OPPOSITION No B 3 088 876

REWE-Beteiligungs-Holding International GmbH, Domstr. 20, 50668 Köln, Germany (opponent), represented by Schmitt Teworte-Vey Simon & Schumacher Partnerschaft von Rechtsanwälten mbB, Im Klapperhof 3-5, 50670 Köln, Germany (professional representative)

a g a i n s t

Shenzhen Fansme Technology Co., Ltd., Room 1503,15F, Henglu E-Times Building

Pingji Road, Pinghu Town, Longgang District, Shenzhen, People’s Republic of China (applicant), represented by Isidro José García Egea, Calle Obispo Frutos,1B 2°A, 30003 Murcia, Spain (professional representative).

On 22/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 876 is partially upheld, namely for the following contested goods and services:

Class 3: Lipsticks; depilatory preparations; nail polish; nail art stickers; nail glitter; cosmetics; cotton wool for cosmetic purposes; cosmetic pencils; perfumes; gel eye patches for cosmetic purposes.

Class 35: Wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

2. European Union trade mark application No 18 042 914 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 042 914 (figurative mark). The opposition is based on European Union trade mark registration No 8 557 373 ‘Fancy’ (word mark) and European Union trade mark registration No 4 104 147 ‘Fancy’ (word 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 European Union trade mark registration No 8 557 373.

1. The goods and services

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

Class 3: Mouthwashes; preparations for use in the shower and bath; deodorants and anti-perspirants for personal use; shaving sticks, creams, foams and gels; aftershave lotions and gels; impregnated cloths for personal use; moist wipes for sanitary and cosmetic purposes; sanitary preparations, namely cosmetics.

Class 5: Plasters, materials for dressings; cotton wool, cotton wool pads, cotton buds for medical purposes; disinfectants; preparations for destroying vermin; fungicides; herbicides; dietetic foodstuffs and foodstuff preparations, dietetic auxiliary agents for healthcare, in particular vitamins, minerals and nutritive food supplements; food for babies; sanitary towels, tampons, panty liners, nappies for adults, including all the aforesaid goods made of or using cellulose, non-woven textile fabrics and nap fabrics.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office machines (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 21: Hair, nail and tooth brushes.

The contested goods and services are the following:

Class 3: Lipsticks; depilatory preparations; nail polish; nail art stickers; nail glitter; cosmetics; cotton wool for cosmetic purposes; cosmetic pencils; perfumes; gel eye patches for cosmetic purposes.

Class 35: Advertising; presentation of goods on communication media, for retail purposes; online advertising on a computer network; web indexing for commercial or advertising purposes; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; import-export agency services; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; provision of an online marketplace for buyers and sellers of goods and services; marketing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘including’ and ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

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

The contested cosmetics include, as a broader category, or overlap with, the opponent’s preparations for use in the shower and bath. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested depilatory preparations are included in the broad category of, or overlap with, the opponent’s sanitary preparations, namely cosmetics. Therefore, they are identical.

The contested lipsticks are small sticks of cosmetic paste, set in a case, for coloring the lips. These goods are included in the broad category of, or overlap with, the opponent’s sanitary preparations, namely cosmetics. Therefore, they are identical.

The contested nail polish; nail art stickers; nail glitter are included in the broad category of, or overlap with, the opponent’s sanitary preparations, namely cosmetics. Therefore, they are identical.

The contested cotton wool for cosmetic purposes are at least similar to the opponent’s moist wipes for sanitary and cosmetic purposes. They have the same purpose and method of use, the same producers, distribution channels and relevant public. Moreover, they are in competition.

The contested perfumes are similar to the opponent’s deodorants and anti-perspirants for personal use. They have the same general purpose, namely to protect or enhance the odor or fragrance of the body. Additionally, they usually coincide in producer, relevant public and distribution channels.

The contested cosmetic pencils; gel eye patches for cosmetic purposes are cosmetics and cosmetics accessories and therefore, at least lowly similar to the opponent’s sanitary preparations, namely cosmetics. They can have the same distribution channels, the same general purpose, namely to enhance the appearance, and the same target public.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being 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 consumers.

A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find 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 consumers.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested wholesale services for sanitary preparations are at least similar to a low degree to the opponent’s sanitary preparations, namely cosmetics.

The contested wholesale services for pharmaceutical and medical supplies are at least similar to a low degree to the opponent’s disinfectants.

The contested wholesale services for veterinary supplies are at least similar to a low degree to the opponent’s preparations for destroying vermin.

However, the principles set out above do not apply to other services that do not revolve exclusively around the sales of goods, such as import and export services and, by analogy, procurement services for others [purchasing goods and services for other businesses]; provision of an online marketplace for buyers and sellers of goods and services. Import and export services are not considered to be a sales service and thus cannot be subject to the same arguments as those used in the comparison of goods with retail services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. Similarly, procurement services for others [purchasing goods and services for other businesses]; provision of an online marketplace for buyers and sellers of goods and services as they are classified in Class 35, are considered to relate to business administration. Therefore, these contested services are not directly related with the actual retail or wholesale of the goods; they are considered to be preparatory or ancillary to the commercialization of such goods. Consequently, the contested import and export services; procurement services for others [purchasing goods and services for other businesses]; provision of an online marketplace for buyers and sellers of goods and services are dissimilar to all the opponent’s goods in Classes 3, 5, 16 and 21. They are directed at different consumers, neither share distribution channels nor producers/providers. They are not in competition with each other and do not share the same purpose.

Advertising 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 a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services 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, the contested advertising; online advertising on a computer network and also the nearby services presentation of goods on communication media, for retail purposes; web indexing for commercial or advertising purposes; marketing are dissimilar to all the opponent’s 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 and services found to be identical or similar to various degrees are directed 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 high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

Fancy
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 words ‘Fancy’ and ‘Fansme’ are not meaningful in some languages spoken in the European Union. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which these words have no meaning and are distinctive (e.g. German- and French-speaking consumers).

The earlier sign is a pure word mark and the contested sign is a figurative mark, consisting of the slightly stylised verbal element ‘Fansme’ in rather standard black title case letters.

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.

Visually, the signs coincide in the first letters ‘Fan’. However, they differ in the following letters ‘cy’ of the earlier signs and ‘sme’ of the contested sign. Moreover, they differ the slight stylisation of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the initial letters ‛Fan’, present identically in both signs. The pronunciation differs in the sound of the last letters ‘cy’ of the earlier mark and in the sound of the last letters ‘sme’ of the contested sign. However, the letters ‘C’ and ‘S’ in the middle of the marks have, at least for a part of the public, a very similar sound. For this part of the public, the signs mainly differ in the last sounds, ‘y’ of the earlier sign and ‘me’ of the contested sign.

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

Conceptually, neither of the signs has a meaning for the relevant German and French-speaking public.. 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

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).

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.

In the present case, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. They are directed at the public at large and at professionals with an average to high degree of attention.

The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The inherent distinctiveness of the earlier mark is normal.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German- and French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark. The similarity between the marks outweighs the low similarity of these goods and services.

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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 4 104 147 for the word mark ‘Fancy’.

Since this mark is identical to the one which has been compared and cover ta narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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

Christian STEUDTNER

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.