OPPOSITION No B 2 676 339

SA Designer Parfums Ltd., Amertrans Park, Bushey Mill Lane, Watford, Hertfordshire WD24 7JG, United Kingdom (opponent)

a g a i n s t

Scala Europe, Euregioweg 366, 7532 SN Enschede, Netherlands (applicant), represented by Martin Grasset, 86 Boulevard Carnot, 59800 Lille, France (professional representative).

On 04/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 676 339 is upheld for all the contested goods, namely:

Class 3: Toiletries, Perfumery and fragrances, Body cleaning and beauty care preparations, Make-up, Soaps and gels, Grooming preparations for the bathroom, Deodorants and antiperspirants, Skin care preparations.

2. European Union trade mark application No 14 764 807 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 14 764 807 for the word mark ‘LA PIN-UP DE PARIS by Jemm’s’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 11 151 149 for the word mark ‘PIN-UP’. 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.

a) The goods

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

Class 3: Non medicated toilet preparations; soaps; perfumery; essential oils.

The contested goods are the following:

Class 3: Toiletries, Perfumery and fragrances, Body cleaning and beauty care preparations, Make-up, Soaps and gels, Grooming preparations for the bathroom, Deodorants and antiperspirants, Skin care preparations.

Perfumery and soaps are identically contained in both lists of goods.

The contested fragrances overlap with the opponent’s perfumery. Therefore, they are identical.

The contested toiletries include, as a broader category, the opponent’s non medicated toilet preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested body cleaning and beauty care preparations, make-up, gels, grooming preparations for the bathroom, deodorants and antiperspirants, skin care preparations overlap with the opponent’s non medicated toilet preparations. Therefore, they are identical.

b) 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.

c) The signs

PIN-UP	LA PIN-UP DE PARIS by Jemm’s
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.

The element ‘PIN-UP’, present in both marks, will be understood by the English-speaking public as a poster or large photograph showing a sexually attractive and usually famous person; it is also used to describe the person seen on such a poster. Modern pin-ups tend to dress in vintage clothing inspired by the pin-ups of the 20s, 30s, 40s and 50s. Moreover, the word ‘PIN-UP’ is commonly used throughout the European Union with the same meaning, even in countries where English is not widely spoken, such as France, Italy or Poland. Therefore, since having the meaningful element ‘PIN-UP’ in common could make the signs more similar conceptually, the Opposition Division finds it appropriate to focus the comparison of the signs on the abovementioned part of the public that understands the meaning of the common element.

As the verbal element ‘PIN-UP’, with the meaning explained above, does not have any direct connection with the relevant goods, it is considered distinctive.

The contested sign’s element ‘LA’ is a definite article in many European languages, including French, Italian and Spanish. This is widely known throughout the European Union due to, for example, popular songs such as ‘La Bamba’ and ‘La Cucaracha’ (05/11/2018, R 928/2018‑2, La passiata / Passina, § 41). According to case-law, definite articles are used in everyday language to highlight the nouns that follow them and have a weaker impact on consumers than the words that follow them (05/11/2018, R 928/2018‑2, La passiata / Passina, § 41; 24/06/2014, T‑330/12, The Hut, EU:T:2014:569, § 44). Therefore, this element plays a secondary role in the sign as it will be perceived together with ‘PIN-UP’ as a single verbal element: ‘LA PIN-UP’.

The contested sign’s element ‘DE PARIS’ merely serves to indicate the geographical origin of the goods and this is how the relevant consumers will perceive it. Therefore, this element must be considered non-distinctive (by analogy, 23/04/2015, R 256/2014‑4, FABRICA DE LICORES DE ANTIOQUIA FLA COLOMBIA (FIG. MARK) / CAFÉ DE COLOMBIA (FIG. MARK) et al., § 21).

As regards the contested sign’s element ‘by Jemm’s’, the English expression formed by the preposition ‘by’ followed by a name, such as the one in question, is commonly and frequently used on a worldwide basis in the most disparate trade sectors to indicate the manufacturer or designer of many articles. The relevant consumers are used to seeing such indications on many products (04/02/2015, T‑372/12, APRO, EU:T:2015:70, § 38). This is precisely how the relevant consumers will perceive the expression ‘by Jemm’s’ at the end of the contested sign. The distinctiveness of this element is average.

Visually and aurally, (irrespective of the different pronunciation rules in different parts of the relevant territory) the signs coincide in the distinctive ‘PIN-UP’. They differ in the secondary ‘LA’ and non-distinctive ‘DE PARIS’ in the contested mark. These elements, due to their character, will not be paid much attention as they will not be regarded by consumers as indicators of the goods’ commercial origin. Moreover, the marks differ in the expression ‘by Jemm’s’, which is placed at the end of the contested mark and creates a difference between the signs.

However, as the entire earlier mark is included in the contested sign, forming, together with the article ‘LA’, its first, distinctive, element, the signs are considered visually similar to at least an average degree despite the differing element ‘by Jemm’s’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a reference to ‘PIN-UP’, the signs are conceptually identical in this regard. Even though the element ‘DE PARIS’ and the French article ‘LA’ placed before an English word in the contested mark will evoke a concept of the French origin of the products, this concept will not be regarded by consumers as identifying the commercial origin of the goods. Therefore, in terms of identifying origin, the marks differ only in the contested mark’s element ‘by Jemm’s’, which will be perceived as described above but will not change the understanding of the word ‘PIN-UP’. Consequently, the marks are conceptually similar to at least an average degree.

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

d) 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. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks, and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical. The relevant public’s degree of attention is average. The signs are visually, aurally and conceptually similar to at least an average degree.

As stated above, the earlier sign constitutes, together with the article ‘LA’, the beginning of the contested mark. It must be borne in mind that consumers generally tend to focus on the first element of a sign when they encounter 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. The difference in the presence of the article ‘LA’ at the beginning of the contested mark will not change the perception that the marks’ beginnings overlap, as the article will be perceived together with the noun it refers to (which is common to both marks). Moreover, according to case-law, when the earlier sign is entirely contained in the contested sign, that is an indication that the two signs are similar (21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 27). In such cases, it should be taken into consideration that it is not uncommon for producers to create product lines by adding an additional element to their main mark to differentiate categories of products. Therefore, the Opposition Division finds that the relevant consumer may perceive the contested sign as a sub-brand as both marks have the distinctive element ‘PIN-UP’ in common (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In addition, even if part of the public will pay attention to the differing element ‘by Jemm’s’, included in the contested sign to indicate the origin of the goods, it must be borne in mind that likelihood of confusion covers not only situations where consumers directly confuse the trade marks themselves but also where they assume that the goods covered are produced by economically linked undertakings. Therefore, even adding the element ‘by Jemm’s’ might not exclude the likelihood of confusion created by the similarity of the signs, as the public might simply assume some connection between the manufacturers of the products bearing the trade marks under comparison.

Considering all the above, there is a likelihood of confusion on the part of the public that will understand the meaning of the verbal element ‘PIN-UP’ in both marks. 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 11 151 149. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Renata COTTRELL

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.