OPPOSITION No B 2 323 643

Bora Creations S.L., Calle Rey Sancho, 7, Local 3, 07180 Santa Ponsa, Mallorca, Spain (opponent), represented by Wilmer Cutler Pickering Hale and Dorr LLP, Ulmenstr. 37-39, 60325 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Essential Nail Products Ltd, Manor Road, Haverhill CB9 0EP, United Kingdom (applicant), represented by Loven Patents & Trademarks Limited, 51 Wragby Road, Sudbrooke, Lincoln Lincolnshire LN2 2QU, United Kingdom (professional representative).

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

DECISION:

1. Opposition No B 2 323 643 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 236 204, namely against all the goods and services in Classes 1, 3, 8, 9, 16, 20, 21 and 41. The opposition is based on European Union trade mark registration No 9 124 421. 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.

1. The goods and services

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

Class 3: Hair colorants and hair tinters, soaps, perfumery, essential oils, cosmetics, hair lotions, preparations for cleaning, care and beautification of the skin, scalp and hair, decorative cosmetics, false eyelashes, nail care products (included in class 3), nail varnishes, nail varnish removers, products for modelling and making false fingernails (included in class 3).

Class 4: Candles, scented candles (included in class 4).

Class 8: Hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers.

Class 14: Costume jewellery.

Class 16: Stationery, paper, cardboard and goods made from these materials, not included in other classes.

Class 21: Combs and brushes (except paint brushes), cosmetic sponges, brushes for cosmetics.

Class 25: Clothing, footwear, headgear.

Class 26: Hair ornaments, in particular hair slides, hair bands, hair rings.

Class 35: Sale and marketing of cosmetic products.

The contested goods and services are the following:

Class 1: Acrylic monomers and polymers for creating and maintaining artificial nails; resin preparations for creating and maintaining artificial nails; activator preparations for use with artificial nails; none of the aforesaid relating to energy.

Class 3: Hand and nail care preparations; hand cream; artificial nail care preparations; artificial nails and nail tips; adhesives for fixing artificial nails; nail polishes and varnishes; UV gel nail polishes; airbrush nail polishes and varnishes; nail polish and nail varnish removers; gel preparations for creating and maintaining artificial nails; acrylic primers for creating and maintaining artificial nails; preparations and wraps for removing and soaking off artificial nails and gel nails; preparations for use on the cuticles and nail surrounds; emery boards; toe separators; nail care kits; nail art stencils; self-adhesive nail stickers; decorative nail transfers and glitter; foil nail art wraps; adhesives for applying nail art and nail tip extensions; skin jewels, including glitter and diamante; body art paint; body art stencils; tooth jewels; cleaning preparations for nail brushes; cotton wool for cosmetic use; wipes for cosmetic use; artificial tanning preparations; sun-tanning and sun protection preparations; after-sun preparations; false eye lashes; cosmetics; massage oils; cosmetic bags; none of the aforesaid relating to energy.

Class 8: Hand tools and implements (hand operated) for applying artificial nails; hand tools and implements (hand operated) for decorating nails; tweezers; scissors; nail scissors; manicure sets; pedicure sets; nail clippers; nail files; nail buffers for use in manicure; cuticle pushers; hand held airbrushes for painting natural and artificial nails; hand held airbrushes for applying body art and self-tanning preparations; parts and fittings for the aforesaid goods; none of the aforesaid relating to energy.

Class 9: Teaching apparatus and instruments; computer software; videos; DVDs and other digital recording media; CDs; UV lamps and lightboxes for use in manicures and curing nail resins; none of the aforesaid relating to energy.

Class 16: Printed matter; books; manuals; instructional and teaching materials (expect apparatus); progress and information cards; adhesives; art stencils for use on finger nails; gift vouchers; client consultation cards; posters; wall art; none of the aforesaid relating to energy.

Class 20: Furniture; portable manicure tables; mirrors; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; model hands for training beauticians and nail technicians; nail polish holders (to prevent spillage); paint pallets (of plastic); dual-end wood sticks for cosmetic use; none of the aforesaid relating to energy.

Class 21: Nail and manicure brushes; glass bowls; storage jars and containers; soaking bowls; bowls for use in manicure; fibreglass preparations for creating and maintaining artificial nails; none of the aforesaid relating to energy.

Class 41: Education; provision of training; academy education and tuition services; teaching and instructional services; provision of classes, workshops and training programs; provision of home study training courses; production of sound and video recordings for educational purposes; publication of online instructional and educational publications; provision of information, advisory and consultation services relation to the foregoing; none of the aforesaid relating to energy.

