OPPOSITION No B 3 091 853

Celeb LLC, 6545 Nova Drive, Suite 201, 33317 Davie, United States of America (opponent), represented by HGF Limited, 4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)

a g a i n s t

Marcos Ernesto Cabrera Rodriguez, Calle Cetreria 54, 28232 Las Rozas, Madrid, Spain (applicant).

On 18/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 853 is partially upheld, namely for the following contested goods:

Class 3: Toiletries; Essential oils and aromatic extracts; Abrasives; Cleaning and fragrancing preparations; Animal grooming preparations.

Class 21: Cosmetic and toilet utensils; Household utensils for cleaning, brushes.

2. European Union trade mark application No 18 051 803 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 051 803 namely against all the goods in Class 3 and some of the goods in Class 21. The opposition is based on European Union trade mark registration No 12 310 447 ‘VIRAL’ (word mark) for which the opponent invoked Article 8(1)(b) EUTMR. The opposition is based also on the non-registered trade mark ‘VIRAL’ (word mark) in the United Kingdom for which the opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARK

In its observations dated 28/02/2020, the opponent withdrew the opposition to the extent that it was based on Article 8(4) 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.

1. The goods

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

Class 3: Baby bubble bath; bath soaps; bleaching preparations for the hair; body wash; bubble bath; colour removing preparations for hair; colouring preparations for cosmetic purposes; cosmetic preparations for body care; cosmetic preparations for eye lashes; cosmetic preparations for skin care; deodorapnts and antiperspirants for personal use; eye liner; eye make-up; eye pencils; eye shadow; facial washes; false eyelashes; false nails; hair bleach; hair care creams; hair care preparations; hair colour; hair dye; hair gel; hair lotion; hair mousse; hair pomades; hair relaxers; hair shampoos and conditioners; hair sprays; hair straightening preparations; hair styling preparations; hair tonic; hand soaps; lip balm; lip gloss; lip liner; lipstick; lipstick cases; nail art stickers; nail care preparations; nail enamel; nail gel; nail hardeners; nail paint; nail polish; nail polish remover; nail polish top coat; nail tips; nail varnish; non-medicated preparations all for the care of skin, hair and scalp; non-medicated skin care preparations; permanent wave preparations; shaving cream; shaving foam; shaving gel; shaving lotion; shaving mousse; shaving preparations; skin moisturiser; skin soap; soaps for babies; soaps for personal use.

Class 21: Bath sponges; body scrubbing puffs; cleaning sponges; combs; cosmetic brushes; electric hair combs; eyebrow brushes; facial cleansing sponges; hair brushes; hair combs; hair, nail and tooth brushes; make-up brushes; nail brushes.

The contested goods are the following:

Class 3: Toiletries; Essential oils and aromatic extracts; Abrasives; Tailors' and cobblers' wax; Cleaning and fragrancing preparations; Animal grooming preparations.

Class 21: Cosmetic and toilet utensils; Household utensils for cleaning, brushes and brush-making materials.

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 toiletries include, as a broader category, the opponent’s hair care preparations. 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 opponent’s cosmetic preparations for skin care are similar to the contested essential oils and aromatic extracts. On the one hand cosmetic preparations for skin care include preparations for enhancing or protecting the odour or fragrance of the body, while on the other hand essential oils are fragrant liquid aroma compounds (synthetic or organic) that are used (among others) primarily for scenting cosmetic products. Essential oils are usually one of the main ingredients in many cosmetic products. Additionally, they usually coincide in relevant public, distribution channels, and producer.

The contested abrasives are lowly similar to the opponent’s cleaning sponges in Class 21 which are cleaning articles, as they usually coincide in producer, relevant public and distribution channels.

The contested cleaning and fragrancing preparations are similar to the opponent’s cleaning sponges in Class 21 as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested animal grooming preparations overlaps with opponent’s bath soaps. as the latter is broad enough to include bath soaps for pet animals. Therefore, they are identical.

The contested tailors’ wax is a marking tool used to draw lines on fabrics when making clothes. The contested cobblers’ wax is wax or resin used for waxing thread when making or mending shoes. As such, these goods have different natures, purposes and methods of use compared to the opponent’s goods in Classes 3 or 21. Furthermore, they are neither complementary to, nor in competition with, any of the opponent’s goods. Finally, they do not coincide in producer or distribution channels. Therefore, they are dissimilar to the opponent’s goods.

Contested goods in Class 21

The contested cosmetic and toilet utensils include, as a broader category, the opponent’s cosmetic brushes given that a cosmetic brush is an example of a cosmetic utensil. 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 household utensils for cleaning embrace a wide range of items for domestic cleaning. They are similar to the opponent’s cleaning sponges which term is broad enough to include sponges for household cleaning. They have the same purpose and method of use; the target the same relevant public, through the same distribution channels and by the same producers.

