OPPOSITION No B 2 271 180

Make Up For Ever (société anonyme), 5, rue La Boétie, 75008 Paris, France (opponent), represented by Promark, 62 Avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Forever 21 Inc., 3880 North Mission Road, Los Angeles, California 90031, United States of America (applicant), represented by Reed Smith LLP, Von-der-Tann-Straße 2, 80539 Munich, Germany (professional representative).

On 16/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 271 180 is upheld for all the contested goods, namely:

Class 3: Cosmetics; eyebrow cosmetics; rouges; lip liner; lipsticks; eye-liners, mascara; nail polish; make-up; blushers; eye shadows; Eau de cologne; foundations; shaving gels; additives for cosmetic baths; beauty creams; body lotions; body milks; shower creams; sun-block lotions; suntan creams; skin lotions; cosmetic creams for skin care; deodorants for personal use; cold creams; hair lotions; astringents for cosmetic purposes; cosmetic skin fresheners; facial beauty masks; facial beauty patches; skin moisturizer masks; bath soap; shampoos; facial washes; cosmetic soaps; cosmetic products for the face and body, namely, artificial fingernails, fingernail decals, and false eyelashes; perfumery; compacts containing makeup; cosmetic brush cleaners, cotton puffs for cosmetic purposes, cosmetic facial blotting papers; pre-moistened cosmetic tissues.

2. European Union trade mark application No 11 981 917 is rejected for all the contested goods. It may proceed for the remaining uncontested goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 981 917 for the word mark ‘FOREVER 21’, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 3 416 443 for the word mark ‘MAKE UP FOR EVER’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 14/12/2016 the Office suspended the present opposition proceedings because the earlier mark EUTM No 3 416 443 was under cancellation proceedings No 8843 C. Since the application for invalidity of the earlier mark had been withdrawn, the suspension was lifted on 20/09/2018.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. However, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 416 443 for the word mark ‘MAKE UP FOR EVER’.

The contested application was published on 30/08/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 30/08/2008 to 29/08/2013 inclusive.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely all the goods in Class 3. In this regard it should be noted that the earlier mark EUTM No 3 416 443 was partially revoked following the final decision of 04/08/2014 of the Cancellation Division in case No 6548 C. Accordingly the remaining goods on which the opposition is based and for which the use must be proven are the following:

Class 3: Skin-whitening creams and powders, make up foundations, cosmetics for eye-lashes, false eyelashes, adhesives for affixing false eyelashes, transfers (decorative -) for cosmetic purposes, cosmetics, eyebrow pencils, creams (cosmetic -), make-up, make-up, milk for cosmetic use, lotions for cosmetic purposes, make-up, cosmetic masks, cosmetic kits, pomades for cosmetic purposes, face powder, lipstick, cosmetic goods for care of the skin, eyebrow cosmetics, eyebrow pencils, toiletries.

On 17/08/2015, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 22/10/2015 to submit evidence of use of the earlier trade marks. This time limit was extended until 22/12/2015 following the opponent’s request. On 22/10/2015 and 28/10/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Extracts from the website www.makeupforever.com:

• 4 online articles dated 26/08/2013, 02/08/2013, 01/10/2013 and 11/10/2013, relating, inter alia, the history of the cosmetics brand ‘MAKE UP FOR EVER’, from its creation in 1984 (Annex No 2).

• Location and addresses of ‘MAKE UP FOR EVER’ retail stores and other stores, such as Sephora, where ‘MAKE UP FOR EVER’ products are sold, in various European countries, such as Austria, Belgium, the Czech Republic, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Lithuania, Poland, Portugal, Romania, Spain, Sweden and the United Kingdom. This document is undated (Annex No 3).

• Cover pages of the bilingual (English/French) seasonal ‘Color Chart’ dated Fall-Winter 2010, Spring-Summer 2011, Fall-Winter 2011-2012, Spring-Summer 2012, Spring-Summer 2013, Spring-Summer 2014 and Fall-Winter 2014 (Annex No 4), and the entire catalogue ‘Color Chart Spring-Summer 2011’ showing a wide range of cosmetic products and accessories marketed under the brand ‘MAKE UP FOR EVER’ (clearly visible on the catalogue and on many of the featured products, often with the additional terms ‘PROFESSIONAL’ and ‘PARIS’) (Annex No 5).

• Printouts from online pages (the name of the website is not revealed) showing examples of ‘MAKE UP FOR EVER’ products (lip gloss, lipstick, concealer, loose powder, eye shadow, eyebrow pencil, eye pencil, blush brush, etc) with their descriptions and reference numbers. The trade mark ‘MAKE UP FOR EVER’ is clearly visible on each product (Annex No 6).

