OPPOSITION No B 3 088 376

Papoutsanis S.A., 71 kilometer, National Road Athens-Lamia, Vathi Avlidos, 34100 Halkida, Greece (opponent), represented by Karatzas & Partners Law Firm, 8 Koumpari Street, 10674 Athens, Greece (professional representative)

a g a i n s t

José Carlos Díaz Fernández, Avenida de la Industria 32, 28108 Alcobendas, Spain (applicant) represented by Falcon Abogados C/ Goya 23 - 3º izda., 28001 Madrid, Spain (professional representative).

On 10/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 376 is upheld for all the contested goods.

2. European Union trade mark application No 18 048 104 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 18 048 104 for the word mark ‘Olivia Pop Cosmetics’. The opposition is based on, inter alia, European union trade mark registration No 2 809 986 . 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 2 809 986.

a) The goods

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

Class 3: Soaps, cream soaps, bath foam, shower foam, body lotion, essential oils, shampoo, hair lotions, deodorant (roll-on, cream, spray), cosmetic face creams, perfumery, with the exclusion of preparations to avoid stretch marks during pregnancy.

The contested goods are the following:

Class 3: Cosmetics

The contested cosmetics includes, as a broader category, the opponent’s soaps, cream soaps, bath foam, shower foam, body lotion. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 considered to be average.

c) The signs

	Olivia Pop Cosmetics
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 common verbal element ‘Olivia’ will be widely understood through the relevant territory as a female given name, for example in those countries where English is understood. ‘Olivia’ is not related to the relevant goods and has a normal degree of distinctiveness.

The applicant claims that the verbal element ‘Olivia’ is ‘a generic and merely descriptive term consisting of a feminine proper name, therefore, this expression is not subject to exclusive appropriation, as it lacks, in itself, the necessary distinctive character.’ However, if the meaning of a verbal element is not related to the relevant goods, it is considered to have a normal degree of distinctiveness per se. Therefore, the applicant’s claim is set aside.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in order to avoid the possible variations in the conceptual comparison of the signs.

The verbal element ‘cosmetics’ in the contested sign is descriptive of the relevant goods and lacks any distinctiveness for the relevant public. The contested sign’s element ‘pop’ is understood as a term relating to commercial popular music or fashion. ‘Pop cosmetics’ will most likely be perceived by the relevant public as referring to fanciful, modern and colourful cosmetics, and is therefore weak in relation to the relevant goods.

The earlier mark’s verbal element ‘PAPOUTSANIS’ will most likely be understood as the name of the manufacturer of the relevant goods since it is placed on a figurative element that resembles a label. Although the name ‘PAPOUTSANIS’ is deemed distinctive, the figurative element (depicting a label) will not be attributed any trade mark significance by the relevant consumers and is consequently non-distinctive. Furthermore, due to its small size, this element as a whole has a very low impact in the overall impression of the sign.

The same finding applies to the figurative element above the verbal element ‘PAPOUTSANIS’, which, due to its small size, has a very low impact, if any.

The black droplet and the white droplet, replacing the respective dots of the letters ‘i’ in the earlier mark, together with the rather standard bold typeface, are figurative aspects that are of a decorative nature and consequently of a limited impact.

Consequently, the verbal element ‘Olivia’ in the earlier mark is clearly the dominant element of the sign.

In addition, 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).

Visually and aurally, the signs coincide in their common verbal element ‘Olivia’ and its sound. They differ in the additional verbal elements and their sounds, ‘Pop Cosmetics’ and ‘PAPOUTSAKIS’ of the contested sign and the earlier mark, respectively. Visually, they differ further in the figurative elements and aspects of the earlier mark.

Taking into account the distinctiveness and the impact of the different components of the signs, they are visually and aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning on account of their coinciding verbal element ‘Olivia’. The signs differ in the concepts evoked by the additional verbal elements in the signs, which, however, all have a limited impact on the consumers’ perception. Therefore, the signs are conceptually similar to an above-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 claimed that the earlier trade mark enjoys enhanced distinctiveness through use since it is the largest manufacturer of soaps, liquid cosmetics and hotel amenities in Greece and one of the main manufacturers in Eastern Europe, but did not file any evidence in order to prove such a claim.

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, despite the presence of some elements of limited distinctiveness in the mark, as stated above in section c) of this decision.

e) Global assessment

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).

The identical goods target the public at large, who has an average degree of attention. The signs are similar to an above-average degree in all aspects of the comparison and the earlier mark enjoys a normal degree of distinctiveness.

The dominant and distinctive verbal element ‘Olivia’ in the earlier mark is completely contained at the beginning of the contested sign. Since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, because the public reads from left to right, it is clear that ‘Olivia’ in the contested sign is the word that will catch the consumers’ attention.

‘Olivia’ will also be the word consumers will focus on in the earlier mark, because it is the dominant element in the sign and the additional elements are all non-distinctive or of a low or limited impact.

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 covered are from the same undertaking or economically linked undertakings.

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). Consumers might see the contested sign as a new line of cosmetics launched by the opponent.

The applicant argues that there are several European Union trade marks containing the word ‘OLIVIA’ and lists some of them. He further claims that, since these trade marks were registered, he should be treated equally and the contested sign should be registered.

The Office only examines ex officio absolute grounds for refusals; opposition proceedings must be initiated by owners of earlier rights so the fact that some other trade marks containing the word ‘OLIVIA’ have been registered is of no relevance in the present case. Therefore, the applicant’s claim must be set aside.

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 2 809 986. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 2 809 986 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, he 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

Victoria DAFAUCE MENENDEZ

Sylvie ALBRECHT

Cristina SENERIO LLOVET

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.