OPPOSITION No B 3 073 307

Sas Noo Corp, Société par actions simplifiée, 13 Bis Avenue de la Motte Picquet, 75007 Paris, France (opponent), represented by Plasseraud IP, 66, rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

EM Brands, LLC, 912 Westfield Blvd., 46220 Indianapolis, United States of America (applicant), represented by Bailey Walsh & Co LLP, 1 York Place, LS1 2DR Leeds, United Kingdom (professional representative).

On 31/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 307 is upheld for all the contested goods, namely:

Class 3: Non-medicated soaps; non-medicated body lotions; body scrubs featuring exfoliating sugar cubes; bath care products; skin care products.

2. European Union trade mark application No 17 960 021 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 960 021, ‘JOON X MOON’, namely against all the goods in Class 3. The opposition is based on French trade mark registration No 4 381 387, ‘JOONE’. 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.

a) The goods

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

Class 3: Perfumery products; perfumes; colognes and toiletries; toilet soaps; cosmetic products; cosmetic products for skin care; cosmetic products for the bath; cosmetic products for the care of babies; lotions, milks, creams and gels for the face and body for cosmetic purposes; shower gels; bath salts, oils, gels and lotions for cosmetic purposes; essential oils ; powders and talc for cosmetic use; shampoos; lotions and gels for hair and scalp; deodorants for personal use; wadded sticks, balls and disks made of cotton impregnated with a toilet product; laundry.

The contested goods are the following:

Class 3: Non-medicated soaps; non-medicated body lotions; body scrubs featuring exfoliating sugar cubes; bath care products; skin care products.

The contested non-medicated soaps; non-medicated body lotions; body scrubs featuring exfoliating sugar cubes; bath care products; skin care products are included in the broad category of the opponent’s cosmetic products. Therefore, they are identical.

The applicant argued that the contested body scrubs featuring exfoliating sugar cubes are of a specialised nature and are not similar to the opponent’s goods. Although these contested goods feature sugar cubes rather than being of the usual creamy consistency, they are still body scrubs by nature. Therefore, the applicant’s arguments must be set aside.

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

c) The signs

JOONE	JOON X MOON
Earlier trade mark	Contested sign

The relevant territory is France.

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 and the element ‘JOON’ of the contested sign have no meaning in French and are, therefore, distinctive.

The element ‘MOON’ of the contested sign is meaningless in French. However, it cannot be excluded that some of the public might be familiar with the English word ‘moon’, meaning ‘[t]he natural satellite of the earth; a secondary planet which orbits around the earth’ (information extracted from Oxford English Dictionary on 07/01/2020 at https://oed.com/view/Entry/121900?rskey=qJyq5x&result=1#eid). In any event, since it has no link with the relevant goods, it has a normal degree of distinctive character.

The letter ‘X’ between the elements ‘Joon’ and ‘Moon’ of the contested sign has no link with the relevant goods; therefore, it is also distinctive.

Visually and aurally, the signs coincide in the sequence of letters ‘JOON’, which account for the first four out of five letters in the earlier mark and constitute the first element of the contested sign. However, they differ in the letter ‘E’ at the end of the earlier mark, which is a silent vowel. Therefore, the elements ‘JOON’ and ‘JOONE’ are aurally identical. The coinciding combination of letters ‘OO’ is visually very striking as it is uncommon in French. Therefore, it is particularly original and will be remembered by the relevant public. Moreover, the contested sign differs in the elements ‘X MOON’.

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, bearing in mind their coinciding beginnings, the signs are visually and aurally similar to a somewhat lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that would not associate the signs with a meaning, no conceptual comparison is possible and the conceptual aspect therefore does not influence the assessment of the similarity of the signs. For the part of the public that would see a meaning in the contested sign only, 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.

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.

e) 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).

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/services covered are from the same or economically linked undertakings.

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).

The goods are identical and target the public at large, whose degree of attention is average. The signs are visually and aurally similar to a slightly lower than average degree because they share the first four letters ‘JOON’ and because the earlier mark and the first element of the contested sign are aurally identical. Moreover, this element plays an independent and distinctive role within the contested sign. The distinctiveness of the earlier mark is normal. Conceptually, the signs are either not similar, or the conceptual aspect does not influence the assessment of the similarity of the signs.

Therefore, and taking on board also the interdependence principle, it is highly conceivable that the relevant public, which will also have to rely on their imperfect recollection of the signs, could confuse the signs or believe that the identical goods originate from the same or economically linked undertakings.

Bearing in mind the possible imperfect recollection, it cannot be excluded that, owing to the identical pronunciation of the earlier mark and the first element of the contested sign, the relevant consumers might 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 that it designates.

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 French trade mark registration No 4 381 387. It follows that the contested trade mark must be rejected for all the contested goods.

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

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.