OPPOSITION No B 3 094 811

Remo Publicidad, S.L., Serrano Street 3, 28001, Madrid, Spain (opponent), represented by IPAMARK S.L., Segre, 27 - 1º C, 28002, Madrid, Spain (professional representative)

a g a i n s t

Incognito Assets Ltd, First Floor Office, 34 Great Queen Street, WC2B 5AA London, United Kingdom (applicant), represented by TLT LLP, One Redcliff Street, BS1 6TP Bristol, United Kingdom (professional representative).

On 30/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 811 is partially upheld, namely for the following contested goods and services:

Class 3: Soaps; perfumes, perfumery and fragrances; toilet water; pre-shave products and preparations; shaving products and preparations; aftershave products and preparations; perfumed water; body deodorants; anti-perspirants; natural oils for perfumes; colognes; essential oils, toiletries; non-medicated toilet preparations; talc; preparations for use in the bath or shower; creams and gels for the face, the body and the hands; skin care preparations and products; sun care products and preparations; after-sun products and preparations; cosmetics; hair lotions; hair care products and preparations; shampoos; gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare; hair treatment preparations and products; bodycare, beauty care and skincare products and preparations; dentifrices; creams and lotions for the skin.

Class 8: Hair styling appliances; hair clippers; hair cutting and removal implements; scissors; hand tool and hand-operated implements for hair treatment; curling tongs; hair straighteners; electric shavers.

Class 21: Hairbrushes; hair combs; cosmetic brushes, applicators and utensils; cosmetic bags (fitted); shaving brushes; brushes (except paintbrushes); exfoliating brushes, mitts and pads; perfume bottles, atomisers, sprayers and vaporizers; powder compacts; powder puffs; soap dishes and holders; sponges.

Class 35: Retail services connected with soaps, perfumes, perfumery and fragrances, toilet water, pre-shave products and preparations, shaving products and preparations, aftershave products and preparations, perfumed water, body deodorants, anti-perspirants, natural oils for perfumes, colognes, essential oils, toiletries, non-medicated toilet preparations, talc, preparations for use in the bath or shower, creams and gels for the face, the body and the hands, skin care preparations and products; retail services connected with sun care products and preparations, after-sun products and preparations, cosmetics, hair lotions, hair care products and preparations, shampoos, gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare, hair treatment preparations and products, bodycare, beauty care and skincare products and preparations, dentifrices, creams and lotions for the skin; retail services connected with candles, hair styling appliances, hair clippers, hair cutting and removal implements, scissors, hand tool and hand-operated implements for hair treatment, curling tongs, hair straighteners, electric shavers, hairdryers and hair drying apparatus, hairbrushes, hair combs, cosmetic brushes, applicators and utensils, cosmetic bags, shaving brushes, brushes (except paintbrushes), exfoliating brushes, mitts and pads; retail services connected with perfume bottles, atomisers, sprayers and vaporizers, powder compacts, powder puffs, soap dishes and holders, sponges.

Class 44: Barber services; barbershop services; shaving services; beauty salon services, including male grooming services; hairdressing services; hair care services; hair treatment services; hair cutting services; hairdressing salon services; advisory, information and consultancy services relating to all of the aforesaid services.

2. European Union trade mark application No 18 028 210 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 028 210 ‘PATRONS’, namely against all the goods and services in Classes 3, 8, 21, 35 and 44. The opposition is based on Spanish trade mark registration No 2 923 176 ‘ES PATRONS’. 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 and services

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

Class 3: Perfumery, cosmetics, hair lotions, soaps, oils for cosmetic use, depilators, deodorants, nail lacques, beauty pencils, toilet products, hair dyes, bath salts, posted nails, nail care products, cosmetic sets, perfumery.

Class 39: Storage, distribution, transportation, deposit, packing and packaging of goods services.

