OPPOSITION No B 2 571 324

The Procter & Gamble Company, One Procter & Gamble Plaza, Cincinnati, Ohio 45202-3315, United States of America (opponent), represented by Danièle Le Carval, Procter & Gamble France SAS, 163/165 quai Aulagnier, 92600 Asnières-sur-Seine France (employee representative)

a g a i n s t

Regima Skin Treatments CC, 20 River Road, Morning Hill, Bedfordview, Johannesburg, South Africa (applicant), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative).

On 27/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 571 324 is upheld for all the contested goods and services, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, hair lotions, cosmetics; cosmetic products of all kinds, including preparations for application to the skin, scalp, hair, feet or nails and skin care preparations; preparations for skin renewal, cleansing and toning lotions, creams, oils and gels for the face, hands, feet and body, night and day preparations for cosmetic purposes; anti-aging preparations, anti-aging moisturizer, exfoliants, wrinkle removing skin care preparations, concealer, skin moisturizer with SPF and preparations for protecting the skin from the sun; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs; cleansing masks, make-up foundation, make-up powder, make-up removers, including in the form of lotions, milk, creams, gels, tissues impregnated with cosmetics, cotton wool and cotton sticks for cosmetic purposes, cosmetic pencils and cosmetic crayons; perfumes, eau de cologne; milks, lotion, creams, emulsions, gels for the face and the body; toilet waters; cosmetics and cosmetic preparations for the bath in the form of creams, gels, oils, bath salts, scrubs and exfoliating creams; bath and shower preparations; essential oils; non-medicated toilet preparations; talcum powders for toilet use; preparations for hair including shampoo and conditioners; hair colourants; hair styling products; gel lacquer; balms and foams; non-medicated preparations for the care of the skin; shaving preparations; pre-shave and aftershave preparations; depilatory preparations; sun-tanning and sun protection preparations; petroleum jelly; lip care preparations; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; deodorants and antiperspirants; nail care preparations and nail varnish, lipsticks, lip gloss, foot balm, heel balm, tinted creams, foot preparations, nail files; mascara, eye shadow, blusher; mouth washes.

Class 44: Hygienic and beauty care for human beings; cosmetic treatment including, face care services, cosmetic skin care services; beauty consultation services including in the selection and use of cosmetics, and beauty products; online cosmetic skincare consultation services.

2. European Union trade mark application No 14 297 113 is rejected for all the contested goods and services. It may proceed for the remaining goods and services in Classes 5 and 44.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 297 113, namely against all of the goods in Class 3 and some of the services in Class 44. The opposition is based on European Union trade mark registration No 2 804 417. 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 on which the opposition is based are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, preparations for the cleaning, care and beautification of the skin, scalp and hair.

The contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, hair lotions, cosmetics; cosmetic products of all kinds, including preparations for application to the skin, scalp, hair, feet or nails and skin care preparations; preparations for skin renewal, cleansing and toning lotions, creams, oils and gels for the face, hands, feet and body, night and day preparations for cosmetic purposes; anti-aging preparations, anti-aging moisturizer, exfoliants, wrinkle removing skin care preparations, concealer, skin moisturizer with SPF and preparations for protecting the skin from the sun; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs; cleansing masks, make-up foundation, make-up powder, make-up removers, including in the form of lotions, milk, creams, gels, tissues impregnated with cosmetics, cotton wool and cotton sticks for cosmetic purposes, cosmetic pencils and cosmetic crayons; perfumes, eau de cologne; milks, lotion, creams, emulsions, gels for the face and the body; toilet waters; cosmetics and cosmetic preparations for the bath in the form of creams, gels, oils, bath salts, scrubs and exfoliating creams; bath and shower preparations; essential oils; non-medicated toilet preparations; talcum powders for toilet use; preparations for hair including shampoo and conditioners; hair colourants; hair styling products; gel lacquer; balms and foams; non-medicated preparations for the care of the skin; shaving preparations; pre-shave and aftershave preparations; depilatory preparations; sun-tanning and sun protection preparations; petroleum jelly; lip care preparations; cotton wool, cotton sticks; cosmetic pads, tissues or wipes; deodorants and antiperspirants; nail care preparations and nail varnish, lipsticks, lip gloss, foot balm, heel balm, tinted creams, foot preparations, nail files; mascara, eye shadow, blusher; mouth washes.

Class 44: Hygienic and beauty care for human beings; cosmetic treatment including, face care services, cosmetic skin care services; beauty consultation services including in the selection and use of cosmetics, and beauty products; online cosmetic skincare consultation services.

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.

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

Soaps; perfumery, essential oils, hair lotions, cosmetics are identically contained in both lists of goods and services.

The contested cosmetic products of all kinds, including preparations for application to the skin, scalp, hair, feet or nails and skin care preparations; cosmetics and cosmetic preparations for the bath in the form of creams, gels, oils, bath salts, scrubs and exfoliating creams; bath and shower preparations; non-medicated toilet preparations; gel lacquer; balms and foams; shaving preparations; depilatory preparations; sun-tanning and sun protection preparations; cosmetic pads, tissues or wipes; nail care preparations and nail varnish, lipsticks, lip gloss, foot balm, heel balm, tinted creams, foot preparations; mascara, eye shadow, blusher are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested cleaning preparations are identical to the opponent’s soap. Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since soap is used for cleaning purposes, it is identical to cleaning preparations.

