OPPOSITION No B 2 603 333

OPPOSITION DIVISION

OPPOSITION No B 2 603 333

Mäurer & Wirtz GmbH & Co. KG, Zweifaller Str. 120, 52224 Stolberg, Germany (opponent)

a g a i n s t

Minoronzoni S.R.L., Via E. Fermi, 24036, Ponte San Pietro (Bergamo), Italy (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158, Milano, Italy (professional representative).

On 23/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 603 333 is upheld for all the contested goods, namely

Class 3: Soaps; perfumed soaps; soaps in liquid form; deodorant soap; toilet soap; soaps in gel form; hand soaps; soaps for body care; perfumery; perfume; perfumed water; solid perfumes; perfumes in gel form; perfumed creams; essential oils; scented oils; toilet water; deodorant for personal use; scented waters; perfumed powder [for cosmetic use]; potpourris [fragrances]; air fragrancing preparations; perfumed tissues; fragrance emitting wicks for room fragrance; cosmetics; make-up preparations; make-up preparations; eyelid shadow; mascara; eyeliner; eye pencils; lipstick; lip makeup pencils; lip gloss; lip balms; cocoa butter for cosmetic purposes; lip balms; make up foundations; facial powders; earth; rouges; concealers; make-up primers; face and body powders; adhesives for cosmetic purposes; cotton sticks for cosmetic purposes; eyebrow wax; eyebrow pencils; eyebrow mascaras; eyebrow shadows; eyebrow pens; hair care lotions; haircare and hair-conditioning preparations; shampoo; conditioning preparations for the hair; hair waxes; hair dye; cosmetics for the use on the hair; hair protection creams; hair emollients; hair gel; hair spray; hair mousse; hair oils; hair spray; hair mascara; sun-protecting lotions for the hair; soaps, cleansers, oils, moisturisers, creams and lotions for the bath and shower; shower creams; body shampoos; shower gels; shower soap; bath foam; bath creams; bath gel; bath lotion; bath oil; bath pearls; bath powders; talcs; bath salts; preparations for the care and beauty of the face and body; preparations for cleansing the face and body; facial and body creams; facial moisturizers; facial cleansing milk; cosmetic facial lotions; facial masks; cleansing mousse for the face; facial cleansing gels; skin toners; body emulsions; body scrub; body moisturisers; hydrating body lotion; fragranced body lotion; body lotion sprays; body oils [for cosmetic use]; face and body scrubs; facial wipes impregnated with cosmetics; face wipes impregnated with cleansing substances; make-up removal products for the face and eyes; make-up removal pens; make-up removal water; lotions for removing face and eye make-up; cleansing milk for removing make-up; make-up removing oils; preparations for care and beautification of the hands, feet and nails; oils for the hands and feet; hand wipes impregnated with cosmetics; nail polish; foot and hand creams; nail varnish remover; wipes and cotton pads impregnated with solvent; hand and foot scrubs; dentifrices; teeth cleaning lotions; mouthwashes, not for medical purposes; sun-tanning preparations (cosmetics); sun creams for the face and body; sun oils for the face and body; sun-tanning creams for the face and body; sun oils for the face and body; bronzing waters for the face and body; after-sun preparations; after-sun conditioner for the shower; after-sun sprays; after sun creams; self-tanning preparations; depilatories; shaving cream; shaving gel; shaving soaps; lotions for beards; shaving foam; after-shave preparations; cosmetics in the form of gloves impregnated with cosmetic and moisturising substances; cosmetics in the form of socks impregnated with cosmetic and moisturising substances; creams for whitening the skin of the face and body.

2. European Union trade mark application No 14 359 921 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 359 921, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 90 852. 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 goods

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

Class 3: Perfumeries, essential oils, non-medicated toilet preparations and cosmetics, preparations for the hair, dentifrices, toilet soaps.

The contested goods are the following:

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.

The contested soaps; perfumed soaps; soaps in liquid form; deodorant soap; toilet soap; soaps in gel form; hand soaps; soaps for body care; shower soap; shaving soaps are identical to the opponent’s toilet soaps, either because they are identically contained in both lists (although sometimes phrased differently) or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested perfumery; perfume; perfumed water; solid perfumes; perfumes in gel form; toilet water; deodorant for personal use; scented waters; potpourris [fragrances]; air fragrancing preparations; perfumed tissues; fragrance emitting wicks for room fragrance are identical to the opponent’s perfumeries, either because they are identically contained in both lists (although sometimes phrased differently) or because the opponent’s goods include, or overlap with, the contested goods.

Essential oils and scented oils are identically contained in both lists of goods (including synonyms).

