OPPOSITION No B 3 063 382

Giovanni Cosmetics, Inc., 2064 E. University Drive, 90220, Rancho Dominguez, United States of America (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Notec Comercial LTDA EPP, Avenida Santa Catarina 257 – sala 05, Sao Paulo, Brazil (applicant), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative).

On 19/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 382 is partially upheld, namely for the following contested goods and services:

Class 3: All the goods applied for in this Class.

Class 35: All the services applied for in this Class, except for retail services in relation to aromatic essential oils; online retail services in relation to aromatic essential oils.

2. European Union trade mark application No 17 927 002 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 927 002 for the figurative mark , namely against all the goods in Class 3 and some of the services in Class 35. The opposition is based on, inter alia, Croatian trade mark registration No Z 20 111 065 for the word mark ‘GIOVANNI’. 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 Croatian trade mark registration No Z 20 111 065 for the word mark ‘GIOVANNI’, as it has the broadest scope of protection.

a) The goods and services

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

Class 3: Soaps, shampoo and other haircare preparations, cosmetic preparations, body care preparations, face care preparations, hand sanitizing wipes, perfumery.

The contested goods and services are the following:

Class 3: Cologne; cologne; cosmetics; cosmetic creams; skin whitening creams; aromatic essential oils; skincare cosmetics; perfumery; sun blocking preparations [cosmetics]; colour cosmetics for the eyes; cosmetic kits; collagen preparations for cosmetic purposes; toiletries; perfumery and fragrances; body cleaning and beauty care preparations; oral hygiene preparations; oils for cosmetic purposes; lacquer for cosmetic purposes; perfumed lotions [toilet preparations]; pedicure preparations; facial preparations; cosmetic preparations for body care; tissues impregnated with cosmetics.

Class 35: Retail services in relation to cologne; retail services in relation to cologne; retail services in relation to cosmetics; retail services in relation to cosmetic creams; retail services in relation to skin whitening creams; retail services in relation to aromatic essential oils; retail services in relation to cosmetic preparations for skin care; retail services in relation to perfumery; retail services in relation to sun blocking preparations [cosmetics]; retail services in relation to colour cosmetics for the eyes; retail services in relation to cosmetic kits; retail services in relation to collagen preparations for cosmetic purposes; retail services in relation to toiletries; retail services in relation to perfumery and fragrances; retail services in relation to body cleaning and beauty care preparations; retail services in relation to oral hygiene preparations; retail services in relation to oils for cosmetic purposes; retail services in relation to lacquer for cosmetic purposes; retail services in relation to perfumed lotions [toilet preparations]; retail services in relation to pedicure preparations; retail services in relation to facial preparations; retail services in relation to cosmetic preparations for body care; retail services in relation to tissues impregnated with cosmetics; online retail services in relation to eau de cologne; online retail services in relation to eau de cologne; online retail services in relation to cosmetics; online retail services in relation to cosmetic creams; online retail services in relation to aromatic essential oils; online retail services in relation to cosmetic preparations for skin care; online retail services in relation to perfumery; online retail services in relation to sun blocking preparations [cosmetics]; online retail services in relation to colour cosmetics for the eyes; online retail services in relation to cosmetic kits; online retail services in relation to toiletries; online retail services in relation to perfumery and fragrances; online retail services in relation to body cleaning and beauty care preparations; online retail services in relation to oils for cosmetic purposes; online retail services in relation to lacquer for cosmetic purposes; online retail services in relation to perfumed lotions [toilet preparations]; online retail services in relation to pedicure preparations; online retail services in relation to facial preparations; online retail services in relation to cosmetic preparations for body care; online retail services in relation to tissues impregnated with cosmetics.

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 aromatic essential oils are similar to cosmetic preparations. On the one hand, cosmetics include preparations for enhancing or protecting the odour or fragrance of the body, while on the other, essential oils are fragrant liquid aroma compounds (synthetic or organic) that are used (inter alia) primarily for scenting cosmetic products. Essential oils are usually one of the main ingredients in many cosmetic products. Additionally, they usually coincide in relevant public, distribution channels, and producer.

For the sake of the comparison with services in Class 35 that follows, it is noted that aromatic essential oils are not identical to any of the opponent’s goods.

The contested oils for cosmetic purposes, unlike the aromatic essential oils, are identical to the opponent’s cosmetic preparations. These goods are clearly indicated as being for cosmetic purposes, and, in that sense, they at least overlap with the opponent’s cosmetic preparations.

All of the remaining contested goods in this class are also identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s goods.

Contested services in Class 35

Retail services and online retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

This condition is not fulfilled in relation to the contested retail services in relation to aromatic essential oils and online retail services in relation to aromatic essential oils, as the goods that are involved in the retail services are not identical to any of the opponent’s goods, as mentioned already in the comparison of the goods in Class 3. Therefore, the contested retail services in relation to aromatic essential oils and online retail services in relation to aromatic essential oils are dissimilar to all the opponent’s goods.

For the remaining contested services, the conditions specified above for finding a low degree of similarity are fulfilled, since the goods involved in the services are identical to the opponent’s goods. This identity exists because either they are identically contained in both lists or because the opponent’s goods include, are included in, or overlap with, the goods involved in retail and online retail services.

