OPPOSITION No B 3 091 187

Christian Aubort, Route de la Blécherette 48A, 1052 Le Mont sur Lausanne, Switzerland (opponent), represented by Valérie Perrichon, 3 rue Saint-Philippe du Roule, 75008 Paris, France (professional representative)

a g a i n s t

Esens Cosmetics, Avda. Henry Ford, 2-1ª, 46440 Almussafes, Spain (applicant), represented by Adelaida Espinosa Cuartero, c/ San Cristobal, 5-5ª, 46003 Valencia, Spain (professional representative).

On 17/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 187 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 and services of European Union trade mark application No 18 026 409 . The opposition is based on European Union trade mark registration No 16 334 112 . 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.

1. The goods and services

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

Class 3: Cosmetics; all of the aforesaid goods originating in Switzerland.

The contested goods and services are the following:

Class 3: Soaps, creams, balms, shampoos, gels, solid shampoos, body soaps, solid body soaps, body lotions, body oils, natural soaps, natural creams, natural balms, natural shampoos, natural gels, natural solid shampoos, natural body soaps, natural solid body soaps, natural body lotions, natural body oils.

Class 35: Wholesaling, retailing and sale via global computer networks of soaps, creams, balms, shampoos, gels, solid shampoos, body soaps, solid body soaps, body lotions, body oils, natural soaps, natural creams, natural balms, natural shampoos, natural gels, natural solid shampoos, natural body soaps, natural solid body soaps, natural body lotions and natural body oils.

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 soaps, creams, balms, shampoos, gels, solid shampoos, body soaps, solid body soaps, body lotions, body oils, natural soaps, natural creams, natural balms, natural shampoos, natural gels, natural solid shampoos, natural body soaps, natural solid body soaps, natural body lotions, natural body oils are included in the broad category of, or overlap with, the opponent’s cosmetics, all of the aforesaid goods originating in Switzerland. Therefore, they are identical.

Contested services in Class 35

The contested wholesaling, retailing and sale via global computer networks of soaps, creams, balms, shampoos, gels, solid shampoos, body soaps, solid body soaps, body lotions, body oils, natural soaps, natural creams, natural balms, natural shampoos, natural gels, natural solid shampoos, natural body soaps, natural solid body soaps, natural body lotions and natural body oils are similar to the opponent's cosmetics, all of the aforesaid goods originating in Switzerland in Class 3. Indeed, retail and wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

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 and services found to be identical or similar are directed at the public at large and at business customers (e.g. in the case of wholesale services). The degree of attention is considered to be average.

3. The signs

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 the word ‘COSMESENS’ in black upper-case letters in a fairly standard font placed between two black horizontal lines, above which there is a small square representing the Swiss flag.

The horizontal lines in the earlier mark are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to such elements (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27). In addition, the depiction of the Swiss flag in the earlier mark has a very low distinctive character, if any, since it directly refers to the geographical origin of the relevant goods, namely that they are ‘originating from Switzerland’.

The verbal element ‘COSMESENS’ of the earlier mark is meaningless as a whole for the public in the relevant territory.

Nevertheless, it should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Taking into account the aforementioned principle, it is likely that the relevant public will associate at least the beginning ‘COSME’ of the earlier mark with ‘cosmetics’ (referring to ‘beauty preparations; make-up’) due to the fact that similar equivalents of the words ‘cosmetic’ or ‘cosmetics’ exist in the relevant languages (e.g. ‘kosmetik’ in Danish, ‘cosmétique’ in French, ‘Kosmetik’ in German, ‘kozmetikum’ in Hungarian, ‘kosmetyki’ in Polish, ‘kozmetika’ in Slovak, ‘cosméticos’ in Spanish), as well as because the English word is commonly used in the strongly globalised market in the context of cosmetic products. Bearing in mind that the relevant goods of the opponent are cosmetics, it is considered that this element is non-distinctive as it describes their kind or nature.

The second part of the verbal element of the earlier mark, ‘SENS’, has a meaning in some languages, such as French and Romanian, or resembles existing words, such as the English word ‘SENSE’ (and has the same or virtually the same pronunciation as that word in English). Therefore, it is likely to be perceived at least by a part of the public, such as the English, French and Romanian-speaking consumers, as that word or as a misspelling of that word (referring to ‘any of the faculties by which the mind receives information about the external world or about the state of the body’). In relation to the relevant goods which are cosmetics this element may be perceived as alluding to the fact that they are aimed to produce different sensations such as smell or softness. Therefore, the distinctiveness of the element ‘SENS’ in the earlier mark is somewhat below average for those consumers who will perceive it with a meaning. For the remaining consumers who do not see a meaning in the ending ‘SENS’ of the earlier mark, this element is of average distinctiveness.

