OPPOSITION No B 2 777 434

vabelle cosmetics GmbH, Limburgerstrasse 22, 50672, Köln, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Action Service & Distributie B.V., Perenmarkt 15, 1681 PG Zwaagdijk-Oost, Netherlands (applicant), represented by Abcor B.V., Frambozenweg 109/111, 2321 KA Leiden, Netherlands (professional representative).

On 28/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 777 434 is partially upheld, namely for the following contested goods:

Class 3: Facial cleansers; creams, milks, lotions, gels and powders for the face and hands; cosmetic face creams; eye lotions, eye gel; eye creams; hair dyes and preparations for bleaching hair; perm and curling preparations.

Class 11: All the goods applied for in this Class, except for foot baths, sunbeds and solariums.

Class 21: All the goods applied for in this Class.

2. European Union trade mark application No 15 459 423 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 459 423 ‘ABELLE’. The opposition is based on European Union trade mark registrations No 9 584 392 ‘’vabelle’ and No 9 161 316 . 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 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 European Union trade mark registration No 9 584 392.

a) The goods

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

Class 3: Perfumery; essential oils; erotic room scents; massage oils; all the aforesaid goods solely for female intimate hygiene; hair lotions; dentifrices.

Class 5: Medicated lubricants; lubricating cream; all the aforesaid goods solely for female intimate hygiene.

Class 8: Hair cutting devices; depilatory apparatus (electric and non-electric), and shaving templates for intimate shaving.

Class 10: Massage apparatus, vibromassage apparatus; items for stimulation; condoms.

The contested goods, after a limitation, are the following:

Class 3: Facial cleansers; creams, milks, lotions, gels and powders for the face and hands; cosmetic face creams; eye lotions, eye gel; eye creams; makeup; eye make-up, eye pencils, mascara, lipstick, lip gloss, lip balm; eyelashes, adhesives for eyelashes; hair dyes and preparations for bleaching hair; perm and curling preparations.

Class 11: Apparatus and instruments not included in other classes, namely dryers, hair dryers, infrared drying apparatus for the hair, travel hair dryers, infrared lamps for drying the hair, hair dryers; foot baths, facial saunas, sunbeds and solariums.

Class 21: Apparatus and instruments not included in other classes, namely toothbrushes, dental floss apparatus, mouth showers, hair combs, hair brushes, whether or not electric; hot air brushes for hair; devices for the removal of make-up, whether or not electric.

An interpretation of the wording of the list of the contested goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 3

The contested hair dyes and preparations for bleaching hair; perm and curling preparations are all hair-related cosmetic preparations, such as the opponent’s hair lotions. They coincide at least in producer, end user and distribution channels. These are, therefore, considered to be at least similar.

The contested facial cleansers; creams, milks, lotions, gels and powders for the face and hands; cosmetic face creams; eye lotions, eye gel; eye creams are all cosmetic products (creams, lotions, gels), which purpose is to be applied to the skin of different parts of the body to maintain or improve its condition, as well as to clean and protect the skin (e.g. facial cleansers). The opponent’s hair lotions are lotions that are meant to be applied on the hair and their general purpose is also to maintain or improve the condition of certain part of the human’s body, namely the hair. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria (e.g. at least some of them would originate from the same provider), for the majority of them they are distributed through the same distribution channels and target the same relevant public. Contrary to the applicant’s assertions these goods would be found in a close proximity in drug stores and para-pharmacies. It follows, therefore, that the abovementioned contested goods are at least similar to a low degree to the opponent’s goods.

However, the contested makeup; eye make-up, eye pencils, mascara, lipstick, lip gloss, lip balm are all make-up products that are meant to give certain colour and glow to different parts of the face, which is not the purpose of the opponent’s goods in the same Class (being products for intimate hygiene, hair or teeth care). Furthermore, the remaining contested goods, namely eyelashes, adhesives for eyelashes (e.g. glue that is used for attaching the false eyelashes to the eyelid) are articles to be attached to the eyelids (to substitute or to thicken the existing eyelashes), as well as adhesives used for that purpose. The remaining contested goods and the opponent’s goods in this Class usually do not coincide in their provider. The goods in comparison are neither complementary, nor in competition. Even if found in the same stores they would not be placed close to each other. Furthermore, the contested goods have no points of contact with the rest of the opponent´s goods (which cover medicated substances, hair cutting and hair removing appliances, massage appliances and condoms) that would justify a level of similarity to be found. Therefore, the remaining contested goods are considered to be dissimilar to all of the opponent’s goods.

Contested goods in Class 11

The contested apparatus and instruments not included in other classes, namely dryers, hair dryers, infrared drying apparatus for the hair, travel hair dryers, infrared lamps for drying the hair, hair dryers are all appliances, which general purpose is hair care, which is also applicable to the opponent’ s hair cutting devices in Class 8. The goods in comparison coincide in end user and distribution channels. They also may share the same origin. These are, therefore, considered to be similar.

The contested facial saunas could be rather small appliances, used for steam cleaning the face and are therefore meant for improving and maintaining one´s appearance. Furthermore, the opponent´s depilatory apparatus (electric and non-electric) for intimate shaving in Class 8 are also meant in the broadest sense to maintain smooth and good looking skin. The goods in comparison are usually found in the same distribution channels and target the same public. The goods may share the same manufacturer. These are, therefore, considered similar at least to a low degree.

