OPPOSITION No B 3 091 529

Novalash, Inc., 6116 Skyline Drive #201, Houston, Texas 77057, United States of America (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Qing Dao Lymee International Trading Co. LTD, Room 1101, building 4, Greenland Xiangsong 106 Jingkou Road, Licang District, Qingdao, Shandong Province, People’s Republic of China (applicant), represented by IPSIDE, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 529 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 060 906 for the word mark ‘vavalash’. The opposition is based on European Union trade mark registration No 11 465 754, and international trade mark registration No 943 522 designating the European Union, both for the word mark ‘NOVALASH’, and European Union trade mark registration No 16 129 223 for the word mark ‘NOVALAST’. The opponent invoked Articles 8(1)(b) and (5) EUTMR.

PRELIMINARY REMARK

The opponent substantiated its rights within the time limit and developed arguments with regard to its earlier trade marks ‘NOVALASH’. However, no arguments whatsoever are presented regarding EUTM ‘NOVALAST’. Nevertheless, as this earlier right was not expressly withdrawn, and for the sake of completeness, the Opposition Division will proceed with the decision, taking into account both claims for all three earlier rights.

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 11 465 754 for the word mark ‘NOVALASH’

a) The goods and services

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

Class 3: Cosmetics, artificial eyelash extensions, artificial eyelash appliqués and adhesives for attaching artificial eyelashes, chemicals used for the application and removal of artificial eyelashes, adhesives, and make-up, accessories for eyelash application, namely, gel patches, under eye stickers, tape, vinyl pads, cleanser pads, mascara, lash liner, eyelash strengthener, aftercare kit comprised primarily of conditioners, cleansing pads, mascara.

Class 8: Accessories for eyelash application, namely, forceps, forceps holder cases, heated lash curler.

Class 11: Accessories for eyelash application, namely, fans, dry heat sterilizer.

Class 16: Printed publications relating to beauty care; instructional and teaching materials relating to beauty care.

Class 18: Accessories for eyelash application, namely cosmetic cases sold empty.

Class 21: Accessories for eyelash application, namely, mircobrushes, mascara brushes and cosmetic cases which are adapted for cosmetic utensils; accessories for eyelash application , namely mascara wand sold as part of an aftercare kit.

Class 41: Organizing and conducting training courses in relation to beauty care services; distributing training materials in relation to beauty care services.

Class 44: Beauty care services for human beings.

The contested goods are the following:

Class 3: False eyelashes; cosmetic preparations for eyelashes; eyebrow cosmetics; mascara; adhesives for affixing false eyelashes.

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 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.

False eyelashes and adhesives for affixing false eyelashes are identically contained in both lists of goods (including synonyms).

The contested cosmetic preparations for eyelashes; eyebrow cosmetics; mascara are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

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

NOVALASH	vavalash
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Both signs are word marks. Therefore, it is irrelevant whether the marks are depicted in upper- or lower-case letters.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a clear meaning (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The opponent claims that the relevant public will break the marks down into recognisable elements that suggest a meaning. For example, ‘valash’ may make reference to a canton of Switzerland named ‘Valais’ in French. However, the Opposition Division does not consider that the relevant public will perceive the word ‘valash’ within the signs. This is not a commonly used word (it is not found in French or English dictionaries) and as there is no reason to cut ‘no’ from the earlier mark or ‘va’ from the contested sign in order to dissect the marks into this element, it would be artificial.

However, the Opposition Division considers that the English-speaking part of the relevant public will perceive the word ‘lash’ within the signs. The word ‘lash’ refers to ‘your lashes are the hairs that grow on the edge of your upper and lower eyelids’ (extracted from the Collins Dictionary on 09/06/2020 at https://www.collinsdictionary.com/dictionary/english/lash). This is descriptive of the goods, namely products related to eyelashes, and, therefore, a non-distinctive component.

The component ‘NOVA’ of the earlier sign is likely to be understood by most of the relevant public as referring to something new, since it is either part of normal vocabulary (in Slovenian, Croatian, Portuguese and Bulgarian – ‘нова’ in Bulgarian is transliterated as ‘nova’) or has an equivalent word (e.g. ‘nuevo’ in Spanish, ‘nový’ in Czech and Slovak, ‘nieuw’ in Dutch and ‘nowy’ in Polish). It may also be associated with the meaning ‘new’ because it is a prefix originating from Latin, derived from the word ‘novus’ (26/06/2019, R 1641/2018‑1, NOVALUME (fig.) / Novaluna § 41). Consequently, there is a reference to some characteristics of the goods at issue, namely their new or innovative character. Therefore, this component has reduced distinctiveness.

Consequently, the earlier sign might be perceived as ‘new/star lashes’, alluding to the relevant goods from the perspective of the English-speaking public.

Although the first component of the contested sign, ‘vava’, has no meaning, it is highly probable that the English-speaking public will still perceive the component ‘lash’. This is because ‘lash’ is directly related to the goods, as argued above. The first component, ‘vava’, has no meaning and, therefore, the sign as a whole is allusive for the relevant goods.

The component ‘lash’ in both signs is non-distinctive for the English-speaking public in relation to the relevant goods. As the similarities between the signs are higher where the coincidences reside in distinctive elements, the Opposition will assess the signs from the perspective of the non-English-speaking consumer, as this is the most advantageous scenario for the opponent, namely that the component ‘lash’ is distinctive for the relevant goods; as in the case of the relevant French-, German-, Italian- or Spanish-speaking consumers.

