OPPOSITION Nо B 3 089 146

Unilab LP, 966 Hungerford Drive, Suite 3B, 20850 Rockville, United States of America (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)

a g a i n s t

Willkem Oy, Korsholmantie 8 A 3, FI-00900 Helsinki, Finland (applicant), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 Bis, 3 - 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 09/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 146 is upheld for all the contested goods, namely:

Class 3 False eyelashes; adhesives for false eyelashes, hair and nails; eyelashes; face masks; cleaning masks for the face; face and body masks; hand lotions; toning lotion, for the face, body and hands; non-medicated foot lotions; foot masks for skin care; foot care preparations (non-medicated -); hand masks for skin care; nail polish; nail polish pens; nail polish remover; nail polish top coat; nail polish base coat; non-medicated foot cream; false nails; artificial nails; adhesives for artificial nails; nail art stickers; artificial nails for cosmetic purposes; bath and shower gels; body butters; hand and body butter; body and facial butters; skincare cosmetics; make-up; make-up removers; hair colorants; hair color; beard oil; beard balm; body and facial oils; hair fixers.

2. European Union trade mark application No 18 041 624 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 18 041 624 for the figurative mark , namely against all the goods in Class 3. The opposition is based on, inter alia, Polish trade mark registration No R.312660 for the figurative mark . 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 Polish trade mark registration No R.312660, which is not subject to proof of use.

a) The goods

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

Class 3: Cosmetics; cosmetic preparations for slimming, shaving preparations, mouth deodorizers, tooth and mouth care products, hair care preparations, tanning preparations, perfumes, perfumes, tissues impregnated with lotions, depilatory preparations, sanitary preparations, such as non-medicated toilet products, washing and personal care preparations, personal care preparations, essential oils.

The contested goods are the following:

Class 3: False eyelashes; adhesives for false eyelashes, hair and nails; eyelashes; face masks; cleaning masks for the face; face and body masks; hand lotions; toning lotion, for the face, body and hands; non-medicated foot lotions; foot masks for skin care; foot care preparations (non-medicated -); hand masks for skin care; nail polish; nail polish pens; nail polish remover; nail polish top coat; nail polish base coat; non-medicated foot cream; false nails; artificial nails; adhesives for artificial nails; nail art stickers; artificial nails for cosmetic purposes; bath and shower gels; body butters; hand and body butter; body and facial butters; skincare cosmetics; make-up; make-up removers; hair colorants; hair color; beard oil; beard balm; body and facial oils; hair fixers.

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.

The contested face masks; cleaning masks for the face; face and body masks; hand lotions; toning lotion, for the face, body and hands; non-medicated foot lotions; foot masks for skin care; foot care preparations (non-medicated -); hand masks for skin care; nail polish; nail polish pens; nail polish remover; nail polish top coat; nail polish base coat; non-medicated foot cream; nail art stickers; bath and shower gels; body butters; hand and body butter; body and facial butters; skincare cosmetics; make-up; make-up removers; hair colorants; hair color; beard oil; beard balm; body and facial oils; hair fixers are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested false eyelashes; adhesives for false eyelashes, hair and nails; eyelashes; false nails; artificial nails; adhesives for artificial nails; artificial nails for cosmetic purposes are similar at least to a low degree to the opponent’s cosmetics as they usually coincide in producer, relevant public and distribution channels.

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 or similar at least to a low degree are directed at the public at large. The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Poland.

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 ‘Naturell’ of the earlier mark and ‘Naturel’ of the contested sign do not exist as such in Polish. Nevertheless, in Polish, ‘naturalny’ means ‘natural’ (information extracted from Słownik języka polskiego PWN on 09/12/2020 at https://sjp.pwn.pl/szukaj/naturalny.html) and ‘natura’ means ‘nature’ (information extracted from Słownik języka polskiego PWN on 09/12/2020 at https://sjp.pwn.pl/szukaj/natura.html). Therefore, the elements ‘Naturell’ and ‘Naturel’ allude to the natural character of the relevant goods, even of the contested false eyelashes; false nails; artificial nails; artificial nails for cosmetic purposes, which can be made of natural components. Therefore, these elements are weak in relation to all the relevant goods.

A significant part of the relevant public will perceive the verbal element ‘METYLO-B12’ of the earlier mark as the natural form of vitamin B12, and the element ‘500’ as its dosing amount (micrograms (mcg)). Bearing in mind that the relevant goods can contain 500 mcg of the natural form of vitamin B12, the elements ‘METYLO-B12 500’ are non-distinctive for this part of the relevant public. Since a difference in a non-distinctive element will not contribute to differentiating the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive the element ‘METYLO-B12 500’ of the earlier mark as indicated above.

