OPPOSITION No B 2 617 648

AC Marca Personal Care, S.L., Avenida Carrilet, 293, 08907 L'Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

Patrinove, 60 rue Duguesclin, 69006 Lyon, France (applicant), represented by Benjamin Dubuis, Cabinet Tripoz, 22 rue Seguin, Le Pôle Sud, 69002 Lyon, France (professional representative).

On 11/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 617 648 is partially upheld, namely for the following contested goods and services:

Class 5: Dietetic substances adapted for medical use, food for babies; dietary supplements containing proteins, carbohydrates, lipids and/or fibres, or micronutrients including vitamins and/or minerals, amino acids and/or fatty acids, for medical use; dietary supplements for dietetic purposes or for use as supplements for maintaining a good state of health or as part of a normal diet.

Class 35: Retailing relating to the field of dietetic substances.

2. European Union trade mark application No 14 190 417 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 190 417 ’GENOGENESE’, namely against all the goods and services in Classes 5, 35, 38, 42 and 44, and some of the goods in Class 3. Following a limitation of the list of goods and services submitted by the applicant on 13/06/2016, the opposition is directed against all the remaining goods and services in Classes 5, 35, 38 and 42.

The opposition is based on the following European Union trade mark registrations:

• No 6 399 547 ‘GENESSE’ (earlier mark 1),

• No 6 088 405 ‘LABORATORIOS GENESSE’ (earlier mark 2)

• No 6 124 432  (earlier mark 3),

and on the following Spanish trade mark registrations:

• No  1 754 468 ‘GENESSE’ (earlier mark 4),

• No 2 949 003 ‘GENESSE MED’ (earlier mark 5),

• No 3 510 865  (earlier mark 6),

• No 2 981 030  (earlier mark 7).

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK on the ownership of the earlier marks

The opposition was filed on 25/11/2015 by the company Laboratorios Genesse SL, which was the name of the owner of the earlier marks at the time of filing the opposition and at the time limit for the opponent to substantiate the earlier marks, namely on 06/04/2016. However, during the opposition proceedings, namely on 13/03/2018, the Office received a request for the recordal of a change of name of the owner of the earlier EUTMs (earlier marks 1-3) to AC Marca Personal Care SL, indicated above as the current opponent. The change of name was registered by the Office on 14/03/2018. Moreover, the Office asked the opponent for clarifications concerning the ownership of the earlier Spanish marks (earlier marks 4-7) and the opponent’s reply and evidence were forwarded to the applicant.

A change of name does not imply a change of ownership and, for the sake of clarity, AC Marca Personal Care SL does therefore not substitute the previous owner of the earlier marks but rather remains the same owner (and opponent) but with a different name.

CEASING OF EXISTENCE OF THE EARLIER RIGHTS - earlier marks 1 and 2

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

In the present case, the opposition is based on, inter alia, European Union trade mark registration No 6 399 547 ‘GENESSE’ (earlier mark 1), which was filed on 26/10/2007 and registered on 14/03/2014, and on European Union trade mark registration No 6 088 405 ‘LABORATORIOS GENESSE’ (earlier mark 2), which was filed on 10/07/2007 and registered on 20/11/2008.

However, those trade mark registrations expired on 26/10/2017 and 10/07/2017, respectively, and were not renewed within the due deadline or within the further six months following the day on which protection ended in accordance with Article 53 EUTMR.

As it is apparent from the facts stated above, the earlier marks ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must therefore be rejected as unfounded as far as it is based on these earlier marks.

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 some of the earlier marks on which the opposition is based, namely earlier marks 2, 3, 4, 5 and 7 listed above.

As indicated above, the earlier mark 2 expired, and the opposition has been already rejected as far as it is based on that mark.

Moreover, since the contested trade mark was published on 27/08/2015 and the earlier marks 5 and 7 were registered on 24/01/2011 and 22/08/2011 respectively, the request for proof of use is inadmissible for these earlier marks. For the sake of completeness it is noted that proof of use was not requested for earlier mark 6, and in any case it would not be admissible since this mark was registered on 06/10/2014.