Consequently, the Opposition Division considers both word signs have no meaning in the relevant territory. They are both distinctive with respect to the relevant goods.

Visually, the signs coincide in the sequence of letters ‘**VALASH’. However, they differ in the first two letters, namely ‘NO-’ in the earlier mark and ‘va-’ in 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. Furthermore, although both signs have the same number of letters, the General Court has held that this is, as such, not of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the second and third syllables ‘va-lash’ present identically in both signs. The signs have the same length, but differ in the pronunciation of their beginnings, /no/ in the earlier mark and /va/ in the contested sign. These pairs of letters have entirely different sounds. As mentioned above, consumers tend to focus on the first elements of the signs, which are totally different in the present case. Furthermore, the abovementioned assertions concerning the lengths of the signs are also relevant here.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, although the public in the relevant territory will perceive the meaning or allusion of ‘NOVA’ within the earlier sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark, ‘NOVALASH’, has a reputation throughout Europe in connection with all goods and services for which it is registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence.

 Exhibit 2: printouts of the opponent’s website www.novalash.com, printed on 26/02/2020, showing the names and contact details of stylists throughout Europe who work with the opponent’s company and products. These are found mainly in the United Kingdom, but also in Germany, Spain, Italy, and Romania. However, exactly which services/products are offered is not clear.

 Exhibit 3: printouts dated 26/02/2020 of three online articles:

o ‘In the Know: NovaLash’ by World SPA Wellness at www.worldspawellness.com regarding the offering of lash extensions in a spa environment.

o ‘Novalash opens first UK office’, dated 17/10/2013, giving details about the first international office in London, which was to coordinate the selling of their products to certified ‘Novalash’ spas. This article appeared in www.professionalbeauty.co.uk.

o ‘NovaLash Eyelash Extensions Brand Expands to UK and Europe’ by American SPA Staff, dated 09/10/2013, detailing the launching event, and published at www.americanspa.com.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark ‘NOVALASH’ acquired a high degree of distinctiveness through its use.

Enhanced distinctiveness requires recognition of the mark by the relevant public. In the assessment, the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in the promotion of the mark, and in relation to the relevant goods and services has to be proven. All these factors have to be assessed globally in order to conclude whether distinctiveness has been acquired.

The opponent merely filed a list of stylists and their contact details in Europe and three online publications, in which the sign ‘NOVALASH’ is visible. The evidence makes reference to some head, eye and temple massages as well as lash applications offered through the ‘NOVALASH’ technique. However, there is no evidence of whether there is any public recognition of the mark for the relevant goods and services. With this evidence it is not possible to draw any conclusions regarding the market share held by the mark, the promotion made, the use of the sign in relation to the relevant goods and services and, most importantly, whether there is any recognition of the mark by the public. The evidence provided is clearly insufficient to prove an enhanced distinctiveness of the earlier mark.

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 and 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, despite the fact that ‘NOVA’ is of reduced distinctiveness.

e) Global assessment, other arguments and conclusion

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, Sabel, EU:C:1997:528 § 23).

The goods are identical. The degree of attention paid by the relevant public is average. The marks are visually similar to a low degree, aurally similar to a below average degree and conceptually not similar.

Taking into account the principle of interdependence (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the fact that goods are similar or identical may sometimes be sufficient to counterbalance a low degree of similarity between signs. However, this principle also takes into account other relevant factors such as the relevant consumer and their degree of attention. In the present scenario, the different beginnings and the length of the signs enable the marks to be clearly distinguished. Furthermore, the common element is not featured independently and, therefore, would not be singled out. Such a dissection would be artificial and may also depend on a side-by-side examination of the marks, which does not reflect the reality of the market.

Considering all the above, even with identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘lash’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar, because the non-distinctive part will have a very limited impact on the overall impression.

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

 European Union trade mark registration No 16 129 223 for the word mark ‘NOVALAST’ in Class 3;

 international trade mark registration No 943 522 for the word mark ‘NOVALASH’ designating the European Union in Classes 3 and 16.

For the sake of completeness, the opponent did not file any arguments or evidence for the enhanced distinctiveness and/or reputation of the earlier sign ‘NOVALAST’. Consequently, the assessment of the distinctiveness of the earlier mark ‘NOVALAST’ 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.

With respect to the comparison between ‘NOVALAST’ and the contested sign ‘vavalash’, the outcome cannot be different with respect to the sign already examined, as this earlier sign is even less similar than ‘NOVALASH’. Not only are the beginnings different (‘no-’ v ‘va-’), but the endings are also different (‘-st’ v ‘-sh’). Consequently, there is no likelihood of confusion between these signs.

Since international trade mark No 943 522 is identical to the sign that has already been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to the goods, are identical and for which the opposition has already been rejected.

The examination will continue on the basis of the other ground claimed by the opponent.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It is to be noted that the opponent also claimed reputation for the sign ‘NOVALAST’, but as mentioned in section e) above, no evidence regarding the reputation of the sign ‘NOVALAST’ was filed.

The evidence for the reputation of the earlier trade marks ‘NOVALASH’, has already been analysed in section d) above and, as shown above, the Opposition Division has concluded that the opponent did not demonstrate reputation for these marks.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Renata COTTRELL

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

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.