OPPOSITION No B 3 078 314

L'Oréal, 14, rue Royale, 75008 Paris, France (opponent), represented by Carlos Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional representative)

a g a i n s t

Arash Younessi, Bockenheimer Landstraße 17/19, 60325 Frankfurt, Germany (applicant), represented by EBL Factum Rechtsanwälte mbB, Eschersheimer Landstraße 6, 60322 Frankfurt am Main, Germany (professional representative).

On 02/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 314 is upheld for all the contested goods, namely

Class 3: All goods in this Class.

2. European Union trade mark application No 18 025 524 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 18 025 524 for the figurative sign , namely all the goods in Class 3. The opposition is based on, inter alia, international trade mark registration No 494 133 designating Hungary, Portugal, Italy, Romania, Benelux and Spain for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 494 133 designating, inter alia, Italy.

1. The goods

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

Class 3: Perfumery products, notably perfumes, eau de toilette and lotions, soaps, shampoos, foam and emollient bath products, dentifrices, cosmetics, blushes; body deodorants.

The contested goods are the following:

Class 3: Cosmetics.

The term ‘notably’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Cosmetics are identically included in both lists of goods of the signs in question.

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 are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs under comparison are figurative signs composed of the single letter ‘O’, each with an additional figurative element on their upper part. In the earlier mark, above the letter ‘O’, there is a diacritical mark, that is, , which could be also percieved as just a small geometric shape by the part of the public who will not recognise it as an accent (since this type of accent is not used in Italian). In the contested sign, the upper part of the letter ‘O’ has a small addition resembling stylised eyelashes . Both letters are presented in a similar manner, that is, they are both depicted in a didone typeface with a vertical orientation of weight axes and a strong contrast between thick and thin lines (earlier mark) and (contested sign). The differences relate to the shading of the vertical elements in the letter ‘O’ of the contested sign and also to the fact that the letter ‘O’ in the contested sign is slightly narrower than the letter ‘O’ of the earlier mark.

The figurative element in the earlier mark, that is, has no meaning for the goods in question, and is, therefore, distinctive.

With regard to the figurative element in the contested sign, that is, , bearing in mind that the relevant goods are cosmetics, this element is at most weak for these goods, as it might describe some of their charateristics, such as that they are meant for use on the eyelashes.

The elements (earlier mark) and (contested sign), both conisting of the letter ‘O’ as mentioned above, have no direct meaning for the goods in question, and are therefore, distinctive. Furthermore, they are the dominant elements, when considered as separate elements (i.e. letters).

Visually, the signs coincide in the letters ‘O’. However, they differ in the small additional figurative elements on their upper parts, and the slight differences in width and shading.

Therefore, the signs are similar to an average degree.

Aurally, as the pronunciation of the signs coincides in the sound of the letter ‛O’, present identically in both signs, the signs are aurally identical. It should be noted that presence of the additional elements in the upper parts of the signs does not have any impact on the pronunciation of the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the letter ‘O’ (with either an ornament or a diacritical mark), the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys 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’).

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.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods

and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and they target the public at large whose degree of attention is average. The signs are visually and conceptually similar to an average degree, and they are aurally identical. Furthermore, the earlier mark has a normal degree of distinctiveness.

It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

Furthermore, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, EU:C:1999:323).

The Opposition Division is of the opinion that the differences found between the earlier mark and the contested sign are not sufficient to counteract their visual and conceptual similarities as well as their aural identity. Consequently, the public could believe that the goods come from the same undertaking or from economically linked undertakings.

Considering all the above, 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 international trade mark registration No 494 133 designating, inter alia, Italy. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right international trade mark registration No 494 133 designating, inter alia, Italy leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Helen Louise MOSBACK

Michal KRUK

Vít MAHELKA

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.