The request is only admissible in relation to earlier marks 3 and 4 which were registered more than five years prior to the publication date of the contested application, namely on 09/07/2008 and 26/10/1993 respectively.

Consequently, the opponent was required to prove that earlier European Union trade mark registration No 6 124 432  (earlier mark 3) and Spanish trade mark registration No  1 754 468 ‘GENESSE’ (earlier mark 4) were put to genuine use in the European Union and Spain respectively from 27/08/2010 to 26/08/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Earlier mark 3:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 35: Advertising; business management; business administration; office functions; commercial management assistance in relation to franchises; representation services and sole distribution; import and export services; sales promotion (for others); Sales services; all relating to perfumery, cosmetics, hygiene, beauty, soaps, toiletries and personal care products, cleaning products.

Earlier mark 4:

Class 3: Perfumery and cosmetic products, essential oils, soaps, shampoos, hair lotions and dentifrices.

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.

On 05/10/2016, 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 10/12/2016 to submit evidence of use of the earlier trade marks. Following a request of the opponent the deadline was extended and finally expired on 10/02/2017. On 10/02/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Items 1-2: 6 catalogues, one undated and five dated between 2012 and 2016 (the last one dated outside the relevant timeframe). The undated catalogue of the group AC Marca, shows under chapter 2 ‘Hygiene and personal care’ products of Laboratorios Genesse. The goods shown in the catalogues are shampoos, soaps, haircare products, deodorants, bath and shower gels, body lotions, facial creams, hand creams, sun creams and after-sun products, as well as mosquito repellents, hand disinfectant gels and detergents for washing clothes. Some of the products bear the trade marks (bath and shower gels), and (facial creams), (shower gels and body lotions), (deodorants and roll-ons), and other products are offered under a variety of different brands.

• Item 3: 18 invoices, dated between 30/08/2011 and 05/08/2015, issued by Laboratorios Genesse, S.L. to 6 companies in different locations in Spain (Las Palmas de Gran Canaria, Marratxi in Mallorca, Madrid, Hospitalet Llobregat in Barcelona, Elorrio in Vizcaya). On the top left corner the following sign is depicted . The invoiced products correspond to those shown in the catalogues in Items 1 and 2. They are designated with various brands and abbreviations (which can be found in the catalogues), including ‘Genesse Protect’ (body lotion and shower gel), ‘Genesse’ (shampoo) and ‘HGG Gel’ corresponding to ‘HidroGenesse Gel’ (bath gel).

• Item 4: photographs of products packaging and labels of some of the goods listed in the invoices, namely eau-de-cologne, mosquito repellent, hand disinfecting gel, creams, sun-screen, washing detergent, shower and bath gels. On the back of the products, with some slight variations, the following information is depicted , or .

• Item 5: 3 articles (in Spanish with translation in English):

• The article from the websites https://ecosectores.com, dated 29/08/2011, contains information about the company Laboratorios Genesse extending its organic range of products. According to the article, the company ‘has its production centre in Barcelona and sells its range of organic products mainly in supermarkets, shops and organic supermarkets Veritas in Spain’

• The article from the website www.economiadigital.es, dated 13/12/2013, explains that Laboratorios Genesse is one of the most important of 18 companies in the AC Marca Group. The activities of the group include the manufacture of insecticides, household dyes, detergents, glues, adhesives, silicones and pharmaceuticals. ‘Genesse’ is listed among one of the ‘most representative brands’ of the group.

• The article from the website http://duapara.com, dated June 2016 (outside the relevant period), refers to a beauty event organised by Laboratorios Genesse to announce ‘their new product ranges for the summer’. Various body and hair care products are mentioned.

Assessment of genuine use

According to Article 10(3) EUTMDR, 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.

It should be borne in mind that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 28; 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).

Nature of use

In the context of Article 10(3) EUTMDR, 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, and of its use for the goods and services for which it is registered.