• Invoices issued by the company ‘MAKE UP FOR EVER’ to clients/distributors in Belgium, France, Germany, Ireland, Italy, Spain, the United Kingdom, Austria, Latvia, Lithuania and Sweden (Annex No 7). The majority of the invoices are dated within the relevant period. For example, for France, 17 invoices are provided, dated between 24/03/2009 and 11/01/2012 for the amounts between EUR 222 407 and EUR 953 018. The sign ‘MAKE UP FOR EVER’ is visible on the top of each invoice.

• Bilingual (English/French) brochure ’25 years of magic’ dated 2009 and published for the 25^th anniversary of the brand ‘MAKE UP FOR EVER’ showing various make-up products bearing the trade mark ‘MAKE UP FOR EVER’ such as eye shadows, powders, lip gloss, etc (Annex No 8).

• A large number of press and magazine clippings and advertisements of the ‘MAKE UP FOR EVER’ products published within the European Union between 2011 and 2014 (Annexes Nos 9, 10 and 11).

• ‘Situation Média’ – 8 studies, in French, of the brand’s ‘MAKE UP FOR EVER’ media situation in France in the second half of 2008, the first and the second half of 2010, 2011 and 2012, and the first half of 2013. They are accompanied by a partial translation into English. The studies describe the evolution of the media coverage of the brand and show an important advertising effort on the part of the opponent (Annexe No 12).

• Printouts dated 10/02/2015 of 3 online articles in English about ‘MAKE UP FOR EVER’ products published on the websites www.her.ie (article published ‘6 days ago’ – outside the relevant period), www.beaut.ie (article dated 05/02/2015 – outside the relevant period), www.irishmirror.ie (undated) (Annex No 13).

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. For example, the applicant claims that the invoices alone are not able to show sufficient use of the earlier mark.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Moreover, the applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, invoices, and either their self-explanatory character or the possibility to identify the goods thanks to other items of evidence submitted by the opponent, the Opposition Division considers that there is no need to request a translation.

The Opposition Division notes that the description of the products in Annex No 7 are in English or French and in many cases it can be easily deduced that the invoices concern the sale of make-up products (e.g. lip gloss, eye shadow, lipstick, etc). In relation to the other products, where the description is not clear, the reference number can be matched with the codes appearing in the ‘Color Charts’ in Annex No 5 or in the product presentation in Annex No 6 (e.g. number 37835 ‘FDT High Definition 30ml Nº 145’ corresponds to the product ‘HD Foundation Invisible Cover Foundation, 30 ml’, shown on page 6 of the catalogue in Annex 5).

Place of use

The documents listed above, in particular the invoices and press clippings, show that the place of use is the European Union. This can be inferred from the languages of the documents (mainly English and French), the currency mentioned in the invoices (euros) and the references to various locations in the European Union.

Therefore, the evidence relates to the relevant territory.

Time of use

Most of the invoices, catalogues, press clippings and other pieces of evidence are dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use after the relevant period, namely some of the invoices, press articles and cover pages of catalogues, confirms use of the opponent’s mark within the relevant period. This is because it shows continuity in the trade mark’s use and that the use it refers to is close in time to the relevant period.

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Contrary to the applicant’s arguments, the evidence filed by the opponent, in particular the invoices and the catalogues, together with the statutory declarations, provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The opponent submitted a number of invoices, dated between 2009 and 2014, for a significant total amount, which demonstrate that the earlier mark has been used intensively. The invoices show use of the EUTM in several Member States of the European Union. Moreover, the invoices should be seen in the context of other pieces of evidence, such as a substantial number of press clippings confirming the presence of ‘MAKE UP FOR EVER’ products on the European market and the documents in Annex No 12 reflecting an important advertising effort made by the opponent.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR (former Article 15(1), second subparagraph, point (a) EUTMR, in force before 01/10/2017), and of its use for the goods and services for which it is registered.

In the present case, the earlier mark has been used in relation to the specific goods offered by the opponent, as can be seen on the images of products in the catalogues and some press clippings. For example:

The applicant refers to the use of the earlier sign as a ‘mere company name’. However, even though the sign ‘MAKE UP FOR EVER’ appears on the invoices as a company name, this does not preclude its use as a mark to designate goods (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 38). It is clear especially from the remaining pieces of evidence that the earlier mark has been affixed to the goods.

