OPPOSITION No B 3 085 026

Lornamead Group Limited, Aintree Avenue, White Horse Business Park, BA14 0XB Trowbridge, United Kingdom (opponent), represented by Keltie LLP, No. 1 London Bridge, SE1 9BA London, United Kingdom (professional representative)

a g a i n s t

Harmonic Group Holdings Limited, Room 1201-1202, C-Bons International Centre, 108 Wai Yip Street, Kwun Tong, Kowloon, Hong Kong (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 22/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 026 is upheld for all the contested goods.

2. European Union trade mark application No 18 022 910 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 18 022 910 (figurative mark). The opposition is based on European Union trade mark registration No 10 479 269 ‘HARMONY’ (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: Soaps; perfumery, essential oils, cosmetics, hair lotions; shampoos; non-medicated hair shampoos; baby shampoo; dandruff treatments in the form of shampoos; hair conditioners; hair moisturisers; conditioners for treating the hair; conditioners for use on the hair; conditioning liquids for the hair; conditioning preparations for the hair; hair conditioning rinses; hair care agents; hair care preparations; non-medicated hair care preparations; hair care products; hair washing agents; hair cleaning preparations; preparations for enriching the hair; substances for the hair; hair cosmetics; beauty preparations for the hair; cosmetics for the use on the hair; natural body care products for the hair; hair protection lotions; non-medicated hair lotions; hair styling aids; hair texturisers; hair thickeners; aerosol hairspray; creams for the hair; hair protection creams; gels for use on the hair; hair protection gels; non-medicated gels for the hair; hair balm; hair cream; hair oil; hair gel; hair lacquer; hair mousse; hair protection mousse; hair styling waxes; bleaches for use on the hair; bleaching preparations for the hair; chemical preparations for the hair; colour rinses for the hair; colouring lotions for the hair; colouring matters for the hair; dyes for the hair; hair colorants; hair colours; hair tinters; hair curling preparations; hair finishing rinses; hair fixers; hair fixing oil; hair grooming preparations; hair neutralizers; hair permanent treatments; hair permanent wave solution; hair perming products; hair setting lotion; hair strengthening treatment lotions; hair waving preparations; neutralizing hair preparations; non-medicated topical preparations for promoting thickening of thinning hair; hair removing preparations; body care preparations; body milks; body butter; body cleansing foams; body creams; body lotions; body moisturisers; body oil; body soap; body spray; body deodorants; deodorants; anti-perspirants; beauty tonics for application to the body; cleaning preparations for use on the body; cleaning preparations for the hands; hand cream; hand barrier creams; hand care preparations; hand cleansers; hand lotion; hand oils; shower gel; shower foam; shower soap; after shower creams; after shower gel; bath gel; bath foam; bath lotion; bubble bath.

The contested goods are the following:

Class 3: Cosmetics; soap; bubble bath; shampoo; hair conditioners; baby lotion; lip balm; lipstick; body massage oil; face cleansers; eye creams [for cosmetic use]; facial creams; cosmetic creams; essential oil; fragrances for personal use; perfumery; aromatic oils; beauty masks; rose oil; peppermint oil (aromatic oil); jasmine oil; lavender oil; eucalyptus oil; lemongrass oil; skin tonic water; scented water; mineral water sprays for cosmetic purposes; serums for cosmetic purposes; blended aromatic oil; toothpaste; dentifrices; slimming oils; slimming creams; frankincense essential oil; geranium essential oil; helichrysum essential oil; ylang ylang essential oil; sandalwood essential oil; ginger essential oil; citronella essential oil; tea tree lemon essential oil; blended base oil and carrier oil for cosmetic purposes, namely, sweet almond oil, roseship oil, avocado oil, flaxseed oil, camellia oil, evening primrose oil, arnica infused oil, jojobra oil, sea buckthorn oil, apricot kernel oil, argan oil, safflower oil, sesame oil, soybean oil, sunflower oil, Vitamin E oil, wheat germ oil; face cleanser; day cream; night cream, SPF (sun protection factor) sun block sprays; SPF (sun protection factor) sun block lotion; anti-aging cream for face and eye; face toner; skin peeling cream; aroma oil lip balm; aroma oil lipstick.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

The contested cosmetics; soap; bubble bath; shampoo; hair conditioners; essential oil; perfumery are identically included in the opponent’s list of goods.