The contested goods and services are the following:

Class 3: Soaps; perfumes, perfumery and fragrances; toilet water; pre-shave products and preparations; shaving products and preparations; aftershave products and preparations; perfumed water; body deoderants; anti-perspirants; natural oils for perfumes; colognes; essential oils, toiletries; non-medicated toilet preparations; talc; preparations for use in the bath or shower; creams and gels for the face, the body and the hands; skin care preparations and products; sun care products and preparations; after-sun products and preparations; cosmetics; hair lotions; hair care products and preparations; shampoos; gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare; hair treatment preparations and products; bodycare, beauty care and skincare products and preparations; dentifrices; creams and lotions for the skin.

Class 8: Hair styling appliances; hair clippers; hair cutting and removal implements; scissors; hand tool and hand-operated implements for hair treatment; curling tongs; hair straighteners; electric shavers.

Class 21: Hairbrushes; hair combs; cosmetic brushes, applicators and utensils; cosmetic bags (fitted); shaving brushes; shaving brush holders and stands; brushes (except paintbrushes); exfoliating brushes, mitts and pads; perfume bottles, atomisers, sprayers and vaporizers; powder compacts; powder puffs; shoe brushes, cloths and shoe horns; soap dishes and holders; sponges.

Class 35: Retail services connected with soaps, perfumes, perfumery and fragrances, toilet water, pre-shave products and preparations, shaving products and preparations, aftershave products and preparations, perfumed water, body deoderants, anti-perspirants, natural oils for perfumes, colognes, essential oils, toiletries, non-medicated toilet preparations, talc, preparations for use in the bath or shower, creams and gels for the face, the body and the hands, skin care preparations and products; retail services connected with sun care products and preparations, after-sun products and preparations, cosmetics, hair lotions, hair care products and preparations, shampoos, gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare, hair treatment preparations and products, bodycare, beauty care and skincare products and preparations, dentifrices, creams and lotions for the skin; retail services connected with candles, hair styling appliances, hair clippers, hair cutting and removal implements, scissors, hand tool and hand-operated implements for hair treatment, curling tongs, hair straighteners, electric shavers, hairdryers and hair drying apparatus, hairbrushes, hair combs, cosmetic brushes, applicators and utensils, cosmetic bags, shaving brushes, shaving brush holders and stands, brushes (except paintbrushes), exfoliating brushes, mitts and pads; retail services connected with perfume bottles, atomisers, sprayers and vaporizers, powder compacts, powder puffs, shoe brushes, clothes and shoe horns, soap dishes and holders, sponges; advertising, marketing and promotional services; sales promotion services; advisory, information and consultancy services relating to all of the aforesaid services.

Class 44: Barber services; barbershop services; shaving services; beauty salon services, including male grooming services; hairdressing services; hair care services; hair treatment services; hair cutting services; hairdressing salon services; advisory, information and consultancy services relating to all of the aforesaid services.

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.

Moreover, the Opposition Division notes that some of the goods for which the earlier mark is registered have not been translated correctly into the language of proceedings, namely lacas para las uñas and uñas postizas, which have been translated to nail lacques and posted nails. Since the outcome of this decision does not change on the basis of these particular goods, the Opposition Division will base the comparison of the goods and services at issue on the correct translations of these terms, notably nail polish and false nails.

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

Soaps, perfumery, cosmetics and hair lotions are identically included in both lists of goods.

The contested perfumes, fragrances, toilet water, perfumed water and colognes are included in the opponent’s perfumery and, therefore, they are identical.

The contested pre-shave products and preparations, shaving products and preparations, aftershave products and preparations, body deoderants, anti-perspirants, toiletries, non-medicated toilet preparations, talc, preparations for use in the bath or shower, creams and gels for the face, the body and the hands, skin care preparations and products, sun care products and preparations, after-sun products and preparations, hair care products and preparations, shampoos, gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare, hair treatment preparations and products, bodycare, beauty care and skincare products and preparations and creams and lotions for the skin are included in the opponent’s cosmetics. Therefore, these goods are identical.

The contested natural oils for perfumes and essential oils usually have the same producers, distribution channels and end users as cosmetics. The same can be stated when comparing the contested dentifrices to cosmetics. These goods, moreover, have the same purpose. It follows that the goods at issue are similar.

