OPPOSITION No B 2 114 398

Clarins Fragrance Group, 9, rue du Commandant Pilot, 92200 Neuilly-sur-Seine, France (opponent), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative)

a g a i n s t

David Silva, Lechenicher Str. 20, 50937 Cologne, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte, Steinsdorfstr. 19, 80538 Munich, Germany (professional representative).

On 20/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 114 398 is partially upheld, namely for the following contested goods and services:

Class 3: Cosmetics.

Class 35: Retail trade services, Including via the Internet in the fields of: Cosmetics.

2. Community trade mark application No 11 129 616 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 11 129 616. The opposition is based on French trade mark registration No 93 625 978, German trade mark registration No 302 010 005 243, international trade mark registration designating the European Union No 993 781 and international trade mark registration designating Benelux, Germany, Italy and the UK No 1 043 111. The opponent invoked Article 8(1)(b) CTMR.

Substantiation of international trade mark registration designating the European Union No 993 781

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case, the evidence submitted by the opponent consists of an extract from OHIM’s eSearch database.

This evidence is not sufficient to substantiate the opponent’s earlier international trade mark designating the European Union No 993 781.

International registrations are processed by WIPO, which is the administration that registers these trade marks. Therefore, WIPO is the sole body responsible for keeping official records of any international registration regardless of designation, be it the European Union or another territory.

Therefore, a certificate of registration or other equivalent evidence, such as an extract from the ROMARIN database, emanating from WIPO is needed to substantiate an IR designating the EU. The Opposition Division would also accept an extract from the TMview database for the same purpose, as long as it contained all the necessary information, and as long as this evidence was provided by the opponent (see Guidelines for Examination in the Office, Part C, Opposition, Section 1, Procedural Matters, p. 35). Rule 19(2)(a) CTMIR specifically allows an exception to the rule with regard only to CTMs; this exception is not deemed to extend to any other type of trade mark, and therefore not to IRs designating the EU.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

French trade mark registration No 93 625 978

1. The goods and services

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

Class 3: Perfumes, fragrances, toilet waters, colognes, toilet preparations, products for the bath or shower for cosmetic purposes, deodorants for personal use, perfumed soaps, perfumed talcum powder for toilet purposes, cosmetic creams, perfumed, scented cosmetic milks, lotions and gels for non-medical skin care, perfumery, cosmetics, hair lotions.

Following a limitation of the contested goods and services, they are the following:

Class 3: Cosmetics.

Class 25: Clothing, footwear, headgear.

Class 35: Retail trade services, Including via the Internet in the fields of: Pharmacy articles, Cosmetics and Housewares, Goods for the health sector, Bag makers’ goods and Saddlery, Clothing, Shoes and textile products, Food and drink.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 25

The contested clothing, footwear, headgear are dissimilar to all the opponent’s goods in Class 3. The natures and main purposes of these goods are different. The opponent’s goods consist mainly of preparations for cosmetic purposes, personal hygiene or cleaning. They are used for maintaining personal hygiene or to improve a person’s appearance or condition. The main purpose of the contested goods is to be worn by people, or to serve as fashion articles. These goods do not have the same distribution channels and are neither in competition nor complementary. Even though some designers that make fashion clothes, footwear and headgear nowadays also sell some of the contested goods, such as perfumery or cosmetic products, under their marks, this is not the rule, and applies more to (economically) successful designers.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail trade services, including via the internet in the fields of: cosmetics are similar to a low degree to the opponent’s cosmetics.

Retail trade services, including via the internet in the fields of: pharmacy articles, housewares, goods for the health sector, bag makers’ goods and saddlery, clothing, shoes and textile products, food and drink and cosmetics are not similar to the opponent’s goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

2. The signs

MANITY
Earlier trade mark	Contested sign

The relevant territory is France.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘MANITY’. However, they differ in the graphic depiction of the contested mark, namely in that the word ‘MANITY’, in standard white upper case letters, is placed on a black rectangle and to the left of it there is a figurative element of a flying bird in a stylised white circle.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MANITY’, present identically in both signs, and, therefore, the signs are aurally identical. The figurative element of the contested sign will not be pronounced.

Conceptually, while the public in the relevant territory will perceive the depiction of the flying bird in the contested mark as such, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual similarity and aural identity, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 has no meaning for any of the goods and 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.

5. 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 average.

International trade mark registration designating Benelux, Germany, Italy and the UK No 1 043 111 for the word mark ‘WOMANITY’ and German trade mark registration No 302 010 005 243

a) The goods and services

The goods of International trade mark registration No 1 043 111 on which the opposition is based are the following:

Class 4: Candles (lighting), candle, illuminating wax.

Class 5: Pharmaceutical products for skin care, sunburn products for pharmaceutical use, sunburn ointments, balms for medical use, medicinal oils, lotions for pharmaceutical use.

Class 8: Silverware (knives, forks and spoons), knives, cutlery, table cutlery, spoons, forks, manicure sets, pedicure sets.

Class 11: Lamp shades, lampshade holders, light bulbs, diffusers (for lighting), lamps and lanterns for lighting.

Class 12: Vehicles, apparatus for locomotion by land, air or water.

Class 16: Teaching material in the form of games (except apparatus); pamphlets, prospectuses, signboards of paper or cardboard; packaging bags made of cardboard or plastic materials.

Class 20: Furniture, furnishings, mirrors (looking glasses), picture frames.

Class 21:Household or kitchen utensils and containers (neither of precious metals, nor plated therewith), combs and sponges, brushes (except paintbrushes), brush-making materials, glassware, porcelain and earthenware not included in other classes, perfume burners, perfume vaporizers; perfume dispensers.