The earlier mark also contains an abstract figurative element bearing a slight resemblance to a blue and green flower. Above the letter ‘U’ of the contested sign’s verbal element ‘Naturel’, there is a small figurative element, also resembling a flower. Bearing in mind that flowers are often used as an ingredient of the relevant goods or as an indication of their aroma, these figurative elements, if seen as flowers, are weak. If perceived as abstract devices without any specific concept, they are distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign’s verbal element ‘FINLAND’ indicates the origin of the relevant goods and is, therefore, non-distinctive.

The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The verbal element ‘Naturel’ is the dominant (most eye-catching) element in the contested sign due to its size and central position. The verbal element ‘FINLAND’ is secondary within the sign as it is depicted in a much smaller font than the verbal element ‘Naturel’ and is positioned below it.

The signs’ verbal elements are depicted in slightly stylised typefaces. The earlier mark’s element ‘Naturell’ is in green and the elements ‘METYLO-B12 500’ are in red.

Visually, the signs coincide in the sequence of letters ‘NATUREL’, which constitutes the contested sign’s dominant element. The earlier mark contains an additional letter ‘L’ at the end of the abovementioned letter sequence. However, this additional letter is a repetition of the preceding letter and might be overlooked by the average consumer.

The signs differ in their second verbal elements, ‘METYLO-B12 500’ of the earlier mark and ‘FINLAND’ of the contested sign, which are non-distinctive.

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.

Furthermore, the signs differ in their figurative elements, the slight stylisations of their verbal elements and the earlier mark’s colours. However, 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).

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

Aurally, the signs’ first verbal elements are pronounced identically. The pronunciation of the signs differs in the sound of their second verbal elements ‘METYLO-B12 500’ of the earlier mark and ‘FINLAND’ of the contested sign, which are non-distinctive.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept ‘natural’, conveyed by their verbal elements ‘Naturell’ and ‘Naturel’. If the signs’ figurative elements are seen as flowers, the signs coincide also in this concept. If the signs’ figurative elements are perceived as abstract devices, they will not convey any concept.

Although the signs’ second elements, ‘METYLO-B12 500’ and ‘FINLAND’, respectively, convey differing concepts, they are non-distinctive and cannot indicate the commercial origin.

Therefore, the signs are conceptually highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark varies. If the sign’s figurative element is perceived as a flower, the distinctiveness of the earlier mark is low for all the goods in question. If the figurative element is perceived as a distinctive abstract device, the distinctiveness of the earlier mark is normal, despite the presence of non-distinctive and weak verbal elements in the mark.

e) Global assessment, other arguments and conclusion

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.

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).

The goods are identical or similar at least to a low degree and target the general public, whose degree of attention is average.

The signs are visually similar to an average degree and aurally and conceptually highly similar due to the similarities in their verbal elements ‘Naturell’ and ‘Naturel’, which, although weak, are positioned at the beginnings of the signs and play an independent role within the signs and a dominant role in the contested sign. Although the signs contain additional differing verbal elements, these are non-distinctive and are placed at the end of the signs, where the consumers’ attention is not usually focused. The differences in the signs’ figurative aspects have less impact. In an overall assessment of the marks, therefore, these differences do not have sufficient impact to counteract the similarities and enable the relevant public to safely distinguish between them.

Therefore, it is highly conceivable that the relevant public, who will have to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical or similar goods originate from the same or economically linked undertakings, even with respect to the goods that are similar to only a low degree.

This finding is not called into question by the weak distinctive character of the earlier trade mark for a part of the public. Indeed, according to established case-law, the finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding of likelihood of confusion in this case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in the assessment. Therefore, despite the weak distinctive character of the earlier mark for a part of the public, there is a likelihood of confusion on account of, in particular, the similarity between the signs, as well as the identity or similarity of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will perceive the element ‘METYLO-B12 500’ of the earlier mark as indicating 500 mcg of the natural form of vitamin B12. It is sufficient if a significant part of the relevant public may be confused as to the origin of the goods at issue. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

Therefore, the opposition is well founded on the basis of the Polish trade mark registration No R.312660. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right 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, 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

Beatrix STELTER

Lidiya NIKOLOVA

Karin KLÜPFEL

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.