OPPOSITION No B 3 086 046

Societe Industrielle Limousine d'Application Biologique (SILAB), Madrias, 19130 Objat, France (opponent), represented by Aquinov, Allée de la Forestière, 33750 Beychac & Caillau, France (professional representative)

a g a i n s t

Provital S.A.U., Polígono Industrial Can Salvatella - C. Gorgs Lladó 200, 08210 Barbera del Valles, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative).

On 27/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 046 is partially upheld, namely for the following contested goods:

Class 3: Soaps; Perfumery; Essential oils; Cosmetics; Hair lotion; Dentifrices.

2. European Union trade mark application No 18 023 612 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 023 612 for the word mark ‘DETOSKIN’. The opposition is based on the following earlier marks: European Union trade mark registration No 16 412 389, UK trade mark registration No 3 248 104 and German trade mark registration No 302 017 107 852. All of them for the word mark ‘DETOXYL’. 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 16 412 389.

1. The goods

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

Class 3: Cosmetics, namely cosmetic preparations; Cosmetics for body and beauty care; Cosmetic suntanning and sunscreening preparations; Sunscreen and suntan creams, gels, oils and lotions for cosmetic purposes; Milks, creams, lotions, gels, powders and oils for cosmetic purposes; Preparations for the care and treatment of the body, skin, face and hair for cosmetic purposes; Cosmetic concentrates for the skin; Oils for cosmetic purposes; Cosmetic preparations for slimming purposes; Non-medicinal preparations for application to and conditioning and care of hair, scalp, skin and nails; Cosmetic preparations for toning the body; Bases for flower perfumes; Cosmetic deodorants; Perfumery.

The contested goods are the following:

Class 1: Chemicals used in the cosmetics industry.

Class 3: Soaps; Perfumery; Essential oils; Cosmetics; Hair lotion; Dentifrices.

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 opponent’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 in Class 1

The opponent’s goods in Class 3 are preparations used to clean, beautify or protect the appearance or odour of the human body. They target the general public and are usually sold in cosmetics shops or the cosmetics sections of supermarkets. Some of these goods may also be found in pharmacies. The contested goods are chemicals destined for cosmetic industry.

Even if major chemical companies are usually involved in the production of all kinds of consumer products, such as cosmetics and perfumes, the mere fact that these goods have the same nature – all of them can be broadly classified as chemical products – is not sufficient to find them similar. The specific purposes of the products are different and they have clearly different target publics and distribution channels.

The mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their natures, purposes, relevant publics and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw materials are in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

Consequently, although the opponent’s goods in Class 3 are usually combinations of various chemicals (or chemical elements), they are not considered similar to the applicant’s goods in Class 1. Their purposes as finished products differ from that of the goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other chemicals to form a final product. The finished products in Class 3 usually target different publics and do not have the same distribution channels. Therefore, the contested goods in Class 1 are dissimilar to all the opponent’s goods in Class 3.

Contested goods in Class 3

Perfumery is identically contained in both lists of goods.

The contested soaps are included in the broad category of the opponent’s cosmetics for body and beauty care as the applicant’s soaps also include soaps for personal use. Therefore, they are identical.

The contested cosmetics include, as a broader category the opponent’s cosmetics for body and beauty care. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Essential oils include, as a broader category, or overlap with the opponent’s oils for cosmetic purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Hair lotion is included in the broad category of the opponent’s preparations for the care and treatment of the hair for cosmetic purposes. Therefore, they are identical.

The contested dentifrices have the same purpose as the opponent’s cosmetics for body and beauty care as they both enhance or protect the appearance or the odour of the body, including the teeth. These goods also target the same public through the same distribution channels. They are considered similar.

2. 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.

3. The signs

DETOXYL	DETOSKIN
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.

The element ‘SKIN’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public such as Spain.

The word ‘DETOSKIN’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The contested sign ‘DETOXYL’ constituting the earlier mark as a whole does not have a meaning for the relevant public. However; the element ‘DETOX’ may be perceived by part of the public and associated with the concept of detoxification, as it resembles the Spanish word ‘desintoxicar’. Even if this part could be allusive to this concept, the earlier mark as a whole is an invented term and as such, it is distinctive for the relevant goods.

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.

Visually, the signs coincide in ‘DETO’ which constitutes the beginning of both signs. However, they differ in ‘XYL’ of the earlier sign and ‘SKIN’ of the contested one.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DETO’ and show some aural similarities in ‘XY’ and ‘SKI’, since the ‘X’ sounds like ‘KS’ and the letters ‘Y’ and ‘I’ are identically pronounced. Due to the coincidence in the syllabic sequence, the rhythm and intonation are also similar. The pronunciation differs in the sound of their final letters; ‘L’ of the earlier sign and ‘N’ of the contested one.

Therefore, the signs are similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘DETOX’, included in the earlier sign, will be associated, at least by part of the public, with the meaning explained above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the remaining part of the public neither of the signs has a meaning. 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.

4. 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are partly identical, partly similar and partly dissimilar and they target the public at large with an average degree of attention.

The conflicting signs are visually similar to an average degree and aurally similar to a high degree. From the conceptual perspective, they are either not similar or conceptually not comparable.