The contested preparations for skin renewal, cleansing and toning lotions, creams, oils and gels for the face, hands, feet and body, night and day preparations for cosmetic purposes; anti-aging preparations, anti-aging moisturizer, exfoliants, wrinkle removing skin care preparations, concealer, skin moisturizer with SPF and preparations for protecting the skin from the sun; pre-moistened or impregnated cleansing pads, tissues or wipes; beauty masks, facial packs; cleansing masks, make-up foundation, make-up powder, make-up removers, including in the form of lotions, milk, creams, gels, tissues impregnated with cosmetics; milks, lotion, creams, emulsions, gels for the face and the body; talcum powders for toilet use; preparations for hair including shampoo and conditioners; hair colourants; hair styling products; non-medicated preparations for the care of the skin; pre-shave and aftershave preparations; petroleum jelly; lip care preparations are included in the broad category of, or overlap with, the opponent’s preparations for the cleaning, care and beautification of the skin, scalp and hair. Therefore, they are identical.

The contested perfumes, eau de cologne; toilet waters are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested mouth washes have the same purpose and distribution channels as the opponent’s cosmetics. They also target the same relevant public and may have the same producers. Therefore, they are similar to a high degree.

The contested bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations are all agents used for cleaning. Polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Furthermore, it is similar to bleaching preparations because they target the same consumers and have the same producers and distribution channels. Therefore, these goods are considered similar to the opponent’s soap.

The contested cotton wool and cotton sticks for cosmetic purposes, cosmetic pencils and cosmetic crayons; cotton wool, cotton sticks have the same distribution channels, target the same relevant public and could have the same producers as the opponent’s cosmetics. Consequently, these goods are similar.

The contested deodorants and antiperspirants are preparations the purpose of which is to improve the appearance of a body or its parts, including, for example, improving its smell or skin texture. The opponent’s goods in Class 3 have the same purpose in relation to skin, scalp and hair. These goods are available through the same distribution channels in the same outlets or in the same sections of supermarkets. They target the same consumers, who may assume that the same undertaking is responsible for their production, as it is common in the market for the same company to produce many different cosmetic preparations. Consequently, these goods are similar to the opponent’s perfumery.

There is a certain link between the contested nail files covered by the applicant’s mark and the goods covered by the opponent’s mark. In this respect, it should be noted that the opponent’s goods are used for personal hygiene and beauty care. Therefore, it is not unusual for the producers of preparations for the cleaning, care and beautification of the skin, scalp and hair to offer, usually for marketing purposes, various other goods directly related to the use of their product. Since the goods in question have a degree of complementarity, may have the same or related producers and will be sold together or in close proximity to each other, these goods are considered similar.

Contested services in Class 44

There is a link between the opponent's preparations for the cleaning, care and beautification of the skin, scalp and hair and the contested hygienic and beauty care for human beings; cosmetic treatment including, face care services, cosmetic skin care services; beauty consultation services including in the selection and use of cosmetics, and beauty products; online cosmetic skincare consultation services, as the opponent's goods are used for the purposes of hygiene or beauty care, for humans; therefore, they are complementary to these contested services. A beauty salon or spa or even a hotel offering such services could also sell some of the products used for the services, in particular soaps, essential oils, cosmetics and hair lotions. Therefore, they can also have the same distribution channels.

It can be concluded that the purpose and the target public of the opponent's cosmetics, hair lotions, preparations for the cleaning, care and beautification of the skin, scalp and hair and the contested hygienic and beauty care for human beings; cosmetic treatment including, face care services, cosmetic skin care services; beauty consultation services including in the selection and use of cosmetics, and beauty products; online cosmetic skincare consultation services are the same, in that they are all intended to improve the hygiene and the appearance of consumers. In addition, they are often sold in the same place. For all these reasons, it must be concluded that these goods and services are similar.

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 (to varying degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

REGENERIST	EPIGENERIST
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).

Both the earlier mark and the contested sign are word marks.

Neither the earlier nor the contested mark has any elements that could be considered clearly more distinctive or more dominant than other elements.

Visually, the signs coincide in the letters ‘GENERIST’ in the latter part of each mark. However, the signs differ in their prefixes, ‘RE’ in the earlier mark and ‘EPI’ in the contested sign. A total of 8 out of 10 letters in the earlier mark and 8 out of 11 letters in the contested sign are the same. All eight letters that the marks have in common are reproduced in the same order and appear in the same part of each mark.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‛GENERIST’, present identically in each sign. The pronunciation differs in the syllable ‛RE’ of the earlier mark and the syllables ‘EPI’ in the contested sign, placed first in both marks. The marks coincide in three out of four or five syllables that are placed identically in each mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The signs are visually similar because of the 8 letters ‘GENERIST’ that they have in common. These represent 8 out of the 10 letters in the earlier mark and they are present in the same order in the contested sign. This similarity is reinforced by the high degree of aural similarity between the words ‘REGENERIST’ and ‘EPIGENERIST’. Moreover, the marks do not convey any differentiating concepts that could help the relevant public to distinguish between them.

Although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

In the present case, the difference attributable to the prefixes ‘RE’ and ‘EPI’ does not make the overall impressions of the signs different enough, particularly bearing in mind the high degree of aural similarity, to allow the average consumer, who only rarely has the chance to make a direct comparison between the signs, to safely distinguish between them.

Taking into account that the goods are either identical or similar (to varying degrees), and also given the normal degree of distinctiveness of the earlier mark, it is held that the differences between the signs cannot counteract their overall similarity, which leads to a likelihood of confusion between the conflicting signs.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Katarzyna ZANIECKA

Magnus ABRAMSSON

Judit NÉMETH

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.