OPPOSITION No B 2 746 900

Teofarma S.r.l., Viale F. lli Cervi, 8, 27010 Valle Salimbene (PV), Italy (opponent), represented by March & Asociados, Passeig de Gràcia 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Braun GmbH, Frankfurter Str. 145, 61476 Kronberg im Taunus, Germany (applicant), represented by Catherine Montheil, 163 Quai Aulagnier, 92665 Asnières sur Seine Cédex, France (employee representative).

On 05/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 746 900 is upheld for all the contested goods.

2. European Union trade mark application No 15 315 021 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 315 021 for the word mark ‘PROSKIN’. The opposition is based on Spanish trade mark registration No 3 106 001 for the word mark ‘PROSKIN’. 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

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

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

The contested goods are the following:

Class 8: Razors and razor blades; electric and non electric appliances for removal of hair, such as electric and non-electric depilation appliances for personal use, electric and non-electric hair clipper, hair trimmers, scissors for cutting hair; parts and fittings for all the aforesaid goods.

As a preliminary remark, an interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘such as’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Furthermore, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

The contested razors and razor blades; electric and non electric appliances for removal of hair, such as electric and non-electric depilation appliances for personal use, electric and non-electric hair clipper, hair trimmers, scissors for cutting hair; parts and fittings for all the aforesaid goods in Class 8 are all similar to a low degree to the opponent’s cosmetics in Class 3. This is because cosmetics include depilatory preparations, so that these goods coincide in purpose with that of razors. Furthermore, they are commonly sold in the same shops; they usually coincide in relevant public and consumers perceive them as goods in competition.

In this regard, in its observations of 11/12/2018, the applicant argued that the opponent would only use the earlier mark in the market in relation to a cosmetic cream for sensitive skin, available in pharmacies. In addition, the applicant argued that the goods were also dissimilar on account of their price (the opponent’s cream was priced around EUR 5 to 6, while the contested sign’s goods were priced around EUR 60 to 100). However, the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and directed against. To assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) of Regulation No 40/94, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks. Under these circumstances, the applicant’s claims must be set aside.

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 found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

PROSKIN	PROSKIN
Earlier trade mark	Contested sign

The signs are identical.

4. Global assessment, other arguments and conclusion

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).

The signs are identical. The contested goods in Class 8 were found similar to a low degree and are directed at the public at large, whose level of attention is average.

In light of the foregoing considerations and considering the interdependence principle and the identity of the signs, the Opposition Division concludes that there is a likelihood of confusion for the relevant public that could easily believe, for instance, that the goods found similar to a low degree with regard to the conflicting signs could be different products coming from the same undertaking.

With reference to the existence of other PROSKIN formative trade mark registrations, as argued by the applicant in its observations of 11/12/2018, it cannot be assumed on the basis of data concerning a register only that all such trade marks have been effectively used, as it does not necessarily reflect the situation in the market.

As far as the applicant’s coexistence claim is concerned, according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

Therefore, while the impact of coexistence on the finding of likelihood of confusion is accepted in theory, the conditions for this coexistence to be persuasive of the absence of a risk of confusion are, in practice, very difficult to establish and seldom prevail. It has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded and set aside.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 106 001. It follows that the contested application 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.

The Opposition Division

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Justyna GBYL

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.