Use for the registered goods and services

As already outlined above in the listing of the evidence, the opponent is a producer of beauty care and hygiene products, namely shampoos, soaps, haircare products, deodorants, bath and shower gels, body lotions, facial creams, hand creams, sun creams and after-sun products, as well as mosquito repellents, hand disinfectant gels and detergents for washing clothes. These goods – commercialised under various brands - are included in the opponent’s catalogues (Items 1 and 2) and some of the them can be identified in the invoices (Item 3) and as seen on the pictures of the packaging (Item 4).

However, the evidence submitted does not mention any of the services in Class 35 covered by the earlier mark 3, and there is no mention that the opponent has ever been active in the fields of advertising, business management, business administration, office functions, commercial management assistance in relation to franchises, representation services and sole distribution, import and export services and sales promotion (for others). Such services are usually provided by specialised companies such as advertising agencies, business consultants or import and export agents.

Moreover, even though the invoices show that the opponent has been selling its goods, this cannot be considered as a service in Class 35, rendered to third parties, for which the earlier mark is registered (sales services; all relating to perfumery, cosmetics, hygiene, beauty, soaps, toiletries and personal care products, cleaning products). In the same way that advertising one’s own goods does not constitute use for advertising services in Class 35, there is no use for retail or wholesale services in Class 35 where the manufacturer is merely selling its own goods from its shop or website. The sale by the manufacturer of its own goods is not an independent service but an activity covered by the protection conferred by registration for the goods. While manufacturers may provide ancillary services (such as maintaining an outlet with shop assistants, advertising, consultancy, after-sales services, etc.) in the course of the sale of their own goods, such activities fall within the concept of a remunerated ‘service’ only if they do not form an integral part of the offer for sale of the goods (10/07/2014, C 421/13, Apple, EU:C:2014:2070, § 26). Consequently, if a manufacturer uses a trade mark in relation to activities that form an integral part of the offer for the sale of its own goods, there is no use for retail services of such goods in Class 35. Nor would such sales activity be in line with the definition of ‘retail services’ as provided in the explanatory note to the Nice Classification and interpreted by the Court, because it does not entail any benefit for third-party manufacturers. Therefore, an essential characteristic of retail services is missing.

As such, the sale of goods is not a service within the meaning of the Nice Classification. Therefore, the activity of retail in goods as a service for which protection of an EUTM can be obtained does not consist of the mere act of selling its own goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. To this extent, the evidence lacks any indication that would allow to conclude that the opponent provided under the earlier marks retail or wholesale services, in a fixed location, such as a boutique or department store, or was selling the goods of third parties in the form of non-shop retailing, such as through the internet, by catalogue or mail order. Likewise, publishing catalogues to promote the opponent’s own goods cannot be considered as an advertising service provided to third parties.

Moreover, there is clearly no evidence relating to veterinary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, fungicides and herbicides in Class 5. These goods do not appear in the catalogues and invoices, and they are not mentioned in any other documents submitted by the opponent.

As noted above, the Opposition Division cannot base its findings on probabilities or suppositions. Therefore, it must be concluded that the evidence submitted, even assessed as a whole, does not demonstrate that the opponent has been using its earlier trade marks for the above mentioned goods in Class 5 or for any of the services in Class 35.

The opponent did not provide any reasons for the absence of such information nor did it offer any explanations in this regard. In addition, the opponent did not claim that there were proper reasons for non-use.

Conclusion

The nature of use of the earlier marks in relation to the goods and services is one of four factors to be assessed in the determination of whether the use is genuine.

As indicated above, the requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43), which means that the opponent is obliged not only to indicate but also to prove each of these requirements. Therefore, the absence of any of them will lead to the conclusion that the opponent failed to prove genuine use of its earlier marks in relation to the goods and services for which they are registered and the rejection of the opposition.

The Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that earlier trade mark 3 was genuinely used in the relevant territory during the relevant period for any of the services in Class 35 or for veterinary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, fungicides and herbicides in Class 5.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as it is based on the earlier mark 3 and the above mentioned goods and services in Classes 5 and 35.

At this point, for reasons that will become apparent from the circumstances set out below, and bearing in mind the principle of procedural economy, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted in relation to the remaining goods of the earlier marks 3 and 4 on which the opposition was based, namely all the goods in Class 3 and the remaining goods in Class 5 (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 43).