Contested goods in Class 8

The contested hair styling appliances, hair clippers, hair cutting and removal implements, scissors, hand tool and hand-operated implements for hair treatment, curling tongs, hair straighteners and electric shavers and the opponent’s cosmetics and depilators, respectively, have the same purpose, distribution channels and end users. Moreover, the contested hair removal implements and electric shavers and the opponent’s depilators are in competition. Therefore, these goods are considered similar to a low degree.

Contested goods in Class 21

The contested hairbrushes, hair combs, cosmetic brushes, applicators and utensils, shaving brushes, brushes (except paintbrushes), exfoliating brushes, mitts and pads, powder puffs and sponges and the opponent’s cosmetics usually have the same producers, distribution channels and end users. Furthermore they are complementary. Consequently, these goods are similar.

The contested perfume bottles, atomisers, sprayers and vaporizers are used to hold and diffuse perfumes, whereas powder compacts are used to hold and store cosmetic powder, and cosmetic bags (fitted) are carriers which can contain or are sold together with such items as cosmetic utensils. The contested goods have the same producers, distribution channels and end users as the opponent’s perfumery and cosmetics, and some of them are also complementary. Therefore, these goods are considered similar.

The contested soap dishes and holders are complementary to the opponent’s soap, and they are sold through the same distribution channels to the same end users. It follows that these goods are similar to a low degree.

The contested shaving brush holders and stands, on the other hand, although they might be sold through the same distribution channels as some of the opponent’s goods in Class 3, are too far removed from those goods. While they are used and also sold together with the contested shaving brushes, they do not have sufficient points of contact under the abovementioned criteria for a finding of similarity with the opponent’s goods in Class 3. These goods are dissimilar. The same applies, a fortiori, when compared to the opponent’s services in Class 39, which are services in relation to the storage, transport and packaging of goods.

The contested shoe brushes, cloths and shoe horns have no relevant points of contact with the opponent’s goods and services, none of which are even remotely related to such implements used in relation to shoes, or to cleaning or any cleaning material. These goods and services are obviously dissimilar.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, 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.

Moreover, there is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

Consequently, the contested retail services connected with soaps, perfumes, perfumery and fragrances, toilet water, pre-shave products and preparations, shaving products and preparations, aftershave products and preparations, perfumed water, body deoderants, anti-perspirants, natural oils for perfumes, colognes, essential oils, toiletries, non-medicated toilet preparations, talc, preparations for use in the bath or shower, creams and gels for the face, the body and the hands, skin care preparations and products, retail services connected with sun care products and preparations, after-sun products and preparations, cosmetics, hair lotions, hair care products and preparations, shampoos, gels, sprays, waxes, lotions, mousses and balms for hair styling and haircare, hair treatment preparations and products, bodycare, beauty care and skincare products and preparations, dentifrices, creams and lotions for the skin, hair styling appliances, hair clippers, hair cutting and removal implements, scissors, hand tool and hand-operated implements for hair treatment, curling tongs, hair straighteners, electric shavers, hairdryers and hair drying apparatus, hairbrushes, hair combs, cosmetic brushes, applicators and utensils, cosmetic bags, shaving brushes, brushes (except paintbrushes), exfoliating brushes, mitts and pads, retail services connected with perfume bottles, atomisers, sprayers and vaporizers, powder compacts, powder puffs, soap dishes and holders and sponges are at least similar to a low degree to the opponent’s soap, cosmetics and perfumery, respectively, in Class 3. Insofar as the retailed goods are not identical to the opponent’s, they are closely connected. The goods are brought together and offered for sale in the same specialised shops, belong to the same market sector and, therefore, are of interest to the same consumer. The same applies to the contested retail services connected with candles, since the opponent’s perfumery is similar to scented candles. Therefore, these goods and services are similar to a low degree.

On the other hand, when goods sold at retail are dissimilar to the actual goods themselves, no similarity can be found between them. Therefore, the contested retail services connected with shaving brush holders and stands, shoe brushes, clothes and shoe horns are dissimilar to the opponent’s goods in Class 3. Moreover, they have no relevant points of contact under the abovementioned criteria with the opponent’s services in Class 39 and are, therefore, dissimilar also those services.

