OPPOSITION Nо B 3 104 348

Diffulice Sàrl, Route de la Z.I. du Verney 4, 1070 Puidoux, Switzerland (opponent), represented by Isabelle Marcus Mandel, 16, Avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

Sana Essence GmbH, Daimlerstr. 12, 89312 Günzburg, Germany (applicant), represented by Wolfgang Riegger, Osterholzallee 76/1, 71636 Ludwigsburg, Germany (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 348 is upheld for all the contested goods, namely

Class 3: Cosmetics.

2. European Union trade mark application No 18 100 722 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 100 722 (figurative mark), namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 10 108 629, ‘METABOLIC CREAM’ (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

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

Class 3: Parfum; essentials oils; dentifrices.

The contested goods are the following:

Class 3: Cosmetics.

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 cosmetics are similar to the opponent’s parfum as they have the same general purpose, namely to protect or enhance the odour or fragrance of the body. Additionally, they usually coincide in producer, relevant public and distribution channels.

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 similar are directed at the public at large.

The degree of attention is considered average.

c) The signs

METABOLIC CREAM
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 mark, which is a word mark, is the verbal elements ‘METABOLIC CREAM’, whereas the contested sign, which is a figurative mark, contains the verbal elements ‘metabolic basics’.

The earlier mark is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the sign is depicted in upper- or lower-case letters unless the word mark combines upper- and lower-case letters in a manner that deviates from the usual way of writing (‘irregular capitalisation’), which is not the case here.

The applicant argues that the contested sign has a noticeable figurative element that gives a distinctive character to the trade mark. However, the Opposition Division considers that the figurative element is of a purely decorative nature since it is essentially made up of two slightly curved basic geometric shapes, which frame the verbal elements. In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no element that could be considered clearly more dominant (eye-catching) than other elements.

The signs’ verbal elements have a meaning in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory, such as that in Ireland and Malta.

The coinciding element ‘METABOLIC’ will be understood by the relevant public as ‘relating to, or involving metabolism’ (information extracted from Oxford English Dictionary on 05/03/2021 at https://www.oed.com/view/Entry/117159?redirectedFrom=metabolic#eid). The applicant argues that this word is plainly descriptive. However, metabolism refers to the way that chemical processes in the body cause food to be used in an efficient way, for example to make new cells and to provide energy, and therefore has no clear or direct meaning in relation to the goods concerned (cosmetics and perfumes). Therefore, the word ‘METABOLIC’ in both signs must be considered distinctive.

The applicant supports its argument that the word ‘METABOLIC’ is descriptive by referring to the case of 06/04/2017, T‑594/15, metabolic balance (fig.), EU:T:2017:261, § 40. However, that case concerned services relating either expressly or potentially to food and nutrition programmes or services that could have a sufficiently concrete and direct link with metabolic balance. This is not the case in the present proceedings since the goods concerned are not related to food or nutrition. Therefore, the applicant’s reference to this case cannot change the considerations and findings made above.

The element ‘CREAM’ of the earlier mark will be understood by the relevant public as ‘a cream-like preparation used cosmetically’ (information extracted from Oxford English Dictionary on 05/03/2021 at https://www.oed.com/view/Entry/44024?rskey=VleyTJ&result=2#eid). As correctly pointed out by the applicant, this element is descriptive as the relevant goods (perfumes) may be creamy or sold in cream form. Therefore, it is non-distinctive.

The word ‘basics’ of the contested sign means ‘fundamental or essential’ (information extracted from Oxford English Dictionary on 05/03/2021 at https://www.oed.com/view/Entry/15911?redirectedFrom=basics#eid). It denotes essential, fundamental or elementary elements, which constitute a basis. Therefore, the relevant public will perceive the word ‘basics’ as indicating that the goods concerned are fundamental or essential cosmetics that are intended to be used as a basis, and is, therefore, non-distinctive (12/09/2007, T‑164/06, Basics, EU:T:2007:274, § 23-25).

Visually and aurally, the signs coincide in the word/sound ‘METABOLIC’, which is distinctive for the relevant goods, as explained above. They differ in the appearance and pronunciation of the word ‘CREAM’ in the earlier mark and the word ‘basics’ in the contested sign, which are both non-distinctive for the relevant goods, for the reasons set out above. They also differ in the figurative element, colour and slight stylisation of the contested sign, which will however have reduced impact on consumers, as also explained above, and will not detract the consumers’ attention away from the verbal elements themselves.

The coinciding element ‘METABOLIC’, as the first element of the contested sign, will catch the consumers’ attention first when they encounter the mark. This is justified by the fact that 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. Consequently, the fact that the first verbal element of the contested sign coincides identically with the first verbal element of the earlier mark has to be taken into account when assessing the overall impression produced by those signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public. Both signs will be associated with something relating to or involving metabolism, which has no clear or direct meaning in relation to the goods concerned, and is therefore distinctive. In addition, the concepts conveyed by the additional words in the respective signs are non-distinctive. Therefore, the signs are conceptually similar at least to an average 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 clear or direct meaning for 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 non-distinctive element in the mark, as stated above in section c) of this decision.

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).

In the present case, the goods are similar. They target the public at large, who displays an average degree of attention. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually, aurally and conceptually similar to at least an average degree as they coincide in the verbal element ‘METABOLIC’, which is the most distinctive element in both signs and positioned at their beginnings. The differences between the signs are essentially confined to additional words that are non-distinctive and a figurative element of a decorative nature, as explained above in section c) of this decision.

Therefore, in view of the overall similarity between the signs, consumers are likely to believe that the similar goods concerned offered under those signs originated from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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 EUTM registration No 10 108 629. 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

Sam GYLLING

Claudia SCHLIE

Valeria ANCHINI

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.