OPPOSITION Nо B 3 101 409

Perfumeria Julia S.A., Av. Carlemany, 115, Escaldes, Andorra (opponent), represented by Hoffmann Eitle Patent- Und Rechtsanwälte Partmbb, Arabellastr. 30, 81925 Munich, Germany (professional representative)

a g a i n s t

SiRe Beteiligungs UG (Haftungsbeschränkt), Forckenbeckstraße 9-13, 14199 Berlin, Germany (applicant), represented by Guido Kluck, Plantagenstraße 20 Remise Im Hof, 12169 Berlin, Germany (professional representative).

On 09/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 409 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 28/10/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 130 106 ‘JULIBASIC’ (word mark), namely against some of the services in Class 44. The opposition is based on the following marks:

 European Union trade mark registration No 4 651 154 (figurative mark);

 European Union trade mark registration No 4 651 147 ‘PERFUMERIA JULIA’ (word mark);

 European Union trade mark registration No 7 441 959 (figurative mark);

 European Union trade mark registration No 18 127 683 (figurative mark);

 Spanish trade mark registration No 2 855 473 (figurative mark);

 Spanish trade mark registration No 2 153 571 (figurative mark);

 Spanish trade mark application No 4 035 390 (figurative mark) which was registered on 03/04/2020.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON GROUNDS FOR OPPOSITION

According to Article 46(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EUTM application.

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement that the respective requirements under Article 8 (1), (3), (4), (5) or (6) EUTMR are fulfilled.

On 04/10/2019, the contested trade mark application was published for opposition purposes.

On 28/10/2019, the opponent filed a notice of opposition to the contested application. On the electronic opposition form, the opponent cited Article 8(1)(b) EUTMR as ground for opposition for each of the abovementioned earlier marks. The electronic opposition form was filed without any attachments and was not accompanied by any facts, evidence and arguments in support of the opposition.

On 10/06/2020, the opponent submitted observations and argued that the opposition must be upheld on the basis of Article 8(1)(b) EUTMR.

However, on 26/02/2021, the opponent submitted further observations and argued that the opposition must also be upheld on the basis of Article 8(5) EUTMR.

Since the new ground for opposition, namely Article 8(5) EUTMR, was invoked for the first time by the opponent after the expiry of the three-month period following the publication of the contested trade mark application, this ground is inadmissible.

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 4 651 154 as it is the most similar earlier right vis-à-vis the contested trade mark application.

a) The services

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

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

The contested services are the following:

Class 44: Beauty salon services.

The contested beauty salon services are included in the broad category of the opponent’s hygienic and beauty care for human beings or animals. 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 services found to be identical are directed at the public at large whose degree of attention is considered average.

c) The signs

	JULIBASIC
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 is a stylised representation of the word ‘Júlia’, a common female first name of Latin origin, in use across the European Union, including in slight variations. With the accent over the letter ‘u’, it is used, inter alia, in Spain, Hungary and Portugal, and with slightly different spelling such as ‘Julia’ in Germany, Poland and the Netherlands or similar thereto in Lithuania and Slovenia (‘Julija’), Latvia (‘Jūlija’), Italy (‘Giulia’) and France (‘Julie’). As this word is fanciful in relation to the services at issue, it is inherently distinctive to an average degree.

When the relevant public encounters the contested sign, ‘JULIBASIC’, being an invented and meaningless term as a whole, they will readily recognise the element ‘BASIC’, an English word meaning, inter alia, ‘the essential element of a situation, subject, etc.; primary requirement’ (information extracted from Oxford Dictionaries on 09/06/202020 at https://www.lexico.com/definition/basic). Since it is a commonplace term used in simple marketing language, including in the field at issue, to designate goods and services that every person needs or that are included in any company’s product portfolio (e.g. as the ‘basic offer’), it can be safely assumed that the word ‘BASIC’ is understood accordingly throughout the European Union. It also follows that this term is devoid of any distinctive character in relation to the services at issue. The relevant public will perceive it as directly descriptive of the fact that the services covered by the contested sign are the essential beauty and body-care treatments necessary, or intended, for everyone.

