OPPOSITION No B 2 583 857
Hayat Kimya Sanayi A.S., Mahir Iz cad. No. 23, Altunizade, Üsküdar, Istanbul, Turkey (opponent), represented by Bojinov & Bojinov Ltd., 38 Alabin Str., 1000 Sofia, Bulgaria (professional representative)
a g a i n s t
Parfümerie Douglas GmbH, Kabeler Str. 4, 58099 Hagen, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).
1. Opposition No B 2 583 857 is upheld for all the contested goods.
2. European Union trade mark application No 12 235 751 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 958 021. The opposition is based on, inter alia, Bulgarian trade mark registration No 76 919. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Bulgarian trade mark registration No 76 919.
The goods on which the opposition is based are the following:
Class 3: Detergents, fabric softeners for laundry detergents, preparations for bleaching, detergents in liquid or gelatinous form, cleaners, shampoos, soaps, cosmetics.
The contested goods are the following:
Class 3: Soaps, soap substitutes, perfumery, in particular eau de parfum, eau de toilette, aftershave, essential oils, cosmetics, deodorising preparations for personal use, in particular deodorants, skin oils, skin creams and skin lotions, sunscreens, in particular sun oils, sun cosmetics; Face creams for cosmetic use; Shower and bath gel, cosmetic foam baths and shower baths, bath preparations; Hair lotions; Dentifrices; Products for the care, beauty and cleaning of the hair; Hair dyeing preparations; Preparations for the cleaning, care and conditioning of teeth; Decorative cosmetics; Lipsticks, eyeshadow, make-up, mascara, enamel for nails, eyeliner; Preparations used in shaving, hair removal preparations; Cosmetics kits (filled).
Class 21: Cosmetic brushes; Brushes (except paintbrushes); Toothbrushes; Brushes for cleaning the face.
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 applicant'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).
By applying common sense, the Opposition Division considers that although there are no semicolons used in the applicant’s list in Class 3 to separate different conceptual values, it is obvious from the list that not all the contested goods placed after the expression of ‘in particular’ are examples. Therefore the list of goods must be interpreted as the applicant’s intention to separate parts of a sentence that have different conceptual values.
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 soaps and cosmetics are identically contained in both lists of goods.
The contested perfumery, in particular eau de parfum, eau de toilette, aftershave are similar to a high degree to the opponent's cosmetics as they have the same purpose. They can coincide in producer, end user and distribution channels.
The contested essential oils are similar to the opponent’s cosmetics as they have the same purpose. They can coincide in end user and distribution channels.
The contested deodorising preparations for personal use, in particular deodorants, skin oils, skin creams and skin lotions, sunscreens, in particular sun oils, sun cosmetics are included in the broad term of cosmetics. The goods are identical.
The contested soap substitutes; face creams for cosmetic use; shower and bath gel, cosmetic foam baths and shower baths, bath preparations; hair lotions; Products for the care, beauty and cleaning of the hair; Hair dyeing preparations; Lipsticks, eyeshadow, make-up, mascara, enamel for nails, eyeliner; decorative cosmetics; preparations used in shaving, hair removal preparations; cosmetics kits (filled) fall under the broad category of the opponent's cosmetics. The goods are therefore identical.
The contested dentifrices; preparations for the cleaning, care and conditioning of teeth are similar to a low degree to the opponent's cosmetics as they can coincide in end user and distribution channels.
Contested goods in Class 21
The contested cosmetic brushes; brushes (except paintbrushes); brushes for cleaning the face are beauty tools used for the application of make up or for cleaning the face or teeth. These goods are highly similar to the opponent’s cosmetics as they have the same purpose. Moreover, they will be sold in the same outlets and distributed via the same means and targeted at the same public. Furthermore, they have a complementary nature with the opponent’s goods.
There is a low similarity between the contested toothbrushes and the opponent’s cosmetics because these goods may be manufactured by the same companies, may be used by the same consumers and may be bought from the same shop or from the same area in supermarkets.
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 average.
Test to Love
Earlier trade mark
The relevant territory is Bulgaria.
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).
Both marks are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
The word 'TEST' included in both marks, will be perceived by the public in the relevant territory as ‘examination designed to test a person or thing’ or a series of questions or problems designed to test a skill or knowledge. A part of the public that understands English may also perceive the word ‘TEST’ with its English meaning, namely as a verb meaning ‘to try’.
The English wording 'to love' of the contested mark will be seen by a part of the Bulgarian speaking public with basic knowledge of English as a verb meaning, among others, ‘to have a great attachment to or affection for’ (Collins English Dictionary online). For the remaining part of the public, this term is meaningless.
In the present case, the comparison will focus on the considerable part of the public for which the word ‘TEST’ refers to examination designed to test a person or thing or to a series of questions or problems designed to test a skill or knowledge and for which the word ‘to love’ has no meaning. For this part of the public none of the verbal elements has any particular meaning in relation to the goods at hand and these elements are therefore considered to be distinctive.
Neither of the marks has elements that could be considered clearly more distinctive than other elements.
As the marks under comparison are word marks, they also have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the word ‘TEST’ which is the only element of the earlier mark and it is entirely included at the beginning of the contested mark. The marks differ in the additional wording 'to love' of the contested mark.
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the marks are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‛TEST’, present at the beginning of both signs. The pronunciation differs in the sound of the additional wording ‛to love'.
The signs are aurally similar to an average degree.
Conceptually, the relevant part of the public will perceive the word ‘TEST’ as ‘examination designed to test a person or thing’ or a series of questions or problems designed to test a skill or knowledge The word ‘to love’ has no meaning for this part of the public. Consequently', the signs are conceptually similar to an average degree as they both refer to a ‘test’.
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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. The meaning of the word ‘TEST’ is not descriptive or lacking distinctiveness for the relevant goods in Class 3 for part of the relevant public in the relevant territory; it does not describe or allude to any of their essential characteristics. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
The goods under comparison are partially identical and partially similar to various degrees. The signs are visually and aurally similar to an average degree on account of the coinciding word ‘TEST’ which is distinguishable in both signs and plays an independent role within them. Therefore, given the reproduction of the word ‘TEST’ in its entirety as a distinctive and clearly identifiable element in both signs, it is very likely that the relevant public will at least associate the contested sign 'Test to Love' with the earlier mark ‘TEST’. Moreover, the element 'TEST' will establish a conceptual link between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the Bulgarian trade mark registration No 76 919. It follows that the contested trade mark must be rejected for all the contested goods.
As the abovementioned earlier right 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 (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Adriana VAN ROODEN
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.