Taking into account the foregoing, the Opposition Division considers that the evidence shows use of the sign as a trade mark, that is, in accordance with its function.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence, for instance the catalogue, some articles and press clippings, contains sufficient indications concerning the use of the mark in the form in which it was registered, i.e. as a word mark ‘MAKE UP FOR EVER’. The additions, such as ‘PROFESSIONAL’ and ‘PARIS’, are descriptive indications and, therefore, they do not alter the distinctiveness of the earlier mark.

Furthermore, the evidence shows use of the opponent’s mark in figurative forms, as presented in the following images:

Contrary to the applicant’s arguments, this constitutes an acceptable variation of the registered form, because the word element ‘MAKE UP FOR EVER’ is the same, the additional words ‘PROFESSIONAL’ and ‘PARIS’ are non-distinctive additions, and the stylisation and/or figurative elements play only a minor role, being merely decorative, or not particularly distinctive, as is the case of the image of the lips with a brush in relation to make-up products which indicate the type of goods (lipsticks) and their application (by a brush). Therefore, the distinctive character of the sign as registered is not affected.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Finally, as regards the use of the mark in relation to the goods for which it is registered, it is apparent that the opponent marketed different types of cosmetic products. The goods such as such as primers, concealers, foundations, compact powders, loose powders, blushes, sealers, eye shadows, mascaras, eyebrow pencils, eyebrow kits, false lashes, eyelashes glue, eyeliners, make-up cleansing products (e.g. moisturizing cleansing cream, milk and lotion), lipsticks, gloss, lip liners, lip balms, glitters, strass, powders, gels, flash colours, coloured fluids and creams, special effects make-up products such as whitening creams and powders appear in the catalogue in Annex No 5. At least some of them can also be found in the invoices in Annex No 7 and in other items of evidence, such as in some of the press articles in Annexes Nos 8-11.

The earlier mark is registered for some of the specific goods listed above, namely skin-whitening creams and powders, make up foundations, false eyelashes, adhesives for affixing false eyelashes, transfers (decorative -) for cosmetic purposes, eyebrow pencils, milk for cosmetic use, lotions for cosmetic purposes, face powder, lipstick and eyebrow pencils, as well as some broader categories to which these particular goods belong, namely, cosmetics for eye-lashes, cosmetics, creams (cosmetic -), make-up, cosmetic masks, cosmetic kits, pomades for cosmetic purposes, cosmetic goods for care of the skin, eyebrow cosmetics and toiletries.

According to case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub category or sub categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition. Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub categories (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and 46).

As the opponent is not required to prove all the conceivable variations of the broad categories of goods for which the earlier mark is registered and as the goods for which use has been proven in the present case do not constitute a coherent subcategory within the broad categories in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark not only for the specific goods, but also for various broader categories from the specification to which these specific goods belong.

Conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory in relation to all the goods for which the earlier mark is registered.

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: Skin-whitening creams and powders, make up foundations, cosmetics for eye-lashes, false eyelashes, adhesives for affixing false eyelashes, transfers (decorative -) for cosmetic purposes, cosmetics, eyebrow pencils, creams (cosmetic -), make-up, make-up, milk for cosmetic use, lotions for cosmetic purposes, make-up, cosmetic masks, cosmetic kits, pomades for cosmetic purposes, face powder, lipstick, cosmetic goods for care of the skin, eyebrow cosmetics, eyebrow pencils, toiletries.

The contested goods are the following:

Class 3: Cosmetics; eyebrow cosmetics; rouges; lip liner; lipsticks; eye-liners, mascara; nail polish; make-up; blushers; eye shadows; Eau de cologne; foundations; shaving gels; additives for cosmetic baths; beauty creams; body lotions; body milks; shower creams; sun-block lotions; suntan creams; skin lotions; cosmetic creams for skin care; deodorants for personal use; cold creams; hair lotions; astringents for cosmetic purposes; cosmetic skin fresheners; facial beauty masks; facial beauty patches; skin moisturizer masks; bath soap; shampoos; facial washes; cosmetic soaps; cosmetic products for the face and body, namely, artificial fingernails, fingernail decals, and false eyelashes; perfumery; compacts containing makeup; cosmetic brush cleaners, cotton puffs for cosmetic purposes, cosmetic facial blotting papers; pre-moistened cosmetic tissues.

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.

All the contested goods belong to the same sector of cosmetics and perfumery as the opponent’s goods. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods or that they are even identical, these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold in the same places through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that all the contested goods are at least similar to a low degree to the opponent’s cosmetics.

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 at least similar to a low degree are directed at the public at large whose degree of attention is average.

