OPPOSITION No B 3 065 961

Tatiana Ignatova, z.k. Lylin, bl. 541, floor 4, apt. 56, 1174 Sofia, Bulgaria (opponent), represented by Bojinov & Bojinov Ltd., 38 Alabin Str., 1000, Sofia, Bulgaria (professional representative)

a g a i n s t

Sailin Luo, No. 25 Gongyi Rd, Xinhua Town, Huadudis Guangzhou, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 22/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 961 is upheld for all the contested goods.

2. European Union trade mark application No 17 903 022 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 17 903 022 , namely against all the goods in Class 3. The opposition is based on Bulgarian trade mark registration No 92 950 . The opponent invoked Article 8(1)(b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.

a) The goods

The goods on which the opposition is, inter alia, based are the following:

Class 3: Cosmetics; nail gel; nail polish; cosmetics for animals; beauty masks; hair conditioners; cleaning preparations; polishing preparations; paper sandpaper; preparations for dentures and teeth.

The contested goods are the following:

Class 3: Cosmetics; nail gel; nail polish; nail cosmetics; cosmetics for animals; hair wax; lipsticks; beauty masks; hair conditioners; cleaning preparations; polishing preparations; glass paper; dentifrices.

The contested cosmetics; nail gel; nail polish; cosmetics for animals; beauty masks; hair conditioners; cleaning preparations and polishing preparations are identically contained in both lists of goods.

The contested nail cosmetics; hair wax; lipsticks are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested glass paper and the opponent’s paper sandpaper are names used for a type of coated abrasive that consists of sheets of paper or cloth with abrasive material glued to one face. Consequently, since they concern the same product they are identical.

The contested dentifrices are included in the broad category of the opponent’s preparations for dentures and teeth. Therefore, they are identical.

b) The signs

Earlier trade mark	Contested sign

The signs are identical.

c) Conclusion

Both the signs and the goods are identical.

Considering all the above, the opposition is well founded on the basis of the opponent’s Bulgarian trade mark registration No 92 950. 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

Solveiga BIEZA

Cynthia DEN DEKKER

Christophe DU JARDIN

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.