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

The term ‘in particular’, used in the opponent’s list of goods and the term ‘including’, used in the applicant’s list of goods indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 1

The contested acrylic monomers and polymers for creating and maintaining artificial nails; resin preparations for creating and maintaining artificial nails; activator preparations for use with artificial nails; none of the aforesaid relating to energy are similar to products for modelling and making false fingernails (included in class 3) in Class 3 of the earlier mark. They can all have the same purpose of providing durable artificial nails and can have the same user and the same channels of trade. According to the GUIDELINES FOR EXAMINATION OF EUROPEAN UNION TRADE MARKS, EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE (EUIPO), Part C, Double Identity and Likelihood of Confusion — Comparison of Goods and Services, Page 44, Class 1 can contain goods that are not mere chemicals but are semi-finished or even finished products with a specific purpose of use which could be the case regarding the abovementioned goods in Class 1, giving them a similar nature to the products for modelling and making false fingernails (included in class 3) in Class 3 of the earlier mark.

Contested goods in Class 3

The contested cosmetics and false eye lashes; none of the aforesaid relating to energy are included in the broad headings cosmetics and false eyelashes in Class 3 of the earlier mark and are thus identical.

The contested hand and nail care preparations; hand cream; artificial nail care preparations; artificial nails and nail tips; wipes for cosmetic use; artificial tanning preparations; sun-tanning and sun protection preparations and after-sun preparations; none of the aforesaid relating to energy are all included in cosmetics of the earlier mark and these goods are identical.

The contested massage oils not relating to energy overlap with essential oils of the earlier mark as essential oils can be used for massage purposes. Thus they are identical.

The contested cosmetic bags not relating to energy overlap with cosmetics of the earlier mark. Thus these goods are identical.

The contested nail polishes and varnishes; none of the aforesaid relating to energy are included in the broad category nail varnishes of the earlier mark as nail varnish is the same as nail polish, as seen in the definition of nail varnish in the Collins English dictionary at http://www.collinsdictionary.com/dictionary/english/nail-varnish.

The applicant’s UV gel nail polishes; airbrush nail polishes and varnishes; none of the aforesaid relating to energy are included in the broad category of nail varnishes of the earlier mark and thus these goods are identical.

The contested nail polish and nail varnish removers, preparations for use on the cuticles and nail surrounds, emery boards, nail care kits, gel preparations for creating and maintaining artificial nails; acrylic primers for creating and maintaining artificial nails, adhesives for fixing artificial nails, preparations and wraps for removing and soaking off artificial nails and gel nails; adhesives for applying nail art and nail tip extensions; none of the aforesaid relating to energy are included in the broad category nail care products of the earlier mark. Therefore these goods are identical.

The contested nail art stencils; self-adhesive nail stickers; decorative nail transfers and glitter; foil nail art wraps; body art paint and body art stencils; none of the aforesaid relating to energy are included in decorative cosmetics in Class 3 of the earlier mark and thus these goods are identical.

The contested skin jewels, including glitter and diamante and tooth jewels; none of the aforesaid relating to energy are highly similar to costume jewellery in Class 14 of the earlier mark as they have the same purpose of adornment. They can have the same end user and producer and the same distribution channels.

The contested cotton wool for cosmetic use; not relating to energy is similar to cosmetics of the earlier mark as they can coincide in producer, end user and distribution channels.

The contested toe separators not relating to energy are similar to nail care products in Class 3 of the earlier mark as they are they are often used in applying nail varnish. They can have the same end user, the same channels of trade and the same end purpose of successfully polishing one’s toe nails.

The contested cleaning preparations for nail brushes not relating to energy are similar to nail care products of the earlier mark as these goods have the same end user and can have the same distribution channels.

Contested goods in Class 8

The contested hand tools and implements (hand operated) for applying artificial nails; hand tools and implements (hand operated) for decorating nails; tweezers; scissors; nail scissors; manicure sets; pedicure sets; nail clippers; nail files; nail buffers for use in manicure; cuticle pushers; hand held airbrushes for painting natural and artificial nails; none of the aforesaid relating to energy are included in the broad category hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers in Class 8 of the earlier mark, with tweezers, nail scissors and nail files being specifically mentioned in both specifications, as seen above. Thus, these goods are identical.

The contested hand held airbrushes for applying body art and self-tanning preparations; none of the aforesaid relating to energy are similar to preparations for beautification of the skin, scalp and hair and decorative cosmetics in Class 3 of the earlier sign as they are used together for the same purpose of beautifying the body. They have the same end user and can have the same distribution centres.

