OPPOSITION No B 3 086 811

Shiseido Americas Corporation, 301 Route 17 North, 10th Floor, 07070 Rutherford, United States (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, EC4Y 0DA London, United Kingdom (professional representative)

a g a i n s t

Beautyenigma LDA, Rua Capitão Filipe De Sousa, nº 124, 2500 140 Caldas Da Rainha Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 15/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 811 is upheld for all the contested goods.

2. European Union trade mark application No 18 029 606 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 18 029 606 for the figurative mark . The opposition is based on European Union trade mark registration No 13 192 497 for the verbal mark ‘ORGASM’. 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, among others, the following:

Class 3: Cosmetics.

The contested goods are the following:

Class 3: Non-medicated cosmetics; Cosmetics for personal use; Functional cosmetics.

The contested goods are included in the broad category of the opponent’s goods. Therefore, they are identical.

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

c) The signs

ORGASM
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 earlier mark is a verbal mark consisting of the term ‘ORGASM’.

The contested sign is a figurative mark consisting of the terms ‘ORGASM DROPS’ wherein the ‘O’ in ‘DROPS’ appear in the shape of a water droplet.

The common element ‘ORGASM’ and the word ‘DROPS’ of the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘DROPS’ (including the shape of a water droplet) of the contested sign can be perceived by the consumer as a reference to the fact that, for example, the relevant goods (cosmetics) are sold in the form of drops. Therefore, this element is considered weak.

The common element ‘ORGAMS’ will be understood as ‘the time of greatest pleasure and excitement during sex’. Although, this element could be associated with ‘pleasure’ this has no direct and immediate relation with the relevant goods. Therefore, it is considered distinctive.

The stylisation and the background of the contested sign are of a purely decorative nature.

The contested sign has no element that could be considered clearly more dominant than other elements.

The earlier mark, ‘ORGASM’, is entirely included as the first verbal element of the contested sign. 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 (from the top to the end), which makes the part placed at the left (or on the top) of the sign (the initial part) the one that first catches the attention of the reader. For that reason, the coincidence in the above mentioned element is considered relevant.

Visually and aurally, the earlier mark, ‘ORGASM’, is entirely included as the first verbal element of the contested sign wherein plays an independent distinctive role. However, they differ in the term ‘DROPS’, including the shape of a water droplet, (which is weak) and the stylisation and background of the contested sign which are purely decorative.

Therefore, the signs are visually and aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar at least 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.

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 goods are identical and they are targeted at the public at large which degree of attention is average.

The earlier mark has a normal degree of distinctiveness.

The marks are visually, aurally and conceptually similar to at least and average degree. In particular, the earlier mark ‘ORGASM’ is entirely included in the contested sign and has an independent distinctive role. The additional elements of the contested sign are secondary or weak.

Account is taken of the fact that 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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The relevant costumer will perceive the contested mark as a variation or a sub-brand of the earlier mark. As could be the same product sold in drops.

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 13 192 497. 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

Aldo BLASI

Francesca CANGERI

María Clara IBÁÑEZ FIORILLO

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.