OPPOSITION Nо B 3 114 380

Roger Aoun, 9 Grants Close, NW7 1DD London, United Kingdom (opponent), represented by Laytons Llp, 2 More London Riverside, SE1 2AP London, United Kingdom (professional representative)

a g a i n s t

Lorenzo Carlini, 704 Avenue Du Peymian, 13600 La Ciotat, France (applicant).

On 23/03/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 114 380 is upheld for all the contested goods and services.

2.	European Union trade mark application No 18 152 905 is rejected in its entirety.

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

REASONS

 

On 19/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 152 905 ‘IN BEAUTY LABS’. The opposition is based on, inter alia, European Union trade mark registration No 13 881 206 ‘BEAUTYLAB’. The opponent invoked Article 8(1)(b) EUTMR. The opponent initially also invoked Article 8(5) EUTMR, but withdrew this ground on 15/10/2020.

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 13 881 206.

a) The goods and services

 

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

Class 3: Aftershave moisturising cream; aftershave; after-sun gels [cosmetics]; after sun creams; age spot reducing creams; alcoholic solvents being cleaning preparations; anti-aging creams; anti-wrinkle cream; aromatherapy creams; artificial tanning preparations; auto-tanning creams; baby oils; base cream; bath creams; bath oil; beauty masks; beauty creams; beauty gels; beauty lotions; beauty milks; blush; blush pencils; body lotions; body cream; body mask cream; body masks; body oil; body oil spray; body scrub; bronzing creams; cleaning compositions for spot removal; cosmetics; cosmetics for bronzing the skin; cosmetics for the treatment of dry skin; cream for whitening the skin; creams for cellulite reduction; creams for tanning the skin; cuticle cream; depilatories; essential oils for personal use; ethereal oils; exfoliant creams; non-medicated face cream; facial cleansers; facial cream; facial masks; facial scrubs; facial toners [cosmetic]; facial washes [cosmetic]; hair cream; hair removing cream; hand cleansers; hand washes; lip balm; lip cream; lip gloss; lip polisher; lipstick; lotions for cellulite reduction; make-up foundations; massage oil; moisturizer; nail cream; nail gel; nail strengtheners; nappy cream [non-medicated]; night cream; non-medicated foot cream; non-medicated scalp treatment cream; perfumed soap; preservative creams for leather; non-medicated scalp treatments; scouring solutions; shaving cream; skin cleansers; skin cleansing cream; skin toners; soap; spot remover; sun barriers [cosmetics]; sun blocking lipsticks [cosmetics]; sun bronzers; sun tan lotion; sun tan oil; sun-block lotions; sun-tanning oils; sun-tanning preparations; tanning creams; tanning gels [cosmetics]; washing creams; washing preparations for personal use; waterless soap; wipes impregnated with a skin cleanser; wrinkle resistant cream; soaps; bath salts; bubble bath; adhesives for cosmetic use.

Class 5: Acne cleansers [pharmaceutical preparations]; acne creams [pharmaceutical preparations]; absorbent cotton; medicated anti-bacterial face washes; antiseptic cleansers; medicated creams for application after exposure to the sun; medicated bath preparations; medicated creams for the lips; crystals for therapeutic purposes; dietary supplements; medicated face cream; hand creams for medical use; medicated face scrubs; medicated foot creams; medicated creams; medicated lip balm; medicated skin creams; medicinal oils; night creams [medicated]; peptones for pharmaceutical purposes; pharmaceutical creams; pharmaceuticals; medicated protective creams; sanitary preparations for medical purposes; sanitizing wipes; medicated scalp treatments; scrubs [preparations] for medical use; skin care creams for medical use; therapeutic creams [medical]; therapeutic medicated bath preparations; vaginal washes; disinfectant washes [other than soap]; dietary food supplements; disinfecting handwash; hand lotions [medicated]; medicated skin lotions.

The contested goods and services are the following:

Class 3: Cosmetics.

Class 5: Food supplements.