In its observations, the opponent argues that consumers will perceive the earlier mark as a combination of ‘COSM’ which refers to ‘cosmetics’, and ‘ESENS’ which evokes the concept of ‘essence’. However, the Opposition Division does not share the opponent’s view that the relevant public would identify the element ‘ESENS’ in the earlier mark as this would result from an artificial dissection of the element ‘COSMESENS’ not in line with the principle previously mentioned that consumers split words into elements if they associate these elements with a meaning (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). The partition of the syllables of the element ‘COSMESENS’ in virtually all the relevant languages would split the letters ‘COSME’ and ‘SENS’ in such a way that the letters ‘ESENS’ would form part of different syllables and would not be singled out as an element. There is no visual distinction between the letters in the mark either which could justify such a split of the mark. Furthermore, the letters ‘COSME’ in the earlier mark will be identified and perceived as referring to ‘cosmetics’ in the relevant languages rather than only the letters ‘COSM’, so the letter ‘E’ will be perceived as part of the beginning of the mark, ‘COSME’. In addition, the letter sequence ‘ESENS’ is not included as such in the word ‘ESSENCE’ or the equivalent word in any of the relevant languages. In some languages the existing words do not include the final letter ‘S’ of the sequence ‘ESENS’, but a letter ‘C’, ‘T’ or ‘Z’ instead and in some of these cases there is an additional difference, in the doubling of the letter ‘S’ (e.g. ‘essence’ in English, ‘esencia’ in Spanish and Slovak, ‘esence’ in Czech, ‘essenza’ in Italian, ‘essentie’ in Dutch). This doubling of the letter ‘S’ (‘ESSEN instead of ‘ESEN’ is present in the few languages in which the final ‘S’ is present (‘essens’ in Danish and Swedish). The mentioned variations with respect to the actual spelling of the existing word ‘ESSENCE’ in the relevant languages exclude the scenario that the letter sequence ‘ESENS’ may evoke that word.

Therefore, considering all of the above, the Opposition Division is of the opinion that it is not likely that the relevant public would identify the letters ‘ESENS’ in the earlier mark as an element on its own, as argued by the opponent.

On the other hand, the analysis of the same string of letters in the contested sign is fundamentally different because they clearly constitute a stand-alone element. To that extent, for this mark, it cannot be excluded that a part of the relevant public may be reminded of the word ‘ESSENCE’ and its meaning when encountering this mark (‘the characteristic or intrinsic feature of a thing, which determines its identity; fundamental nature’ or, especially in the context of the relevant goods, ‘a substance, usually a liquid, containing the properties of a plant or foodstuff in concentrated form’) considering that the relevant goods and services are cosmetics (whose composition may include essences) or related to trading of cosmetics. This element is weak for the part of the public that attributes the abovementioned meaning to the word ‘ESENS’ as it refers to the nature or possible content of the products at issue. For another part of the public, this word will be meaningless and as such normally distinctive.

The contested sign also contains the word ‘COSMETICS’ positioned below the word ‘ESENS’ in much smaller letters, as well as a blue-green element resembling a heart or a leaf above those words.

The word ‘COSMETICS’ will be understood throughout the relevant territory due to the same reasons outlined above in relation to the letters ‘COSME’ in the earlier mark. The considerations about its meaning and distinctiveness equally apply for the contested mark as the relevant goods and services are cosmetics or concern the trade of cosmetics. In addition, due to its small size and subordinate position, this word plays a secondary role in the contested sign and thereby has less visual impact in the comparison of the signs than the other elements of the mark which are co-dominant in the visual impression.

The figurative element of the contested sign is mostly decorative and if perceived as a heart, it may evoke positive associations and therefore be perceived as a promotional message, evocative of a positive purchase experience, or if perceived as a leaf, it may be seen as alluding to the plant nature of the products at issue. In any event, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the fact that the verbal element ‘COSMESENS’ of the earlier mark includes the letter sequence ‘ESENS’ which forms the dominant verbal element of the contested sign is not of much weight because this sequence will not be singled out by the relevant consumers to the extent that those letters are not identifiable as a separate element in the earlier mark.

The Opposition Division notes that it is inevitable that many words will share some letters. Furthermore, the visual differences between the verbal elements ‘COSMESENS’ and ‘ESENS’ of the marks are particularly relevant, since 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. The four additional letters at the beginning of the earlier mark’s verbal element ‘COSMESENS’ result in a significant difference in the length of the marks’ verbal elements.

