OPPOSITION No B 2 171 562

Effect Management & Holding GmbH, Wagrainer Str. 35, 4840 Vöcklabruck, Austria (opponent), represented by Michael Babeluk, Florianigasse 26/3, 1080 Wien, Austria (professional representative)

a g a i n s t

Rhino Rugby Limited, 114 Power Road, London W4 5PY, United Kingdom (applicant), represented by Sanderson & Co., D2 Knowledge Gateway, Nesfield Road, Colchester, Essex CO4 3ZL, United Kingdom (professional representative).

On 30/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 171 562 is partially upheld, namely for the following contested goods:

Class 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; after-shave lotions; air fragrancing preparations; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; amber [perfume]; antiperspirant soap; antiperspirants [toiletries]; aromatics [essential oils]; astringents for cosmetic purposes; badian essence; balms other than for medical purposes; bath salts, not for medical purposes; baths (cosmetic preparations for -); beard dyes; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; cedarwood (essential oils of -); cleansing milk for toilet purposes; colorants for toilet purposes; cosmetic kits; cosmetic preparations for slimming purposes; cosmetics; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic -); dental bleaching gels; dentifrices; deodorant soap; deodorants for human beings or for animals; deodorants for pets; depilatories; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; dyes (cosmetic -); eau de cologne; extracts of flowers [perfumes]; eyebrow cosmetics; eyebrow pencils; eyelashes (adhesives for affixing false -); eyelashes (cosmetic preparations for -); false eyelashes; false nails; flower perfumes (bases for -); greases for cosmetic purposes; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone [perfumery]; jasmine oil; joss sticks; lavender oil; lavender water; lemon (essential oils of -); lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; medicated soap; mint essence [essential oil]; mint for perfumery; mouth washes, not for medical purposes; musk [perfumery]; mustache wax; nail art stickers; nail care preparations; nail polish; neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; pencils (cosmetic -); perfumery; perfumes; petroleum jelly for

cosmetic purposes; pomades for cosmetic purposes; potpourris [fragrances]; rose oil; sachets for perfuming linen; safrol; scented water; scented wood; shampoos; shampoos for pets; shaving preparations; shaving soap; shaving stones [astringents]; skin care (cosmetic preparations for -); skin whitening creams; soap; soap for foot perspiration; sun-tanning preparations [cosmetics]; sunscreen preparations; talcum powder, for toilet use; tissues impregnated with cosmetic lotions; toilet water; toiletries; transfers (decorative -) for cosmetic purposes; none of the aforementioned being sandpaper or abrasive materials.

2. European Union trade mark application No 11 235 405 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 235 405, namely against some of the goods in Class 3. The opposition is based on international trade mark registration No 1 015 626 designating the European Union. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 3: Cosmetics, especially perfumery wares, essential oils, shampoos, shower gels; body lotions, massage oils, gels, face creams and pheromone (fragrances).

Class 5: Lubricants for medical purposes.

Following a limitation, the contested goods are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; adhesives for cosmetic purposes; after-shave lotions; air fragrancing preparations; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; amber [perfume]; antiperspirant soap; antiperspirants [toiletries]; aromatics [essential oils]; astringents for cosmetic purposes; badian essence; balms other than for medical purposes; bath salts, not for medical purposes; baths (cosmetic preparations for -); beard dyes; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; boot cream; breath freshening sprays; breath freshening strips; cakes of toilet soap; cedarwood (essential oils of -); cleansing milk for toilet purposes; colorants for toilet purposes; cosmetic kits; cosmetic preparations for slimming purposes; cosmetics; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic -); dental bleaching gels; dentifrices; deodorant soap; deodorants for human beings or for animals; deodorants for pets; depilatories; disinfectant soap; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; dyes (cosmetic -); eau de cologne; extracts of flowers [perfumes]; eyebrow cosmetics; eyebrow pencils; eyelashes (adhesives for affixing false -); eyelashes (cosmetic preparations for -); false eyelashes; false nails; flower perfumes (bases for -); greases for cosmetic purposes; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone [perfumery]; jasmine oil; javelle water; joss sticks; lavender oil; lavender water; lemon (essential oils of -); lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; medicated soap; mint essence [essential oil]; mint for perfumery; mouth washes, not for medical purposes; musk [perfumery]; mustache wax; nail art stickers; nail care preparations; nail polish; neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; pencils (cosmetic -); perfumery; perfumes; petroleum jelly for cosmetic purposes; pomades for cosmetic purposes; potpourris [fragrances]; quillaia bark for washing; rose oil; sachets for perfuming linen; safrol; scented water; scented wood; shampoos; shampoos for pets; shaving preparations; shaving soap; shaving stones [astringents]; skin care (cosmetic preparations for -); skin whitening creams; soap; soap for foot perspiration; sun-tanning preparations [cosmetics]; sunscreen preparations; talcum powder, for toilet use; tissues impregnated with cosmetic lotions; toilet water; toiletries; transfers (decorative -) for cosmetic purposes; none of the aforementioned being sandpaper or abrasive materials.

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

The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods 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, EU:T:2003:107).

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

The contested cosmetics; none of the aforementioned being sandpaper or abrasive materials (mentioned twice) are identically contained in both lists of goods.

