OPPOSITION Nо B 3 074 350

Edge Systems LLC, 2277 Redondo Avenue, 90755 Signal Hill, California, United States of America (opponent), represented by Heissner & Struck Rechtsanwälte Partnerschaft mbB, Hudtwalckerstr. 11, 22299 Hamburg, Germany (professional representative)

a g a i n s t

Malcolm John Wall Morris, 20 Birchfield Lane, Mulbarton, NR14 8BZ Langdon, United Kingdom (applicant), represented by Keltie Limited, Galway Technology Centre, Mervue Business Park, Galway, Ireland (professional representative).

On 24/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 350 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 976 115 for the word mark ‘HYDRACOOL’. The opposition is based on European Union trade mark registration No 4 594 685 for the word mark ‘HYDRAFACIAL MD’, international trade mark registrations designating the European Union No 1 365 502 and No 1 247 362 for the word mark ‘HYDRAFACIAL’, and German trade mark registration No 302 017 205 828 for the word mark ‘Hydrafacial’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of the following trade marks on which the opposition is based: European Union trade mark registration No 4 594 685 and international trade mark registration designating the European Union No 1 247 362.

In the present case, the date of filing of the contested trade mark is 27/10/2018.

Earlier trade mark No 1 247 362 is an international registration designating the European Union. Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the European Union must be put into genuine use in the Union.

The date of publication pursuant to Article 190(2) EUTMR for the earlier international trade mark registration No 1 247 362 is 15/12/2017. Therefore, the request for proof of use is inadmissible.

With regard to the proof of use of the earlier European Union trade mark registration No 4 594 685, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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

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

EUTM registration No 4 594 685 (earlier mark 1):

Class 10: Medical apparatus and instruments; medical apparatus and instruments for peeling and resurfacing tissue.

International trade mark registration No 1 365 502 (earlier mark 2):

Class 44: Medical and cosmetic treatment services provided by a health spa, namely minimally and non-invasive cosmetic facial and body treatment services.

International trade mark registration No 1 247 362 (earlier mark 3):

Class 3: Cleaning preparations for microdermabrasion machines; non-medicated skin care preparations, namely, lotions and serums.

German trade mark registration No 302 017 205 828 (earlier mark 4):

Class 8: Devices for body and beauty care for human beings or animals.

Class 21: Cosmetic devices.

Class 44: Consultancy in the field of body and beauty care; cosmetic treatment of the body.

The contested goods and services are the following:

Class 10: Medical apparatus and instruments; medical apparatus and medical instruments, namely, skin toning, skin management and skin anti-ageing machinery and apparatus; parts and fittings therefor.

Class 44: Beauty services; skin management services; skin treatment services; medical and cosmetic services; cosmetic treatment services for skin; beauty therapy services and non-surgical procedures for skin.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

HYDRAFACIAL MD (earlier mark 1) HYDRAFACIAL (earlier marks 2 and 3) Hydrafacial (earlier mark 4)	HYDRACOOL
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany.

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).

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).

When encountering the signs, the relevant public, throughout the relevant territory, will clearly recognise the common element ‘HYDRA’ and associate it with ‘water’. This is because of the prefix ‘hydr-’ or analogues which exist in the EU languages. Furthermore, the word ‘hydration’, or its close equivalents in other languages (e.g. ‘хидратация’, transliteration ‘hidratatsia’ in Bulgarian, ‘hydratation’ in French, ‘hidratācija’ in Latvian and ‘hidratación’ in Spanish), is extensively used, especially in relation to the goods and services at issue, which can be used, inter alia, to hydrate the skin. Therefore, contrary to the opponent’s arguments, the common verbal element ‘HYDRA’ is weak.

The verbal element ‘FACIAL’ of the earlier marks will be understood at least by the English-speaking part of the public as ‘of or relating to the face’ (information extracted from Collins English Dictionary on 24/02/2021 at https://www.collinsdictionary.com/dictionary/english/facial). Bearing in mind that the relevant goods and services can be used on, or in relation to, the face, this verbal element is weak for the part of the public that will understand it. For the remaining part of the public that will not associate this verbal element with any meaning, it is distinctive.