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 Spanish trade mark registrations No 2 949 003 (earlier mark 5), No 3 510 865 (earlier mark 6) and No 2 981 030 (earlier mark 7), which are not subject to proof of use requirement.

1. The goods and services

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

Earlier mark 5:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices.

Earlier mark 6:

Class 3: Soaps for personal use; gels; bath gels, deodorants for personal use; perfumery; essential oils; cosmetics; lotions for skin and hair care; oils for skin care; creams for skin and hair care; skin balms; cleaning milks for skin care; dentifrices; sun creams; skin suntan preparations; shampoos.

Earlier mark 7:

Class 3: Soaps for personal use; perfumery; essential oils; cosmetics; hair lotions; dentifrices.

Class 5: Pharmaceutical preparations; hygienic preparations for medicine; disinfectants; products for destroying vermin; fungicides; herbicides.

The contested goods and services are the following:

Class 5: Dietetic substances adapted for medical use, food for babies; dietary supplements containing proteins, carbohydrates, lipids and/or fibres, or micronutrients including vitamins and/or minerals, amino acids and/or fatty acids, for medical use; dietary supplements for dietetic purposes or for use as supplements for maintaining a good state of health or as part of a normal diet.

Class 35: Business management; business administration; corporate advisory services; retailing, presentation of goods and services online, execution of orders, management of databases, all the aforesaid services relating to the field of dietetic substances.

Class 38: Telecommunications, communication of information (transmission) relating to dietetic substances; Communications via computer terminals, enabling access for professionals to data banks relating to dietetic substances.

Class 42: Scientific and technological services in research and design, industrial analysis services; regulatory monitoring relating to quality standards in the field of dietary supplements and dietetic substances.

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 5

The contested dietetic substances adapted for medical use; dietary supplements containing proteins, carbohydrates, lipids and/or fibres, or micronutrients including vitamins and/or minerals, amino acids and/or fatty acids, for medical use; dietary supplements for dietetic purposes or for use as supplements for maintaining a good state of health or as part of a normal diet are substances prepared for special dietary requirements and they include goods which are primarily intended to have a cosmetic effect, such as dietetic supplements with slimming or tanning effects. To this extent they have the same purpose as the opponent’s cosmetics (earlier marks 5 and 6) which include cosmetic products such as slimming or tanning creams or lotions. These goods are directed at the same consumers, are sold through the same distribution channels and can be produced by the same undertakings. Therefore, they are similar.

The contested food for babies are products intended either for a specific diet of babies or to meet medical requirements (10/02/2015, T-368/13, ANGIPAX, EU: T: 2015: 81, § 46). Accordingly, these goods have a similar purpose to that of the opponent’s pharmaceutical preparations in Class 5 (earlier mark 7). Moreover, they are directed at the same public and can be found at the same points of sale. Therefore, these goods are similar to a low degree.

Contested services in Class 35

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer. Following the above reasoning, the contested retailing, all the aforesaid services relating to the field of dietetic substances are similar to a low degree to the opponent’s cosmetics in Class 3 (earlier marks 5 and 6).

Although the contested presentation of goods and services online, execution of orders, management of databases are also specified as relating to the field of dietetic substances, these services are not sales services and thus cannot be subject to the same rules for finding a similarity as the comparison of goods with retail services as explained above. These services, as well as the remaining contested services in Class 35, namely business management, business administration and corporate advisory services are rendered with the aim of helping other companies to run, promote or improve their business. They are preparatory or ancillary to the commercialisation of goods, but they do not relate to the actual retail of the goods. Consequently, the clear differences between the natures, purposes and usual providers/producers of these services and the opponent’s goods in Classes 3 and 5 preclude the finding of similarity under the relevant factors, as listed above. Furthermore, these goods and services are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Classes 38 and 42

The contested services in these classes do not display any relevant commonalities with the opponent’s goods.

