OPPOSITION Nо B 3 071 132

 

Germanos Group Sal Off Shore, Immeuble BLF, 5ème étage Rond-point du Metropolitan Palace Hotel Horch Tabet / Sin El Fil, Beyrouth, Lebanon (opponent), represented by Inlex Ip Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Mesoskinline Aps, Juelsmindevej 57, 7120 Vejle Øst, Denmark (applicant), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative).

On 29/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 071 132 is partially upheld, namely for the following contested goods and services: Class 3: Cosmetics and cosmetic preparations. Class 5: Medicated preparations for skin treatment. Class 8: Hand-operated apparatus for the cosmetic care of eyebrows. Class 44: Cosmetic treatment.

2.	European Union trade mark application No 17 937 618 is rejected for all the above goods and services. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 937 618 MESOSKINLINE (word mark). The opposition is based on EUTM registration (EU) No 7 232 614, MESOLINE SYSTEM (word mark) and on French trade mark registration No 3 652 032, (figurative mark). 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 requested that the opponent submit proof of use of the trade marks on which the opposition is based.

 

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

 

The date of filing of the contested application is 31/07/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and France, respectively, from 31/07/2013 to 30/07/2018 inclusive.

Furthermore, the evidence must show use of the trade marks  for the goods and services on which the opposition is based, namely the following:

 

EUTM registration No 7 232 614

Class 3: Cosmetics; hair lotions

Class 10: Surgical, medical, apparatus and instruments

Class 44: Medical services; hygienic and beauty care for human beings

French trade mark registration No 3 652 032

Class 3: Cosmetics; hair lotions; beauty masks

Class 5: Chemical preparations for medical or pharmaceutical purposes

Class 10: Massage apparatus; esthetic massage apparatus

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

 

On 11/11/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 16/01/2020 to submit evidence of use of the earlier trade marks. Upon request of the opponent, this time limit has been extended until 16/03/2020. On 13/03/2020, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is the following:

Promotional initiatives

Annex 1: seven extracts from specialised press release (mostly in English and French, one in Polish and one in German), dated between 2012 and 2017 (inside the relevant period with the exception of one extract including a date in 2012), mentioning the sign ‘Mesoline’ and/or displaying the opponent’s goods (cosmetic preparations for the skin and hair) sold under the brand along with information concerning their use and cosmetic effect as in the sample pictures below.

Annex 3-4: several extracts of the Facebook and Instagram pages and publications related to the products ‘MESOLINE’ in different languages (e.g. Greek, , English, Polish and German). They are dated inside the relevant period and mention the sign ‘Mesoline’ and/or display the opponent’s goods (cosmetic preparations for the skin and hair) sold under the brand

Annex 5: Pictures, extracts of social media pages and marketing materials relating to the participation of the opponent to international fairs in the field of aesthetic treatment (e.g. Monaco Grimaldi Forum 2017, CCR Expo 2017 in London). These pieces of evidence show the opponent’s goods (cosmetic preparations for the skin and hair) sold under the brand . Furthermore, as it can be seen below, the brand also appears on exhibition stands and marketing material.

Annex 9: Marketing material including case reports, with testimonies of different professionals using Mesoline-branded products. The document is in English and it is dated October 2016 (inside the relevant period).

Annex 10: three samples of newsletters sent by MD Skin Solutions (allegedly to its list of clients and partners) mentioning the sign ‘Mesoline’ and/or displaying the opponent’s goods (cosmetic preparations for the skin and hair) sold under the brand . These samples are in English and are dated inside the relevant period.

Product registration certificates

Annex 2: Copy of certificates and notification of registration with the competent institutions, namely the European Commission (DG Grow) and the Luxembourg Ministry of Health regarding the opponent’s skin and hair cosmetic products (e.g. ‘Mesoline Hair’, ‘Mesoline Acne’, ‘Mesoline Antiox’, ‘Mesoline Bodyfirm’, ‘Mesoline Refresh’, ‘Mesoline Shape’, ‘Mesoline Shine’, ‘Mesoline Slim’, ‘Mesoline Tight’). In all these certificates, the products are described as cosmetic products or cosmetic solutions included in the categories of hair products, hair and scalp products, skin products, face care products other than face mask. Furthermore, the certificates issued by the Luxembourg Ministry of Health also mention the Regulation (EC) No 1223/2009 which specifically concerns cosmetic products.

