OPPOSITION No B 3 071 150

Bell PPHU Krzysztof Tadeusz Pałyska, Ul. Graniczna 79 G, 05410 Józefów, Poland (opponent), represented by JWP Rzecznicy Patentowi Dorota Rzążewska sp. k., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative)

a g a i n s t

Bel Corporation, Upper Floor, 27 Colonnade, London WC1N 1JA, United Kingdom (applicant).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 150 is upheld for all the contested goods.

2. European Union trade mark application No 17 951 620 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 17 951 620 for the word mark ‘BEL LONDON BEAUTY EXPERT LAB’. The opposition is based on, inter alia, Polish trade mark registration No 315 407 for the word mark ‘BELL’. 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 Polish trade mark registration No 315 407.

1. The goods

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

Class 3: Make-up preparations.

The contested goods are the following:

Class 3: Cosmetics.

The contested cosmetics include, as a broader category, the opponent’s make-up preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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 are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

BELL	BEL LONDON BEAUTY EXPERT LAB
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 element ‘BELL’ of the earlier mark does not convey a meaning for the relevant public in relation to the goods in question and is, therefore, distinctive.

Before proceeding to an analysis of the elements of the contested sign, the Opposition Division would like to note that the mark is applied for as a word mark, i.e. seeking protection for the verbal elements as such without any figurative elements or specific graphical representation.

The element ‘BEL’ of the contested sign is meaningless and it is distinctive. The applicant argues that the element ‘BEL’ is the abbreviation for ‘BEAUTY EXPERT LAB’. It cannot be excluded that part of the relevant public might reach the finding that the verbal component ‘BEL’ is the acronym that stands for the wording ‘BEAUTY EXPERT LAB’. However, such circumstance would only occur after an in-depth analysis of the mark at issue. It must be taken into account that the average consumer does not proceed to analyse the various details of the mark when making a purchase. It is the immediate impression created from by the sign that is of relevance and not a possible perception upon a detailed analysis of the sign in question. Moreover, ‘BEAUTY EXPERT LAB’ does not appear immediately following the element ‘BEL’, which might have prompted more consumers to see the claimed link. In the present case ‘BEL’ is followed by another verbal element, which separates it from ‘BEAUTY EXPERT LAB’. Given this circumstance, the Opposition Division will not consider this possibility in the assessment below as this scenario is considered to be rather an exception than the rule in the perception of the sign at issue.

In the present case, the consumer will perceive the English language terms ‘LONDON BEAUTY EXPERT LAB’ included in the contested sign as meaning ‘London professional laboratory that helps to improve beauty’, because some of these words are close to the equivalents in the respective language (for example, the equivalent of ‘London’ in Polish is ‘Londyn; ‘expert’ is ‘ekspert’). Although the Polish equivalent word for ‘BEAUTY’ is ‘URODA’, which is different, this English word is commonly used in trade and, therefore, a significant part of the general public will attribute a meaning of ‘a combination of qualities, such as shape, colour, or form, that pleases the aesthetic senses, especially the sight’ (Collins English Dictionary online)to this word. The element ‘LAB’ can be assumed to be understood as a reference to ‘laboratory’. It is frequently used in this abbreviated form not only in conjunction with science, research or teaching but also with a wide range of products such as those intended to beautify and due to this extended use it will be perceived and understood as such. It is also reasonably to infer that the element ‘LONDON’ will be perceived or associated with the geographical origin or destination of the goods in question (14/05/2013, T-19/12, IKFŁT KRAŚNIK, EU:T:2013:242, § 49; 29/10/2015, T-256/14, CREMERIA TOSCANA, EU:T:2015:814, § 39; 04/09/2017, R 621/2017-5, JADED LONDON (fig.) /Jades).

Therefore, the elements ‘LONDON BEAUTY EXPERT LAB’ are considered at most distinctive to a low degree, since their meanings are related to the relevant goods in a way that impair their distinctiveness.

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.

Visually, the signs coincide in the element ‘BEL*’, which forms almost entirely the sole element of the earlier mark (‘BELL’) and which is the first element of the contested sign. However, they differ in the additional and at most distinctive to a low degree elements, ‘LONDON BEAUTY EXPERT LAB’, of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BEL’, present identically in both signs. The pronunciation differs in the repetition of the last letter ‘L’ in the earlier mark, which will, however, be practically imperceptible, or will be pronounced as the same sound but slightly elongated. The pronunciation differs in the sound of the letters composing the phrase ‘LONDON BEAUTY EXPERT LAB’ of the contested sign, which have no counterpart in the earlier mark. These differing elements are at most distinctive to a low degree, as noted above.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. 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.

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 has no meaning for 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.

5. 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).

In the present case, the goods have been found identical. The signs are considered visually and aurally similar to an average degree and they are not conceptually similar. The public’s at large degree of attention is considered to be average. The inherent distinctiveness of the earlier mark is normal.

Therefore, in an overall assessment, taking into account that the letter sequence ‘BEL*’ of the sole and distinctive element (‘BELL’) of the earlier mark is entirely contained at the beginning of the contested sign as the most distinctive element in the sign, it is reasonable to assume that when confronted with the contested sign in relation to identical goods, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

The applicant claims that there is no similarity between the signs given that the opponent’s marks were not included in the list of similar earlier marks in the EUIPO search report. It is noted that the search report identifies earlier rights that could conflict with the EUTM application. The results of the search report are for information purposes only. Therefore, the applicant’s claim has to be dismissed.

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

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 315 407. It follows that the contested trade mark must be rejected for all the contested goods.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Polish trade mark registration No 315 407 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, 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

Teodora TSENOVA-PETROVA

Marzena MACIAK

Alicia BLAYA ALGARRA

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.