The verbal element ‘MD’ of earlier mark 1 may be perceived as an abbreviation for ‘Doctor of Medicine’; ‘Managing Director’ (information extracted from Collins English Dictionary on 24/02/2021 at https://www.collinsdictionary.com/dictionary/english/md). For the part of the public that understands the verbal element ‘MD’ as referring to a doctor of medicine, it is weak because the relevant goods are intended for medical doctors and the relevant services can be performed by medical doctors. For the part of the public that will perceive the verbal element ‘MD’ as ‘Managing Director’, it is distinctive since there is no direct link to the relevant goods and services. For the remaining part of the relevant public that will not attribute any meaning to this verbal element, it has a normal degree of distinctiveness.

The verbal element ‘COOL’ of the contested sign is considered a basic English word that will even be understood by the part of the public that normally does not speak English (06/09/2013, T‑599/10, Eurocool, EU:T:2013:399, § 124). This word has the meaning of, inter alia, ‘excellent; marvellous; fashionable and attractive’ (information extracted from the Collins English Dictionary on 24/02/2021 at https://www.collinsdictionary.com/dictionary/english/cool). It is considered distinctive to a low degree as it is laudatory and denotes desirable characteristics and qualities of the goods and services at issue.

Since all marks are word marks, it is the word as such that is protected. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in upper-case letters and the other in title-case letters.

Visually and aurally, the signs coincide in their first component ‘HYDRA’ (and its sound), which is, however, weak. The signs differ in their second components, ‘FACIAL’ (earlier marks) v ‘COOL’ (contested sign), which are visually very different and produce a markedly different sound. Moreover, the signs differ in the additional verbal element ‘MD’ (and its sound) of earlier mark 1, which has no counterpart in the contested sign.

Although, the attention of the public is usually focused at the beginning of the signs, in this case, because the coinciding verbal element ‘HYDRA’ is weak and the remaining components of the signs are visually and aurally distinct, the difference at the end of the marks will immediately be perceived by the relevant public.

Furthermore, the signs differ aurally in the number of syllables. Consequently, their rhythm and intonation are also different.

Therefore, the signs are visually and aurally similar at most to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar at most to a low degree due to the coincidence in the concept of the weak verbal element ‘HYDRA’.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.

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).

The goods and services assumed to be identical target the general and professional public, whose degree of attention varies from average to high. The signs are similar at most to a low degree.

The Opposition Division has assumed in section d) that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The visual, aural and conceptual differences between the signs prevail over the assumed identity of the goods and services and the assumed enhanced degree of distinctiveness of the earlier marks. This is because the signs coincide in the weak element ‘HYDRA’, whereas their additional elements ‘FACIAL’ (all earlier marks) and ‘MD’ (earlier mark 1) v ‘COOL’ (contested sign) are completely different visually, aurally and conceptually, and significantly add to the overall differences between the signs.

Although 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), this does not automatically mean that they tend to retain the similarities of the marks more than the differences.

The fact that consumers will generally remember the beginning of a mark rather than the end cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (12/06/2018, T‑136/17, cotecnica MAXIMA (fig.) / MAXIM Alimento Superpremium (fig.), EU:T:2018:339, § 60). Consequently, it is the overall impression produced by the marks that should be taken into consideration and not any individual parts in isolation.

In light of the above, and notwithstanding the principles of interdependence and imperfect recollection, contrary to the opponent’s arguments, the Opposition Division considers that the visual, aural and conceptual differences between the signs are sufficient, in spite of the assumed identity of the goods and services and the assumed enhanced degree of distinctiveness of the earlier marks, to preclude the resemblances between them from giving rise to a likelihood of confusion in the mind of the average consumer (08/12/2011, T‑586/10, Only Givenchy, EU:T:2011:722, § 44).

There is no reason to assume that the relevant public with an average or high degree of attention will be misled into thinking that the identical goods and services bearing the conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Dagný Fjóla JÓHANNSDÓTTIR

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.