The contested services in Class 38 are telecommunication services. Although the subject matter of the information transmitted or the content of the databases to which access is enabled relate to dietetic substances, the services in this class concern the technical aspects of communication provided by specialised companies over telecommunication networks, and consequently they do not have any relevant connections with the opponent’s goods in Classes 3 and 5.

The contested scientific and technological services in research and design, industrial analysis services and regulatory monitoring relating to quality standards in the field of dietary supplements and dietetic substances in Class 42 are rendered by specialist undertakings in their respective fields, for example R&D laboratories.

There is a vast difference between the technical know-how required for the provision of the contested services and the skills and equipment that the manufacture of the opponent’s goods in Classes 3 and 5 entail. The goods and services are different by nature and purpose. They satisfy different needs of the public and are offered through different channels of distribution. Furthermore, they are neither complementary nor in competition.

Therefore, the contested services in Classes 38 and 42 are dissimilar to all the opponent’s goods in Classes 3 and 5.

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 similar or similar to a low degree are directed at the public at large and at professionals in the field of healthcare.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their impact on consumers state of health. For example, the degree of attention is average in relation to cosmetics, while it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

3. The signs

Earlier mark 5: GENESSE MED Earlier mark 6: Earlier mark 7:	GENOGENESE
Earlier trade marks	Contested sign

The relevant territory is Spain.

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).

All the earlier marks share the element ‘GENESSE’ which has no meaning in Spanish. However at least a part of the public may perceive it as a foreign equivalent of the Spanish word ‘génesis’ referring to the origin or beginning of something, or at least as alluding to this word. Independently on whether any meaning is attributed to this term, it is distinctive as it has no relation to the relevant goods.

The remaining elements of the earlier marks are less distinctive than the element ‘GENESSE’. This is because the element ‘MED’ in the earlier mark 5 is a common abbreviation of ‘medical’ (‘medicinal’ in Spanish) and suggests that the relevant goods, which are cosmetics may have medical/medicinal proprieties. The element ‘HIDRO’ is a prefix which indicates ‘water’ and it informs consumers about the moisturising characteristics of these goods. Finally, the element ‘PROTECT’ in the earlier mark 7 alludes to the protective proprieties of the relevant pharmaceutical preparations as it is close to the Spanish words ‘protector’, ‘protección’ and therefore can be easily understood. Therefore, these elements have at most a low distinctive character.

Furthermore, the figurative features of the earlier marks 6 and 7 clearly play a secondary role within the overall impression of the sign because they are limited to the decorative use of colours and relatively standard typefaces, a simple speech-bubble-shaped background and the cross which is a banal symbol in the context of pharmaceutical preparations. Account is also taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Neither the earlier mark 6 nor the earlier mark 7 has an element that could be considered clearly more dominant than other elements. It is considered that a slightly bigger size of the element ‘protect’ in the earlier mark 7 is compensated by the position and colour of the element ‘GENESSE’, and therefore they are equally eye-catching.

The contested mark, although composed of a single term ‘GENOGENESE’, which is meaningless as a whole, may be perceived at least by part of the relevant public as a juxtaposition of the prefix ‘GENO‑‘ and the term ‘GENESE’. In fact, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). In the context of the relevant goods in Class 5 and retail services relating to the Class 5 goods, the element ‘GENO-‘ may be understood by at least part of the public, especially by healthcare professionals, as referring to ‘genómica’ (genomics, especially nutritional genomics which study how nutrition influence the genome), ‘genómico’ (genomic) or ‘genoma’ (genome). As regards the remaining element, ‘GENESE’, the same findings apply as in case of the word ‘GENESSE’ in the earlier marks.

The Opposition Division finds it appropriate to first compare the signs from the perspective of the part of the public, composed mainly by healthcare professionals, who will dissect the contested mark and, taking into account at least an allusive character of the prefix ‘GENE-‘, will perceive the element ‘GENESSE’ as the most distinctive element of the contested sign.

