OPPOSITION No B 3 084 340

Kao Corporation, 14-10, Nihonbashi Kayabacho 1-chome, Chuo-ku, 103-8210, Tokyo, Japan (opponent), represented by Inlex Ip Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Frida Kahlo Corporation, Av. Balboa. Galerias Balboa. Local nº 2, Bella Vista, Ciudad de Panamá, Repúblico of Panamá (applicant), represented by Arochi & Lindner, S.L., C/ Gurtubay 6, 3º izquierda, 28001 Madrid, Spain (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 340 is upheld for all the contested goods, namely:

Class 3: Perfumery; Fragrances; Perfume; Perfumed toilet waters; Cologne; Toilet water; Cosmetics; Make-up preparations; Make-up powder; Face powder; Pressed face powder; Perfumed powder [for cosmetic use]; Cosmetic rouges; Mascara; Lip gloss; Perfumed soaps; Bath soap; Shower soap; Hair care lotions; Shampoo; Body lotions; Oils for toilet purposes; After-shave lotions; Essential oils; Dentifrices.

Class 21: Brushes (except paintbrushes); Combs; Sponges; Comb cases; Cosmetic powder compacts; Toilet utensils.

2. European Union trade mark application No 18 007 707 is rejected for all the contested goods. It may proceed for the remaining, non-contested, 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 18 007 707 (figurative mark), namely against some of the goods in Classes 3 and 21. The opposition is based on European Union trade mark registration No 562 827 JOHN FRIEDA (word mark). 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: Preparations and substances for the hair.

Class 21: Brushes, combs, articles for cleaning of hair.

The contested goods are the following:

Class 3: Perfumery; Fragrances; Perfume; Perfumed toilet waters; Cologne; Toilet water; Cosmetics; Make-up preparations; Make-up powder; Face powder; Pressed face powder; Perfumed powder [for cosmetic use]; Cosmetic rouges; Mascara; Lip gloss; Perfumed soaps; Bath soap; Shower soap; Hair care lotions; Shampoo; Body lotions; Oils for toilet purposes; After-shave lotions; Essential oils; Dentifrices.

Class 21: Brushes (except paintbrushes); Combs; Sponges; Comb cases; Cosmetic powder compacts; Toilet utensils.

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 are identical to the opponent’s preparations and substances for the hair, because the opponent’s goods overlap with the contested goods, insofar as goods such as cosmetics for hair are concerned.

The contested hair care lotions; shampoo are included in the broad category of, or overlap with, the opponent’s preparations and substances for the hair. Furthermore, since the contested oils for toilet purposes; essential oils include goods such as (essential) oils for toiletry purposes, for the treatment of hair, also these categories of the contested goods overlap with the opponent’s preparations and substances for the hair. Therefore, they are identical.

The contested perfumery; fragrances; perfume; perfumed toilet waters; cologne; toilet water; make-up preparations; make-up powder; face powder; pressed face powder; perfumed powder [for cosmetic use]; cosmetic rouges; mascara; lip gloss; perfumed soaps; bath soap; shower soap; body lotions; after-shave lotions are similar at least to a low degree to the opponent’s preparations and substances for the hair as they usually coincide in relevant public and distribution channels. That is to say, consumers seeking products for maintaining and improving their appearance expect to find all such toiletries and beautification products in the same specialised stores or dedicated sections of supermarkets/department stores. In addition, some of the goods under comparison share the usual origin. For example, shampoo and other preparations for the hair is commonly produced by companies that also offer body care preparations, such as toilet soap.

The contested dentifrices include toothpaste and other goods involved in dental care and maintenance. The opponent’s brushes in Class 21, which are interpreted as a stand-alone term in the list of goods, include manual and electric toothbrushes, interdental brushes for cleaning the teeth and other dental care goods. The goods under comparison are used for dental/oral hygiene. Given the functional link between these goods, consumers can expect that they are produced under the control of the same entity. In addition to being complementary, these goods are commonly sold side-by-side in the same places and satisfy the needs of the same public. They are similar.