The applicant argues that the rest of the contested sign, that is to say, its first element, ‘JULI’, will be understood as a reference to the month of July. The opponent disagrees with this finding and argues that this may be the case in German but not in English, Spanish or many other European Union languages. According to the opponent, the element ‘JULI’ is mainly linked with the female first name ‘JULIA’ and that, therefore, these verbal elements are conceptually identical. The Opposition Division finds it highly unlikely that the term ‘JULI’ would be understood as a female name, whether existing as such, or used as a variant or diminutive, in any of the languages of the relevant territory. On the contrary, in the absence of any evidence to support the opponent’s allegations, the Opposition Division accepts the applicant’s argument that the term ‘JULI’ rather may be associated with July, the seventh month of the year. Indeed, that is the case for several languages of the European Union, such as in Danish, Dutch, German and Swedish. For the remaining part of the public, however, the term ‘JULI’ will not convey any specific semantic content. Irrespective of whether a meaning is conveyed or not, the distinctiveness of the element ‘JULI’ is average in relation to the relevant services.

Visually, the signs coincide in the letters ‘JULI-’. They differ, however, in the additional letter ‘A’ at the end of the earlier mark and in its stylisation including the accent over the letter ‘U’, as well as in the additional element ‘BASIC’ of the contested sign which has no counterpart in the earlier mark, and which, due to its length, cannot go unnoticed and undermine the principle that consumers will perceive the contested sign as a whole. Therefore, despite the fact that the coincidence between the signs lies in their beginning and that the additional element, ‘BASIC’, is non-distinctive in the contested sign, there is only a low degree of visual similarity between the marks at issue.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sounds of the letters ‘JULI-’. However, the pronunciation differs in the ending sounds ‘-A’ versus ‘-BASIC’ of the terms ‘Júlia’ and ‘JULIBASIC’. In this respect, it should be noted that, in some languages for example in German the ending of the word ‘JULIA’ will not contain two clearly audible vowels ‘I-A’; rather, the phoneme ‘I’ will be lost in the syllable and to that extent the coincidence in the letter ‘I’ has little impact on the overall aural similarity between the signs. Therefore, and in view of similar considerations as in the visual comparison of the signs above, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions regarding the concepts conveyed by the earlier mark and the elements of the contested sign. The signs are not conceptually similar, irrespective of whether the public perceives the contested sign’s element ‘JULI’ as referring to the month of July or not, and despite the lack of distinctiveness of the additional concept conveyed by the contested sign’s element ‘BASIC’.

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 trade mark enjoys a high degree of distinctiveness as a result of its long-standing and intensive use among the relevant public in Spain in connection with part of the goods and services for which it is registered, namely for perfumes and cosmetics and related services. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

On 10/06/2020, the opponent submitted 12 screenshots from the internet, in Spanish, originating from two websites of the opponent, https://www.perfumeriajulia.es/ and https://julia.ad, as well as from the opponent’s social media accounts on Twitter and Linkedin. The screenshots admittedly contain some information about the opponent’s history and its presence in Spain and Andorra. The screenshots also contain a few pictures of samples of products, inter alia, of different kinds of cosmetics, on which the mark ‘Júlia’ appears, albeit in various manners of representation. They further demonstrate that the opponent operates an online shop where the earlier mark is displayed. However, it is noted that the evidence is undated, and there is no evidence in terms of invoices, price lists, affidavits, turnover and sales figures, surveys on the earlier mark’s recognition or any other item contained in the non-exhaustive list of means of evidence of Article 97 EUTMR.

Enhanced distinctiveness requires recognition of the mark by the relevant public and, in making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and/or services. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation although the threshold for a finding of enhanced distinctiveness may be lower. As regards the contents of the evidence, the more indications it gives about the various factors from which enhanced distinctiveness may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of enhanced distinctiveness.

It is noted that the screenshots from the opponent’s websites contain textual information that is not in the language of the proceedings, and the opponent only provided a very brief translation of the topics covered therein. However, in consideration of the outcome of the case, the Opposition Division will take into account the full content of the evidence submitted, which for the opponent is the best light in which the opposition can be examined.

Having examined the material summarised above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. It is true that the evidence submitted suggests that the opponent is a Spanish manufacturer and retailer of perfumes and cosmetics. However, the earlier trade mark must have acquired enhanced distinctiveness prior to the time of filing of the contested EUTM application (or any priority date). The contested EUTM application was filed on 26/09/2019 and the earlier mark must thus have acquired enhanced distinctiveness prior to this date (and still at the time of the decision). The evidence does not contain any solid indications in this respect as it is in the vast majority undated, or the dates relate to a period of time either long before the filing date of the contested mark or to a point in time thereafter. Moreover, the evidence does not provide any indications of the share of the earlier mark on the relevant Spanish product markets, let alone of the degree of recognition of the trade mark by the relevant public.

