OPPOSITION No B 3 094 072

Societe de Recherche Cosmetique S.A.R.L., 4 Place de Paris, 2314 Luxembourg, Luxembourg (opponent), represented by Ipsilon Benelux SA, aussi traitant sous le nom Distinctive+Ipsilon, Parc d'Activités Capellen 77-79, 8308 Capellen, Luxembourg (professional representative)

a g a i n s t

La Rive Spolka Akcyjna, Składowa 2-6, 86-300 Grudziądz (Kujawsko-Pomorskie), Poland (applicant]), represented by LDS Łazewski Depo & Partners, ul. Prosta 70, 00‑838 Warszawa, Poland (professional representative).

On 29/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 072 is upheld for all the contested goods.

2. European Union trade mark application No 18 078 122 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 078 122 ‘LA RIVE AQUA BELLA’ (word mark). The opposition is based on European Union trade mark registration No 12 827 648 ‘AQUABELLA’ (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: Cosmetics; perfumes, toilet water, eau de cologne, body deodorants; essential oils; soaps, cleansing milk; creams, gels, milks, lotions, masks, pomades, powders and cosmetic preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair preparations, namely preparations for caring for the hair and the scalp; baths (cosmetic preparations for -); make-up and make up removing preparations; preparations for shaving and after-shave preparations; tissues and wipes impregnated with lotions.

Class 44: Beauty care; massage; beauty salons; care services (saunas), spas (care and beauty services); spa bath therapy, physiotherapy, aromatherapy, hammams (turkish baths).

The contested goods are the following:

Class 3: Perfumes; perfumery; perfumery and fragrances; oils for perfumes and scents; eau de parfum; toilet water; eau de cologne; after-shave lotions; anti-perspirants in the form of sprays; non-medicated antiperspirants; deodorants and antiperspirants; soap; soaps in liquid form; ethereal essences; ethereal oils; cosmetics; cosmetic kits; cosmetic creams; nail varnish; make-up; beauty milk; beauty tonics for application to the body; beauty tonics for application to the face; make-up removing preparations; musk [perfumery]; lipsticks; make-up powder; bath salts, not for medical purposes; bath lotion; bath lotions (non-medicated -); liquid bath soaps; perfumed creams; scented body spray; perfumed toilet waters; fragrances; scented body lotions and creams; liquid perfumes; scented oils; floral water; perfumed tissues; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; shower and bath gel; body and facial gels [cosmetics]; aromatherapy oil; essential oils for aromatherapy use; perfume oils for the manufacture of cosmetic preparations; aftershave balms; after-shave emulsions; aftershave milk; after-shave gel; after-shave preparations.

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 in Class 3 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested perfumes; perfumery; perfumery and fragrances; oils for perfumes and scents; eau de parfum; toilet water; eau de cologne; after-shave lotions; anti-perspirants in the form of sprays; non-medicated antiperspirants; deodorants and antiperspirants; soap; soaps in liquid form; ethereal essences; ethereal oils; cosmetics; cosmetic kits; cosmetic creams; nail varnish; make-up; beauty milk; beauty tonics for application to the body; beauty tonics for application to the face; make-up removing preparations; musk [perfumery]; lipsticks; make-up powder; bath salts, not for medical purposes; bath lotion; bath lotions (non-medicated -); liquid bath soaps; perfumed creams; scented body spray; perfumed toilet waters; fragrances; scented body lotions and creams; liquid perfumes; scented oils; floral water; perfumed tissues; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; shower and bath gel; body and facial gels [cosmetics]; aromatherapy oil; essential oils for aromatherapy use; perfume oils for the manufacture of cosmetic preparations; aftershave balms; after-shave emulsions; aftershave milk; after-shave gel; after-shave preparations are identical to the opponent’s cosmetics; perfumes, body deodorants; essential oils; soaps; preparations for shaving and after-shave preparations; tissues and wipes impregnated with lotions, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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, almost all the goods found to be identical are directed at the public at large with the exception of some of the goods such as oils for perfumes and scents, which are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attention is considered average.

c) The signs

AQUABELLA	LA RIVE AQUA BELLA
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 signs are word marks.