The contested parts and fittings for the aforesaid goods (hand tools and implements (hand operated) for applying artificial nails; hand tools and implements (hand operated) for decorating nails; tweezers; scissors; nail scissors; manicure sets; pedicure sets; nail clippers; nail files; nail buffers for use in manicure; cuticle pushers; hand held airbrushes for painting natural and artificial nails; hand held airbrushes for applying body art and self-tanning preparations); none of the aforesaid relating to energy are similar to hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers of the earlier mark as the parts and fittings of the applicant’s goods are often produced by the same undertaking that manufacturers the opponent’s goods. They have the same end purpose and the same channels of trade.

Contested goods in Class 9

The contested UV lamps and lightboxes for use in manicures and curing nail resins; none of the aforesaid relating to energy are similar to hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers in Class 8 of the earlier mark as they are used together and have the same channels of trade and the same end user. They can have the same end purpose of beautifying the nails.

The opponent’s goods in Class 3 are for beautifying the body, the candles in Class 4 have the purpose of providing light and/or a pleasant fragrance, the hand-operated implements and instruments in Class 8 are for nail care, the jewellery in Class 14 is for adorning the body and clothing. Class 16 of the opponent consists of stationery for use in writing and in offices and also contains paper and cardboard and goods made from these materials, Class 21 contains combs, brushes and sponges, Class 25 contains clothing, footwear and headgear for protecting and covering the body, Class 26 contains ornaments for adorning the hair and Class 35 consists of the sale and marketing of cosmetic products. These goods and services have no point of contact with the teaching apparatus and instruments; computer software; videos; DVDs and other digital recording media and CDs; none of the aforesaid relating to energy in Class 9 of the contested mark. They have a different nature, purpose and end user. They have different producers and are not complementary or in competition with each other. Thus, these goods and services are dissimilar.

Contested Goods in Class 16

The contested printed matter, books; manuals; instructional and teaching materials (expect apparatus); progress and information cards, gift vouchers, client consultation cards and posters; none of the aforesaid relating to energy are identical to goods made from these materials (paper and cardboard) of the opponent as the former are included in or overlap with the latter.

The contested adhesives not relating to energy overlap with stationery in Class 16 of the earlier mark as stationery includes adhesives for stationery purposes. Thus, these goods are identical.

The contested art stencils for use on fingernails not relating to energy is contained in stationery in Class 16 of the earlier mark and these goods are identical.

Wall art not relating to energy of the contested mark overlaps with goods made from these materials (paper and cardboard) of the earlier mark as this art can be in paper or cardboard form and thus these goods are identical.

Contested Goods in Class 20

The contested portable manicure tables; model hands for training beauticians and nail technicians; nail polish holders (to prevent spillage); paint pallets (of plastic); none of the aforesaid relating to energy are similar to hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers in Class 8 of the earlier mark as these goods are used together. They have the same distribution channels, the same user and the same purpose of nail care.

Similarly dual-end wood sticks for cosmetic use not relating to energy are similar to hand-operated implements and instruments for the cosmetic and decorative care of finger and toe nails, in particular nail files, emery boards, nail scissors and tweezers in Class 8 of the earlier mark as they have the same distribution channels and the same user. They are used together and have the same purpose of beautifying the body.

As stated above, the opponent’s goods in Class 3 are for beautifying the body, the candles in Class 4 have the purpose of providing light and/or a pleasant fragrance, the hand-operated implements and instruments in Class 8 are for nail care, the jewellery in Class 14 is for adorning the body and clothing. Class 16 of the opponent consists of stationery for use in writing and in offices and also contains paper and cardboard and goods made from these materials, Class 21 contains combs, brushes and sponges, Class 25 contains clothing, footwear and headgear for protecting and covering the body, Class 26 contains ornaments for adorning the hair and Class 35 consists of the sale and marketing of cosmetic products. These goods and services have no point of contact with the furniture; mirrors; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; none of the aforesaid relating to energy of the contested mark. They have a different nature, purpose and end user. These goods are dissimilar.

Contested goods in Class 21

The contested nail and manicure brushes; none of the aforesaid relating to energy are included in the broad category brushes (except paint brushes) in Class 21 of the earlier mark. Thus, these goods are identical.

The contested fibreglass preparations for creating and maintaining artificial nails; none of the aforesaid relating to energy are similar to products for modelling and making false fingernails (included in class 3) in Class 3 of the earlier mark. They can all have the same purpose of providing durable artificial nails and can be sold together in kits for making false nails. They have the same user and the same channels of trade.

