OPPOSITION No B 3 094 236

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

LCC Luxury Cosmetic Concepts Sàrl, Chemin des Orlons 10, 1860 Aigle, Switzerland (applicant), represented by Viering Jentschura & Partner, Am Brauhaus 8, 01099 Dresden, Germany (professional representative).

On 16/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 236 is upheld for all the contested goods.

2. European Union trade mark application No 18 094 417 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 18 094 417 ‘lavena’ (word mark). The opposition is based on European Union trade mark registration No 11 493 426 ‘Lavera’ (word 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3: Perfumery; cosmetics; mascara; sunscreen creams.

Class 5: Pharmaceutical products and health-care products; sanitary preparations; dietetic substances adapted for medical use.

The contested goods are the following:

Class 3: Cleansing milk for toilet purposes; beauty masks; skin whitening creams; make-up; mascara; sunscreen preparations; lip rouge; cosmetic preparations for slimming purposes; cosmetics for children; perfumes.

Class 5: Dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; dietary fiber; nutritional supplements; food for babies; sanitary towels; mineral food supplements; slimming pills; medical preparations for slimming purposes.

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

Mascara is identically contained in both lists of goods.

The contested cleansing milk for toilet purposes; beauty masks; skin whitening creams; make-up; lip rouge; cosmetic preparations for slimming purposes; cosmetics for children are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested sunscreen preparations include, as a broader category, the opponent’s sunscreen creams. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested perfumes are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

Contested goods in Class 5

Dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietary fiber; nutritional supplements; food for babies; mineral food supplements are included in, or overlap with, the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested slimming pills; medical preparations for slimming purposes are included in the broad category of the opponent’s pharmaceutical products and health-care products. Therefore, they are identical.

The contested sanitary towels are included in the broad category of the opponent’s sanitary preparations. 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 and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

This is also the case for other goods in Class 5, namely dietary supplements and dietetic preparations, food for babies and sanitary preparations, as these goods also affect the state of health of patients and consumers as well as of children and babies. For instance, food for babies includes foodstuffs for treating and preventing diseases or food intolerances or even infant formula, which is a substitute for breast milk for feeding infants who, for medical reasons, are not able to consume breast milk. It is specially composed in order to safeguard the health of infants (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 42-46; 13/05/2015, T‑169/14, Koragel / CHORAGON, EU:T:2015:280, § 37-40).

Taking into account the above, the degree of attentiveness will be average in relation to the goods in Class 3 and relatively high in relation to the goods in Class 5.

c) The signs

Lavera	lavena
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 earlier mark and the contested sign are the word marks ‘Lavera’ and ‘lavena’. Although it cannot be excluded that a minority of the public could read the first letter of the contested sign as an upper-case letter ‘i’, for most of the public, the letters ‘ia’ would be an unusual syllabic combination for the beginning of a word and they will perceive the first letter as a lower-case letter ‘L’. Therefore, the Opposition Division will not consider this minority of the public in the assessment below as this would lead to envisage a scenario, concerning a reduced part of the public, and which would have no bearing on the final outcome of the case.

The protection of a word mark concerns the word as such. In this case, it is irrelevant for the purposes of the comparison of the marks if the earlier mark is written in title-case letters and the other in lower-case letters, as the signs are written in a manner that does not depart from the usual way of capitalising letters.

The earlier mark ‘Lavera’ is meaningless for most of the relevant public. However, it cannot be excluded that part of the public, for instance the French-speaking part of the public, may perceive the earlier mark as the third person singular of the verb ‘to wash’ (‘laver’) in the future tense. Whereas the contested sign ‘lavena’ has no meaning for the relevant public. Since a conceptual difference between the signs could help consumers to distinguish easily between them, the Opposition Division finds it appropriate to focus the comparison of the signs on the majority part of the public that perceives no meaning in these words as it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69). Therefore, for this part of the public, these verbal elements will be perceived as fanciful and they are, therefore, distinctive to a normal degree.

Visually and aurally, the signs coincide in the pronunciation and string of the letters ‘LAVE(*)A’, which are their vowel-sequence in its entirety, and five out of six letters of the single words that constitute the signs. This is so, irrespective of the different pronunciation rules in different parts of the relevant territory. However, they differ in their fifth letters, the letter ‘R’ of the earlier mark versus the letter ‘n’ of the contested sign, and their sounds. Moreover, in the comparison of signs, account must be taken that 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.

In view of the foregoing, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in question. 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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

As set out above, the goods at issue are identical. The relevant public’s degree of attention varies from average to relatively high. The inherent distinctiveness of the earlier mark is normal. The signs are visually and aurally highly similar. Conceptually, the signs do not trigger any semantic association that may help consumers to differentiate them.

Taking account of all the relevant factors, the Opposition Division regards that the difference in only one letter in the final syllable of the signs does not suffice to counteract the greater similarities between them, especially because the 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the public under analysis. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public 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 11 493 426. 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 mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark 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, 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

Benoit VLEMINCQ

María del Carmen COBOS PALOMO

Angela DI BLASIO

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.