CANCELLATION No C 45 109 (INVALIDITY) 

 

Hair Lab Products Ltd, 234 West George Street, G24QY Glasgow, United Kingdom (applicant), represented by Judith Anne Tonner, 272 Bath Street, G2 4JR Glasgow, United Kingdom (professional representative)

 

a g a i n s t

 

Fm World Sp. Z O.O., ul. Żmigrodzka 247, 51-129 Wrocław, Poland  (EUTM proprietor), represented by Alina Budner Delex Kancelaria Radcowsko - Rzecznikowska, ul. Kpt. Stefana Pogonowskiego 54 lok.B1, 90-619 Łódź, Poland (professional representative).

On 13/07/2021, the Cancellation Division takes the following

 

 

DECISION

 

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 18 103 219 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

 

On 03/08/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 103 219 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely against all the goods in Class 3. The application is based on EUTM registration No 17 931 705 HAIRLAB (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

 

The applicant argues that the marks are identical, or in the alternative confusingly similar implying a likelihood of association between the marks. The goods covered by the opposed application are identical to and otherwise confusingly similar to the goods covered by the applicant’s earlier trade mark.

 

The EUTM proprietor argues that the earlier mark is descriptive and its distinctiveness is low if any, there are seven EUTMs bearing the term HAIR LAB and actually the term HAIRLAB entered in the common language for the making of hair care services. The proprietor considers that its contested mark is “a graphic symbol with a word element, the graphic design of which , as a primary and original feature, has clearly identified the EUTM with the proprietor”, the goods bearing the EUTM have different distribution channels and different recipients from those goods bearing the earlier mark. These entities operate in the MLM (multi-level marketing) system under which only the goods if the proprietor are traded (the orders are placed directly in the proprietor’s department. Furthermore, the proprietor claims that the contested sign was used way before it was applied for registration as EUTM and that the goods of the marks in conflict do not coincide.

The EUTM proprietor filed evidence to support its arguments consisting of:

1) Print screens from websites of exemplary European and non-European entrepreneurs.

2) Extracts from the EUIPO database.

3) Attachment to application for invalidity.

4) Excerpt from the Proprietor's National Court Register.

5) Number of individual clients who bought products marked with
trade mark HAIRLAB in years 2017-2020.

6) Photographs of meetings, symposia, training courses, conferences and
workshops where FM World Sp. z o.o. products marked HAIRLAB trade mark were
presented to business partners and representatives of nits in various countries.

7) The list of countries where FM WORLD Sp. z o.o. the Franchise
Units sell products marked with the trade mark HAIRLAB 018103219 to its Business
Partners and the number of these ‘Franchiffrse Units’.

8) Sample invoices for the sale of FM World Sp. z o.o.'s products to its
subsidiaries for resale to business partners of FM World Sp. z o.o. - the invoices show products bearing the HAIRLAB 018103219 trade mark in yellow.

9) Information on the volume of sales of FM World Sp. z o.o.'s products
to its Franchise Units and Business Partners in various countries: European and non-European.

10) Print screens from website https://fmworld.com informing about the
number of points obtained from the sale of products marked with trade mark
HAIRLAB in November 2020 and December 2020 by business partners.

11) Photographs of individual FM World Sp. z o.o. products marked
with the EUTM mark - with information about the proprietor as the manufacturer.

12) Information on the advertising expenditure for the EUTM mark.

13) Sample product catalogues of products bearing the EUTM Proprietor's mark for 2017/2018/2019/2020.

After the closure of the proceedings the proprietor submitted further evidence which were forwarded to the applicant.

14) FM World Club Regulations of 03/10/2009.

15) Print screen from www.fmworld.pl.

16) Proprietor’s organizational structure.

