OPPOSITION Nо B 3 130 252

 

Pino Pharmazeutische Präparate GmbH, Große Elbstraße 281, 22767 Hamburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Zhuhai Shengjier Cosmetics Co., Ltd., Block E of West Wing, 3rd Floor, No. 6 (A2 Building), 6^th Rd., Xinqing Industrial Park, Doumen District, Zhuhai, People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo Ang. Via Appiani (Corte del Cotone), 20831 Seregno (mb), Italy (professional representative).

On 20/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 130 252 is upheld for all the contested goods.

2.	European Union trade mark application No 18 252 106 is rejected in its entirety.

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

REASONS

 

On 04/09/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 252 106 (figurative mark), namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 16 693 707, (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.

 

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 EUTM registration No 16 693 707.

 

a) The goods and services

 

The opposition is based on, inter alia, the following goods: 

Class 3: Toiletry preparations, Cosmetics and cosmetic preparations, Massage oils; Massage creams, not medicated; Massage lotions, Massage waxes; Massage ointments, not for medical purposes; Massage foam, not for medical purposes; Non-medicated massage preparations; Tissues impregnated with cosmetics, non-medical body cleaning and body care preparations; Shower foams, shower and bath gels, cosmetic wet wipes, soaps and gels, shower creams, bath and shower preparations, bath oils, bath soaps, bath powders, skin care preparations, body oils, body lotions, skin care wax, tissues impregnated with beeswax for skin care; Exfoliants, Facial care preparations, Facial cleansers, Facial masks, Hand creams, Skin care mousse, Cosmetic products in the form of aerosols for skincare; Body care foams, hand and foot care foams, Balms, not for medical purposes; Cold creams, other than for medical use; Salves [non-medicated]; Hair preparations and hair treatments, shampoos, essential oils and aromatic oils for cosmetic purposes, in the form of massage oils, for aromatherapy, for application to the skin and in the form of infusing sauna preparations; Room fragrancing preparations for therapeutic, rehabilitation and wellbeing facilities and for therapy, rehabilitation and wellness purposes.

The contested goods are the following:

 

Class 3: Eyebrow pencils; false eyelashes; cosmetics; nail art stickers; lipsticks; beauty masks; lotions for cosmetic purposes; adhesives for affixing false eyelashes; nail polish removers; nail varnish. 

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.

The contested eyebrow pencils; nail art stickers; lipsticks; beauty masks; lotions for cosmetic purposes; nail polish removers; nail varnish are included in the broader category of the opponent’s cosmetics and cosmetic preparations. Therefore, they are identical.

The contested false eyelashes are highly similar to the opponent’s cosmetics and cosmetic preparations as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested adhesives for affixing false eyelashes are lowly similar to the opponent’s cosmetics and cosmetic preparations as they usually coincide in producer, relevant public and distribution channels.

 

 

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 or similar (to varying degrees) are directed at the public at large. 

 

The degree of attention is considered to be average.

 

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 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 earlier mark is a figurative mark comprising the verbal element ‘PINO’, depicted in upper-case letters in a fairly standard black font, above which there is a figurative device of five black pine trees. The contested mark is a figurative mark comprising the verbal element ‘PINE’ depicted in lower-case letters in a fairly standard black font. The verbal element is framed in a black label and the dot above the letter ‘i’ has the shape of a figurative device of a small, slightly leaning black pine tree.

  

The element ‘PINO’ of the earlier mark is meaningful in Italian and Spanish and it refers to a pine tree - a tall tree that has very thin, sharp leaves called needles and a fresh smell.

The verbal element ‘PINE’ of the contested mark is meaningful in English (identical meaning as ‘PINO’) and does not exist as such in the Italian and Spanish languages. However, due to its proximity to the Italian and Spanish word ‘PINO’ and due to the figurative device of a pine tree it will be associated, with the word ‘PINO’ and understood as such.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the relevant public for which the conceptual link between the signs is higher than for other parts of the relevant public.

The verbal elements ‘PINO’ and ‘PINE’, as well as the figurative devices of the pine tree(s) in both marks which reinforce the concept of the pine tree may be perceived as indications of certain characteristics (ingredient or smell) of some of the goods such as, for both marks, cosmetics for which the distinctive character of those elements is somewhat reduced. However, these meanings are not related to other goods such as the contested false eyelashes for which these elements are distinctive to a normal degree.

The verbal element ‘PINE’ in the contested sign is the dominant element as it is the most eye-catching.

  

The earlier mark has no elements which could be perceived clearly more dominant or eye-catching.

The stylisation of the marks and a black label of the contested sign have a rather decorative purpose.

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). However, in the present case the similarity of the verbal elements is additionally heightened by the presence of the figurative devices which reinforce the concept of the pine tree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks refer to the concept of a ‘pine tree’ they are conceptually identical.

 

Visually, the signs coincide in the letters ‘PIN*’ that compose almost the entire verbal element of the earlier and contested marks. Additionally, they coincide in the fact that they both include the figurative device(s) of a pine tree(s) depicted in a very similar way (sihouettes of pines trees in black) – the earlier mark five and the contested sign one. However, they differ in the last letter O/E, slight stylisation of the marks and the fact that the verbal element of one is written in upper-case and the verbal element of the other in lower-case letters and in the figurative element of the label of the contested sign. Therefore, the signs are visually similar to at least an average degree.

 

Aurally, the pronunciation of the signs coincides in the letters ‘PIN*’ that compose almost the entire verbal element of the earlier and contested marks. However, it differs in the last letter O/E. When it comes to the figurative elements of the marks they will not be pronounced by the relevant public.

 

Taking into account the coincidence in the beginning of the marks, the marks are aurally 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.

 

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, as explained in section c) of this decision, the earlier trade mark as a whole will be seen as alluding to a pine smell / ingredient for some of the relevant goods, for instance cosmetics. Therefore, the distinctiveness of the earlier mark must be seen as below average for those goods. However, these meanings are not related to other goods such as the contested false eyelashes for which these elements are distinctive to a normal degree.

 

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 marks are visually and aurally similar to at least an average degree and conceptually identical. The goods in dispute have been found to be identical and similar to varying degrees. The earlier trade mark’s degree of distinctiveness is below average for some of the relevant goods, for instance cosmetics and for other goods such as the contested false eyelashes is normal. The goods and services target the general public, who will display a normal degree of attention.

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). 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).

The close proximity of the signs justifies the conclusion that there is a likelihood of confusion. It is possible that the average consumer may be led to believe that the same undertaking is responsible for the production of those goods.

The finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. 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. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered ((13/12/2007, T 134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Considering all the above, there is a likelihood of confusion on the part of the Italian- and Spanish-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 16 693 707. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the above earlier right 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 right 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

 

 

Catherine MEDINA

Marta ALEKSANDROWICZ-STANLEY

Michaela SIMANDLOVA

 

 

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.