The contested advertising, marketing and promotional services and sales promotion services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. They are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised, including the opponent’s goods and services in Classes 3 and 39, to which they do not have any relevant points of contact under the abovementioned criteria.

The contested advisory, information and consultancy services relating to all of the aforesaid services, while they are related to retail services, are dissimilar to any goods, including the opponent’s goods in Class 3. The mere fact that they may be offered side by side e.g. in retail outlets is not sufficient for a finding of similarity. The contested services are also dissimilar to the opponent’s services in relation to the storage, transport and packaging of goods in Class 39. The goods and services at issue, apart from having a different nature, have different purposes and different producers/usual origins. Moreover, they are neither in competition with, nor complementary to each other.

Contested services in Class 44

The contested barber services, barbershop services, shaving services, beauty salon services, including male grooming services, hairdressing services, hair care services, hair treatment services, hair cutting services and hairdressing salon services have the same purpose as the opponent’s cosmetics, which are designed to be applied to the human body for the purpose of cleaning it, making it smell nice, altering its appearance, protecting it or keeping it in good condition. The contested services, moreover, require the use of said goods. The establishments which provide such services may also offer for sale beauty and health products bearing their trade mark or, as the case may be, goods from an outside supplier. It follows that the goods and services at issue also have the same distribution channels and end users, and that they are complementary (26/02/2015, T-388/13, SAMSARA, EU:T:2015:118, §§ 26 ff.). Therefore, they are considered similar.

The same applies to the contested advisory, information and consultancy services relating to all of the aforesaid services which are, essentially, consultancy services in relation to beauty. They also have the same purpose, distribution channels and end users as the opponent’s cosmetics and are complementary to these goods. Consequently, these services are also similar to the aforesaid goods.

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 and services found to be identical or similar (to various degrees) are directed both at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to above, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

ES PATRONS	PATRONS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 element ‘PATRONS’, included in both marks, as such, does not exist in Spanish. Even in the event that it is perceived as allusive of the Spanish word ‘patrón’ (plural ‘patrones’) meaning, inter alia, ‘boss, employer’, ‘pattern, model’ (https://dle.rae.es/patrón), none of these concepts have a meaning in relation to any of the relevant goods or services. This element is, therefore, distinctive.

The element ‘ES’ of the earlier mark will be understood as ‘(he/she/it) is’ by the relevant public. Although this meaning does not diminish its distinctiveness per se, this term still plays a subordinate role in the given composition, as the earlier mark as a whole will be perceived as meaning ‘it is PATRONS’.

Visually and aurally, the signs coincide in the element ‘PATRONS’. However, they differ in the additional element ‘ES’ of the earlier mark.

Therefore, the signs are visually and aurally highly similar.

Conceptually, the difference between the marks arising from ‘ES’ in the earlier mark is rather secondary, as it merely refers to ‘PATRONS’, identically included in both marks. Consequently, it cannot lead to any significant dissimilarity between the marks for the part of the public to which ‘PATRONS’ does not convey any meaning.

Insofar as this coinciding element is associated with any of the above meanings, this would lead, at least, to a conceptual similarity between 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.

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

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).

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/services covered are from the same or economically linked undertakings.

Moreover, 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).

The distinctiveness of the earlier mark, which includes the contested sign in its entirety, is considered normal. Moreover, this coinciding element will be given more weight by consumers than the other element in the earlier mark. This results in the signs being visually and aurally highly similar. Moreover, they do not convey a meaning which could help consumers distinguish between them. If anything, they evoke the same connotation on account of the coinciding element ‘PATRONS’.

Indeed, it is highly conceivable that the relevant consumers will perceive the earlier mark as a variation of the contested sign, merely referring to the latter in the promotional message that ‘it is PATRONS’.

Therefore, consumers may be mistaken about the origin of the goods and services found to be identical or similar, notwithstanding the fact that the degree of attention may be above average. This applies equally to those goods and services which have only been found to be similar to a low degree, as the high similarity between the signs offsets the low degree of similarity between these goods and services

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion. Therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark.

  

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Natascha GALPERIN

Elena NICOLÁS GÓMEZ

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.