OPPOSITION No B 2 435 728
Kiko S.p.A., Via Giorgio e Guido Paglia, 1/D, 24122 Bergamo (BG), Italy (opponent), represented by Barzano’ & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)
a g a i n s t
Chris Chon, 8521 Beech Tree Road, Bethesda, Maryland 20817, United States of America (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative).
On 22/09/2017, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
European Union trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods on which the opposition is based are the following:
Class 3: Body and skin care and beauty preparations (not for medical purposes);milks, tonics, lotions, creams, emulsions, gels for the face and body; non-medicated cleansing preparations for the face and body; skin astringents not for medical purposes; body mist; non-medicated foot baths, depilatory creams; pumice stones for personal use; soaps; bubble bath; shower creams and gels; skin exfoliating products; make-up removing preparations for the face; talcum powder; shampoos; hair lotions, oils, conditioners and repair preparations; hair dyes; hair spray, gel and mousse; hair brighteners; hair mascaras; shaving creams and gels; after-shave gels and lotions; perfumery; deodorants for personal use; essential oils; bath beads; bath oils and salts; cosmetics; masks; foundation cream; blush; bronzing powder; make up powder; facial shimmer preparations; mascara; eyeliners; cosmetic eye and lip pencils; eye shadows; lip balms; lip gloss; lipsticks; makeup removing preparations; nail polish; nail forms; false nails; nail polish remover; cuticle creams; preparations for strengthening nails; non-medicated concealer sticks; body glitter; sun-tanning lotions and creams for the face and body; fake tan lotions and creams for the face and body; sunscreen creams; aftersun lotions and creams for the face and body.
The contested goods are the following:
Class 3: Cosmetics; nail polish and nail care preparations; blush; blush pencils; eye cream; eye pencils; eye shadow; facial cleansers; foundations; lip gloss; lipstick; mascara; shower gels; skin cream.
The contested cosmetics; nail polish and nail care preparations; blush; blush pencils; eye cream; eye pencils; eye shadow; facial cleansers; foundations; lip gloss; lipstick; mascara; shower gels; skin cream are identically contained in both lists or, in any case, included in the broad category of the opponent’s cosmetics. Therefore, these goods are identical.
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.
Earlier trade mark
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 word mark consisting of the four-letter word ‘KIKO’, which has no identifiable separate components. Part of the public in the relevant territory may perceive it as a nickname (e.g. the Portuguese- and Bulgarian-speaking parts of the public) or as a type of snack (the Spanish-speaking part of the public). In any case, the word does not have any connection with the relevant goods; therefore, it has an average degree of distinctiveness.
The contested sign is the word mark ‘KOKIE’, which will be perceived by the Lithuanian-speaking part of the public as meaning ‘what’, which has no connection with the relevant goods. For the rest of the public, the word has no meaning. In either case, the element has an average degree of distinctiveness.
Because they are word marks, neither of the marks has any dominant element (more eye-catching than the others).
Visually, the signs coincide in the letters ‘K*K*’. Both signs also contain the letters ‘I’ and ‘O’; however, they appear in reverse order. Moreover, the marks differ in the additional letter ‘E’ of the contested sign.
The verbal elements contained in the signs under comparison are rather short words. The length of words may influence the effect of the differences between them. The shorter the word, the more easily the public is able to perceive all of its letters.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sounds of the syllables ‛KO’ and ‘KI’, present in both signs but in different positions. The pronunciation differs in the sound of the letter ‛E’ of the contested sign, which has no counterpart in the earlier mark.
It cannot be excluded that part of the public will pronounce the letters ‘KIE’ of the contested sign identically to ‘KI’, the first syllable of the earlier mark (e.g. the English- and French-speaking parts of the public). For this part of the public, the signs are composed of the same syllables in reverse order, and, therefore, they have a slightly higher degree of similarity.
Therefore, the signs are considered aurally similar to at most an average degree.
Conceptually, reference is made to the observations made above regarding the semantic content conveyed by the marks. For the parts of the public that perceive one of the marks as having a meaning, the signs are not conceptually similar.
For the part of the public that does not associate the earlier mark with any meaning, the signs are not conceptually similar, because only one of the marks will be associated with a concept.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The relevant goods are considered identical and they target the public at large. The degree of attention paid by consumers is average and the earlier mark has a normal degree of distinctiveness.
As regards the signs, the letter sequences ‘KI’ and ‘KO’, which together form the entirety of the earlier mark, are also present in the contested sign. However, these commonalities are of such a nature as to lead to only a low degree of visual similarity and at most an average degree of aural similarity (even taking into consideration the part of the public that will not pronounce the additional letter ‘E’ in the contested mark). Moreover, as explained in section c) of this decision, the marks do not have any concept in common for part of the public and are not conceptually similar for the other parts of the public.
In particular, as explained above, the signs are visually similar to a low degree, due to the different positions of the letters that they have in common and to the additional letter ‘E’ of the contested sign. These differences have even more weight in the light of the fact that the marks are relatively short signs.
With regard to the aural aspect of the comparison, the Opposition Division acknowledges the presence of a certain assonance between the marks, at least for part of the public. Nonetheless, the additional and differing elements of the contested sign are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks. The goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see, in this regard, 15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore, in the present case, the visual differences between the signs have a stronger impact than the (in any case limited) aural commonalities.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the differences between the signs are so apparent that they cannot be overcome by the identity between the relevant goods.
In view of the above, the opposition is not well founded in relation to earlier European Union trade mark registration No 7 474 059 and, therefore, must be rejected.
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
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.