The Opposition Division considers that fact that the relevant goods could also be used by professionals, as claimed by the applicant, does not imply a higher degree of attention. As correctly pointed out by the opponent, an average degree of attention of the public in relation to Class 3 goods has been confirmed by the General Court in a more recent case (03/06/2015, T 559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 25) than the Boards’ of Appeal decisions quoted by the applicant (12/02/2015, R686/2014-2, LIFORME / LYSOFORM (fig. mark) et al.; 14/11/2014, R611/2014-5, BALNAÏS (fig. mark) / BALMAIN (fig. mark)).

3. The signs

MAKE UP FOR EVER	FOREVER 21
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 the earlier mark ‘MAKE UP FOR EVER’ and the contested sign ‘FOREVER 21’ are word marks.

The element ‘MAKE UP’ included in the earlier word mark will be understood across the European Union as referring to cosmetics such as lipstick or powder applied to the face, used to enhance or alter the appearance. Even though this term is of English origin (see Oxford English Dictionary at https://en.oxforddictionaries.com/definition/make-up), it has become part of the vocabulary of other European languages, such as for instance Latvian, Lithuanian, Polish and Romanian. Since the relevant goods are cosmetics, this element is considered non distinctive, since it describes their kind and purpose, namely they are make-up products.

The remaining element of the earlier mark, ‘FOR EVER’, is also an English expression meaning ‘for always, for a very long time’ (information extracted from Oxford English Dictionary on 11/01/2019 at https://en.oxforddictionaries.com/ definition/forever). However, in contrast with ‘MAKE UP’, it is not likely to be understood by the public in the parts of the European Union where English is not commonly spoken. Accordingly, while the earlier mark will be understood by the English-speaking public as a meaningful expression, with and extremely limited distinctiveness, if any, referring to a long-lasting make-up, the non-English-speaking public will perceive it as a combination of a descriptive element ‘MAKE UP’ and the meaningless component, ‘FOR EVER’, which has an average degree of distinctiveness. Likewise, the contested sign’s element ‘FOREVER’ is meaningless and distinctive to an average degree for the non-English-speaking part of the public.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Latvian, Lithuanian, Polish and Romanian public.

As regards the second element of the contested sign, namely the number ‘21’, it has to be noted that numbers are commonly used on cosmetic and perfumery products to indicate the shade (for example, of a make-up foundation, an eye-shadow or a nail polish), scent (for example, of a perfume) or target group (young adults in case of the number 21). Therefore, in relation to the relevant goods, the element ‘21’ is likely to be perceived as a descriptive or at most an allusive indication. Consequently, its distinctiveness is, at best, low.

Visually and aurally, the signs coincide in the sequence of the letters ‘FOR/EVER’, placed in the same order, but separated into two words in the earlier mark. They differ in the non-distinctive element ‘MAKE UP’ of the earlier mark and the - at most - lowly distinctive number ‘21’ in the contested sign, pronounced accordingly in the relevant language concerned.

Therefore, taking into account the commonalities between the signs and the degrees of distinctiveness of their elements, the signs are considered to be visually and aurally similar to at least an average degree.

Conceptually, the common element ‘FOR/EVER’ has no meaning for the relevant public on which the present comparison focuses, while both signs contain different meaningful elements, namely ‘MAKE UP’ and ‘21’. Although it leads to the signs being not similar conceptually, this has a limited impact in the overall assessment, because the conceptual difference is due to the presence of non-distinctive or weak elements in the signs.

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 on which the present examination focusses, namely the non-English-speaking part of the public. Therefore, contrary to the applicant’s arguments, the distinctiveness of the earlier mark must be seen as normal and not as low, despite the presence of a non‑distinctive element ‘MAKE UP’ in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods in conflict are at least similar to a low degree. They are directed at the public at large whose degree of attention is average. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to at least an average degree on account of the elements ‘FOR EVER’ in the earlier mark and ‘FOREVER’ in the contested sign which play an independent and distinctive role within both marks. The differences between the signs are confined to the non-distinctive element ‘MAKE UP’ in the earlier mark and the, at most, weak element ‘21’ in the contested sign. For the part of the relevant public for which the comparison of the signs has been carried out, the common elements are meaningless and the conceptual difference between the remaining elements is not particularly relevant since these elements are non-distinctive or weak. Moreover, account has 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; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Under these circumstances, it is considered that the similarities between the signs overweight the differences, in the context of goods at least similar to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public, such as the Latvian, Lithuanian, Polish and Romanian 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 EUTM registration No 3 416 443 ‘MAKE UP FOR EVER’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier mark EUTM No 3 416 443 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Nicole CLARKE

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

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.