Class 44: Cosmetics consultancy services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 and services.

Contested goods in Class 5

The contested food supplements overlap with the opponent’s dietary food supplements in the same Class. Therefore, they are identical.

Contested services in Class 44

The contested cosmetics consultancy services are similar to cosmetics in Class 3 as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

 

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 ranges from average to above average depending on the nature of the goods and services.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36). This applies also here in case of goods in class 5 which are used considering their implication to health.

c) The signs

BEAUTYLAB	IN BEAUTY LABS
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.

Both marks are words marks. As regards the earlier mark, 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), in the present case, the earlier mark will be perceived by the English-speaking part of the public as containing the words BEAUTY and LAB. Indeed, these words and the elements IN, BEAUTY, LABS of the contested sign are meaningful in those countries where English is understood. The element BEAUTY in both marks refers to the state or quality of being beautiful. The element LABS of the contested mark is a plural of the word LAB in the earlier mark, both referring to laboratories. The word IN is a preposition indicating a place where something happens or takes place. Bearing in mind that conceptual similarity enhances the finding of a likelihood of confusion, and taking into account the abovementioned principle of unitary character, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- speaking parts of the public.

The elements BEAUTY, LAB/LABS have the same concepts in both marks, as is the case for their combined meaning (e.g. as referring to the laboratory/ies in the field of beauty). The earlier mark refers to one such laboratory while the contested mark refers to such laboratories in plural. It means that these verbal components in the signs are both on equal footing as concerns their distinctiveness. Therefore this factor is rather immaterial for the comparison. The element IN is a preposition and, as such, it hardly has any distinctive character, if at all, since prepositions usually have a noun group as their object.

 

Visually, the signs coincide in the letters B-E-A-U-T-Y-(*)-L-A-B which form the entire earlier mark and are all included, albeit with a space between the letter Y and L in the contested sign. The signs differ in the last letter S and element IN of the contested sign and they differ further in that the earlier mark consists of a single word whereas the contested sign contains three.

Yet, these differences hardly have an impact considering the similarities stemming from the letters that the signs have in common which, it is recalled, constitute the entire earlier mark. Therefore, the signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters
B-E-A-U-T-Y-L-A-B, present identically in both signs. The fact that the earlier mark is a single word whereas ‘BEAUTY’ and ‘LAB’ are spread over two separate words in the contested sign does not have any impact on the pronunciation. The pronunciation differs in the sound of the letter S and the word IN of the contested sign, which have no counterparts in the earlier 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 earlier mark and ‘BEAUTY LABS’ in the contested sign will be perceived as referring to the same concepts (one in singular, the other in plural), the signs are conceptually highly similar.

 

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question given their direct or potential link to the cosmetics and related pharmaceutical industry, as shown in section a) of this decision. Indeed, the earlier mark is considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

 

e) Global assessment, other arguments and conclusion

 

The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

Moreover, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the services covered. Accordingly, a low degree of similarity between those goods may be offset by a high 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 have been found identical or similar to the opponent’s goods. The marks are visually and aurally similar to an average degree and conceptually highly similar.

Account has also to be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

It should be noted that although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular of similarity between the signs and between the goods and services covered (see judgement of 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

It is thus considered that, despite the low distinctive character of the earlier mark, the similarities between the signs established above are sufficient to cause at least part of the relevant public to believe that the conflicting goods and services, which are identical or similar, come from the same undertaking or economically linked undertakings taking further into account that the additional IN of the contested sign, as a preposition, can hardly serve to distinguish one sign from the other. Neither can do so the final S of the contested sign since it does not affect the conceptual content of the common word LAB much more than modifying a singular to a plural. In such context, the Opposition Division considers that a likelihood of confusion between the marks in presence cannot be safely excluded.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking parts 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 13 881 206. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

As the earlier right, European Union trade mark registration No 13 881 206, 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).

 

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

Martina GALLE

Erkki MÜNTER

Gonzalo BILBAO TEJADA

 

 

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.