OPPOSITION Nо B 3 117 183

Zeometic, S.L., Pº Independencia 21, 2ª planta, 50001 Zaragoza, Spain (opponent), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain (professional representative)

a g a i n s t

Curalie GmbH, Leipziger Straße 61A, 10117 Berlin, Germany (applicant), represented by Miriam Vancraeyenest, Else-Kröner-Str. 1, 61352 Bad Homburg, Germany (employee).

On 30/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 183 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

On 28/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 181 802, (figurative mark), namely against all the goods and services in Classes 9, 35, 38, 42, 44 and 45. The opposition is based on European Union trade mark registration No 12 920 815, (figurative 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 and services

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

Class 3: Cosmetic products.

Class 35: Business management in connection with cosmetics; organisation of exhibitions for commercial purposes, in respect of cosmetics; organisation of demonstrations for commercial purposes, in respect of cosmetics; providing of business information relating to cosmetics, including via global computer networks, the cable network or other forms of data transfer; organisation of events, exhibitions, trade fairs and shows for commercial, promotional and advertising purposes in respect of cosmetics; sale in shops and via global computer networks of cosmetics.

The contested goods and services are the following:

Class 9: Application software in the medical field.

Class 35: Computerized file management; computerized file management; computerised data processing; all the aforesaid services for use in the medical sector.

Class 38: Providing user access to computer programmes in data networks; providing access to the internet and other communications networks; internet communication; providing access to databases; transmission of messages and images; all aforementioned services for use in the medical area only.

Class 42: Design, development, programming and implementation of software; hosting services and software as a service and rental of software; maintenance of websites and hosting online web facilities for others; all the aforesaid services for use in relation to the medical sector.

Class 44: Medical services.

Class 45: Licensing of franchise concepts in the field of medical services; software licensing in the field of medical 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 services in Class 35

The contested services in Class 35 fall into the category of office functions. These services – which are specific to the medical field – and the opponent’s business management in connection with cosmetics, are similar to a low degree. Office functions are intended to provide active help with the internal day-to-day operations of other undertakings that contract such services. This includes back-office administration and support services. Business management services, provided by consultants, involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They include assistance in the efficient allocation of financial resources and improving productivity to help with the strategy of the commercial undertaking. These services, despite the specifications as to particular fields of application, can be offered by the same specialised suppliers and target the same consumers, namely professional business customers. They also contribute to the same purpose, namely the proper running and success of an undertaking.

Contested goods and services in Classes 9, 38, 42, 44 and 45

The opponent’s services in Class 35 are related to business management and organisation of various kinds of events for the commercial promotion of cosmetics. The contested goods and services in Classes 9, 38, 42 and 45 are mainly related to computer software, applications and programmes specially designed for the field of medical services. These contested goods and services, as well as the contested medical services in Class 44, differ in nature and purpose from the opponent’s services in Class 35. They neither coincide in providers nor target the same public. The same applies to the opponent’s cosmetic products. These are, in general, preparations used to enhance or protect the appearance or odour of the human body, and are also often fragranced to add a pleasant smell. The opponent maintains that ‘cosmetic’ is a field of surgery (covered by Class 44) and cosmetic research and testing (covered by Class 42) would clearly be linked to health services nowadays. However, they do not share the same nature or purpose, and are neither complementary nor in competition. Furthermore, they differ in producers/providers and public. Even if the opponent’s arguments regarding a link between cosmetics and the contested services in Classes 42 and 44 were accepted, this is not sufficient for the relevant public to believe that the same company is responsible for the manufacture of the products and the respective services. Neither would they believe that a company offering the services in question is economically linked to the manufacturing company. Therefore, these goods and services are dissimilar.

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 similar to a low degree are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention is above average because of the potentially serious impact of such services (especially with respect to business management) on the users’ business.

c) The signs

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 sign comprises a grey shape that could be perceived as the letter ‘C’ or the letter ‘G’, or as an abstract shape with a wavy, pointed ending on its right bottom edge. Three identical red dots are depicted in a row, beginning in its centre and extending to the right. The contested sign comprises a thick black shape that could be perceived as the letter ‘C’, an interrupted letter ‘O’, or a circle. Both endings are rounded on their inner sides. Three grey dots of different sizes, from the largest to the smallest, are depicted in a row, beginning in its centre and extending to the right, although without extending beyond it. The respective shapes resembling letters are distinctive. Individually, the three dots in each of the signs are all simple geometrical shapes. Therefore, they are non-distinctive.

A significant part of the public will perceive the earlier sign as the letter ‘G’ or as an abstract shape and the contested sign as an interrupted letter ‘O’ or circle. However, at least a non-negligible part of the public in the relevant territory will perceive both signs as depicting a stylised letter ‘C’. The examination of the opposition will proceed on this basis, which is the best light in which the opponent’s case may be seen.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide to the extent that they both contain a component that could be perceived as the letter ‘C’, and that has a similar shape and outline. They further coincide in the presence of three dots arranged from the centre to the right. However, they differ in their colours, the edges of the shapes’ endings, and the size and exact positions of the dots. They are also both short signs, which makes their differences more easily perceivable by the public.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the signs are identical insofar as they both depict the letter ‘C’ in the perception of the public being assessed, which will be pronounced identically.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. According to current Office practice, single letters can have an independent conceptual meaning. Therefore, assuming they are both perceived as the letter ‘C’, the signs will be considered conceptually identical.

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

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).

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 or economically linked undertakings.

The goods and services are partly dissimilar and partly similar to a low degree. The latter target the professional public, whose degree of attention is above average. The distinctiveness of the earlier mark is normal.

The signs are aurally and conceptually identical to the extent that they are both perceived as depicting the letter ‘C’ by the part of the public being assessed. When conflicting signs consist of the same single letter, since such signs are usually aurally and conceptually identical, the visual aspect is of decisive importance. Although both signs might be perceived as the letter ‘C’ by the part of the public being assessed (for the reasons set out in detail in section c) of this decision), they are visually similar to a below-average degree, and the similarities are not sufficient to lead to a likelihood of confusion on the part of the public. Contrary to the opponent’s arguments, the contested sign cannot be perceived as a mere stylisation, or evolution, of the earlier sign or a sign from the same family of marks. The different elements of these two short signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks on the part of the professional public, which has an above-average degree of attention.

This is the best possible scenario for the opponent. The signs would be even less similar, or dissimilar, for the part of the public that will perceive the earlier sign as the letter ‘G’, or an abstract shape, and/or the contested sign as an interrupted letter ‘O’ or circle. This is because, for the part of the public that perceives another letter in the earlier or the contested mark, the signs will be visually similar to only a low degree, and aurally and conceptually dissimilar. For the part of the public that perceives the earlier sign as an abstract shape and the contested sign as an interrupted circle, the signs will be assessed as purely figurative signs. They will not be pronounced by this part of the public. Neither will they convey any particular concept. Therefore, from the perspective of this part of the public in the relevant territory, the signs will not be perceived as coinciding in any (relevant) aspect.

Considering all the above, there is no likelihood of confusion on the part of the public, regardless of whether the signs will be both perceived as depicting the letter ‘C’, or as another letter or shape as described above. Therefore, the opposition must be rejected.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Claudia SCHLIE

Astrid Victoria WÄBER

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.