OPPOSITION No B 3 091 264

Kelemata S.r.l., Corso Re Umberto, 20, 10128, Torino, Italy (opponent), represented by Odra Papaleo, Piazza Solferino 9, 10121, Turin, Italy (professional representative)

a g a i n s t

Yiu Chun Wong, Flat A15.6 /F, Cambridge Plaza 188, San Wan Road Sheung Shui New Territories, 999077 Hong Kong, Hong Kong (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27, 99-300 Kutno, Poland (professional representative).

On 27/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 264 is upheld for all the contested goods, namely:

Class 3: Beauty masks; make-up; incense; cosmetic preparations for skin care; cleansing milk for toilet purposes; laundry preparations; cosmetics for animals; grinding preparations; essential oils; dentifrices; shampoos; stain removers; shoe cream; air fragrancing preparations; perfumes; nail polish; hair straightening preparations; sachets for perfuming linen; breath freshening sprays; sunscreen preparations.

Class 21: Cosmetic utensils; toilet sponges; powder puffs; powder compacts; eyebrow brushes; perfume sprayers; make-up removing appliances; combs; nail brushes; toothbrushes; floss for dental purposes.

2. European Union trade mark application No 18 060 616 is rejected for all the above 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 18 060 616 for the word mark ‘Venusky’, namely against all the goods in Class 3 and some of the goods in Class 21. The opposition is based on Italian trade mark registration No 1 590 956 for the word mark ‘VENUS’ and European Union trade mark registration No 13 615 381 for the figurative mark . The opponent invoked Article 8(1) (b) and Article 8 (5) 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:

Italian trade mark registration No 1 590 956 (Earlier mark 1)

Class 3: Soaps; perfumery, cosmetics, hair lotions.

European Union trade mark registration No 13 615 381 (Earlier mark 2)

Class 3: Soaps; bath foam; talcum powder; shampoo; make-up; perfumed toilet waters; deodorants and antiperspirants; body butter; non-medicated creams; skin cleansers; skin emollients; exfoliants; essences for skin care; age retardant gel; cleansing gels; moisturising gels [cosmetic]; eye gels; moisturizers; age retardant lotion; bath lotion; cleansing lotions; moisturising skin lotions [cosmetic]; eye lotions; facial lotions [cosmetic]; skin care lotions [cosmetic]; skin care oils [cosmetic]; tonics [cosmetic]; wrinkle removing skin care preparations; skin fresheners; hair balm; cosmetics for the use on the hair; shampoo; antiperspirants [toiletries]; tissues impregnated with cosmetics; cloths impregnated with a detergent for cleaning; eau de cologne; eau de cologne; make-up removing preparations; anti-aging creams; day creams; milky lotions for skin care; make up foundations; cosmetics for use in the treatment of wrinkled skin; nutritional creams (non-medicated -); lotions for cellulite reduction; creams for cellulite reduction; cosmetic preparations for slimming purposes; creams for firming the skin; shower creams; douching preparations for personal sanitary or deodorant purposes [toiletries]; soaps in liquid form; bath preparations, not for medical purposes; hair lotions; cosmetics; perfumed soaps; scented body spray; hair removal and shaving preparations.

The contested goods are the following:

Class 3: Beauty masks; make-up; incense; cosmetic preparations for skin care; cleansing milk for toilet purposes; laundry preparations; cosmetics for animals; grinding preparations; essential oils; dentifrices; shampoos; stain removers; shoe cream; air fragrancing preparations; perfumes; nail polish; hair straightening preparations; sachets for perfuming linen; breath freshening sprays; sunscreen preparations.

Class 21: Cosmetic utensils; toilet sponges; powder puffs; powder compacts; eyebrow brushes; perfume sprayers; make-up removing appliances; combs; nail brushes; toothbrushes; floss for dental purposes.

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 perfumes are identical to the opponent’s perfumery (Earlier mark 1) despite the slightly different wordings.

The contested shampoos are identical to the opponent’s shampoo (Earlier mark 2) which is in the singular form.

The contested beauty masks; make-up; cosmetic preparations for skin care; cleansing milk for toilet purposes; cosmetics for animals; nail polish; sunscreen preparations are included in the broad category of, or overlap with, the opponent’s cosmetics (Earlier marks 1 and 2). Therefore, they are identical.

The opponent’s soaps (Earlier marks 1 and 2) are used for cleaning purposes as they emulsify grease and lower the surface tension of water, so that it more readily penetrates open materials such as textiles. Therefore, they overlap with the contested laundry preparations and, thus, are identical.

The contested incense; air fragrancing preparations are products used to make homes and indoor spaces smell nice by providing fragrant, pleasant odours. They are included in the broader category or overlap with the opponent’s perfumery (Earlier mark 1) covering all perfumes collectively, which are fragrances used for enhancing the odour or aroma of the body or of other items by giving them a pleasant smell. Therefore, they are identical.

The contested hair straightening preparations overlap with the opponent’s hair lotions (Earlier marks 1 and 2), as the former can also be lotions. Therefore, they are identical.

The contested sachets for perfuming linen are specific household fragrances. They are at least similar to the opponent’s perfumery (Earlier mark 1) as they have at least the same purpose (i.e. to render a pleasant odour), distribution channels and relevant public.

The contested grinding preparations includes substances with abrasive particles used for mechanical cleaning. They are similar to the opponent’s soaps (Earlier marks 1 and 2) as they have the same general purpose of cleaning, target the same consumers and are sold in the same trade channels.