The contested perfumed creams; perfumed powder [for cosmetic use]; cosmetics; make-up preparations; make-up preparations; eyelid shadow; mascara; eyeliner; eye pencils; lipstick; lip makeup pencils; lip gloss; lip balms; cocoa butter for cosmetic purposes; lip balms; make up foundations; facial powders; earth; rouges; concealers; make-up primers; face and body powders; eyebrow wax; eyebrow pencils; eyebrow mascaras; eyebrow shadows; eyebrow pens; soaps, cleansers, oils, moisturisers, creams and lotions for the bath and shower; shower creams; body shampoos; shower gels; bath foam; bath creams; bath gel; bath lotion; bath oil; bath pearls; bath powders; talcs; bath salts; preparations for the care and beauty of the face and body; preparations for cleansing the face and body; facial and body creams; facial moisturizers; facial cleansing milk; cosmetic facial lotions; facial masks; cleansing mousse for the face; facial cleansing gels; skin toners; body emulsions; body scrub; body moisturisers; hydrating body lotion; fragranced body lotion; body lotion sprays; body oils [for cosmetic use]; face and body scrubs; facial wipes impregnated with cosmetics; face wipes impregnated with cleansing substances; make-up removal products for the face and eyes; make-up removal pens; make-up removal water; lotions for removing face and eye make-up; cleansing milk for removing make-up; make-up removing oils; preparations for care and beautification of the hands, feet and nails; oils for the hands and feet; hand wipes impregnated with cosmetics; nail polish; foot and hand creams; nail varnish remover; wipes and cotton pads impregnated with solvent; hand and foot scrubs; sun-tanning preparations (cosmetics); sun creams for the face and body; sun oils for the face and body; sun-tanning creams for the face and body; sun oils for the face and body; bronzing waters for the face and body; after-sun preparations; after-sun conditioner for the shower; after-sun sprays; after sun creams; self-tanning preparations; depilatories; shaving cream; shaving gel; lotions for beards; teeth cleaning lotions; mouthwashes, not for medical purposes; shaving foam; after-shave preparations; cosmetics in the form of gloves impregnated with cosmetic and moisturising substances; cosmetics in the form of socks impregnated with cosmetic and moisturising substances; creams for whitening the skin of the face and body are identical to the opponent’s non-medicated toilet preparations and cosmetics, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested adhesives for cosmetic purposes; cotton sticks for cosmetic purposes are similar to the opponent’s cosmetics as they can coincide in producers, distribution channels and the relevant public. Furthermore they are complementary.

The contested hair care lotions; haircare and hair-conditioning preparations; shampoo; conditioning preparations for the hair; hair waxes; hair dye; cosmetics for the use on the hair; hair protection creams; hair emollients; hair gel; hair spray; hair mousse; hair oils; hair spray; hair mascara; sun-protecting lotions for the hair are identical to the opponent’s preparations for the hair, either because they are identically contained in both lists (sometimes phrased differently) or because the opponent’s goods include, or overlap with, the contested goods.

Dentifrices are identically contained in both lists of goods.

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 or similar are directed at the public at large. The degree of attention is average.

The signs

TOSCA

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public.

The earlier mark is a word mark ‘TOSCA’.

The contested sign is figurative. It is composed of a thick white circle outlined in black and the white letters ‘TB’ outlined in black, placed in the centre and merging with the circle. In the lower part of the circle, there are the words ‘TOSCA BLU’.

The word ‘TOSCA’, present in both signs, is an Italian name being the title of the opera of Puccini.

The earlier mark, being composed of one word, has no elements that could be considered clearly more distinctive than other elements.

The word ‘BLU’ of the contested sign means ‘blue’ in Italian. It will be perceived as a colour reference or an adjective qualifying the word ‘TOSCA’ or as a reference to a particular line of products ‘TOSCA’. In any event, this term does not alter the distinctive character of the word ‘TOSCA’ easily memorised by the consumer.

Although the combination of letters ‘TB’ has no clear and unambiguous meaning in Italian, these letters are likely to be perceived as initials of the words ‘TOSCA BLU’ as it is not uncommon for marks made up of words to be associated with single or combinations of letters or other symbols which make a reference, in a concise manner, to the mark (see the decision of 15/02/2012, R 45/2011-11 – ‘S SPALDING (Fig. Mark)/SPARRING’, § 26). With this in mind, although the letters ‘TB’ form part of the dominant element of the contested sign and will not be ignored by the consumers, their role may be perceived as a simple reference to ‘TOSCA BLU’.

