OPPOSITION No B 3 088 363

Givaudan SA, Chemin de la Parfumerie 5, 1214 Vernier, Switzerland (opponent), represented by Ipsilon, Europarc - Bâtiment B7, 3 rue Edouard Nignon, 44300 Nantes, France (professional representative)

a g a i n s t

Μεντιμαρ Αε Φαρμακων, Καλλυντικων, Ιατρικου Εξοπλισμου, Κηφισιας 17 & βιτς. Κορναρου 8, 54655 θεσσαλονικη (Thessaloniki), Greece (applicant), represented by Niki Christakou, Asklipiou 141, 11472 Athens, Greece (professional representative).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 363 is upheld for all the contested goods.

2. European Union trade mark application No 18 041 109 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent initially filed an opposition against all the goods of European Union trade mark application No 18 041 109 for the word mark ‘REDENYL’, namely against all the goods in Classes 3 and 5. However, after the removal of the entire Class 5 from the scope of protection of the contested sign, the latter initiated by the applicant, the opposition is now directed against all the goods in Class 3, resulting in the opposition being again directed against all the goods of the contested sign. The opposition is based on, inter alia, international trade mark registration No 1 324 068 designating Benelux, France, Germany, Italy and the United Kingdom for the word mark ‘REDENSYL’. 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 international trade mark registration No 1 324 068 designating Benelux, France, Germany, Italy and the United Kingdom for the word mark ‘REDENSYL’.

a) The goods

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

Class 3: Beauty and body care products, hair lotions.

After the above mentioned limitation, requested by the applicant on 07/05/2019 and acknowledged by the Office, the contested goods are the following:

Class 3: Hair mousse; mousses [toiletries] for use in styling the hair; hair protection mousse; hair balsam; oils for hair conditioning; oil baths for hair care; hair moisturisers; hair gel; hair protection gels; styling gels; hair preservation treatments for cosmetic use; hair strengthening treatment lotions; cosmetics for the use on the hair; cosmetic preparations for the hair and scalp; cosmetic hair lotions; hair wax; hair creams; hair care creams; hair protection creams; hair lotions; hair care lotions; hair protection lotions; styling lotions; hair emollients; hair conditioners; hair moisturising conditioners; hair masks; hairstyling masks; hair care masks; hair preparations and treatments; non-medicated hair treatment preparations for cosmetic purposes; non-medicated hair shampoos; hair serums; hairstyling serums; hair care serums; hair glaze; preparations for protecting the hair from the sun; hair treatment preparations; hair care preparations, not for medical purposes; shampoos; hair powder; hair texturizers; hair and body wash; hair nourishers; hair straightening preparations; hair dressings for men; detanglers; hair rinses [shampoo-conditioners]; shampoos for human hair; hair spray; hair tonic; hair tonic [non-medicated]; hair liquids; scalp treatments (non-medicated -); non-medicated scalp treatment cream.

The above contested goods are various types of preparations for hair and scalp treatment, as well as hair and body wash, all of which are included in the broad category of the opponent’s beauty and body care products. Therefore, these goods 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 average.

c) The signs and distinctiveness of the earlier mark

REDENSYL	REDENYL
Earlier trade mark	Contested sign

The relevant territories are Benelux, France, Germany, Italy and the United Kingdom.

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 verbal elements constituting the marks in question have no meaning for the relevant public and are, therefore, distinctive.

Moreover, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the earlier mark enjoys a normal degree of distinctivenes as a whole.

Visually and aurally, the signs coincide in the letters ‘REDEN*YL’, and the sounds thereof. They only differ in the additional one letter ‘S’ placed in the earlier mark and having no counterpart in the contested sign.

Therefore, the signs are visually and aurally highly similar.

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.

d) Global assessment, other arguments and conclusion

The goods are identical and the degree of attention applied by the relevant public, the public at large, is average. The earlier mark enjoys a normal degree of distinctiveness.

As established above, the signs are visually and aurally highly similar, whereas the conceptual comparison has no impact on their assessment, that is to say, the public cannot rely on any concept in order to safely distinguish between the signs. By contrast, it will be guided by its visual and aural impressions of the signs.

Consequently, in spite of the difference in one additional letter (‘S’), there is a likelihood of confusion because the visual and aural coincidences are overwhelming since the contested sign is entirely incorporated in the earlier mark. Moreover, the additional letter appears rather at the end, in a non-prominent position and between other identical letters. As result, consumers will tend to pay less attention to that part of the sign where the different letter occurs. 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). Moreover, consumers tend to perceive the signs as a whole and do not tend to analyse their composing parts, including letters.

Considering all the above, especially taking into account that the goods are identical and that the signs only differ in one letter, 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 1 324 068 designating Benelux, France, Germany, Italy and the United Kingdom. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right examined above 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 right 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, 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

Sylvie ALBRECHT

Manuela RUSEVA

Mads Bjørn Georg JENSEN

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.