The Court has held that, 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 specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts. Among those circumstances under which consumers could break down the trade mark into smaller parts, is when all the parts of the word suggest a concrete meaning known to the relevant public or when one part of the word has a clear meaning.

The term ‘aqua’ is of Latin origin and means ‘water’ (information extracted from Lexico on 15/10/2020 at https://www.lexico.com/definition/aqua). It will be understood by the Portuguese-, Spanish- and Italian-speaking parts of the public because of its similarity to equivalent words in the respective languages, namely the words ‘água’, ‘agua’ and ‘acqua’, respectively. It will also be understood by the French-speaking public since it is a common prefix in the French language. Furthermore, the Court has held that the term ‘aqua’ is a common Latin term which the European Union consumer may be assumed to know (28/01/2015, T‑123/14, AquaPerfect, EU:T:2015:52, § 34). Therefore, it is assumed that the relevant public will identify the term ‘AQUA’ in the earlier mark and perceive it as meaning ‘water’.

Bearing in mind the relevant goods, the verbal element ‘AQUA’ might allude to the fact that the goods contain water or are water-based and/or hydrating. Therefore, it is weak, contrary to the applicant’s arguments.

The parties argued that the component ‘BELLA’ is meaningful in Italian and other romance languages as it refers to ‘beauty’ or ’beautiful’ (information extracted from Cambridge Dictionary on 15/10/2020 at https://dictionary.cambridge.org/dictionary/italian-english/bella). However, the remaining part of the public that does not speak a romance language, such as the Bulgarian-, Latvian-, Lithuanian-, Polish- and Slovak-speaking parts of the public, will perceive the component ‘BELLA’ either as a meaningless term or as a name.

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.

From the perspective of Italian-speakers and speakers of other romance languages in the relevant territory, the semantic content conveyed by the component ‘BELLA’ affects its distinctiveness. However, as mentioned above, those who do not speak romance languages, such as the Bulgarian-, Latvian-, Lithuanian-, Polish- and Slovak-speaking parts of the public, will perceive the component ‘BELLA’ either as a meaningless term or as a name. Consequently, taking into consideration the implications of the verbal elements, as explained above, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that does not speak a romance language, such as the Bulgarian-, Latvian-, Lithuanian-, Polish- and Slovak-speaking parts of the public. For this part of the public the verbal element ‘BELLA’ is not related in any way to the relevant goods and has an average degree of distinctiveness.

Furthermore, this part of the public will perceive ‘AQUABELLA’ as a fanciful term and, contrary to the applicant’s arguments, as a whole, it has an average degree of distinctiveness despite the presence of the weak component ‘AQUA’.

The considerations of the perception and the distinctiveness of the elements ‘AQUA’ and ‘BELLA’ in the earlier mark, on the part of the relevant public, apply equally for the contested sign.

The relevant part of the public will perceive the verbal element ‘LA RIVE’ in the contested sign as meaningless and distinctive. The applicant argued that it is common practice for trade marks, in relation to goods in Class 3, to contain a business name in addition to other elements, and that ‘LA RIVE’ is the applicant’s business name. However, even if any part of the relevant public perceives ‘LA RIVE’ in the contested sign as a company name, as the applicant claimed, the verbal element ‘AQUA BELLA’ in that sign denotes the product line.

Furthermore, the applicant argued that an international registration exists for the word mark ‘LA RIVE’, which in French means ‘the shore’ (information extracted from Cambridge Dictionary on 15/10/2020 at https://dictionary.cambridge.org/dictionary/french-english/rive), and that the term ‘LA RIVE’ will be perceived as a fanciful element by those consumers who are already familiar with it. However, the existence of a separate registered trade mark has no impact on the consumers’ perception of the verbal element ‘LA RIVE’ in the contested sign, which will be perceived as a meaningless term by the relevant part of the public.

