelihood of confusion should exist, by giving examples showing that many trade marks include the part ‘DERM’, ‘DERMA’ or ‘DERMAL’ and ‘Pur’. However, as stated above, the distinctiveness of these elements in the present case is immaterial and under these circumstances the applicant’s claims must be set aside.

As to the example v (11/01/2010, R 834/2009-1), it should be stated that there are other additional and distinctive elements (e.g. PALMER’S) that allow the public safely to distinguish between the marks and therefore no likelihood of confusion exist.

In the other cited decision ‘PURDERM’ v (08/11/2010, R 0769/2010-2) the conclusion of the Board is that the signs are phonetically and visually dissimilar and that there is no proven conceptual equivalent between the two marks. Therefore, this decision is also not relevant to the present case.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 229 591. It follows that the contested trade mark must be rejected entirely.

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

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Francesca CANGARI

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.