Sales declaration and invoices

Annex 6: document signed by an external auditor including substantial sales figures of MESOLINE products for the period 2013-2018. This document includes the indication of the sign ‘MESOLINE’ along with a product code as well as the company to which the product has been sold. However, there is no indication of addresses or countries in which these companies are based.

Annex 7: around 20 invoices issued by MD Skin Solutions (based in Luxembourg) to clients based in Germany, Bulgaria, Lithuania and Switzerland for the sale of, inter alia, MESOLINE-branded products (skin and hair cosmetic preparations) dated between 2014 and 2017 (inside the relevant period). The quantity of goods invoiced ranges from 20 to 150 units per invoice and the amounts invoiced for these units are moderate in consideration of the category of product concerned.

Annex 8: several invoices addressed to the MD Skin Solutions (based in Luxembourg) by two companies (based in Spain) producing MESOLINE products. The products are manufactured on the basis of the opponent’s formulas and instructions, as explained by the opponent in its statements.

Assessment of the evidence

The Court of Justice has held that there is 'genuine use' of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

As mentioned above, according to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

French trade mark registration No 3 652 032

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

As mentioned above, the opponent was required to prove that the earlier mark was put to genuine use in France from 31/07/2013 to 30/07/2018 inclusive.

The only evidence that could, in principle, refer to the territory of France, is composed of five extracts from specialised press release that are in French and English (Annex 1). Taking into account that no information concerning the extent to which this material has been distributed, even assuming that this material was conceived to target the French public, this evidence does not provide the Office with any information concerning the volume of revenues generated by the sale of the relevant goods under the earlier mark in France nor does it demonstrate that the owner has seriously tried to acquire a commercial position in the relevant market.

Indeed, all the invoices submitted by the opponent are issued by a company based in Luxembourg and address clients based in other countries, namely Germany, Lithuania, Switzerland and Bulgaria (Annex 7). Also the document including sales figures (Annex 6) does not provide any useful information in this respect since it does not include any address of the clients.

In view of all the above and after an overall assessment of the evidence submitted, in the absence of further supporting material, the opponent cannot be deemed to have proven the extent of the use of this earlier mark in the relevant territory. The evidence, in its entirety, does not allow the Opposition Division, without resorting to probabilities, speculations or presumptions, to establish that there was genuine use of this earlier mark in the relevant territory within the relevant period (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR insofar as it is based on French trade mark No 3 652 032.

EUTM registration No 7 232 614

Time of use

Most of the evidence, including the promotional material, the invoices as well as the extracts of the social media pages, is dated within the relevant period (from 23/05/2013 to 22/05/2018 included).

Therefore, the evidence of use sufficiently indicates the time of use.

Place of use

The documents submitted, in particular the invoices, demonstrate that the place of use is European Union. This can be inferred from the language of the documents (English, German, Greek), the currency in the documents (euros) and the addresses of the clients (indicated in the invoices) in several parts of the European Union (Germany, Lithuania and Bulgaria). Therefore, the evidence submitted contains sufficient indications concerning the place of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency. The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In the present case, the documents filed, around 20 invoices, as well as the promotional material, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The invoices filed by the opponent (Annex 7) relate to four years of the relevant period and demonstrate the frequency of use of the mark during that period. Although the evidence does not indicate a particularly high commercial volume of use, it demonstrates that the goods were sold to clients based in different parts of the European Union. Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the invoices are non-consecutive and cover four years must also be taken into consideration. The sample of invoices provided demonstrates continuous and regular use. Therefore, it is clear from the evidence submitted that the opponent provided goods under the mark “MESOLINE” in the relevant market, and this gives the Opposition Division sufficient information regarding the opponent’s commercial activities throughout the relevant period.

The invoices and the promotional material (including the product pictures) can be considered sufficiently representative evidence of the trade mark being used publicly and outwardly with a view to creating commercial markets. In view of the Opposition Division the documents prove that the use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between the goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (cosmetics) and the opponent. In this respect although the invoices and the promotional material appears to be issued by third party (MD Skin Solutions), the fact that the opponent submitted evidence of use of its mark by a third party implicitly demonstrates that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by this other company was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Therefore, the Opposition Division considers that the evidence shows use of the earlier sign as a trade mark.