Visually, the signs coincide in the verbal elements ‘AQUA’ and ‘BELLA’. They differ in that these elements are conjoined in the earlier mark whilst in the contested sign there is a space between them. The signs also differ in the verbal element ‘LA RIVE’ in the contested sign, which has no counterpart in the earlier mark.

According to the applicant, the most important factor is the clearly different beginnings of the conflicting signs.

It must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

Therefore, this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them (08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 29; 14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 50; 06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48).

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). In the present case, the contested sign incorporates the earlier mark ‘AQUABELLA’. Moreover, despite the presence of the verbal element ‘LA RIVE’ in the contested sign, the verbal element ‘AQUA BELLA’ is clearly perceptible. Therefore, despite the signs having a different number of elements, length and structure, as the applicant argued, the contested sign reproduces all the components of the earlier mark and, therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal element ‘AQUA BELLA’, which is the only element in the earlier mark. The pronunciation differs in the sound of the element ‘LA RIVE’ at the beginning of the contested sign.

When referring to the contested sign aurally, the differing verbal element ‘LA RIVE’ will be pronounced at the beginning and the following element ‘AQUA BELLA’ will be pronounced identically to the earlier mark. These are clearly audible. Therefore, despite the different length, rhythm and intonation, as the applicant argued, which is due to the pronunciation of the element ‘LA RIVE’, the pronunciation of the signs still coincides in ‘AQUA BELLA’, which is the entire earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the relevant public that perceives ‘BELLA’ as a name and also perceives the concept of ‘AQUA’ will find a conceptual link between the signs. Therefore, taking into account that the element ‘BELLA’ is normally distinctive, for this part of the public the signs are conceptually highly similar.

The part of the public that perceives the element ‘BELLA’ as a meaningless term, will still perceive the concept evoked by the element ‘AQUA’ in both signs. Although this element has a low degree of distinctiveness, as explained above, the relevant public will perceive its identical concept in both signs and, therefore, for this part of the public the signs are conceptually similar to a low degree.

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, contrary to the applicant’s arguments, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

The goods are identical. Most of the goods are directed at the public at large and some are directed at both the public at large and business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is average. The signs are visually and aurally similar to an average degree. Conceptually they are either highly similar or similar to a low degree depending on the public’s perception of the verbal element ‘BELLA’.

The contested sign incorporates the earlier mark ‘AQUABELLA’. The fact that there is a space between the elements ‘AQUA’ and ‘BELLA’ in the contested sign will not prevent consumers from perceiving ‘AQUABELLA’ and ‘AQUA BELLA’ in both signs. Furthermore, the verbal element ‘BELLA’ is distinctive for the relevant part of the public and is present in both signs. Moreover, for part of the public it evokes the identical concept of a name and there is a conceptual link between the signs, at least for this part of the public, on account of the distinctive concept.

Even if the contested sign contains the additional distinctive verbal element ‘LA RIVE’, which is not present in the earlier mark, it incorporates the element ‘AQUA BELLA’, which is clearly perceptible in the overall impression created by the contested sign. Consequently, the presence of the element ‘LA RIVE’ in the contested sign does not counteract the striking similarity between the signs on account of the elements ‘AQUABELLA’ and ‘AQUA BELLA’.

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.

It is common practice on the relevant market for manufacturers to make variations of their trade marks, for example by adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public, who only rarely has the chance to directly compare two trade marks and must rely on their imperfect recollection, is likely to mentally register the fact that they have the verbal elements ‘AQUABELLA’ and ‘AQUA BELLA’ in common, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same or economically linked commercial origin to the goods.

Considering all the above, there is a likelihood of confusion on the part of the public that does not speak a romance language, such as the Bulgarian-, Latvian-, Lithuanian‑, Polish- and Slovak-speaking parts 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 European Union trade mark registration No 12 827 648. It follows that the contested trade mark must be rejected for all the contested 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.

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

Erkki MÜNTER

Birute SATAITE-GONZALEZ

Cynthia DEN DEKKER

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.