OPPOSITION No B 3 064 880

Verona Products Professional Sp. z.o.o., Andrzejów Duranowski 27B, 96‑500 Sochaczew, Poland (opponent), represented by Maria Przybylska-Karczemska, ul. 10 Lutego 3/1, 90‑303 Łódź, Poland (professional representative)

a g a i n s t

a Novation cosmetics GmbH, Hattinger Str. 417, 44795 Bochum, Germany (applicant), represented by Diekmann Rechtsanwälte, Feldbrunnenstraße 57, 20148 Hamburg, Germany (professional representative).

On 12/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 880 is upheld for all the contested goods.

2. European Union trade mark application No 17 916 512 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 17 916 512 ‘REVITASUN’. The opposition is based on, inter alia, European Union trade mark registration No 16 776 511 ’REVITANUM’. 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 European Union trade mark registration No 16 776 511.

a) The goods

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

Class 3: Toilet soaps and cleaning preparations, including bath and shower preparations; perfumery goods; cologne; eau de toilette (toilet waters); toilet water; perfume; personal deodorants; antiperspirants; cosmetics, including preparations for care, revitalising and beautification of the face and body skin, and hair; creams; tonics; cleansing milks; lotions; make-up and make up removing preparations; lip stick; lipsticks; eyelid shadow; mascara; powders; nail polish; nail varnish remover and nailcare preparations; shampoo; and gels; hair sprays and hair conditioners; hair bleaching and colouring preparations; depilatories; sun-tanning preparations (cosmetics); after-sun and self-tanning preparations; perfumery and/or cosmetics sets.

The contested goods are the following:

Class 3: Cosmetics; body and hair lotions; bath and shower gels, not for medical purposes; exfoliants; sun bronzers; suntan lotion [cosmetics]; shampoo; sunscreen preparations.

Class 21: Cosmetic sponges; dispensers for cosmetics; cosmetic brushes; hand tools for the application of cosmetics; applicators for cosmetics.

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

The term ‘including’, 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).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 3

The contested cosmetics; body and hair lotions; bath and shower gels, not for medical purposes; exfoliants; sun bronzers; suntan lotion [cosmetics]; shampoo; sunscreen preparations are identical to the opponent’s cosmetics, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

Contested goods in Class 21

The contested cosmetic sponges; dispensers for cosmetics; cosmetic brushes; hand tools for the application of cosmetics; applicators for cosmetics are similar to a high degree to the opponent’s cosmetics as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

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, contrary to the applicant’s arguments, the goods found to be identical or similar to a high degree are directed at the public at large whose degree of attention is average.

c) The signs

REVITANUM	REVITASUN
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).

The earlier mark consists of the element ‘REVITANUM’ which, as a whole, has no meaning for the public in the relevant territory and is, therefore, distinctive. However, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, at least a part of the relevant public will associate the element ‘REVITA’ with ‘revitalise’ due to its coincidence with the prefix of similar equivalent words in other EU languages such as ‘revitalise’ in English, ‘revitalisieren’ in German, ‘revitalizar’ in Spanish, ‘revitalizzare’ in Italian, ‘revitaliser’ in French, or ‘revitalizovat’ in Czech and Slovak. As the relevant goods are cosmetics, this is a weak element since it alludes to one of the main purposes of such goods for this part of the public. For the remaining part of the public for which this element is meaningless, it is distinctive.

As regards the contested sign, which consists of the word mark ‘REVITASUN’, it is likely that a part of the public will also associate the element ‘REVITA’ with ‘revitalise’ for the same reasons as explained above. Moreover, in this case, at least a part of the public will also perceive the English word ‘SUN’ as referring to the star at the centre of the solar system. Since the relevant goods are cosmetics and cosmetic utensils, these elements are weak for these goods since they inform consumers about the possible revitalising effects of using those goods when they are exposed to the sun. For the part of the public for which those elements are meaningless, they are distinctive.

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. Therefore, the identical beginnings in these signs will have an impact on the assessment of likelihood of confusion.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In this case the conflicting signs are long signs where most of the letters coincide and the only two differing letters are placed towards the end of the signs.

Visually and aurally, the signs coincide in the string of letters/sounds ‘REVITA*U*’. However, they differ in the seventh and ninth letters/sounds ‘N*M’ of the earlier mark and ‘S*N’ of the contested sign. The signs have the same length and the differing two letters are placed towards the end of the signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the elements included in both signs will be associated by a part of the public with the meanings explained above corresponding to weak elements. To that extent, for this part of the public, the signs are conceptually similar to a low degree, on account of coinciding in the concept of ‘REVITA’.

For the part of the public for which neither of the signs has a meaning 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, despite the presence of a weak element in the mark for part of the public, as stated above in section c) of this decision.

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 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).

The contested goods are partly identical and partly similar to a high degree to the opponent’s goods. The relevant public is the public at large with a normal degree of attention. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually and aurally similar to a high degree given that they coincide in seven out of nine letters and the differing letters are placed in the last syllable of the marks but coincide in the vowel. Conceptually, the signs are similar to a low degree for a part of the relevant public, whereas for the remaining part of the public the conceptual aspect remains neutral.

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 for the part of the public for which the common verbal element ‘REVITA’ is weak for the relevant goods, this does not prevent it from making the signs confusingly similar. In fact, the weak distinctive character of an element does not necessarily imply that that element will not be taken into account by the relevant public if it has a significant impact on its dimension or position (10/07/2012, T‑135/11, CLORALEX/CLOROX, § 35 and 36).

For the rest of the public for whom ‘REVITA’ is distinctive, it being the initial part of the signs where the coincidence lies, the chances of likelihood of confusion are even greater.

The above findings apply irrespective of whether or not the weak distinctive character of ‘SUN’ is perceived. Furthermore, this element is placed at the end of the contested mark.

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 European Union trade mark registration No 16 776 511. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 16 776 511 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 rights 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

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

Andrea VALISA

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.