Therefore, the evidence does not allow the Opposition Division to draw any solid conclusion in relation to the earlier mark’s recognition by consumers in Spain or elsewhere in the relevant territory. In particular, the excerpts from internet websites do not allow for any conclusions to be drawn on consumer perception but only on some use made of the earlier mark at most. Therefore, the evidence submitted does not corroborate the opponent’s claim of enhanced distinctiveness in the sense that it does not give any direct insight into the recognition of the earlier mark among consumers or the market share held by the mark. The opponent also failed to submit any other documents such as surveys regarding the mark’s recognition or press articles from sources independent of the opponent itself capable of demonstrating that the mark is known by a significant part of the relevant public.

According to the second sentence of Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that, when assessing whether the earlier mark enjoys enhanced distinctiveness, the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent.

Article 7(2) EUTMDR further provides that the burden of putting forward and proving the relevant facts as well as the scope of protection of the earlier marks lies with the opponent. The opponent must, therefore, submit sufficient evidence for the Office to conclude that the earlier mark enjoys enhanced distinctiveness in the relevant territory. It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The enhanced distinctiveness of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole, that is, each indication should be weighed up against the others, with information confirmed by more than one source generally being considered more reliable than facts derived from isolated references. Indeed, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be. Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as when, for example, the opponent submits internal memoranda or tables with data and figures of unknown origin.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that the earlier mark has acquired a high degree of distinctiveness through its use in the Spanish market. The evidence originates, in the main, from the opponent itself and contains information taken from its own websites and its own advertising. However, there is insufficient documentation/information from the opponent and/or third parties to reflect clearly and objectively what precisely the opponent’s position on the market is. Enhanced distinctiveness is therefore not proven.

Consequently, the assessment of the distinctiveness of the earlier mark under analysis will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the earlier mark must be considered to have a normal degree of inherent distinctiveness.

e) Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services found to be identical are directed at the public at large whose degree of attention is average, that is to say not heightened. The signs were found visually and aurally similar to a low degree. Conceptually, they are not similar. The fact that the signs have the letters ‘JULI’ in common, and that these are located at the beginning of both marks, is not sufficient for the relevant public to be confused about the origin of the services.

Admittedly, the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow. However, that is only a general rule and does not apply in this case (14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 50; 06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48). In the present case, the remote degree of visual and aural similarity between the signs is neutralised by the fact that the signs are not conceptually similar, as established above.

Consumers will not focus their attention on the first few letters of the signs at issue, but rather on the signs taken as a whole. The differences between the signs are also of particular importance since they create a significant distinction conceptually and will therefore help consumers to differentiate between the signs. Therefore, the mere fact that the contested sign coincides with the earlier mark in some of its letters does not outweigh the conceptual difference and cannot call into question the finding that consumers will realise that the conflicting signs produce overall impressions with immediately perceptible differences and indicate different commercial origins.

It remains necessary to consider the opponent’s argument that the earlier trade marks on which the opposition is based (as listed in the ‘Reasons’ section of this decision), all characterised by the presence of the same word component, ‘JULIA’, may constitute a ‘family of marks’ or ‘marks in a series’. However, such a circumstance is liable to give rise to an objective likelihood of confusion only insofar as the consumer, when confronted with the contested mark, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65). When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if the following conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series.

The finding that a particular mark forms part of a family of marks requires that the common component of the signs is identical or very similar. The signs must contain the same distinctive element, and this element must play an independent role in the sign as a whole. Minor graphical differences in the common component may not exclude an assumption of a series of marks when these differences may be understood by the public to be a modern presentation of the same product line. In contrast, letters that are different from or additional to the common component generally do not allow an assumption of a family of marks.

In the present case, the signs merely have some common letters at their beginnings. However, the distinctive element of the earlier signs, the name ‘JULIA’, is not fully reproduced in the contested sign. Therefore, irrespective of the opponent’s evidence of use, which, in the Opposition Division’s opinion, is not sufficient proof of use of all, or at the very least three, earlier marks allegedly belonging to the series of a number of marks capable of constituting a ‘series’, the contested sign does not display characteristics capable of associating it with the opponent’s alleged series. The mere fact that the signs have the letters ‘JULI’ in common, and that these are located at the beginning of the contested sign, is not sufficient for the public to be confused about the origin of the goods and services even when assuming that the opponent proved it used a family of ‘JULIA’ marks, and moreover that it used such a family in the same fields as those covered by the contested trade mark.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion, including likelihood of association, on the part of the public between the contested sign and the earlier mark, even though the services are identical. Therefore, the opposition based on the opponent’s European Union trade mark registration No 4 651 154 must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 2 153 571 (figurative mark);

 European Union trade mark registration No 4 651 147 ‘PERFUMERIA JULIA’ (word mark);

 Spanish trade mark registration No 4 035 390 (figurative mark);

 European Union trade mark registration No 18 127 683 (figurative mark);

 Spanish trade mark registration No 2 855 473 (figurative mark);

 European Union trade mark registration No 7 441 959 (figurative mark).