The contested glass bowls, soaking bowls and bowls for use in manicure; none of the aforesaid relating to energy are similar to nail care products (included in class 3), nail varnishes and nail varnish removers in Class 3 of the earlier mark as these goods are often sold together in manicure kits. They target the same consumer, have the same purpose of caring for the nails and the same channels of trade.

The contested storage jars and containers; none of the aforesaid relating to energy are dissimilar to the opponent’s goods and services in classes 3, 4, 8, 14, 16, 21, 25, 26 and 35 described above. They have a different nature, purpose and different manufacturers or providers.

Contested services in Class 41

The contested publication of online instructional and educational publications; education; provision of information, advisory and consultation services relation to the foregoing; provision of training; academy education and tuition services; teaching and instructional services; provision of classes, workshops and training programs; provision of home study training courses; none of the aforesaid relating to energy are similar to goods made from these materials (paper), which includes books, of the earlier mark in Class 16 as they can coincide in producer. Furthermore they are complementary and have the same end purpose of providing reading material.

The contested production of sound and video recordings for educational purposes; none of the aforesaid relating to energy is dissimilar to all the goods and services in Classes 3, 4, 8, 14, 16, 21, 25, 26 and 35 of the earlier mark, described above, as it has a different nature, provider, purpose and method of use.

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 and services found to be identical or similar are directed at the public at large and some of the goods and services at issue are specialised and are directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

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 earlier mark is a figurative mark which consists of a stylised white letter ‘e’ in a black circle with shades of grey which give it a three-dimensional appearance. The letter “e” in the earlier mark and the letter or squiggle in the contested sign are distinctive.

The contested sign also consists of a black circle within which is a device which could be seen as a letter ‘e’, ‘l’ or ‘i’ or just a squiggle.

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

The device of a circle in each mark is considered to be non-distinctive as circles are often used in trademarks to bring a mark to the attention of the consumer.

Visually, part of the consumers will see the device of a letter ‘e’ in a circle in both marks. However, these devices are very different, the ‘e’ of the earlier mark being in fairly standard lettering, situated in the black circle with shades of grey whereas the ‘e’ of the contested sign is quite stylised and cuts the circumference of the black circle. Due to the grey shading, the earlier mark has a three-dimensional effect which is not present in the contested sign. Furthermore, the width of the letter ‘e’ increases and decreases in the contested sign whereas in the earlier mark the width is the same throughout the letter. Thus, for these consumers the signs are similar only to a very low degree. For the remaining consumers, who see the element in the device of the contested sign as the letter ‘i’, the letter ‘l’ or a squiggle, the signs are not similar, taking into account that the device of a circle has been found to be non-distinctive.

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 letter ‘e’ for those consumers who perceive both signs as containing the letter ‘e’ and for these consumers the signs are phonetically identical. For the consumers who view the element within the circle of the contested sign as the letter ‘i’ or the letter ‘l’, the signs are phonetically dissimilar and for the remaining consumers, as the contested sign is purely figurative, it is not possible to compare the signs aurally.

Conceptually, part of the public in the relevant territory will perceive both signs as a letter ‘e’ in a circle and for this part of the consumers the signs are identical. For the consumers who see the contested sign as a circle containing a letter ‘i’ or the letter ‘l’ and the consumers who see no letter in the contested sign, the signs are not similar, taking into account that the device of a circle has been found to be non-distinctive.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The similarities between the signs lie in the perception of a letter ‘e’ in a circle in both marks for part of the public and the level of attention of the relevant consumer is average to high. The goods and services are partly identical, partly similar and partly dissimilar.

However, as seen above, the devices in the marks are visually very different, even for those who see the letter ‘e’ in a circle in the contested sign. For this part of the public, the verbal parts of the signs each have one letter; they are consequently, short marks and it is considered that the differing portrayal of the letter ‘e’, as described above will easily be perceived and will give a different overall impression of the marks. The device of a circle in the marks has been found to be non-distinctive.

As mentioned above, the signs are visually similar only to a very low degree and the identity and similarity of some of the goods and services and the aural and conceptual identity of the marks for the part of the consumer who would perceive the letter ‘e’ in the contested sign are not sufficient to find a likelihood of confusion.

Furthermore with regard to some of the contested goods in Classes 3, 8, 9, 16, 20 and 21 the choice of the item is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Thus, the considerable visual differences between the signs caused by the different portrayal of the letter ’e’ for part of the consumers are particularly relevant when assessing the likelihood of confusion between the earlier mark and the contested sign with regard to these articles.

For the consumers who do not see the letter ‘e’ in the contested sign, the marks are not similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Deirdre QUINN

Deirdre QUINN

Ric WASLEY

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.