OPPOSITION Nо B 3 108 809

Aquarius Cosmetic, S.L.U., Ctra. Sant Bartomeu, 13-15, 08503 Gurb, Barcelona, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

La Rive Spolka Akcyjna, Składowa 2-6, 86‑300 Grudziądz (Kujawsko-Pomorskie), Poland (applicant), represented by Rasiewicz Oleksyn Kancelaria Prawna Sp. j., Karolkowa 30, 01‑207 Warszawa, Poland (professional representative).

On 25/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 809 is upheld for all the contested goods.

2. European Union trade mark application No 18 133 914 is rejected in its entirety.

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

REASONS

On 15/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 133 914 (figurative mark). The opposition is based on European Union trade mark registration No 18 024 016 ‘TOP DREAMS’ (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, inter alia, the following:

Class 3: Cosmetics; cosmetic creams; tissues impregnated with cosmetic lotions; soaps; cologne; toilet water; perfume; cosmetic kits; essential oils; oils for perfumes and scents; after-shave preparations; toiletries; make-up removing preparations; make-up; lipstick.

The contested goods are the following:

Class 3: Perfumes; perfumery; perfumery and fragrances; oils for perfumes and scents; eau de parfum; toilet water; eau de Cologne; after-shave lotions; anti-perspirants in the form of sprays; non-medicated antiperspirants; deodorants and antiperspirants; soap; soaps in liquid form; ethereal essences; ethereal oils; cosmetics; cosmetic kits; cosmetic creams; nail varnish; make-up; beauty milk; beauty tonics for application to the body; beauty tonics for application to the face; make-up removing preparations; musk [perfumery]; lipsticks; make-up powder; bath salts, not for medical purposes; bath lotion; bath lotions (non-medicated -); liquid bath soaps; perfumed creams; scented body spray; perfumed toilet waters; fragrances; scented body lotions and creams; liquid perfumes; scented oils; floral water; perfumed tissues; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; shower and bath gel; body and facial gels [cosmetics]; aromatherapy oil; essential oils for aromatherapy use; perfume oils for the manufacture of cosmetic preparations; aftershave balms; after-shave emulsions; aftershave milk; after-shave gel; after-shave preparations.

Perfumes, oils for perfumes and scents; toilet water; eau de Cologne; soap; cosmetics; cosmetic kits; cosmetic creams; make-up; make-up removing preparations; lipsticks; tissues impregnated with cosmetic lotions; after-shave preparations are identically contained in both lists of goods (including synonyms and singular or plural forms respectively).

The contested perfumery; perfumery and fragrances; eau de parfum; musk [perfumery]; perfumed creams; scented body spray; perfumed toilet waters; fragrances; scented body lotions and creams; liquid perfumes; perfumed tissues; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations] overlap with, or are included in, the opponent’s broad category of perfume. Therefore, they are identical.

The contested after-shave lotions; anti-perspirants in the form of sprays; non-medicated antiperspirants; deodorants and antiperspirants; beauty milk; beauty tonics for application to the body; beauty tonics for application to the face; make-up powder; bath salts, not for medical purposes; bath lotion; bath lotions (non-medicated -); shower and bath gel; body and facial gels [cosmetics]; aftershave balms; after-shave emulsions; aftershave milk; after-shave gel are included in the opponent’s broad category of cosmetics. Therefore, they are identical.

The contested soaps in liquid form; liquid bath soaps are included in the opponent’s broad category of soaps. Therefore, they are identical.

The contested ethereal essences; ethereal oils; scented oils; aromatherapy oil; essential oils for aromatherapy use; perfume oils for the manufacture of cosmetic preparations are included in, or overlap with, the opponent’s essential oils. Therefore, they are identical.

The contested nail varnish; floral water are included in the opponent’s broad category of toiletries. Therefore, they are identical.

The contested tissues impregnated with cosmetics; impregnated cloths for cosmetic use overlap with the opponent’s broad category of tissues impregnated with cosmetic lotions. 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 goods found to be identical are mainly directed at the public at large, although some of them, such as perfume oils for the manufacture of cosmetic preparations, are also directed at a professional public with specific professional knowledge or expertise.

The degree of attention, contrary to the applicant’s opinion, is considered to be average.

c) The signs

TOP DREAMS
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 verbal elements ‘DREAMS’ of the earlier mark and ‘DREAM’ of the contested sign will be understood by a substantial part of the public throughout the European Union, at least by the public that speaks English or the public that is familiar with English. It will be perceived as ‘a series of thoughts, images, and sensations occurring in a person’s mind during sleep’ or ‘a cherished aspiration, ambition, or ideal’ (information extracted from Oxford Dictionaries on 10/06/2021 at https://premium.oxforddictionaries.com/definition/english/dream). The Opposition Division finds it appropriate to focus the comparison of the signs on the public that is familiar with English.

