OPPOSITION No B 3 079 696

Guerlain, 68, Avenue des Champs-Elysées, 75008 Paris, France (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

Shanghai Hongyu Cosmetics Co., Ltd., Room J4404, Building 2, No. 4268 Zhennan Road, Jiading District, Shanghai, People’s Republic of China (applicant), represented by Isidro Jose Garcia Egea, Calle Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 696 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 of European Union trade mark application No 18 001 619 for the word mark ‘CHELYSEES’. The opposition is based on, inter alia, European Union trade mark registration No 1 406 875 for the word mark ‘CHAMPS-ÉLYSÉES’. 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 European Union trade mark registration No 1 406 875 as this one has a broader scope of protection as regards the goods.

a) The goods

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

Class 3: Perfumery products; essential oils; cosmetics; make-up preparations; hair lotions; soaps.

The contested goods are the following:

Class 3: Lipstick; Cosmetics; nail polish; cosmetic kits; cosmetic pencils; eyebrow pencils; mascara; lip glosses; make-up powder; perfumes.

Class 21: Cosmetic utensils; toilet cases; make-up brushes; make-up removing appliances; make-up sponges; eyelash brushes; brush goods; toothbrushes; cosmetic spatulas; eyebrow brushes.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark 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 assumed to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

CHAMPS-ÉLYSÉES	CHELYSEES
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 earlier mark consists of French words that will be associated with, among other things, a name of a famous street in Paris by a part of the relevant public and as not having any meaning for another part of the public.

Contrary to the opponent’s argument, the element ‘CHELYSEES’ of the contested sign has no meaning for the relevant public and it is unlikely that, even for the part of the relevant public that associates the earlier mark with the name of a famous street in Paris, it will associate the contested sign with the same meaning only because of the coincidence in some letters.

For the purposes of this comparison and bearing in mind that the similarities between the signs are higher in case they are not associated with differing concepts, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the element ‘CHAMPS-ÉLYSÉES’ of the earlier mark has no meaning for the relevant goods.

Therefore, since the elements ‘CHAMPS-ÉLYSÉES’ of the earlier mark and ‘CHELYSEES’ of the contested sign have no meaning for the relevant public, they are distinctive.

The signs in comparison are word marks. In the case of word marks, it is the word as such, which is protected, and not its written form. Therefore, the use of upper or lower case letters or a combination thereof is immaterial.

Visually and aurally, the signs coincide in the string of letters/sounds ‘CH*****ELYSEES’. However, they differ in the additional letters/sounds ‘**AMPS-*******’ and in the accents above the letters ‘E’ in the seventh and eleventh position of the earlier mark. The signs also visually differ in that the earlier mark consists of two elements separated by a hyphen, while the contested sign consists only of one word.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier trade mark enjoys a high distinctive character due to its knowledge in France. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, 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 opponent submitted the following evidence:

 Excerpt from the opponent’s website www.guerlain.com showing information about the opponent’s marks for perfumery products, among which is the mark ‘CHAMPS-ÉLYSÉES’. The information relates to the history of this perfume, its fragrance, ingredients and characteristics. There is also information about the House of Guerlain at 68 Champs-Elysées at Paris.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use since the evidence does not provide, for example, any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a high degree of distinctive character.

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 particular relationship with 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

A likelihood of confusion (including a likelihood of association) 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.

The goods are assumed to be identical and target the public at large who has an average degree of attention. The earlier mark has a normal degree of distinctiveness.

The marks are visually and aurally similar to a low degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs differ in their structure with regard to the number of verbal elements (two in the earlier mark and one in the contested sign), their lengths (thirteen letters in the earlier mark and nine in the contested sign). Although the signs coincide in some letters, the additional different vowels and consonants of the earlier mark create aural differences that do not go unnoticed by the public. Even though the differences fall in the middle of the signs, they concern the first syllable of the signs, thereby creating differences in both sound and intonation. Moreover, the additional letters of the earlier mark, since they are followed by a hyphen, will be clearly perceived by the public and makes the earlier mark longer.

The fact that the signs contain some letters in the same order is not sufficient for a finding of likelihood of confusion as the structure of the signs is different and the earlier mark has other, dissimilar, letters that create a different overall impression of the signs.

Therefore, the Opposition Division considers that the differences are sufficient to safely exclude a likelihood of confusion, including a likelihood of association. It can reasonably be concluded that, even assuming identical goods, the consumers will easily be able to distinguish the marks in dispute and will perceive them as coming from different undertakings.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs are not comparable, either because the signs under comparison have the same structure of one word, because the earlier mark is completely included in the contested sign or because the signs share an independent distinctive element of the signs, unlike in the present case.

Moreover, the opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since they relate to cases in which the earlier mark was completely reproduced in the contested sign, which is not the case of the present opposition.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public for whom the earlier mark does not convey a meaning. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the earlier mark has a meaning. This is because, as a result of this meaning which is absent in the contested sign, that part of the public will perceive the signs as being even less similar, since the signs will be conceptually not similar.

The opponent has also based its opposition on the following earlier trade mark:

- French trade mark registration No 1 688 559 for the word mark ‘CHAMPS-ELYSEES’.

Since this mark is nearly identical to the one that has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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 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

Marzena MACIAK

Victoria DAFAUCE MENENDEZ

Chantal VAN RIEL

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.