OPPOSITION No B 3 097 430

Graphters Limited, 41 Holmethorpe Avenue, Redhill, RH1 2NB, United Kingdom (opponent), represented by Bernard Anthony Whyatt, Brand Protect, Retiro Verde, Castleknock Road, Dublin 15, Ireland (professional representative)

a g a i n s t

P & M Cosmetics GmbH & Co. KG, Hafengrenzweg 3, 48155 Münster, Germany (applicant), represented by Bischof & Partner Rechtsanwälte Partnerschaftsgesellschaft mbB, An den Speichern 6, 48157 Münster, Germany (professional representative).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 430 is upheld for all the contested services.

2. European Union trade mark application No 18 098 702 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 and services of European Union trade mark application No 18 098 702 ‘Skinsence’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 17 888 852 ‘SKINSENSE’ (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.

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 17 888 852.

a) The goods and services

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

Class 3: Cosmetics; toiletries; skin care preparations; gels; lotions; oils; moisturisers; body products; foams; mousses; cleansers; sprays; mists; creams; face masks; bath preparations; exfoliants; face and body massage creams; face and body massage lotions; face and body make up cosmetics; disposable wipes impregnated with cleansing compounds for use on the face; cleansing masks; skin cleansers; cleansing milk; hand cleansers; cleansing creams; serums for cosmetic purposes; creams for firming the skin; cosmetic preparations for skin firming; night creams; facial toner; skin toner; body masks; cosmetic masks; facial masks; lip cream; lip balms; lip cosmetics.

Following the limitation requested by the applicant on 21/10/2019, which was accepted by the Office and duly notified to the opponent on 22/11/2019, the contested services are the following:

Class 44: Human hygiene and beauty care; consultation services relating to skin care.

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.

The contested human hygiene and beauty care; consultation services relating to skin care and the opponent’s cosmetics in Class 3 have the same purpose. They target the same relevant public and can coincide in distribution channels, since it is common for beauty care parlours to also sell cosmetic products. Furthermore, they are complementary, as beauticians use cosmetic products to provide their services. Therefore, they are similar.

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 are directed at the public at large.

The degree of attention may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

SKINSENSE	Skinsence
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 words ‘SKIN’ and ‘SENSE’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in Ireland, Malta and the United Kingdom. As a basic understanding of English by the general public, at least in the Scandinavian countries, the Netherlands and Finland must be regarded as a well-known fact (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23), the relevant public also includes consumers in Denmark, the Netherlands, Finland and Sweden. This is because the signs will be conceptually identical for this part of the public, thus enhancing the degree of similarity between the signs, as will be explained below.

Both signs are single word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper- or lower-case letters.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, 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). Therefore, the relevant public will split the signs into the words ‘SKIN’ and ‘SENSE’/‘SENCE’.

The word ‘SKIN’ present in both signs means ‘the thin layer of tissue forming the natural outer covering of the body of a person or animal’ (information extracted from Oxford Dictionaries on 22/10/2020 at https://www.lexico.com/en/definition/skin).

The word ‘SENSE’, present in the earlier mark, means, inter alia, ‘a faculty by which the body perceives an external stimulus; one of the faculties of sight, smell, hearing, taste, and touch’ (information extracted from Oxford Dictionaries on 22/10/2020 at https://www.lexico.com/en/definition/sense ). The verbal element ‘SENCE’, present in the contested sign, has no meaning as such. However, it is unlikely that consumers would notice the ‘S’ being replaced with a ‘C’ or, if they did notice, then it is likely they would consider it an obvious misspelling of the word ‘SENSE’. Moreover, it is not uncommon for English speakers to confuse words that contain the letters ‘s’ and ‘c’ (e.g. ‘advise’ and ‘advice’).

The verbal element ‘SENSE’/‘SENCE’ bears no relation to the relevant goods and services and has an average degree of distinctiveness. The word ‘SKIN’ in relation to the relevant goods and services alludes to their being for use on the skin and has a low degree of distinctiveness. However, the question of the distinctiveness of the signs’ word elements is irrelevant given the identically contained word ‘SKIN’ and almost identical expressions ‘SKINSENSE’/‘SKINSENCE’. The verbal elements have the same degree of distinctiveness in both signs.

Visually, the signs coincide in that they are both single word signs and that these words are nearly identical. They differ only in their second-to-last letter which, moreover, is not noticeable at first glance. Therefore, the signs are visually highly similar.

Aurally, the only differing letter, ‘S’ versus ‘C’, does not create any phonetically perceptible difference. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as ‘SKIN’ and ‘SENSE’ independently whether the public overlooks the difference in the letters ‘S’/‘C’ or perceives the verbal element ‘SENCE’ in the contested sign as a misspelling of ‘SENSE’. Therefore, the signs are conceptually identical.

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, despite the presence of a weak component in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

The contested services are similar to the opponent’s goods. They target the public at large whose degree of attention varies from average to higher than average. The signs are visually highly similar and aurally and conceptually identical. The degree of distinctiveness of the earlier mark is normal.

The depiction of the letters is irrelevant for word marks. Both signs are single word marks and they coincide in all except one of their letters. As the difference between the letters ‘S’/‘C’ is not easily noticeable, at least part of the relevant public will simply overlook it. The other part of the relevant public who will notice this difference will perceive the letter ‘C’ as a misspelling.

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). 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). Therefore, it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the goods and services in question are from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public such as the public in Ireland, Malta and the United Kingdom as well as the public in Denmark, the Netherlands, Finland and Sweden. 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 17 888 852. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 17 888 852 ‘SKINSENSE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.