Contested goods in Class 21

The contested brushes (except paintbrushes); combs are identically contained in both lists.

The contested toilet utensils overlap with the opponent’s brushes, combs, insofar as goods such as toothbrushes and combs for the hair are concerned. They are therefore, considered identical.

The contested sponges include hair sponges, i.e. hand-held tool that contains holes or ridges and is used for curling natural hair. These goods are highly similar to the opponent’s combs, taking into account that the opponent’s goods include hair combs. Such goods are used for the same purpose, namely styling the hair. They are directed at the same public and are offered through the same channels of distribution. Consumers may see these goods as interchangeable, and expect that they originate from the same producers.

The contested comb cases are similar to a low degree to the opponent’s combs as they usually coincide in the distribution channels and the relevant public. Furthermore they are complementary.

The contested cosmetic powder compacts are empty containers to hold cosmetic powder. They fall in the category of cosmetic and toilet utensils. The same is valid in relation to the opponent’s brushes, since this category of goods includes make-up brushes, mascara brushes, lip brushes, exfoliating brushes, eyelash and eyebrow brushes and other cosmetic brushes. The goods under comparison are usually produced by the same type of undertakings and are moved through the same channels of distribution, at the same time targeting the same consumers. They are therefore, similar.

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 or similar to various degrees are directed at the public at large.

The relevant public’s degree of attention is ranges from average to above average depending on the nature of the goods.

c) The signs

JOHN FRIEDA
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 word mark is set up as a combination of a male first name followed by a surname. The mark is distinctive.

The contested figurative mark contains a female first name written in a slightly stylised typeface imitating handwriting. According to the applicant, it refers solely to the Mexican artist Frida Kahlo since the name is ‘fully and clearly identified with her’. The applicant does not provide any other evidence or arguments why one first name should only be associated with one specific person. The mark is distinctive.

Visually, the signs coincide in the letters FRI_DA in their respective elements. All the letters of the contested sign are fully included in the second element of the earlier mark. The signs differ in the letter E in that element and also in the additional word JOHN in the earlier mark and in the typeface used in the contested sign.

It is noted, that in the case of word marks, it is the word that is protected and not its written form. Furthermore, the stylisation used in the representation of the contested sign is not particularly elaborate and in any event does not eclipse the word element which can be readily perceived as such.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters FRI_DA. It cannot be ruled out, that in some languages the combination of vowels IE is pronounced as I. Otherwise the signs differ in the pronunciation of the letter E and in the first element JOHN of the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks are considered to contain names, it cannot be excluded that part of the public would perceive the marks coinciding in the name FRIEDA/FRIDA resulting to a conceptual similarity of an average degree. If this is not the case, then the signs are conceptually dissimilar.

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

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.

The goods, found to be identical or similar to different degrees, target the public at large whose degree of attention ranges from average to above average. The signs are visually similar to an average, aurally similar to at least an average degree, and also conceptually, the signs are similar to an average degree, for part of the public. The inherent distinctiveness of the earlier mark is normal.

In the present case, it is highly conceivable that the relevant consumer 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 that it designates.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

It constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface or colour, or adding terms or elements to them) in order to name new lines of products, or to create a modernised version of it.

It must be pointed out that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (see, to that effect, 25/03/2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, § 83). It must also be pointed out that, although consumers generally pay greater attention to the beginning of a mark than to the end, this finding cannot apply in all cases and cannot call into question the principle that the examination as to whether the marks are similar must take account of the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (18/05/2018, T–67/17, tèespresso / TPRESSO et al., EU:T:2018:284, § 28). The applicant’s arguments that the contested mark clearly identifies only one specific person in the world are not backed up by any evidence or other arguments and can not therefore taken into account.

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).

Considering all the above, the Opposition Division finds that 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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. Due to the sufficient level of similarity and considering the interdependence principle, the contested trade mark must be rejected also for the goods found to be similar to a low degree.

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

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

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.