OPPOSITION No B 3 109 432

Louis Vuitton Malletier, 2 rue du Pont-Neuf, 75001, Paris, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008, Paris, France (professional representative)

a g a i n s t

NextGen Beauty GmbH, Am Limespark 2, 65843, Sulzbach, Germany (applicant), represented by Squire Patton Boggs (US) LLP, Neue Mainzer Strasse 66-68, 60311, Frankfurt am Main, Germany (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 432 is upheld for all the contested goods.

2. European Union trade mark application No 18 136 312 is rejected in its entirety.

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

REASON

The opponent filed an opposition against all the goods of European Union trade mark application No 18 136 312 for the word mark ‘LICK IT’. The opposition is based on European Union trade mark registration No 15 780 653 for the word mark ‘LOCKIT’. 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: Cosmetic preparations for skin and lip care; lipstick; cosmetic rouges; transfers (decorative -) for cosmetic purposes; make-up pencils.

The contested goods are the following:

Class 3: Cosmetics; decorative cosmetics; lipsticks; lip balms [non-medicated]; lip glosses; lip liners.

The contested goods cosmetics; decorative cosmetics; lipsticks; lip balms [non-medicated]; lip glosses; lip liners are identical to the opponent’s Cosmetic preparations for skin and lip care, because the opponent’s goods include, are included in, or overlap with, the contested goods.

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. The degree of attention is considered to be average.

c) The signs

LOCKIT	LICK IT
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 marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

According to the applicant the English speaking consumer will easily get the meaning of term “Lock it” and “Lick it”. Especially in combination with the name of the brand owner Luis Vuitton the consumer will immediately recognize the link to the “Lockit” handbag of Luis Vuitton.

However, the verbal elements of the marks have no meaning for the examined relevant public, which is the Spanish public at large. They are not basic English words and are not commonly used in the relevant territory. Furthermore, the equivalent national words are very different (‘ciérralo’ and ‘lámelo’ or ‘lamerlo’). Therefore, they are distinctive.

Visually, the signs coincide in the letters ‘L-*-C-K-I-T’, although in the contested sign the letter ‘I-T’ are separated by a space. However, they differ in the second letter ‘O’ of the earlier mark and ‘I’ of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛L-*-C-K-I-T’, present in both signs. The pronunciation differs in the sound of the second letter ‛O’ of the earlier mark and ‘I’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 meaning for any of the services in question from the perspective of the public in the relevant territory. 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods concerned are identical. The relevant public consists of the general public whose degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually similar to at least an average degree. They are phonetically highly similar and the conceptual aspect is neutral. In particular, they only differ in their second letter and in the fact that the letter ‘IT’ are separated by a space in the contested sign.

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).

Furthermore, 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 likelihood that the relevant public might confuse the signs with each other is very real because it is considered that the similarities between the signs overcome the dissimilarities, and taking into account that the goods at issue are identical.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 15 780 653. 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

Aldo BLASI

Francesca CANGERI

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.