The contested baby lotion; lip balm; lipstick; face cleansers; eye creams [for cosmetic use]; facial creams; cosmetic creams; beauty masks; skin tonic water; mineral water sprays for cosmetic purposes; serums for cosmetic purposes; slimming oils; slimming creams; face cleanser; day cream; night cream, SPF (sun protection factor) sun block sprays; SPF (sun protection factor) sun block lotion; anti-aging cream for face and eye; face toner; skin peeling cream; aroma oil lip balm; aroma oil lipstick are various types of cosmetics used in beauty care. They are included in the broad category of the opponent’s cosmetics. They are identical.

The contested fragrances for personal use; scented water are included in, or overlap with, the broad category of the opponent’s perfumery. They are identical.

The contested body massage oil; aromatic oils; rose oil; peppermint oil (aromatic oil); jasmine oil; lavender oil; eucalyptus oil; lemongrass oil; blended aromatic oil; frankincense essential oil; geranium essential oil; helichrysum essential oil; ylang ylang essential oil; sandalwood essential oil; ginger essential oil; citronella essential oil; tea tree lemon essential oil; blended base oil and carrier oil for cosmetic purposes, namely, sweet almond oil, roseship oil, avocado oil, flaxseed oil, camellia oil, evening primrose oil, arnica infused oil, jojobra oil, sea buckthorn oil, apricot kernel oil, argan oil, safflower oil, sesame oil, soybean oil, sunflower oil, Vitamin E oil, wheat germ oil are various types of oils. They are included in, or overlap with, one of the broad categories of the opponent’s essential oils or body oil. They are identical.

The contested toothpaste; dentifrices are similar to the opponent’s cosmetics. On the one hand cosmetics include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand toothpaste and dentifrices are paste, powder or liquid preparations used for cleaning teeth, for personal hygiene purposes, for beautification purposes or to make the breath smell pleasant. They have the same purpose, namely to enhance or protect the appearance or the odour of the body, including the teeth. Additionally, they usually coincide in relevant public and distribution channels.

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 are directed at the public at large.

The degree of attention is average.

c) The signs

HARMONY
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since both words ‘HARMONY’ and ‘HARMONIC’ are meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘HARMONY’ will be understood by the relevant public as referring to ‘the combination or adaptation of parts, elements, or related things, so as to form a consistent and orderly whole; combination of parts or details in accord with each other, so as to produce an aesthetically pleasing effect; agreeable aspect arising from arrangement of apt parts’ (https://www.oed.com/) and has a laudatory connotation because it emphasises a homogeneity or balance (12/04/2019, R 2385/2016‑1, Coravin / Cora harmony et al.). The word ‘HARMONIC’ will be understood as ‘relating to or characterised by a harmony’ (https://www.oed.com/). In relation to the relevant goods in Class 3, both words may allude to their positive qualities, such as compatibility with skin and capacity to restore balance. Therefore, they are considered not particularly distinctive for the goods at hand.

Visually and aurally, the signs coincide in (the pronunciation of) ‘HARMON’ and differ in (the pronunciation of) their last letters; ‘Y’ vs. ‘IC’. Visually, they also differ in the stylisation of the contested sign. However, this has a limited impact on the consumers since it is not sufficiently striking to distract the consumers’ attention from the verbal element. Significantly, the signs coincide in their beginning and 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, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a similar concept and the difference lies in the form of speech where the earlier mark is a noun and the verbal element of the contested sign is an adjective, the signs are conceptually similar to a high degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as not particularly distinctive for the goods in question and from the perspective of the relevant public.

e) Global assessment, other arguments and conclusion

The goods are identical or similar and the signs are visually, aurally and conceptually similar to a high degree.

The earlier mark is not considered particularly distinctive for the goods in question. However, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70; 13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 63; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Therefore, even though the earlier sign is not particularly distinctive, considering that the differences between the signs are confined to letters ‘Y’ vs. ‘IC’ placed at the end of the signs, as well as the very simple stylisation of the contested sign, a likelihood of confusion exists, in particular as 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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 479 269.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

Martin MITURA

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

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.