Use of the trade mark as registered

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s sign is registered as the word trade mark ‘MESOLINE SYSTEM’. In the evidence submitted, the sign appears as ‘MESOLINE’ (e.g. in the invoices and in the text of the promotional material) and as the figurative mark (on the products and on the images of the promotional material).

The applicant argues that the earlier mark is used in a form that does alter the distinctive character of the mark in the form it is registered because the earlier mark is displayed on the product with the addition of the figurative element and with the omission of the verbal element ‘SYSTEM’.

As regards the omission of the verbal element ‘SYSTEM’, this element lacks of distinctiveness in relation to cosmetic products (26/06/2014, R 2290/2013-1, N+S Nature System (FIGURATIVE MARK), § 16; 22/01/2014 – R 406/2013-2 – BONASYSTEMS / BONA et al., § 37). ‘SYSTEM’ refers to ‘a set of connected things or devices which operate together’ and the goods in question may be part of a system (organised group of things). Indeed, it is rather common in the market the use of expression like ‘skin care system’ or ‘hair care system’ to indicate a group of products that are used in combination in a cosmetic treatment. Therefore, it is considered that its omission does not significantly alter the distinctive character of the earlier mark.

In order to support its argument, the applicant refers to the following extract from a decision of the Boards of Appeal assessing the distinctiveness of the earlier mark ‘MESOLINE SYSTEM’ (27/06/2013, R 813/2012-2, MESOLINE SYSTEM, § 21):

Further, even if it were accepted that the English-speaking relevant public would see ‘MESO’ as constituting the abbreviation of the term ‘mesotherapy’, in the opinion of the Board, the term ‘MESOLINE’ would seem a strange and incomplete way to refer to a line of mesotherapy products and adding the term ‘SYSTEM’ makes the combination of the terms even more nonsensical.

In the applicant’s view, from this sentence it should be implied that the element ‘SYSTEM’ alters the distinctive character of the earlier mark. However, the Opposition division is of the opinion that the mentioned decision, in assessing the distinctiveness of the earlier mark as a whole, intended to clarify that the addition of the word ‘SYSTEM’ did not add any concept that could ease the finding of a descriptive meaning in the element ‘MESOLINE’ but it did not excluded that the element ‘SYSTEM’ lacked of distinctive character. Indeed, in the same decision the Boards of Appeal states that:

Although it could be argued that it is made up of elements which may be of low or non-distinctive character when seen separately, as a whole it cannot be seen to be lacking distinctiveness.

Furthermore, the mentioned decision of the Boards of Appeal fully endorsed the reasoning of the Cancellation decision (No 5530 C) where ‘System’ is considered a non-distinctive element (see below).  

In the light of the mentioned case law (26/06/2014, R 2290/2013-1, N+S Nature System (FIGURATIVE MARK), § 16; 22/01/2014 – R 406/2013-2 – BONASYSTEMS / BONA et al., § 37) and taking into account the common use of the word ‘SYSTEM’ in the market (also in the cosmetic sector), contrary to the applicant’s view, it is considered that the omission of the word ‘SYSTEM’ does not alter the distinctive character of the mark as registered.

With specific reference to the addition of the figurative element , it will be perceived as an abstract figurative element which does not alter the capacity of the word ‘MESOLINE’ to indicate the commercial origin of the products. Therefore, also taking into account its size, it does not alter the overall impression produced by the mark at issue. The use of the figurative element must be regarded as an acceptable variation of the earlier mark.

In this respect, the court has held that several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34) and that where an addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.). This also applies to the case at hand. Therefore, the sign above show use of the mark as registered or in a form essentially the same as that registered and such use, therefore, constitutes use of the earlier mark under Article 18(1), second subparagraph, point (a) EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark(s) during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services of the earlier mark on which the opposition is based.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence proves use only for skincare cosmetic preparations; haircare cosmetic preparations being homogeneous sub-categories of the opponent’s cosmetics in Class 3. With specific reference to the earlier medical apparatus in Class 5, the evidence submitted did not show any sale or promotion of this category of goods sold under the earlier mark. Furthermore, even if the opponent’s goods can be applied with a cosmetic treatment (e.g. micro needling), there is no evidence that the services in Class 44 have been provided under the earlier mark.