The earlier mark has no element which could be considered more dominant (visually eye-catching) than other elements.

The words ‘TOSCA BLU’ are written in relatively small letters and, therefore, these words are less eye-catching than the other elements, which dominate the contested sign.

Visually, the signs coincide in the word ‘TOSCA’ which is the only element of the earlier mark. They differ in the additional elements of the contested sign, namely the word ‘BLU’, the letters ‘TB’ and the figurative element. Despite being graphically represented, the letters of the contested sign are standard. Furthermore, although the word ‘TOSCA’ appears as a separate word in the contested sign, it is less eye-catching because of its size and position at the bottom of the sign. Nevertheless, as explained above, the combination of letters ‘TB’ in the contested sign may be perceived as a simple reference to the word ‘TOSCA BLU’. Therefore, the presence of these letters, although clearly noticeable, does not significantly reduce or obscure the

impression of visual similarity between the signs resulting from the coincidence in the word ‘TOSCA’ which appears in the contested sign separated from other elements.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛TOSCA’, being the only element of the earlier mark and appearing in the contested sign as a separate word. The pronunciation differs in the sound of the letters ‛TB’ and of the word ‘BLU’ of the contested sign. As already explained above, the letters ‘TB’ are likely to be seen as the initials of the words ‘TOSCA BLU’. For this reason, as well as for economy of language, the relevant public will most likely not pronounce the letters ‘TB’ and will refer to the contested sign ‘TOSCA BLU’, thus taking nothing away from the strong aural similarities between the marks resulting from the coincidence in the word ‘TOSCA’ even if this element is less eye-catching.

Therefore, the signs are similar to a high degree.

Conceptually, both signs refer to ‘TOSCA’ which is an Italian name being the title of the opera of Puccini. The element ‘BLU’ of the contested sign will be perceived as a colour reference or as a term qualifying the word ‘TOSCA’. The combination of letters ‘TB’ of the contested sign has no clear and unambiguous meaning in Italian. These letters are likely to be perceived as initials of the words ‘TOSCA BLU’.

Therefore, the signs are conceptually highly similar.

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.

In its observations submitted on 07/09/2016 the opponent claimed that the earlier mark on which the opposition is based is a well-known mark. However, this claim cannot be taken into account as a claim of enhanced distinctiveness of the earlier mark as it was received after the date of 27/04/2016 set by the Office for the opponent to submit further facts, evidence or arguments in support of the opposition,

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.

Global assessment, other arguments and conclusion

The goods are identical and similar. The signs are visually similar to a low degree, aurally similar to a high degree and conceptually highly similar.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs coincide in the word ‘TOSCA’ which is the only element of the earlier mark with a normal degree of distinctiveness. This word can perfectly be recognised and individualised in the contested sign due to the fact that it is separated from the other word ‘BLU’ with a space. Hence, the common element ‘TOSCA’ has an independent distinctive role in the contested sign. Moreover, even if the word ‘TOSCA’ is not part of the dominant element of the contested sign, it conveys a clear concept and since it is written in standard letters and may be read and pronounced, it is, therefore, likely to be remembered by consumers. In addition, the additional element ‘BLU’, being a colour reference, does not alter the concept of the word ‘TOSCA’. It may be perceived as a reference to a particular line of products ‘TOSCA’.

The applicant emphasises that the assessment of the similarity of marks shall take account of the overall impression created by them and that the presence of figurative elements can have the effect on the overall impression conveyed by a sign. However, the Opposition Division considers that, although the letters ‘TB’ in the centre of a simple thick white circle outlined in black form the dominant element of the contested sign, the importance of these letters is reduced by the fact that they are most likely perceived as a reference to the words ‘TOSCA BLU’. In addition, the stylisation of the letters and of the circle is not particularily elaborate.

Furthermore, the applicant refers to judgment in the joint cases of 18/09/2014, C-309/13 P, Giuseppe by Giuseppe Zanotti and C-308/14 P, Giuseppe Giuseppe Zanotti Design, EU:C:2014:2234 to support its arguments. The case referred to by the applicant is not comparable to the present one. In particular, for the reasons mentioned above, the figurative element of the contested sign is not sufficient to outweigh the similarities between the verbal elements of the signs.

Considering the foregoing, the Opposition Division is of the opinion that the additional elements of the contested sign, which do not appear in the earlier mark, are not enough to counteract the similarities resulting from the coincidence in the word ‘TOSCA’ and therefore the public with an average level of attention could believe that the identical goods come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 90 852. 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

Francesca CANGERI SERRANO

Justyna GBYL

Begoña URIARTE VALIENTE

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.

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