The above other earlier rights invoked by the opponent are either not more similar to the contested sign or have otherwise no broader protection than the opponent’s European Union trade mark registration No 4 651 154, particularly in view of the following.

With regard to the opponent’s claim to enhanced distinctiveness which implicitly concerns all of the earlier marks invoked, for the reasons stated in section d) of this decision, the evidence submitted by the opponent is insufficient to demonstrate that any of the earlier marks acquired recognition on the part of the public.

Spanish trade mark registration No 2 153 571 invoked by the opponent covers services in Class 35 only, namely advertising; business management; business administration; clerical services; rearrangement of various goods (except transport) for others, to enable consumers to examine and purchase these goods conveniently. These services are clearly different to those applied for in the contested trade mark and do not allow for a finding of any relevant degree of similarity due to their different natures, purposes and methods of use. They also do not coincide in their producer/provider nor share the same distribution channels. Furthermore, these services are neither complementary nor in competition and they target different end users. According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a necessary condition for the finding of a likelihood of confusion. Since the services of earlier Spanish trade mark registration No 2 153 571 and those of the contested mark are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition on the basis of this earlier mark must therefore be rejected.

European Union trade mark registration No 4 651 147 ‘PERFUMERIA JULIA’ invoked by the opponent covers the same scope of goods and services as the opponent’s European Union trade mark registration No 4 651 154. However, this earlier trade mark contains an additional verbal element, ‘PERFUMERIA’, not present in the contested trade mark. Due to its identical and/or highly similar spelling in numerous EU languages, it is safe to assume that the relevant public would perceive the word ‘Perfumeria’ as a reference to ‘perfumery’. The distinctive character of this additional verbal element therefore seems to be reduced. However, the word ‘Perfumeria’ is still clearly perceptible and this earlier mark creates an overall impression which is less, or at least not more, similar to the contested mark than the opponent’s above European Union trade mark registration No 4 651 154. Therefore, the outcome in respect of this earlier mark cannot be different from that in respect of European Union trade mark registration No 4 651 154 for which the opposition has already been rejected; no likelihood of confusion exists.

Spanish trade mark registration No 4 035 390 and European Union trade mark registration No 18 127 683 invoked by the opponent are figurative marks and consist of the words ‘JÚLIA BONET’ in a slightly stylised font. The word ‘JÚLIA’ will be perceived as a female name by the relevant public, since, as set out above, this is a common name widely used in countries across Europe. It is, moreover, safe to assume that the additional verbal element ‘BONET’, following the name ‘Julia’, will be perceived as a surname, which, in principle, has a higher intrinsic value as an indicator of the origin of goods or services than a first name. This is because the same first name may belong to a great number of people who have nothing in common. Therefore, consumers tend to pay more attention to surnames than to first names. In these circumstances, the relevant public will note that the earlier mark designates a person identified by the rather common name ‘Julia’ and the surname ‘BONET’, while it will perceive the contested mark as referring to a different person or concept. These two earlier marks are, therefore, less similar to the contested sign and the visual, aural and conceptual differences are of such a nature that the signs can be distinguished more readily.

Spanish trade mark registration No 2 855 473 and European Union trade mark registration No 7 441 959 invoked by the opponent are figurative marks and consist of the words ‘BEAUTYSPACE JÚLIA’ in a slightly stylised font placed below a figurative element resembling a feather. The font size of the letters ‘BEAUTYSPACE’ is significantly bigger than the word ‘JÚLIA’, and the element ‘BEAUTYSPACE’ is therefore dominant. These two earlier marks invoked by the opponent are, therefore, also less similar to the contested mark than the opponent’s European Union trade mark registration No 4 651 154 as they contain further verbal and figurative elements, which are not present in the contested trade mark. Therefore, the outcome in respect of these two earlier rights cannot be different from that in respect of European Union trade mark registration No 4 651 154 for which the opposition has already been rejected; no likelihood of confusion exists, therefore, also with respect to these two earlier rights invoked by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Solveiga BIEZA

Philipp HOMANN

Andrea VALISA

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.