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 to varying degrees are directed at the public at large. The degree of attention is considered average.

c) The signs

GIOVANNI
Earlier trade mark	Contested sign

The relevant territory is Croatia.

As a word mark, the earlier sign has no elements that could be considered more eye-catching than other elements. In the case of a word mark, it is the word as such that is protected and not its written form.

The element ‘GIOVANNI’, representing the entire earlier mark, will be understood by the relevant Croatian public as referring to an Italian male given name, in part due to the closeness of the two countries and in part due to the use of ‘GIOVANNI’ in a wider cultural context (for example, novels or films from, or based in, Italy). Therefore, it has no meaning in relation to the goods in question and, consequently, is distinctive per se. As the opponent did not claim enhanced distinctiveness due to intensive use or reputation, the distinctiveness of the earlier mark on the whole is average.

The contested sign is a figurative mark and the verbal element ‘GIOVANNA’ will be associated as the female version of the name ‘GIOVANNI’. Therefore, the distinctiveness of this element is average in relation to the goods and services.

The other element, ‘BABY’, is a very basic English word meaning ‘a very young child’ (information extracted from LEXICO at https://www.lexico.com/en/definition/baby on 06/09/2019) and will most likely be understood as such at least by a substantial part of the consumers in the European Union (05/07/2012, T‑466/09, Mc.Baby, EU:T:2012:346, § 40; 08/07/2011, R 883/2010-2, babyTOlove (FIG. MARK) / babylove et al., § 39). Therefore, the element ‘baby’ should be considered as understandable for the Croatian public. In relation to the goods at issue, ‘baby’ will be associated with a characteristic of the goods, adapted for babies or young children, or — by extension — for sensitive people, and in relation to the services that the goods covered by the services are intended for babies; hence, this element is of very limited distinctiveness, if any, in relation to all the relevant goods and services.

The figurative aspects of the contested sign will be perceived as being of a rather decorative nature. The verbal elements are written in a slightly stylised typeface, and the letters ‘A’ are shaped as a reversed letter ‘V’. However, it is quite a trend on the market for the letter ‘A’ to be depicted without the horizontal bar, and in the meaning of the sign it is only the letter ‘A’ that makes sense. The other stylisations of the verbal element, that is the underlining, the larger letters, and the two dots (one at each end), are also decorative. In any case, the stylisation will have a limited impact given that 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). In the present case, the public will certainly refer to the signs by their verbal elements, which will have a much stronger impact on the consumers than the figurative elements.

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.

Considering all the above, the most distinctive element of the contested sign is ‘GIOVANNA’, which is placed at the beginning of the sign.

Aurally and visually, the signs coincide in the string of letters ‘GIOVANN*’ placed at the beginning of both signs and constituting almost the entire earlier mark. The signs differ in the sound/letter ‘I/A’ at the end of the mentioned string of letters. Moreover, they differ in the word ‘BABY’ that has no counterpart in the earlier mark, but is of very limited distinctiveness. Visually the signs also differ in the stylisation of the contested sign. However, as mentioned above, its function is decorative and, consequently, it does not have a strong impact on the consumers’ perception. Therefore, taking into account the distinctiveness and position of the string of letters ‘GIOVANN*’, the signs are aurally and visually similar to an average degree.

Conceptually, as seen above, ‘GIOVANNI’ and ‘GIOVANNA’ can be perceived as referring to the same name, albeit in their different gender versions. The element ‘BABY’ is of limited distinctiveness. Although the two words of the contested sign are stylised in the same way, the whole sign will not convey any different meaning other than the simple sum of its verbal elements. Therefore, the signs are similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 25).

The goods and services have been found identical, similar to varying degrees or dissimilar. The signs are visually and aurally similar to an average degree and conceptually similar to a high degree in their respective words ‘GIOVANNI’ and ‘GIOVANNA’.

The word ‘GIOVANNA’, placed in first position in the sign, is the most distinctive element of the contested sign and it represents almost the entire sole element ‘GIOVANNI’ of the earlier mark, which has a normal degree of distinctiveness.

The other remaining elements, namely the word ‘BABY’, and the figurative embellishments of the contested sign, are of very limited distinctiveness and of a decorative nature. Consequently, the differences between the signs, arising from these elements of the contested sign, cannot outweigh the strong overall similarity resulting from the distinctive elements ‘GIOVANNI’ and ‘GIOVANNA’. Indeed, the public may be led to believe that the goods and services share the same commercial origin.

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). Given the similarity between the sole element of the earlier mark and the most distinctive element of the contested sign, 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 and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for example, that they are intended for babies.

Considering all relevant factors of the case, the Opposition Division is of the opinion that the relevant public might be led to believe that the conflicting goods and services come from the same undertaking or economically linked undertakings, even when the goods and services are similar to a low degree.

It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on European Union trade mark registrations No 2 404 283 for the word mark ‘GIOVANNI’ and No 2 403 509 for the figurative mark .

Since these marks cover a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Francesca CANGERI

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.