OPPOSITION Nо B 3 110 079

 

Bella Aurora Labs, S.A., C/ A - Edifici Filatures (Col. Güell), 4º, 08690 Santa Coloma Cervelló (Barcelona), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

DirectMarketing OÜ, Narva mnt 5, 10117 Tallinn, Estonia (applicant), represented by Law Firm IP Forma, Užupio G. 30, 01203 Vilnius, Lithuania (professional representative).

On 25/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 110 079 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 128 306 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 18 128 306 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 2 424 216 ‘Bella Aurora’ (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.

 

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 2 424 216.

 

a) The goods and services

 

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

 

Class 3: Perfumery, essences, eau de cologne, cosmetic products and soaps; essential oils; shampoos, dentifrices; depilatory preparations; cosmetic kits.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants.

Class 39: Storage, transport and distribution of cosmetics.

The contested goods and services are the following:

 

Class 3: Cosmetics.

Class 5: Nutritional supplements.

Class 35: Wholesale and retail services in relation to cosmetics and dietary supplements.

 

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

Cosmetics are identically contained in both lists of goods (including synonyms).

Contested goods in Class 5

The contested nutritional supplements are substances intended to provide nutrients that are claimed to have a biologically beneficial effect and which may be medicated or not. These goods, therefore, include, as a broader category, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Contested services in Class 35

 

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

 

Therefore, the contested retail services in relation to cosmetics and dietary supplements are similar to the opponent’s cosmetic products; dietetic substances adapted for medical use.

The same principle applies to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services. Therefore, the contested wholesale services in relation to cosmetics and dietary supplements are similar to the opponent’s cosmetic products; dietetic substances adapted for medical use.

 

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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The degree of attention is considered to vary from average (e.g. cosmetics) to relatively high (e.g. nutritional supplements; dietetic substances adapted for medical use, as these goods may affect the state of health of consumers).

 

c) The signs

 

Bella Aurora
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 element ‘BELLA’ will be perceived as a female name in at least part of the relevant territory, for example, where the English language is spoken. Given that for this part of the public there is a relevant conceptual similarity between the signs, the Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which suggest a specific meaning or resemble words known to them (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The use of capital letters ‘B’ and ‘L’ allows the contested sign to be immediately separated into two words, namely ‘Bella’ and ‘Lab’ (11/06/2009, T-67/08, EU:T:2009:198, § 35).

The element ‘BELLA’, which refers to a female name from the point of view of the relevant public, has no meaning in relation to the goods and services at issue and is, therefore, distinctive (information extracted from Collins Dictionary on 24/03/2021 at https://www.collinsdictionary.com/dictionary/english/bella).

The Opposition Division notes that the applicant refers to the earlier Opposition Division decision No B 1 819 864, where it was concluded that “the element ‘BELLA’ contained in the earlier mark will be associated with ‘beauty’. Bearing in mind that the relevant goods are cosmetics and beauty products it is considered that this element is weak for these goods”. However, this finding is not applicable to the present case, given that the public under assessment will not perceive this meaning in the element ‘BELLA’, but, as stated above, will understand it as a female name.

The element ‘AURORA’ of the earlier mark will be understood by the relevant public as ‘an atmospheric phenomenon consisting of bands, curtains, or streamers of light, usually green, red, or yellow, that move across the sky in polar regions. It is caused by collisions between air molecules and charged particles from the sun that are trapped in the earth's magnetic field; the dawn; the Roman goddess of the dawn’ (information extracted from Collins Dictionary on 24/03/2021 at https://www.collinsdictionary.com/dictionary/english/aurora). As it has no relationship with the goods and services at issue, it is distinctive.

The element ‘LAB’, which is the short for ‘laboratory’ in English, will be understood by the relevant public as ‘a building or room equipped for conducting scientific research or for teaching practical science; a place where chemicals or medicines are manufactured (information extracted from Collins Dictionary on 24/03/2021 at https://www.collinsdictionary.com/dictionary/english/laboratory). Since a laboratory is a common space for research and experimental work, and it would allude to some kind of scientific basis for or involvement during the development of the goods at issue, it is considered that this element is weak. Contrary to the applicant’s opinion, the Opposition Division does not consider it non-distinctive, because it does not directly inform of characteristic of the goods, but only alludes to the fact that the goods might be developed in or tested by a laboratory.

The figurative character of the contested sign resides in the minimal stylisation of its lettering. Consequently, it is inherently weak, since it will be perceived by consumers as a mere ornamental feature in the sign, which has no striking characteristic as such. It follows that the public will afford more trade mark significance to the verbal elements than to the sign’s stylisation.

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

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.

Visually, the signs coincide in their first element, ‘BELLA’. However, the signs differ in their second elements, namely ‘AURORA’ in the earlier mark and ‘LAB’ in the contested sign. The signs further differ in the fact that the contested sign appears depicted as one verbal element, and in the minimal stylisation of the contested sign.

Taking into account the respective elements’ degree of distinctive character and the fact that the signs coincide in their beginnings, which is generally the part that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BELLA’, present identically at the beginning in both signs. The pronunciation differs in the sound of the remaining letters, ‘AURORA’ of the earlier mark and ‘LAB’ in the contested 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. As the signs will be associated with the same concept of ‘BELLA’, they are conceptually similar 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.

 

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 assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 contested goods and services are partly identical and partly similar to the opponent’s goods, and they target the public at large and professionals. The degree of attention of the relevant public may vary from average to relatively high. The inherent distinctiveness of the earlier mark is normal. The signs are visually, aurally and conceptually similar to an average degree.

The signs are similar to the extent that they begin with the same distinctive element, ‘BELLA’. The dissimilarities between the signs are confined to their second elements. However, in the opinion of the Opposition Division these are not sufficient to safely exclude a likelihood of confusion on the part of the public, in particular taking into account that the second element in the contested sign, ‘LAB’, is of a weak distinctive character.

The likelihood of confusion includes the likelihood of association with the earlier trade mark. It 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 and services covered are from the same or economically linked undertakings. Therefore, in the present case, even though the signs may not be directly confused, there is a likelihood of confusion when the relevant public, although aware of the differences between the signs, nevertheless will assume, owing to the use of the common distinctive initial component ‘BELLA’ for identical and similar goods and services, that they are derived from the same undertaking or economically linked undertakings. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In particular, in relation to the goods and services concerned, it has to be noted that it is not uncommon for a single manufacturer to use signs that derive from a principal mark and which share with it a common element.

The applicant claims that the element ‘BELLA’ of the earlier mark has a weak distinctive character and in support of its argument the applicant refers to several European Union trade mark registrations.

 

The Opposition Division notes that 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, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘BELLA’. Under these circumstances, the applicant claims must be set aside.

 

Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In the cited cases no likelihood of confusion was found, as the signs coincide only in a non-distinctive element or an element of low distinctiveness, which is not the case in the present proceedings.

 

Considering all the above, there is a likelihood of confusion on the English-speaking part 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 2 424 216. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

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.

 

As the above earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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).

 

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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

 

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.