17) Sample letters from the proprietor to its business partners that violate FM
World Club Regulations.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following: 

 

Class 3: Hair thickening products; hair thickening preparations, fibres, creams, gels, serums, lotions, powders, sprays and mousses; hair care products; shampoos and conditioners; hair colouring products; hair colouring preparations, fibres, creams, gels, serums, lotions, powders, sprays and mousses; hair wax; hair styling products; cosmetics; toiletries; skin care products; nail care products; hand care products; hair conditioning masks; hair sprays, hair gels, hair lotions, hair serums, hair mousses; depilatories; deodorants; anti-perspirants; body sprays; preparations, creams, gels, serums, lotions, sprays and mousses for tanning or for protection against the sun; after-sun preparations, creams, gels, serums, lotions, sprays and mousses; talcum powder; bath gel, shower gel; perfumery, perfumes, liquid and solid perfumes, eau-de-cologne, toilet water, fragrances and fragrance products; soaps; facial and body moisturisers; toners; facial and body cleansers; tissues and wipes impregnated with cosmetic preparations and cleansers.

 The contested goods are the following: 

 

Class 3: Lotions for cosmetic purposes; Cosmetic dyes; Hair dyes; Hair colour removers; Hair spray; Beauty masks; Neutralizers for permanent waving; Hair nourishers; Hair conditioners; Hair moisturising conditioners; Hair conditioner bars; Hair conditioners for babies; Hair lotions; Hair waving preparations; Permanent waving and curling preparations; Hair straightening preparations; Dry shampoos; Shampoos; Tints for the hair; Non-medicated shampoos; Dandruff shampoo; Emollient shampoos; Shampoos for pets [non-medicated grooming preparations]; Baby shampoo; Shampoo-conditioners; Hair mousse; Mousses being hair styling aids; Hair protection mousse; Hair gel; Styling gels; Gel sprays being styling aids; Hair protection gels.

Contested goods in class 3

The contested lotions for cosmetic purposes; cosmetic dyes; beauty masks are included in the applicant’s broad category of cosmetics. Therefore, they are identical.

The contested dry shampoos; shampoos; non-medicated shampoos; dandruff shampoo; emollient shampoos; shampoos for pets [non-medicated grooming preparations]; baby shampoo; shampoo-conditioners are included in the applicant’s broad category of shampoos and conditioners. Therefore, they are identical.

The contested Hair dyes; Hair colour removers; Hair spray; Neutralizers for permanent waving; Hair nourishers; Hair conditioners; Hair moisturising conditioners; Hair conditioner bars; Hair conditioners for babies; Hair lotions; Hair waving preparations; Permanent waving and curling preparations; Hair straightening preparations; Tints for the hair; Hair mousse; Mousses being hair styling aids; Hair protection mousse; Hair gel; Hair protection gels are included in or overlap with the applicant’s broad category of hair colouring preparations, fibres, creams, gels, serums, lotions, powders, sprays and mousses; hair care products. therefore, they are identical.

The contested styling gels; gel sprays being styling aids overlap with the applicant’s hair sprays, hair gels, hair lotions, hair serums, hair mousses. Therefore, they are identical.

The EUTM proprietor claimed that the goods of the contested mark have different distribution channels and different recipients from those goods bearing the earlier mark. In its view, these entities operate in the MLM (multi-level marketing) system under which only the goods if the proprietor are traded (meaning that the orders are placed directly in the proprietor’s department). However, in opposition proceedings based on Article 8(1)(b) EUTMR, the particular circumstances in which the goods in question were or are marketed cannot be taken into account. Since these may vary in time and depending on the wishes of the proprietors of the opposing marks, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59). What matters are not the conditions under which the goods are marketed, but the descriptions of the goods covered by the marks in question (15/10/2008, T‑305/06 - T‑307/06, Ferromix, Inomix, Alumix, EU:T:2008:444, § 61). The same rule applies for invalidity proceedings. The evidence sent by the EUTM proprietor to support its arguments in this sense are, thus, irrelevant.

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 in hairstyling. The degree of attention is considered to be average.

 

c) The signs

 

HAIRLAB
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, bearing in mind 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 proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.  

 

The marks have in common their single word element. Basically the contested sign encompasses the earlier mark with the slight difference in writing and with the addition of a figurative element. As regards the common term ‘HAIRLAB’, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Thus, the term ‘HAIRLAB’ is formed by the cojoined English terms ‘HAIR’ and ‘LAB’ (used widely as a short form for Laboratory) forming a single term that could be understood as referring to a ‘hair laboratory’.