The marks also coincide visually in the letters ‘COSM(E)’ present at the beginning of the earlier mark and being the first letters of the second smaller verbal element, ‘COSMETICS’ of the contested sign. However, these letters form or are part of non-distinctive elements due to their descriptive meaning; this is clearly the case at least in the contested mark in which the word ‘COSMETICS’ as such is used. In any case, the word ‘COSMETICS’ in the contested sign has reduced visual impact in comparison to the other elements and, therefore, the visual impact of this coincidence is very limited, if any.

In addition to the differences previously mentioned, the signs also differ in their figurative elements which, although mostly decorative and of limited distinctiveness, are still clearly perceptible and play a role in the visual impressions created by the signs.

Considering all the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier mark. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides for the vast majority of the relevant public in the sound of the letters ‘ESENS’, present identically in both signs.

However, the additional sounds, ‘COSM’, at the beginning of the earlier mark’s verbal element ‘COSMESENS’ form a relatively long sequence and their presence at the beginning of that element introduces a change in the number of syllables in the marks’ verbal elements (three syllables in the earlier mark and two in the contested sign’s first word). Moreover, the additional sounds at the beginning of the earlier mark affect the division of the syllables so that only the last syllable of the marks, ‘SENS’, coincides. The differing syllables of the marks are at their beginnings, where consumers generally tend to focus their attention.

Although the contested sign also contains the sound of the letters ‘COSM(E)’, these letters are part of the sign’s second word ‘COSMETICS’ which will not be pronounced by the public on account of its small size, ancillary position and non-distinctive character. It has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. This is especially the case when the purely descriptive words can be easily separated from the dominant term (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Therefore, the contested sign is likely to be referred to orally only as ‘ESENS’, because of the size and the first and central position of this word as well as the fact that it possess higher distinctive character than the verbal element ‘COSMETICS’ of the sign.

In view of the above, the marks are aurally similar to only a low degree.

In case a small part of the public in some parts of the relevant territory pronounces the first letter ‘E’ in the word ‘COSMESENS’ of the earlier mark and of ‘ESENS’ of the contested sign differently, the degree of aural similarity between the marks can obviously not be higher for these consumers.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

In particular, the public in the relevant territory will perceive the elements ‘COSME’ in the earlier mark and ‘COSMETICS’ in the contested sign with the same meaning. However, this is not sufficient to establish any conceptual similarity, as this concept is non-distinctive for the relevant goods and services and these elements cannot indicate the commercial origin.

The remaining elements of the marks under comparison will be associated with different concepts, although not particularly distinctive, namely the figurative element representing the Swiss flag in the earlier mark and the figurative element representing a heart or a leaf in the contested sign, as well as the ending of the earlier mark, ‘SENS’, and the element ‘ESENS’ of the contested sign, which may be perceived by at least some consumers.

Therefore, the signs are not similar conceptually.

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 distinctiveness of the earlier mark as a whole must be seen as normal for the relevant goods because, although its elements may be perceived as non-distinctive, lowly distinctive or allusive to characteristics of the goods by at least some parts of the public, the distinctiveness of the sign results from the way the verbal elements are combined together to an invented term and with the addition of the figurative elements, and the overall composition and graphical depiction of the mark render it distinctive to an average degree as a whole. In particular, although part of the public will recognise both ‘COSME’ and ‘SENS’ as non-distinctive or allusive elements, the combination thus formed is an invented word in which the two elements do not grammatically or syntactically make sense together .

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As stated above, the goods and services under comparison are identical or similar and target the general public or business customers, whose degree of attention will be average. The earlier mark as a whole has an average degree of distinctiveness in relation to the relevant goods.

The signs are visually and aurally similar but only to a low degree because the sequence of letters in common, ‘ESENS’, is not readily identifiable in the earlier mark and the other commonality in the letters ‘COSME’ will hardly be noticed given that the element ‘COSMETICS’ of the contested sign has very limited visual impact (and will not be pronounced). Furthermore, the marks are not conceptually similar.

An examination of the similarity of the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

The differences between the signs have a sufficiently significant impact on the overall impressions of the signs to outweigh the commonalities arising from their common letters which are not readily identifiable in one of the signs under comparison so that the likelihood that consumers may associate the goods and services at issue with the same or economically undertakings can safely be excluded, even in relation to identical goods.

The opponent refers to previous decisions of the Office to support his 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).

The signs considered in the current proceedings and those involved in these previous decisions involve different considerations in terms of the distinctiveness of elements and of the identification of the commonalities. Each case must be examined on its own individual merits, having regard to all the relevant factors. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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, he 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

Catherine MEDINA

Boyana NAYDENOVA

Martin MITURA

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.