The contested brushes include, as a broader category, or overlap with, the opponent’s hair brushes. 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 brush-making materials are specialised goods for making brushes. The goods under comparison target different publics (i.e. brush makers vs general public), produced by different producers (companies producing brushes to end users are unlikely to produce materials for brush-making), distributed through different distribution channels. It follows that brush-making materials are dissimilar to all of the opponent’s goods in Classes 3 and 21.

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 or similar (to varying degrees) are directed at the public at large for which the degree of attention is average.

3. The signs

VIRAL
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 verbal elements of the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English language-speaking part of the public such as Ireland and Malta.

The earlier mark consists of the word ‘VIRAL’ which is meaningful for the relevant public under analysis: of, relating to, or caused by a virus (information extracted from Collins Dictionary on 11/06/2020 at https://www.collinsdictionary.com/dictionary/english/viral). As this word bears no direct reference to the goods in question, it is normally distinctive of them.

The contested figurative sign comprises the word ‘VIRAL’ in relatively small upper case white letters depicted within a white circle, superimposed on a relatively large stylised letter ‘V’ in the colour black, featuring a thin white diagonal stripe across its lower end, underneath which is placed the word ‘TEAM’ in slightly stylised upper case black letters.

For the public under analysis the said word ‘VIRAL’ has the meaning stated above. As this word bears no direct reference to the relevant goods, it is normally distinctive of them.

For the public under analysis, the word ‘TEAM’ means: a group of people organized to work together (information extracted from Collins English Dictionary on 11/06/2020 at https://www.collinsdictionary.com/dictionary/english/team). This word bears no direct reference to the relevant goods and so it is distinctive of them.

The words ‘VIRAL’ and ‘TEAM’ do not have any clear conceptual unitary meaning for the public under analysis, taking into account that there exists no such thing as a viral team. As a consequence, each of these two words will be perceived as having a separate and distinct meaning.

As the stylised letter ‘V’ bears no reference to the relevant goods, it is distinctive of them. However, despite its size and position within the contested sign, the stylised letter ‘V’ will be perceived as being a reference to the first letter of the word ‘VIRAL’.

The slight stylisation of the words comprising the contested sign as well as the white circle and white diagonal stripe therein will be perceived as being mainly decorative in nature.

None of the elements of the contested is dominant (i.e. visually eye catching).

Visually, the signs coincide in the word ‘VIRAL’ being the entirety of the earlier mark. They differ in the additional word ‘TEAM’ of the contested sign, the stylised letter ‘V’ thereof as well as the figurative/stylised elements thereof, which are of a mainly decorative nature.

Taking into account that, as stated above, the stylised letter ‘V’ of the contested sign will be perceived as referring to the word ’VIRAL’ thereof and despite the relatively small size of the said word ‘VIRAL’, the Opposition Division considers that the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the word ‘VIRAL’ differing in the sound of the additional word ‘TEAM’ of the contested sign.

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. This principle also applies to the vertical arrangement of the elements of a sign in which the consumer will read from top to bottom. It follows that the coinciding word ‘VIRAL’ is also the first element to be sounded in the contested sign.

The stylised letter ‘V’ of the contested sign will not be sounded for the reasons stated above.

On the basis of the above, the Opposition Division considers that the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the public under analysis, the signs coincide in the meaning of the word ‘VIRAL’. The signs differ with respect to the meaning of the word ‘TEAM’ of the contested sign which has no counterpart in the earlier mark. For the reasons explained above, the stylised letter ‘V’ of the contested sign will be perceived as referring to the word ‘VIRAL’ therein and so it does not amount to a point of semantic difference; in fact, it tends to reinforce this coinciding verbal element.

On the basis of the above, the signs are considered to be conceptually similar to an 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.

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. The earlier mark has a normal degree of distinctiveness for the goods in question for which it has no descriptive meaning from the perspective of the public in the relevant territories.

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.

The signs at issue have been found to be aurally similar to an above average degree and both visually and conceptually similar to an average degree. The goods are partly identical, partly similar (to varying degrees) and partly dissimilar. The earlier mark is distinctive to a normal degree and the degree of attention is average.

Taking all of the relevant factors into consideration, the Opposition Division considers that the similarities between the signs, arising from the coincidence in the distinctive word ‘VIRAL’ which constitutes the entirety of the earlier mark, outweigh the differences which pertain to the additional word ‘TEAM’ appearing at the foot of the contested sign, to the stylised letter ‘V’ thereof, referring to the first letter of the coinciding word ‘VIRAL’, and to the other figurative/stylisation elements of the contested sign which are mainly decorative.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 No 12 310 447 ‘VIRAL’. 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 found to be identical or similar (to varying degrees) to those of the earlier trade mark, including for the contested goods found to be similar to a low degree only (abrasives) for which the degree of attention is average.

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.

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

Lena FRANKENBERG GLANTZ

Kieran HENEGHAN

Holger KUNZ

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.