‘HAIR’ is descriptive for the goods at issue which are designated for the hair care or styling, whereas ‘LAB’ is at most allusive since a laboratory for hair is not a customary concept. The Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public given that this would be the best scenario for the EUTM proprietor as it will be explained further.

  

However, whether the term ‘HAIRLAB’ as a whole is understood and thus weak, or not, is not particularly relevant in the present case as this term is on an equal footing as it appears as the only verbal element in both signs.

 

The contested sign also contains the figurative depiction of a circle with some waving lines similar to the stylisation of undulating hair or just waves. Contrary to the proprietor’s claim such device is not particularly striking or distinctive; quite to the contrary its impact is minimum. It is at ornamental for the main part and also, due to the allusion to the purpose of the goods, at best weak.

Furthermore, 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the verbal element of the contested sign will be of more importance in the overall perception of the signs.

None of the marks have any element that could be considered more dominant (visually eye-catching) than other elements. 

 

Visually, irrespective of the possible distinctive character of the term ‘HAIRLAB’ in each sign, this verbal element is the marks’ most important element and it is identical (save the aforementioned different layout). Therefore, the signs are visually similar to a high degree. 

  

Aurally, the signs are identical.

 

Conceptually, for the reasons previously outlined, the signs will still evoke the same concept. The concept of the circle with waves or waving hair in the contested sign will also be understood as alluding to the fact the goods are designated to protect, care or style the hair; the impact of this concept is very limited. Therefore, the signs are conceptually at least similar to a high 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 applicant 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. The EUTM proprietor commented that the earlier mark lacks distinctiveness. The Cancellation Division is of the opinion that the term ‘HAIRLAB’, as such, is not totally devoid of distinctiveness not even if understood as meaning ‘hair laboratory’. As explained above, the term ‘HAIR’ is not distinctive for hair products and it implies that the goods are a line of products intended to be used for hair. Be that as it may, the presence of the term ‘LAB’, which in this context is quite abstract (a laboratory for hair), gives a certain degree of distinctiveness to the mark as a whole. Some mental steps are required for its interpretation and the marks can be considered as merely allusive. Considering what has been stated above and also the findings in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods in question in Class 3.

 

 

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). 

Moreover, 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). 

In the present case the signs in conflict have been found to be visually highly similar, phonetically identical and conceptually at least similar to a high degree. The goods in conflict are identical. The relevant consumer is both the public in general and the professional public in the hairstyling field. The earlier mark has a lower than average degree of distinctive character as outlined previously.

Although the distinctiveness of the term HAIRLAB in both marks may be of a lower than average degree in relation to the goods at issue, this is somewhat irrelevant for the present purposes as either way this is the only verbal element in both signs used by consumers to refer to the sign, and it is on an equal footing in both signs. Moreover, as previously mentioned, the depiction of the circle with waiving lines is at best weak as it alludes to the purpose of the goods, i.e. to protect, style or care the hair. Therefore, the addition of same does not serve to distinguish the signs or counteract the similarities therein. Additionally, following the interdependence rule the identity of the goods can offset the minor differences in the figurative element. Consequently there is indeed a likelihood of confusion between the signs including a risk of association. The contested sign could be perceived as a new version of the earlier sign or designating a new line of products.

In its observations, the EUTM proprietor argues that the earlier trade mark has a weak distinctive character since several trade marks include the elements HAIRLAB or HAIR LAB and filed some evidence in this respect.

 

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the elements HAIRLAB or HAIR LAB. Under these circumstances, the EUTM proprietor’s claims and evidence must be set aside.

The EUTM proprietor further argues that its EUTM was used long before it was filed for registration and has submitted various items of evidence to substantiate this claim. 

 

The right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM.

Therefore, all the evidence sent in this sense by the EUTM proprietor are irrelevant in the present case.

The application is fully successful on the grounds of Article 8(1)(b) EUTMR. For the sake of completeness, the Cancellation Division states that the other ground of the application, namely Article 8(1)(a) EUTMR cannot succeed since the marks are obviously not identical.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Pierluigi M. VILLANI

Ioana MOISESCU

Ana MUÑIZ RODRÍGUEZ

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.