The contested essential oils are similar to the earlier cosmetics (Earlier marks 1 and 2) because they coincide in distribution channels, target the same public and are usually produced by the same undertakings.

The contested dentifrices are similar to the opponent’s cosmetics (Earlier marks 1 and 2) as they have the same purpose, namely to enhance or protect the appearance or the odour of the body, including the teeth. Additionally, they usually coincide in relevant public and distribution channels.

The contested stain removers overlap with the opponent’s soaps (Earlier marks 1 and 2) to the extent that the former include soaps for household purposes. While ‘soaps’ are substances used for washing and cleaning, and typically have perfume or fragrances added, ‘stain removers’ are substances used for household washing and cleaning, mainly for removing stains from clothes and household textiles. Therefore, they are identical.

The contested breath freshening sprays are similar to the opponent’s cosmetics (Earlier marks 1 and 2) as they have the same purpose, namely to enhance or protect the appearance or the odour of the body, including the mouth. Additionally, they usually coincide in relevant public and distribution channels.

The contested shoe cream is used to make a product smooth and shiny by agents used for cleaning. To that extent, their purpose is similar to that of the opponent’s cloths impregnated with a detergent for cleaning (Earlier mark 2). Additionally, they usually coincide in relevant public and distribution channels. Therefore, these goods are considered at least similar to a low degree.

Contested goods in Class 21

The contested cosmetic utensils; toilet sponges; powder puffs; powder compacts; eyebrow brushes; make-up removing appliances; combs; nail brushes; toothbrushes; floss for dental purposes are beauty tools used for the application of make up or for cleaning the face or teeth. They are at least similar to the opponent’s cosmetics (Earlier marks 1 and 2) as they as they usually coincide in producer, relevant public and distribution channels. Furthermore, some of them are complementary.

The contested perfume sprayers have certain similarities to the opponent’s perfumery (Earlier mark 1) in Class 3, which includes perfume, as perfume is indispensable for the use of perfume sprayers. These goods are often sold together in the same shops and target the same public. Therefore, they are at least similar to a low degree.

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.

The degree of attention is average.

3. The signs

Earlier mark 1)

VENUS Earlier mark 2)	Venusky
Earlier trade mark	Contested sign

The relevant territory is Italy and 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.

Consequently, regarding the earlier European Union trade mark, it is appropriate to focus the comparison of the signs on the Italian-speaking part of the public, such as the public in Italy (which is also the relevant territory for Earlier mark 1).

Earlier mark 1) is the word mark ‘VENUS’. In case of word marks, it is irrelevant whether they are written in upper- or lower-case letters or in a combination thereof that does not depart from the usual way of writing, since it is the word as such that is protected and not its written form. Earlier mark 2) is a figurative mark composed of the verbal element ‘Venus’ in stylised white characters within a blue oval background.

The word ‘Venus’, of Earlier marks 1) and 2), will be understood by part of the public under analysis as the Latin term used to refer to a planet and a goddess, for which the Italian equivalent is Venere. However, it cannot be expected that all Italian consumers have enough Latin knowledge to be aware of the meanings of ‘Venus’ described above. Therefore, it is likely that a non-negligible part of the public under analysis will perceive it as meaningless. This finding is also confirmed by the Board of Appeal’s decision (04/09/2019, R 2285/2018-5, VENN / Venus (fig.) et al., § 40).

In order to avoid multiple conceptual scenarios, the Office will focus on the part of the public under analysis for which the verbal element ‘VENUS’ of the earlier marks are meaningless and, therefore, normally distinctive in relation to the relevant goods.

The word ‘VENUSKY’ is meaningless in Italian and is of average distinctive character in relation to the goods involved.

The oval background and the colours and stylisation of the verbal element ‘VENUS’ in Earlier mark 2) are purely decorative.

The signs have no element that can be considered clearly more dominant.

Visually, the signs coincide in the distinctive string of letters ‘VENUS(**)’, which has a normal degree of distinctiveness and forms the earlier marks’ sole verbal element, as well as the first five letters of the contested sign that first catches the readers’ attention. This is because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark as they read from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches their attention. The signs differ in the two additional letters (‘-KY’) at the end of the contested sign and in the additional figurative aspects of Earlier mark 2) that, however, will have less impact being merely decorative. Therefore, the marks are visually similar at least to an average degree.

Aurally, the signs coincide in the sound ‘VENUS(**)’, which forms the sole verbal element of the earlier marks and the beginning of the contested sign. The signs only differ in the sound of the additional letters, ‘KY’, of the contested sign, which are placed after the coinciding string of letters ‘VENUS-’. Therefore, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning for the public under analysis. 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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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, inter alia, on the recognition of the earlier mark on the market, the association which 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).

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).

In the present case, the goods have been found partly identical and partly similar to varying degrees. They target the general public, which will pay an average degree of attention. The signs under comparison have been found visually and aurally similar at least to an average degree, insofar as the sole verbal element of the earlier trade marks is entirely reproduced within the first five letters of the contested sign.

Taking all the above into account, the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, are likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to a low degree only, 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 (at least) average degree of visual and aural similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods.

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 Italian trade mark registration No 1 590 956 and European Union trade mark registration No 13 615 381. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Anna BAKALARZ

Angela DI BLASIO

Katarzyna ZANIECKA

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.