OPPOSITION No B 3 085 900

Pharma Medico UK Limited, First Floor, Templeback, 10 Temple Back, BS1 6FL Bristol, United Kingdom (opponent), represented by Brookes IP, Windsor House, 6-10 Mount Ephraim Road, TN1 1EE Tunbridge Wells, United Kingdom (professional representative)

a g a i n s t

Lurella Cosmetics Inc., 8227 Sorenson Avenue, 90670 Santa Fe Springs, United States of America (applicant), represented by Katarzyna Binder-Sony, ul. Poznańska 23/6, 00-685 Warsaw, Poland (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 900 is upheld for all the contested goods, namely

Class 3: Cosmetics.

2. European Union trade mark application No 18 033 721 is rejected for all the contested goods. It may proceed for the remaining 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 18 033 721, namely against all the goods in Class 3, for the word mark ‘LURELLA’. The opposition is based on, inter alia, European Union trade mark registration No 4 382 669 for the word mark ‘NOURELLA’. 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 4 382 669.

1. The goods

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

Class 3: Cosmetics.

The contested goods are the following:

Class 3: Cosmetics.

Cosmetics are identically contained in both lists of goods.

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 considered to be average.

3. The signs

NOURELLA	LURELLA
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 words ‘NOURELLA’ and ‘LURELLA’ have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the last six letters ‘-URELLA’. However, they differ in the first two letters ‘NO-‘ of the earlier mark and ‘L-‘ of the contested sign.

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

Aurally, the signs coincide in the letters ‘-URELLA’, while they differ in the pronunciation of the first letters ‘NO-‘ and ‘L-‘. However, this is not valid for the whole of the relevant public, since in some languages such as, for instance, French, it is likely to expect that the letters ‘OU’ of the earlier mark and the letter ‘U’ of the contested sign will be pronounced in an undistinguishable manner.

It follows that aurally the sign, if not similar to a high degree as it could be the case of their pronunciation for the French-speaking consumers, are at least similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

5. Global assessment, other arguments and conclusion

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods in Class 3 covered by the trade marks in dispute have been found identical. The signs ‘NOURELLA’ and ‘LURELLA’ are visually and aurally similar to, at least, an average degree. The visual and aural similarities are all the more increased by the circumstance that the signs share the vast majority of their letters, the same structure and a very similar rhythm and intonation.

Taking into account the visual and aural similarity of the signs, the average degree of distinctiveness of the earlier trade mark, the average degree of attention of the relevant public and the identity of the goods, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the European Union trade mark registration No 4 382 669. It follows that the contested sign must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 4 382 669 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).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PEREZ BARBER

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.