Class 24: Fabrics and textile goods not included in other classes, bed and table covers, bath linen (except clothing).

Class 28: Games, toys.

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The goods of German trade mark registration No 302 010 005 243 on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

Class 35: Advertising, television advertising, radio advertising; arranging of advertising; advertising agency services; publication of publicity texts; retail services, including by mail order, in relation to sanitary and pharmaceutical articles, soaps, perfumery, essential oils, cosmetics, magnetic data carriers and recording discs, electric apparatus, massage apparatus, jewellery, clocks and watches, printed matter, goods of leather and imitations of leather, clothing, headgear, footwear, games.

The remaining contested goods and services are the following:

Class 25: Clothing, footwear, headgear.

Class 35: Retail trade services, Including via the Internet in the fields of: Pharmacy articles, Housewares, Goods for the health sector, Bag makers’ goods and Saddlery, Clothing, Shoes and textile products, Food and drink.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

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 25

The contested clothing, footwear, headgear are identically contained in the list of goods and services of earlier German trade mark registration No 302 010 005 243

Contested services in Class 35

The contested retail trade services, including via the internet in the fields of: pharmacy articles, goods for the health sector, clothing, shoes are identical to the opponent’s retail services, including by mail order, in relation to sanitary and pharmaceutical articles, clothing, footwear of German trade mark registration No 302 010 005 243.

The contested retail trade services, including via the internet in the fields of: housewares, bag makers’ goods and saddlery, textile products, food and drink are considered similar to the opponent’s retail services related to specific goods of earlier German trade mark registration No 302 010 005 243. The services under comparison have the same nature since both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use.

b) The signs

WOMANITY
Earlier trade marks	Contested sign

The relevant territory is Benelux, Germany, Italy and the UK.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘MANITY’. However, they differ in the graphic depiction of the contested mark, namely in that the word ‘MANITY’, in standard white upper case letters, is placed on a black rectangle and to the left of it there is a figurative element of a flying bird in a stylised white circle. The signs also differ in the first two letters of the earlier marks, ‘WO’.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MANITY’, present identically in all the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛WO’ of the earlier signs, which have no counterpart in the contested mark. The fact that the earlier marks contain two additional letters at their beginnings, meaning that they have one additional syllable, makes the signs different in their rhythms and intonations. The figurative element of the contested sign will not be pronounced.

Conceptually, while the entire public in the relevant territory will perceive the depiction of the flying bird in the contested mark as such, for part of the public in the relevant territory the other sign lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. It cannot be denied that the English-speaking part of the public in the relevant territory may perceive in the earlier marks the word ‛WOMAN’, meaning ‛an adult female human being’. Therefore, the marks are not conceptually similar for this part of the public either.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

c) Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

d) Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) 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 are directed at the public at large. The degree of attention will be average.

6. Global assessment, other arguments and conclusion

Regarding earlier French trade mark registration No 93 625 978

The goods and services are partly identical, partly similar to a low degree and partly dissimilar.

The signs are visually similar and aurally identical, since the verbal element is the same in both signs.

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. 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 (judgment of 14/07/2005, T‑312/03, ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24; decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59). In the present case, the word ‘MANITY’ has more impact than the flying bird in the contested sign.

Considering all the above, and especially the facts that the marks enjoy a normal degree of distinctiveness and that the relevant public is the public at large, the Opposition Division finds that, on account of the visual similarity and aural identity between the signs, there is a likelihood of confusion and therefore the opposition is partially well founded on the basis of the opponent’s French trade mark registration. The differences between the marks are not capable of overriding their similarities. This applies in relation both to the identical goods and to the services that are similar to a low degree.

Regarding international trade mark registration designating Benelux, Germany, Italy and the UK No 1 043 111 for the word mark ‘WOMANITY’ and German trade mark registration No 302 010 005 243

Although the remaining contested goods and services are identical or similar to the goods and services of German trade mark registration No 302 010 005 243, the signs are similar only to the extent that they have in common the sequence of letters ‛MANITY’. Nevertheless, the signs are quite different, as the verbal element of the earlier marks incorporates an additional, differing syllable and, moreover, this syllable is placed at the beginning of the verbal element. The additional letters are ‘WO’. These letters will not go unnoticed either visually or aurally and they result in different overall impressions of the signs. Moreover, the fact that two of the three differing letters of the contested mark are situated at the beginning is of particular importance because consumers generally tend to focus on the first element of a sign when being confronted with a trade mark; this is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, this difference has to be taken into account when assessing the likelihood of confusion between the marks.

The Opposition Division disagrees with the opponent’s claim that the relevant public will understand ‘MANITY’ in the contested sign and that the signs are conceptually related. Although part of the relevant public may perceive the word ‘WOMAN’ in the earlier marks, ‘WOMANITY’, it is not likely that the relevant public would associate ‘MANITY’ with ‘WOMANITY’.

The opponent refers to previous decisions of the Office to support its arguments. 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.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because they deal with different combinations of letters and, in some cases, different outcomes related to the conceptual comparison.

Summary

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s French trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier French trade mark.

The rest of the contested goods and services are dissimilar to the goods of this mark. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful. For the reasons explained above, the contested mark is not similar enough to earlier German trade mark registration No 302 010 005 243 or earlier international trade mark registration designating Benelux, Germany, Italy and the UK No 1 043 111 for the word mark ‘WOMANITY’ for a finding of likelihood of confusion between these marks.

Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Judit NÉMETH

Anna POLITI

Beatrix STELTER

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.