OPPOSITION No B 3 088 445

The Boots Company PLC, 1 Thane Road, Nottingham, NG2 3AA, United Kingdom (opponent), represented by Kapil Agashi, 1 Thane Road, Nottingham, NG2 3AA, United Kingdom (employee representative)

a g a i n s t

Shenzhen Kang'ermei Industry Co., Ltd., Rm., 302, 308, 309, 310, Jiancai Bldg., Area 71, Xingdong Community, Xin'an St., Bao'an Dist., Shenzhen, Guangdong, People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 19/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 445 is partially upheld, namely for the following contested goods:

Class 21: Toilet utensils.

2. European Union trade mark application No 18 048 523 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 048 523 for the word mark ‘masky’, namely against all the goods in Class 21. The opposition is based on, inter alia, European Union trade mark registration No 16 430 671 for the word mark ‘MASQD’. 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 16 430 671 for the word mark ‘MASQD’.

1. The goods

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

Class 8: Tweezers; nail clippers; cuticle scrapers; cuticle clippers; eyelash curlers; emery boards; manicure sets; scissors.

Class 16: Cosmetic pencil sharpeners.

Class 18: Wash bags (for carrying toiletries); cosmetic bags.

Class 20: Mirrors; make up mirrors.

Class 21: Make up brushes; make-up sponges; eyebrow brushes; hairbrushes; make-up storage boxes and organisers; applicators for cosmetics.

The contested goods are the following:

Class 21: Toothbrushes, electric; interdental brushes for cleaning the teeth; toilet utensils; heads for electric toothbrushes; perfume burners; water apparatus for cleaning teeth and gums; toothbrushes; toothpicks; floss for dental purposes; toothpick holders.

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.

The contested toilet utensils cover a broad category of goods which encompass, inter alia, toilet articles for personal and beauty care, such as the opponent’s applicators for cosmetics; make up brushes and make up sponges. 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 toothbrushes, electric; interdental brushes for cleaning the teeth; heads for electric toothbrushes; water apparatus for cleaning teeth and gums; toothbrushes; toothpicks; floss for dental purposes; toothpick holders are goods related to dental hygiene with the purpose of cleaning or treating the teeth. In contrast, the opponent’s goods in Class 21 are used for the appliance and storage of cosmetics and personal hygiene purposes but not related to the teeth. Although they can be sold at the same places, they are usually separated according to their mentioned purpose of use. Furthermore, the goods under comparison are not complementary to each other or in competition and are unlikely to be produced by the same undertakings. Therefore, all the contested goods mentioned, are considered to be dissimilar to all the opponent’s goods in Class 21. In addition, these contested goods are dissimilar also to the opponent’s goods in Class 8, 16, 18 and 20. These sets of goods differ in nature, purpose and method of use. They are normally produced/provided by different companies and usually follow different distribution channels. They are not complementary or in competition either. Therefore, they are dissimilar.

The contested perfume burners are household utensils for refreshing the air. These are dissimilar to all the opponents’ goods of all the classes as they differ in nature, purpose and method of use. They are not complementary nor in competition and they are usually produced by different undertakings.

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

MASQD	masky
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).

Both marks in dispute are word marks, respectively ‘MASQD’ (earlier mark) and ‘masky’ (contested sign). The earlier mark is depicted in upper-case letters while the contested sign is in lower-case letters. However, the use of upper or lower case and the difference between the signs in this regard is immaterial. In fact, both marks are word marks and, therefore, it is the word as such that is protected and not its written form.

The words of which the marks consist, ‘MASQD’ and ‘masky’ respectively, are both meaningless as a whole for the public throughout the relevant territory. However, although they are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T- 146/06, Aturion, EU:T:2008:33, § 58).

In this respect, both ‘MASQD’ and ‘masky’, in the respective signs contain elements that may be perceived as meaningful by parts of the relevant public. The letters 'mask' in the contested mark may for example be perceived by the English-speaking public as referring to ‘something that you wear over your face’, at least in relation to the goods concerned, namely toilet utensils (which may be encompass articles for personal and beauty care). Furthermore, the letters 'MASQ' in the earlier sign, even though not spelled in the correct way, the sound of the ‘Q’ and ‘K’ is the same, so, in relation to the goods concerned, it may also be perceived by the English-speaking public as alluding to a product that is intended to be put over your face.

Nevertheless, for another part of the public, such as the Spanish-speaking part of the public, neither ‘MASQD’ nor ‘masky’ will be perceived as having any meaning. Therefore, a part of the public in the relevant territory, such as the Spanish-speaking part of the public, will not break either the word 'MASQD' or the word 'masky' down into different elements and will perceive both of these elements in the respective signs as consisting of one meaningless word and, therefore, as being of normal distinctiveness in relation to the goods concerned.

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.

Consequently, for procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory for which neither ‘MASQD’ nor ‘masky’ will be perceived as having any meaning, either in part or as a whole, such as the Spanish-speaking part of the public.

Visually, the signs coincide in the first three letters of their five, namely ‘MAS**/mas**’. However, they differ in the letters ‘***QD’ of the earlier mark and ‘***ky’ of the contested sign. Moreover, the coincidences lie at the beginning of both signs, where consumers generally tend to focus 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.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MASQ*/mask*’ since the letter ‘Q’ will have the same sound as the letter ‘k’ for the relevant public. The pronunciation differs in the sound of the letter ‘D’ at the end of the earlier mark which almost will not be pronounced versus ‘y’ at the end of the contested mark.

Therefore, as the signs coincide in the sound of four of their five letters, the signs are 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.

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 services 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 likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

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.

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).

In the present case, the goods have been found partly identical and partly dissimilar. The degree of attention of the public is average.

The signs are visually similar to an average degree and aurally highly similar on account. Furthermore, neither of the signs has a meaning for the public under analysis that could help consumers to differentiate them and the 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).

Bearing all the above in mind and even if consumers paying an average degree of attention were to recall that there are some differences between the signs, they would still be perceived as similar overall on account of, in particular, their aural high similarity and their identical beginning 'MAS**/mas**'. In view of this, the relevant public is likely to believe that the identical goods concerned offered under the signs in dispute originate from the same or economically linked undertakings.

Therefore, considering all the above, bearing in mind the principles of interdependence and imperfect recollection as outlined above, and the considerable overall similarities between the signs, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR on the part of the public in the relevant territory for which neither ‘MASQD’ nor ‘masky’ will be perceived as having any meaning, at least the Spanish-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.

Consequently, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 430 671. It follows that the contested trade mark must be rejected for the contested goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

• European Union trade mark registration No 16 430 696 for the figurative mark in Classes 8, 16, 18, 20 and 21.

Since this mark invoked by the opponent covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Claudia SCHLIE

Lars HELBERT

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.