Taking into account all the relevant factors of the case, including the average degree

of distinctiveness of the earlier mark and the fact that the marks coincide in their beginnings and have similar overall structures (the same length, rhythm and a similar

intonation), it is considered that the strong aural similarity between the signs is sufficient to counteract the dissimilarities placed at the end of the signs especially in the absence of any conceptual differences at least for part of the public. It is, therefore, likely that the relevant public, on being exposed to the use of both signs in relation to identical or similar goods, and having an imperfect recollection of the earlier mark, would think that the goods for which the contested sign is used were produced or offered by the same undertaking as the goods distributed under the earlier mark.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks start with ‘DETO’ or ‘DETOX’. In support of its argument the applicant refers to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘DETO’ or ‘DETOX’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

With respect to the remaining contested goods, the examination of the opposition continues in relation to the opponent’s other earlier trade marks, which are UK trade mark registration No 3 248 104 and German trade mark registration No 302 017 107 852.

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.

As mentioned above, the examination of the opposition continues in relation to the opponent’s other earlier trade marks. The Opposition Division finds it appropriate to follow with the evaluation of the likelihood of confusion in relation to the earlier UK trade mark registration No 3 248 104 and German trade mark registration No 302 017 107 852 for the word mark ‘DETOXYL’.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 1: Raw materials for use as ingredients of cosmetics, namely: raw materials, adjuvants and active ingredients for cosmetic purposes, Active ingredients of natural origin, Active ingredients derived from plants, Active ingredients derived from microorganisms, Enzyme preparations and enzymes for manufacturing cosmetics.

The contested goods are the following:

Class 1: Chemicals used in the cosmetics industry.

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 opponent’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.

The contested chemicals used in the cosmetics industry overlap with the opponent’s raw materials for use as ingredients of cosmetics, namely: raw materials, adjuvants and active ingredients for cosmetic purposes.Therefore, they are identical.

2. 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.

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 specialised goods directed at

business customers with specific professional knowledge or expertise in the cosmetic

industry.

The degree of attention will be high.

3. The signs

DETOXYL	DETOSKIN
Earlier trade marks	Contested sign

The relevant territories are Germany and the United Kingdom.

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 the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The applicant argues that the initial part of the signs ‘DETO’ can be linked to detonate, detour, detoxify. However, as it is not a commonly used abbreviation for these concepts, neither in English nor in German, the Opposition Division does not find it very likely that this element, especially with regard to the earlier sign, will be perceived as meaningful. Therefore, it is distinctive.

Nonetheless, the element ‘DETOX’ of the earlier mark will be understood by the professional public as reference to detox (as this word exists in English and German) which is a kind of treatment that is intended to remove poisonous or harmful substances from your body (extracted from Collins English Dictionary online https://www.collinsdictionary.com/dictionary/english/detox on 18/05/2020). Bearing in mind that the relevant goods are raw materials for the cosmetic industry, this element is weak for these goods as it indicates that the goods help to remove poisonous substances from the body. However, the word ‘DETOXYL’ on the whole has no meaning for the relevant public and will be perceived as an invented term and as such it is distinctive.

The English word ‘SKIN’ of the contested sign will be associated with the natural covering of the human body. This meaning will be also grasped by the German professional public. Bearing in mind that the relevant goods are chemicals used in the cosmetics industry, this element is weak for these goods. However, the word ‘DETOSKIN’ on the whole has no meaning for the relevant public and will be perceived as an invented term and as such it is distinctive.

Visually, the signs coincide in ‘DETO’ which constitutes the beginning of both signs. However, they differ in ‘XYL’ of the earlier sign and ‘SKIN’ of the contested one. In German the combination of letters ‘XY’ is rarely used and as such it is visually rather striking.

It is true that the signs coincide in their initial letters ‘DETO’. Consumers usually focus their attention on the first element of a sign when confronted with a trade mark, because the public reads from left to right, and, therefore, the part on the left of the sign is the first part to be perceived, read and pronounced. However, these coinciding letters are part of the abovementioned element ‘DETOX’ in the earlier mark, and it was determined above that this element conveys a concept for the public

which renders this element weak for the relevant goods.

Therefore, the signs are visually similar to an average degree.

Aurally, in English the signs will be pronounced in the following way: /diːˈtɒksɪl/ and /ˈdɛtəskɪn/ and as such the signs show significant aural differences. In German the pronunciation of the signs coincides in the sound of the letters ‛DETO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛XYL’ of the earlier sign and ‘SKIN’ of the contested mark.

Therefore, the signs are aurally similar to at least a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘SKIN’ of the contested sign and ‘DETOX’ of the earlier mark, will be associated with the meanings explained above. To that extent, 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.

4. Distinctiveness of the earlier marks

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 marks are 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 marks as a whole have 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 marks must be seen as normal, despite the presence of a weak element in the marks, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical and they target professionals. The degree of attention will be high.

The conflicting signs are visually similar to an average degree and aurally similar to at least a low degree. From the conceptual perspective, they are dissimilar. The earlier mark has a normal degree of distinctiveness.

Moreover, the main coincidence between the signs, which lies in their beginnings, is counteracted by the fact that consumers will perceive the signs as referring to two completely different concepts, one of which encompasses the coinciding letters. In this respect, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (14/10/2003, T-292/01, ‘Bass’, § 54). In view of the foregoing, it is considered that the contested sign is not likely to bring the earlier sign to the mind of the consumer, even in relation to identical goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on the UK trade mark registration No 3 248 104 and German trade mark registration No 302 017 107 852.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Christian STEUDTNER

Katarzyna ZANIECKA

Helen Louise MOSBACK

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.