OPPOSITION Nо B 3 091 928

 

D'orsay International, 55 Avenue Montaigne, 75008 Paris, France (opponent), represented by Dune, 5 rue du Chevalier de Saint-George, 75008 Paris, France (professional representative) 

 

a g a i n s t

 

Renáta Fodor-Csuti, Bátky Zs. Utca 4. 9. Em. 34., 8000 Székesfehérvár, Hungary (applicant).

On 27/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.

Opposition No B 3 091 928 is upheld for all the contested goods and services, namely Class 3: Face creams for cosmetic use; face creams for cosmetic use; moisturising preparations; moisturising concentrates [cosmetic]; dyes (cosmetic -); cosmetic moisturisers; cleansing milk for toilet purposes; cosmetic eye pencils; toiletries; cosmetics; cosmetics for eye-lashes; cosmetics in the form of lotions; eyebrow cosmetics; eyelashes (false -); eyelashes (adhesives for affixing false -); cosmetic pencils; eyebrow colors; eyebrow colors in the form of pencils and powders; eyebrow gel; eyelash dye; body cleaning and beauty care preparations. Class 44: Services for the care of the face; hygienic care for human beings; hygienic and beauty care; beauty salons.

2.	European Union trade mark application No 18 063 103 is rejected for all the contested goods and services. It may proceed for the remaining services.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 063 103  (figurative mark), namely against all the goods and services in Classes 3 and 44. The opposition is based on European Union trade mark registration No 2 724 623 ‘D'ORSAY’ (word mark). 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.

 

a) The goods and services

 

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

 

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices, deodorants for personal use, cosmetic preparations for the eyes, make-up and mascara; room fragrances, air-fresheners.

The contested goods and services are the following:

 Class 3: Face creams for cosmetic use; face creams for cosmetic use; moisturising preparations; moisturising concentrates [cosmetic]; dyes (cosmetic -); cosmetic moisturisers; cleansing milk for toilet purposes; cosmetic eye pencils; toiletries; cosmetics; cosmetics for eye-lashes; cosmetics in the form of lotions; eyebrow cosmetics; eyelashes (false -); eyelashes (adhesives for affixing false -); cosmetic pencils; eyebrow colors; eyebrow colors in the form of pencils and powders; eyebrow gel; eyelash dye; body cleaning and beauty care preparations.

Class 44: Services for the care of the face; hygienic care for human beings; hygienic and beauty care; beauty salons.

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 face creams for cosmetic use; face creams for cosmetic use; moisturising preparations; moisturising concentrates [cosmetic]; dyes (cosmetic -); cosmetic moisturisers; cleansing milk for toilet purposes; cosmetic eye pencils; toiletries; cosmetics; cosmetics for eye-lashes; cosmetics in the form of lotions; eyebrow cosmetics; eyelashes (false -); cosmetic pencils; eyebrow colors; eyebrow colors in the form of pencils and powders; eyebrow gel; eyelash dye; body cleaning and beauty care preparations comprise a wide range of beauty care and cosmetic products which are at least similar to a high degree with the opponent’s cosmetics as they have, at least, the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested eyelashes (adhesives for affixing false -) are similar to a low degree with the opponent’s cosmetics as they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 44

The contested services for the care of the face; hygienic care for human beings; hygienic and beauty care; beauty salons are similar to the contested cosmetics as these goods and services have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

 

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 and services found to be similar in various degrees are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

D'ORSAY
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 earlier trade mark may evoke the meaning of a museum in Paris i.e. the Musée d'Orsay for a limited part of the relevant consumers. However, for a substantial part of the relevant public the signs under comparison do not convey any specific meaning, being therefore distinctive. Since the meaning evoked by the earlier mark may enhance the conceptual differences between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs do not evoke any clear meaning, such as a substantial part of the Italian and Spanish-speaking consumers.

The contested sign has no element that can be considered dominant (visually outstanding).

Visually and aurally, the signs coincide in the sequence of letters (and sound) ‘D*OR*AY’ whereas they differ in the contested sign’s apostrophe (and its sound effect) between the first and second letters and in their fourth letters (and sounds) ‘C’ and ‘S’.

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

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.

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 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 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.

 

e) 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods and services have been found similar in various degrees. They target the general public, which will pay an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs under comparison have been found visually and aurally similar to an average degree. The conceptual aspect remains neutral. In specific, the signs coincide in the sequence of letters ‘D*OR*AY’ whereas the different punctuation and letters – although noticeable – play a limited differentiating impact, as they are somewhat hidden within the sequence of the coinciding letters.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public under analysis, when encountering the signs in relation to the goods and services that are at least similar 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, it must be kept in mind that 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 degree of similarity between the signs is 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 public for which the signs do not evoke any clear meaning, such as a substantial part of the Italian and Spanish-speaking consumers. 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 2 724 623. It follows that the contested sign must be rejected for all the contested goods and services.

 

 

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, 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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.