The contested hair lotions; almond milk for cosmetic purposes; depilatories; aloe vera preparations for cosmetic purposes; beard dyes; beauty masks; talcum powder, for toilet use; transfers (decorative -) for cosmetic purposes; lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; dyes (cosmetic -); pomades for cosmetic purposes; shampoos; shampoos for pets; skin care (cosmetic preparations for -); skin whitening creams; sun-tanning preparations [cosmetics]; sunscreen preparations; nail art stickers; nail care preparations; nail polish; tissues impregnated with cosmetic lotions; greases for cosmetic purposes; hair dyes; hair lotions; hair spray; hair waving preparations; astringents for cosmetic purposes; bleaching preparations [decolorants] for cosmetic purposes; balms other than for medical purposes; bath salts, not for medical purposes; baths (cosmetic preparations for -); cleansing milk for toilet purposes; cosmetic kits; cosmetic preparations for slimming purposes; creams (cosmetic -); deodorants for human beings or for animals; deodorants for pets; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; eyebrow cosmetics; eyebrow pencils; eyelashes (cosmetic preparations for -); false eyelashes; false nails; pencils (cosmetic -); mustache wax; toiletries; oils for cosmetic purposes; shaving preparations; after-shave lotions; neutralizers for permanent waving; antiperspirants [toiletries]; almond oil; oils for toilet purposes; none of the aforementioned being sandpaper or abrasive materials are included in or overlap with the broad category of the opponent’s cosmetics. Therefore, they are considered identical.

The contested antiperspirant soap; soap; soap for foot perspiration; shaving soap; almond soap; cakes of toilet soap; deodorant soap; disinfectant soap; soaps; medicated soap; none of the aforementioned being sandpaper or abrasive materials are similar to the opponent’s cosmetics. They have the same distribution channels, target the same public and are manufactured by the same kind of undertakings.

The contested perfumery (mentioned twice); perfumes; eau de cologne; extracts of flowers [perfumes]; toilet water; scented water; musk [perfumery]; lavender water; potpourris [fragrances]; amber [perfume]; none of the aforementioned being sandpaper or abrasive materials are similar to a high degree to the opponent’s cosmetics. These goods have the same purpose and distribution channels, target the same public and are manufactured by the same kind of undertakings.

The contested air fragrancing preparations; safrol; cedarwood (essential oils of -); flower perfumes (bases for -); essential oils; joss sticks; incense; ionone [perfumery]; mint essence [essential oil]; aromatics [essential oils]; mint for perfumery; oils for perfumes and scents; sachets for perfuming linen; jasmine oil; lavender oil; rose oil; bergamot oil; scented wood; badian essence; none of the aforementioned being sandpaper or abrasive materials are similar to the opponent’s cosmetics. These goods have the same purpose and distribution channels and target the same relevant public.

The contested colorants for toilet purposes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; eyelashes (adhesives for affixing false -); petroleum jelly for cosmetic purposes; hydrogen peroxide for cosmetic purposes; none of the aforementioned being sandpaper or abrasive materials are similar to the opponent’s cosmetics. The goods can have the same distribution channels, relevant public and commercial origin.

The contested dentifrices (mentioned twice); mouth washes, not for medical purposes; breath freshening sprays; breath freshening strips; dental bleaching gels; none of the aforementioned being sandpaper or abrasive materials are similar to a low degree to the cosmetics of the earlier mark. They have the same distribution channels and target the same public.

The contested javelle water; none of the aforementioned being sandpaper or abrasive materials is an aqueous solution of sodium hypochlorite used as a disinfectant or a bleaching agent. Quillaia bark for washing; none of the aforementioned being sandpaper or abrasive materials is used for washing clothes and cleaning delicate garments. Boot cream; none of the aforementioned being sandpaper or abrasive materials is used for cleaning shoes. These goods are dissimilar to the opponent’s goods. They have a different nature, method of use and purpose.

2. 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 various degrees are directed at the public at large and some of them also at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark that consists of the stylised word ‘RHINO’.

The contested sign is a figurative mark that consists of the stylised word ‘RHINO’ and a figurative element, similar to a stylised rhinoceros.

The word ‘RHINO’, included in both marks, will be perceived as a common abbreviation for the English word ‘rhinoceros’. The figurative element of the contested sign will also be associated with a rhinoceros. These elements have no meaning in relation to the relevant goods and are therefore distinctive.

In its observations, the applicant argues that the element ‘RHINO’ is weak, given that there are many trade marks in Class 3 that include ‘RHINO’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘RHINO’. Under these circumstances, the applicant’s claims must be set aside.

The marks have no elements that could be considered clearly more distinctive than other elements. Furthermore, the marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘RHINO’. However, they differ in the stylisation of the marks and in the figurative element of the contested sign, which, in this case, as it also refers to a rhinoceros, will emphasise and reinforce the word ‘RHINO’.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, as both signs will be perceived as ‘rhinoceros’, the signs are 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.

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 as a whole has no meaning for any of the goods 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. Global assessment, other arguments and conclusion

According to the Court of Justice’s case law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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 global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, since average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

The goods are partly identical, partly similar to various degrees and partly dissimilar.

The earlier mark has a normal degree of distinctiveness. The marks are visually similar to a high degree and aurally and conceptually identical. In particular, they both include the verbal element ‘RHINO’, which will be perceived by the relevant public as ‘rhinoceros’. Furthermore, the figurative element representing a rhinoceros in the contested sign reinforces the word element.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees (including those found to be similar to a low degree, as it is considered that the significant similarity between the marks is sufficient to compensate for the low degree of similarity between some of the goods) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

Francesca CANGERI SERRANO

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.