The same, however, does not apply to the contested foot baths, sunbeds and solariums, which include sanitary (bathroom) installations and sun-tanning appliances. They have no points of contact with the opponent’s goods that would justify a level of similarity to be found. They differ in their nature, purpose and usual origin form the opponent’s goods. Furthermore, the goods are neither in competition, nor necessarily complementary. Even when found in the same large department stores, they would not be placed in the same section. These are, therefore, considered to be dissimilar.

Contested goods in Class 21

The contested apparatus and instruments not included in other classes, namely toothbrushes, dental floss apparatus, mouth showers have the same general purpose as the opponent´s dentifrices in Class 3, namely maintaining the hygiene of the human teeth and mouth. Furthermore complementary may exist between some of them. The goods also coincide in producer, end user and distribution channels. These are therefore, considered to be similar at least to an average degree.

The contested hair combs, hair brushes, whether or not electric; hot air brushes for hair are all appliances, which general purpose is hair care, which is also applicable to the opponent’s hair cutting devices. The goods in comparison coincide in end user and distribution channels. These are, therefore, considered to be similar.

The contested devices for the removal of make-up, whether or not electric and the opponent´s depilatory apparatus (electric and non-electric) (such as mini electric facial hair remover) are all implements that are meant for grooming and beautifying purposes. These are, furthermore found in the same distribution channels and target the same relevant public. They may also originate from the same provider. The goods are considered to be similar at least to a low degree.

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 similar to various degrees are directed at the public at large, as well as at some customers with specific professional knowledge or expertise (such as hair stylists).The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

vabelle	ABELLE
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 signs are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06,RadioCom,EU:T:2008:165, §43).Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

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.

It is not excluded, as argued by the applicant, that a part of the relevant public, such as the French-speaking part may perceive the sequence ´belle´ in one or both of the signs in the meaning of ´beautiful´. However, for part of the relevant public, such as substantial part of the Bulgarian and Lithuanian-speaking parts of the public such a perception would not be applicable and the elements ´vabelle´ and ´ABELLE´ of the signs would not be perceived as carrying a particular meaning. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which these elements have no particular meaning as the likelihood of confusion for that part of the public may be higher.

As the elements ´vabelle´ of the earlier mark and ´ABELLE´ of the contested sign have no particular meaning, they are considered distinctive.

It follows that, conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the sequence of letters (and their sounds) ‘*abelle’, forming six out of seven letters in the earlier mark and the entire contested sign.

The applicant argues that there is a low degree of visual and aural similarity as the first letters of the signs in comparison are different.

Although the beginning of word marks may be more capable of attracting the consumer’s attention (as also argued by the applicant) than the subsequent components, this assumption does not apply in all cases (see judgment of 2 February 2012, T-387/10, ‘Arantax’, para. 70). Each case has to be considered with its own specifics.

In the case at issue, the signs coincide in almost the entire letter sequence of the earlier mark and the entire letter sequence of the contested sign. The difference, brought by the first letter ‘v’ of the earlier mark is not sufficient to clearly alter the impression of similarity between the signs brought by the coinciding sequence. It is considered that the signs are visually and aurally similar to above 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

As concluded above, the contested goods are partly similar to various degrees and partly dissimilar to the opponent’s goods. The degree of attention will vary from average to higher than average when choosing the relevant goods. Furthermore, the earlier sign has an average degree of distinctiveness and the signs are found visually and aurally similar to above average degree.

The similarity between the marks lies in the visual and aural coincidences arising from the sequence in common, ‘*abelle’. This is the only element of the contested sign and forms almost the entire (namely six out of seven letters of) the earlier mark.

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.

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).

Furthermore, 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). In the case at issue the above average degree of visual and aural similarity between the signs outweighs any lesser degree of similarity, found between some of the goods.

Bearing in mind the foregoing, the features that the earlier mark has in common with the contested sign, originating from the shared sequence of letters, prevail over the differences resulting from the single differing letter ‘v’ of the earlier sign. It is concluded that the relevant public could believe that the goods in question, found to be similar including to a low degree, come from the same undertaking or economically linked undertakings, even when the level of attention is higher than average.

The applicant refers to previous decisions of the Office to support its arguments that there exists no likelihood of confusion between the signs at issue. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, as they concern signs which have in common an element or a sequence that have a limited distinctiveness or is non-distinctive, which is not the case for the signs at issue. Therefore, the argument of the applicant has to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, that will not perceive a meaning in the elements of the signs and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. No 9 584 392. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar, including to a low degree, to those of the earlier trade mark.

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

The opponent has also based its opposition on earlier European Union trade mark registration No 9 161 316, registered for the following goods:

Class 3: Soaps; cosmetics; all the aforesaid goods solely for female intimate hygiene.

Even though this other earlier sign includes some additional goods, which are soaps and cosmetics, these are strictly for the purpose of intimate hygiene. Therefore, no relevant points of contact could be found between the remaining dissimilar contested goods in Classes 3 and 11 and the opponent’s goods as they have different purpose and the consumer would not expect them to originate from the same manufacturer. They are neither complementary, nor in competition and would be placed in different sections even when found in the same large stores. It is therefore, considered that these are dissimilar.

It follows that the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and this other earlier right.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Loreto URRACA LUQUE

Irina SOTIROVA

Rosario GURRIERI

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.