OPPOSITION No B 3 093 810

Cosmo Group Sp. z o.o. Sp. K., ul. Jasielska 10A, 60-476 Poznań, Poland (opponent), represented by Wojciech Lisiecki, ul. Ściegiennego 118, 60-304 Poznań, Poland (professional representative)

a g a i n s t

Viokox S.A., Camino de la Lloma, 24, 46960 Aldaia (Valencia), Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 810 is partially upheld, namely for the following contested goods:

Class 3: Hair care lotions.

2. European Union trade mark application No 17 933 012 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 933 012 ‘CLICK PEN’. The opposition is based on European Union trade mark registration No 16 638 091 ‘Clickpen’. The opponent invoked Article 8(1)(a) and (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.

a) The goods

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

Class 3: Nail-art polishes for cosmetic purposes; UV curable nail polishes; nail polishes; nail polishes; nail base coats; nail base coats; nail polish pens; nail polish top coat; nail polish bases; nail polish base coat; brush-on nail polishes.

Class 21: Nail polish applicator; nail art brushes; cosmetic brushes.

The contested goods are the following:

Class 3: Bleaching preparations; and other substances for laundry use; cleaning-, polishing, scouring and abrasive preparations; hair care lotions.

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 hair care lotions and the opponent’s cosmetic brushes in Class 21 coincide in their fundamental purpose (they are used for beautification) although their natures are different, considering one is a lotion and the other an instrument. However, they can coincide in their customers and distribution channels being cosmetics stores or the same or adjacent sections of large department stores. Therefore, these goods under comparison are considered to be similar to a low degree.

The remaining contested goods, namely bleaching preparations; and other substances for laundry use; cleaning-, polishing, scouring and abrasive preparations have no point of contact with the opponent’s goods comprising nail polishing-related articles in Classes 3 and 21 as well as cosmetics brushes in Class 21. These contested goods are used for general cleaning purposes while the opponent’s goods are clearly for cosmetic or beautification purposes. Normally, these goods do not coincide in their manufacturers, distribution channels or customers, and they are neither in competition nor complementary. In particular, the contested polishing preparations are essentially used for cleansing and smoothing a surface of certain objects such as cars, jewellery, leather or floor. Such products are not normally used for personal hygiene or embellishment, in fact, their use on human body is rather contraindicated, given the specific chemicals used which could potentially cause harm to the human body. These contested goods, including polishing preparations, have, therefore, nothing in common with any of opponent’s goods, consequently, they must be considered to be dissimilar.

b) The signs

Clickpen	CLICK PEN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both the earlier mark and the contested sign are word marks. This means that as there is no irregular capitalisation, the use of lower- or upper-case letters are, in general, immaterial. Word marks are identical if they coincide exactly in the string of letters, numbers or other typographic characters, or, if viewed as a whole, they contain a difference so insignificant that it may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 53-54).

In the present case, the sole difference between the signs is the space appearing in the contested sign between the elements, ‘CLICK’ and ‘PEN’. Otherwise, both word marks are completely identical as a whole. Also, the addition of a space in the contested sign introduces a difference so insignificant that it may go unnoticed by the consumer, thus, it does not change how the sign is perceived.

Bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety, the difference between the signs at issue is an insignificant one, which would be perceived by a reasonably observant consumer only upon examining the signs side by side.

Based on all the foregoing, it is concluded that the signs are identical.

c) 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).

The signs are identical and some of the goods, as established above in section a) of this decision, are similar to a low degree. Taking into account the above defined principle of interdependence, it is found that the low degree of similarity between some of the goods is sufficiently offset by the identity of the signs, and consumers are likely to believe that the relevant goods originate from the same undertaking.

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

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark invoked. It follows that the contested trade mark must be rejected for the contested goods found to be similar to a low degree.

The rest of the contested goods are dissimilar. As the 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 goods cannot be successful.

For the sake of completeness, it is noted the opposition based on Article 8(1)(a) EUTMR cannot succeed as none of the goods in conflict are identical.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Nicole CLARKE

Ferenc GAZDA

Biruté SATAITE-GONZÁLEZ

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.