For the sake of completeness, since it cannot be clearly inferred from the evidence submitted that the haircare cosmetic preparations sold under the earlier mark were specifically in the form of hair lotions, it is considered that genuine use for this specific type of haircare preparation has not been proven. However, considering that the category of haircare cosmetic preparations for which genuine use of the earlier mark has been proven, also include hair lotions, this will not have an impact in the outcome of the present decision.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:

 

Class 3:   Skincare cosmetic preparations; Haircare cosmetic preparations.

  

The Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

 

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 and services

 

After the assessment of the proof of use, the goods on which the opposition is based are the following:

 

Class 3: Skincare cosmetic preparations; Haircare cosmetic preparations.

The contested goods and services are the following:

 

Class 3: Cosmetics and cosmetic preparations.

Class 5: Medicated preparations for skin treatment.

Class 8: Hand-operated apparatus for the cosmetic care of eyebrows.

Class 44: Cosmetic treatment; Medical treatment services.

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

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 and cosmetic preparations include as a broader category the opponent’s skincare cosmetic preparations; haircare cosmetic preparations. Since the Office cannot dissect ex officio the broader category of the contested goods, they are identical.

Contested goods in Class 5

The contested medicated preparations for skin treatment are similar to the opponent’s skincare cosmetic preparations since they can have the same method of use and they can coincide in public, producers and distribution channels.

Contested goods in Class 8

The contested hand-operated apparatus for the cosmetic care of eyebrows are similar to a low degree with the opponent’s goods in Class 3. Indeed, they have the same or very similar purpose and they can coincide in public and distribution channels.

Contested services in Class 44

The contested cosmetic treatment are similar to the opponent’s goods in Class 3 since they have the same purpose and they can coincide in public and distribution channels. Furthermore, they are complementary.

The contested medical treatment services are services related to the maintenance or improvement of health via the treatment of disease, illness, injury and other physical and mental impairments in human beings. These services are dissimilar to all the opponent’s goods in Classes 3. They differ in their natures, methods of use, producers/providers and distribution channels. They are neither complementary, nor in competition.

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.

The goods found to be identical or similar (to varying degrees) are aimed predominantly at the general public, but are also directed to experts, for example, professionals in the field of beauty and skincare and medical professionals. The services found to be similar are directed to the general public.

It is considered that the degree of attention varies from average to high.

In particular, while for hand-operated apparatus for the cosmetic care of eyebrows an average degree of attention can be considered, with specific reference to cosmetic preparations, the public at large and the professional public will, when choosing some of these goods, pay greater attention and take greater care because the goods may require special attention because of skin compatibility (e.g. non-medicated dermatological creams and lotions for the skin) or may contain toxic substances, so a greater level of attention can be assumed in relation to these goods. Similar considerations applies for some cosmetic treatment services that generally imply the use of cosmetic products (13/07/2020, R 2022/2019-5, LIQUID GOLD (fig.), § 21).

Insofar as pharmaceutical preparations are concerned, whether or not issued on prescription, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health or the health of their animals.

 

c)  The signs

 

MESOLINE SYSTEM	MESOSKINLINE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Court has held that, 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).

Also taking into account the type of goods and services at issue, the English-speaking public will recognise the sequences of letter ‘LINE’ (both in the earlier mark and in the contested sign) and ‘SKIN’ (in the contested sign) as referring respectively to ‘product or service line’ and to ‘the natural covering of the human body’. Therefore, it is consider that this part of the relevant public will break the elements ‘MESOLINE’ (in the earlier mark) and ‘MESOSKINLINE’ into the components ‘MESO’ and ‘LINE’ and into ‘MESO’, ‘SKIN’ and ‘LINE’, respectively.

Given that the goods and services can be applied or have an effect to the skin, the differing sequence of letter ‘SKIN’ (in the contested sign) will be non-distinctive for this part of the public. Therefore, the Opposition division finds it appropriate to focus the present comparison on the English-speaking part of the public, for which the likelihood of confusion can be higher.