Visually, the signs coincide in the letters ‘GENES*E’. They differ in the double ‘S’ in the earlier marks, prefix ‘GENO-‘ in the contested sign and the additional elements ‘MED’, ‘HIDRO’ and ‘PROTECT’ in the earlier marks, as well as in the figurative features of the earlier marks 6 and 7. Taking into account the - at most weak -distinctiveness of the differentiating verbal and figurative elements in the earlier marks, and of the prefix ‘GENO’ in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /GE/NE/S(S)E/ where the single /S/ in the contested sign and the double /SS/ in the earlier marks are pronounced identically in Spanish. The pronunciation differs in the sound of the additional at most weak elements /MED/, /HI/DRO/, and /PRO/TECT/ in the earlier marks, and in the sound of the weak prefix /GE/NO/ in the contested sign. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As explained above, neither of the signs as a whole has a meaning for the public in the relevant territory. However, for the part of the public that will see a reference or allusion to ‘genesis’ in the elements ‘GENESSE’ and ‘GENESE’, the signs are conceptually similar at least to an average degree. For the remaining part of the public, the signs are not conceptually similar on the account of the differentiating, although at most weak, elements included in the marks.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks 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 marks must be seen as normal, despite the presence of some at most weak elements in the marks, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Part of the contested goods and services are similar or similar to a low degree to the opponent’s cosmetics or pharmaceutical preparations. These goods and services are directed at the public at large and at professionals in the field of healthcare whose degree of attention varies from average to high. The earlier marks enjoy an average degree of inherent distinctiveness which affords them a normal scope of protection. The comparison of the signs focussed on the part of the public, composed mainly by healthcare professionals, who will dissect the contested mark and perceive the element ‘GENESSE’ as the most distinctive element of the contested sign. The similarity between the signs ranges from average degree on a visual level to at least an average degree from an aural and – for part of the public – conceptual perspective. For the remaining part of the public that will not perceive any common concept in the signs, the conceptual difference is due to the presence of at most weak elements and has therefore a limited impact overall.

The most distinctive element of the earlier marks, ‘GENESSE’, is reproduced almost entirely in the contested sign where it constitutes the largest part of it and where it will be perceived, by at least the part of the public under analysis, as a distinguishable element placed next to the, at least allusive, prefix GENO. The omission of one ‘S’ in the contested sign may easily pass unnoticed and the remaining differences between the marks are confined to at most weak elements and secondary aspects.

Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Consequently, the differences identified between the signs are incapable of compensating the existing similarities and enabling the average consumer to safely distinguish between the commercial origins of the goods and services marked with these trade marks. It is highly conceivable that the relevant consumer will assume that the relevant goods and services, even those similar only to a low degree, may have the same commercial origin or at least come from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will dissect the contested mark and perceive the element ‘GENESSE’ as the most distinctive element of the contested sign. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations No 2 949 003, No 3 510 865 and No 2 981 030. It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar, even to a low degree, to those of the earlier trade marks.

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

The opponent has also based its opposition on European Union trade mark registration No 6 124 432  registred for goods in Classes 3 and 5, and services in Class 35 (earlier mark 3) and Spanish trade mark registration No  1 754 468 ‘GENESSE’ registred for goods in Class 3 (earlier mark 4).

The earlier mark 4 covers a narrower scope of goods as those already compared. The earlier mark 3 covers the same goods in Class 3 as the goods compared above while its scope is broader in Class 5 insofar as dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth and dental wax are concerned. Moreover, the earlier mark 4 includes services in Class 35 which are not covered by the earlier marks 5, 6 and 7 in relation to which likelihood of confusion has been assessed. However, these additional goods and services in Classes 5 and 35 have no impact on the present case because, as concluded in the section ‘PROOF OF USE’, the opponent has not proven genuine use in relation to these goods and services and the opposition has been already rejected insofar as it is based on the earlier mark 3 and these goods and services.

Therefore, the outcome cannot be different with respect to the contested services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Finally, the Opposition Division notes that it is unnecessary to proceed to an assessment of the proof of use submitted by the opponent regarding the rest of the goods in Classes 3 and 5 of the earlier marks 3 and 4 on which the opposition is based, as these goods, also covered by the earlier marks 5-7, have been already taken into account in the comparison above and, consequently, the outcome of these proceedings would be the same.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

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.