The applicant claims that ‘DREAM/DREAMS’ is a common and widely used basic English term that conveys a merely laudatory message and submitted a list of links to articles on the usage of the term ‘American dream’ in different Member States as well as printouts of those websites.

The applicant also refers to previous decisions of the Office to support its arguments. More specifically, the applicant states that the decision of the Board of Appeal in case R 958/2014 of 27/01/2015 rejected a trade mark application for the word ‘DREAM’ for services in Classes 36 and 37. It further states that the trade mark ‘DREAMS’ was invalidated by a decision of the Cancellation Division, namely of 27/10/2021, 36 958 C. 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. In any event, the previous cases referred to by the applicant are not relevant to the present proceedings since these are cases dealing with absolute grounds of refusal based on Articles 7(1)(a) and 59(1)(a) EUTMR respectively. The applicant’s claim is therefore set aside.

The applicant also argues that the verbal element ‘DREAM’ has a low degree of distinctiveness given that many trade marks include this verbal element in relation to cosmetics. In support of its argument the applicant submitted a list of several trade mark registrations and an annex with extracts from websites.

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 verbal element ‘DREAMS’. Under these circumstances, the applicant’s claims must be set aside.

Even though the relevant public immediately grasps the meaning of the verbal elements ‘DREAM/DREAMS’, the Opposition Division considers that it does not describe any characteristics of the relevant goods and that it has no direct and specific relation to them. These verbal elements are therefore considered distinctive to an average degree. Moreover, ‘DREAM’ is the singular form of ‘DREAMS’, so the distinctiveness of these verbal elements is the same in both signs.

The verbal element ‘TOP’ in the earlier mark alludes to the good quality of the relevant goods or to the fact that they belong to a high-level category of goods and is, therefore, weak.

The verbal element ‘Secret’ is also meaningful for the relevant public. Since it is placed before a noun, it will be recognised by the relevant public as the adjective referring to something ‘not known or seen or not meant to be known or seen by others’ (information extracted from the Oxford Dictionaries on 10/06/2021 at https://premium.oxforddictionaries.com/definition/english/secret).

This adjective ‘Secret’ in the contested sign qualifies the noun ‘DREAM’. Therefore, although it is not related to the relevant goods and consequently enjoys an average degree of distinctiveness, it is secondary within the overall impression of the sign. Its purple colour is purely decorative and consequently has very little weight.

The figurative elements resembling waves in green, blue, purple and grey have less weight in the overall comparison of the signs. This is because 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).

Contrary to the applicant’s statement, the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their verbal element ‘DREAM/S’, albeit in singular form in the contested sign and in plural form in the earlier mark. They differ in the additional verbal element ‘TOP’ and the last letter ‘S’ in ‘DREAMS’ in the earlier mark, and the additional verbal element ‘Secret’ in the contested sign. They further differ in the figurative elements and aspects of the contested sign.

Based on the distinctiveness and the weight of the different components in the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DREAM’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘S’, the letters ‘TOP’ of the earlier mark and ‘Secret’ of the contested sign. The latter two elements are of reduced distinctiveness/weight.

Therefore, the signs are aurally at least 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 a similar meaning on account of their coinciding element ‘DREAM/S’, the signs are conceptually similar to at least 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.

On the one hand, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. On the other hand, the applicant claims that the earlier mark has at most a very low degree of distinctiveness because it is composed of two laudatory and promotional components.

The Opposition Division does not agree with the applicant and considers that the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak 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).

The identical goods target the public at large, some of the goods also target professionals. The relevant public’s degree of attention is average.

The signs are visually similar to an average degree and aurally and conceptually similar to at least an average degree. The degree of distinctiveness of the earlier mark is normal.

The most distinctive verbal element of the earlier mark (‘DREAMS’) is completely contained in the contested sign, albeit in singular form (‘DREAM’), where it plays an independent and distinctive role.

All the additional verbal and figurative elements in both signs are secondary or of reduced distinctiveness.

Likelihood of confusion 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/services covered are from the same undertaking or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is very likely that consumers will perceive the contested sign as a newly launched line of products of the opponent.

Considering all the above, there is a likelihood of confusion on the part of public in the European Union that is familiar with English. 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 18 024 016. 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

Martin MITURA

Sylvie ALBRECHT

Christophe DU JARDIN

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.