Also the coinciding component ‘LINE’ will be considered non-distinctive in relation to the goods and services at issue in both marks, given that the word ‘line’ is commonly used in the specific market sector to describe an assembly of related products or services that are marketed under one brand.

Bearing in mind the goods and services in question (i.e. cosmetics, cosmetic tools and cosmetic treatments, medicated preparations for skin treatment), the coinciding component, ‘MESO’, will be perceived by at least by the professional public as alluding to ‘mesotherapy’. For this part of the public this component is considered as having a below average degree of inherent distinctiveness for the relevant goods and services in both marks.

It is not excluded that part of the general public will also perceive such allusive meaning. However, it is considered that a substantial part of the general public will perceive this component as a prefix of Greek origin that means ‘middle or intermediate’ in English (27/06/2013 – R 813/2012-2 – MESOLINE SYSTEM) or as meaningless sequence of letters. In both scenario this substantial part of the general public will not perceive in this component any meaning related to the goods and services at issue. Therefore, the Opposition Division finds it appropriate to further focus the comparison of the signs on this substantial part of the English-speaking general public for which this component has an average degree of inherent distinctiveness. For this part of the public, the likelihood of confusion will be higher.

As already explained in the above section where proof of use has been assessed, the element ‘SYSTEM’ in the earlier mark is non-distinctive in relation to the relevant goods which may be part of an organized group of things (26/06/2014, R 2290/2013-1, N+S Nature System (FIGURATIVE MARK), § 16).

Visually and aurally, the signs coincide in the components ‘MESO’ and ‘LINE (and their pronunciation) composing the earlier mark which are identically reproduced in the contested sign where they are however separated by the additional non-distinctive component ‘SKIN’ (and its pronunciation). The signs also differ in the additional non-distinctive element ‘SYSTEM’ (and its pronunciation) of the earlier mark.

It is particularly relevant that the signs coincide in their first four letters composing their most distinctive components. Indeed, 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 signs are visually and aurally similar at least to an average degree.

 

Conceptually, the meaningful components of the signs ‘SYSTEM’, ‘SKIN’ and ‘LINE’ are non-distinctive and they are not able to create any semantic distance or similarity. Therefore, a conceptual comparison is not possible for the part of the public that will perceive ‘MESO’ as a meaningless sequence of letters. For the part of the public that will perceive in this component the meaning of ‘middle or intermediate’, the signs are conceptually highly similar.

  

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 claimed that the earlier trade mark enjoys a high degree of inherent distinctiveness, as there is no relationship between the mark and the goods covered. However, when an earlier mark is not descriptive (or is not otherwise non-distinctive), Office practice is to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). However, a mark will not necessarily have a higher degree of distinctiveness just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich EU:C:2013:317, § 71).

Furthermore, according to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive component as stated above in section c) of the present decision.

e)  Global assessment, other arguments and conclusion

 

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods. The degree of attention varies form average to high. The distinctiveness of the earlier mark is normal.

Furthermore, it was established above that for the relevant public the signs are aurally and visually at least similar to an average degree. They are neutral at a conceptual level for a part of the public while they are highly similar for the remaining part that will perceive the meaning of ‘middle or intermediate in the component ‘MESO’.

Their similarities originate from the fact that the components ‘MESO’ and ‘LINE’ composing the first element of the earlier mark ‘MESOLINE’ are entirely reproduced in the contested sign, albeit separated by the non-distinctive component ‘SKIN’. The differences between the signs are confined to non-distinctive components/elements that are clearly not able to counterbalance the striking similarities at a visual and aural level.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer, even those who pay a high degree of attention, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public that will perceive the element ‘MESO’ as devoid of any meaning or as referring to ‘middle or intermediate’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. There is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 232 614. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar (to varying degrees), even for those contested goods found to be similar to a low degree to the opponent’s goods. Indeed, applying the aforementioned principle of interdependence, it is considered that the similarities between the signs are sufficient to offset the low degree of similarity between some of the goods.

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)(b) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent in relation to identical and similar (to varying degrees) goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

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

 

 

Cristina SENERIO LLOVET

Rosario GURRIERI

Maria SLAVOVA

 

 

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.