OPPOSITION No B 2 805 581

Optimum Mark Sp. z o.o., ul. Dolna 3, 00-773 Warsaw, Poland (opponent), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative)

a g a i n s t

Marketing Worldwide S.A.S, Calle 93 No. 15/51 Of 406, Bogotá, Colombia (applicant), represented by Inventa International S.A., Alameda dos Oceanos, 41K-21, Parque das Nações, 1990-207 Lisbon, Portugal (professional representative).

On 29/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 805 581 is upheld for all the contested goods.

2. European Union trade mark application No 15 735 401 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 15 735 401 for the figurative mark . The opposition is based on, inter alia, Polish trade mark registration No 278 055 for the word mark ‘BeBeauty’. 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 Polish trade mark registration No 278 055.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 8: Razors for shaving, nail scissors, nail nippers, depilation appliances, electric and non-electric, razor cases, shaving cases, hackles, hand implements for hair curling, manicure sets, electric, electrical or non-electrical shavers, electrical or non-electrical hair clippers, scissors, electrical or non-electrical nail clippers, nail files, electrical or non-electrical nail polishers, pedicure sets, tweezers, pliers, hair-removing tweezers, cuticle scissors, emery files, electrical, emery files, tweezers, hair straightening irons, razor strops, beard clippers, eyelash curlers, razor blades.

The contested goods are the following:

Class 8: Electric hair straightening irons.

Electric hair straightening irons is equivalent to the opponent’s hair straightening irons since this kind of apparatus are normally powered by electricity. Therefore, they are identical.

1. 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.

2. The signs

BeBeauty
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 word ‘beauty’, common to both signs, is an English word meaning ‘state or quality of being beautiful’ which, in relation to the relevant goods (i.e. hair straightening irons), may evoke certain allusive or laudatory connotations resulting in a limited distinctive character.

However, this word, and the English verb ‘be’ of the earlier mark, will be understood by only part of the relevant public with a good command of English. The Opposition Division finds it appropriate to focus its comparison on the significant part of the Polish public for whom these words are meaningless and, therefore, normally distinctive.

Therefore, the earlier mark, ‘BeBeauty’, will be seen as fanciful and has an average degree of distinctiveness. In word marks the use of mixed lower- and upper-case letters is possible, as in the current depiction of the earlier mark, thus causing a visual separation of the words.

As regards the contested sign, the verbal element ‘BEAUTY’, as explained above, has no meaning for the relevant public taken into account. Therefore, it is distinctive to an average degree. The letter depicted above it, ‘B’, will be probably perceived as such (i.e. a letter) and as repetition of the initial letter of the element ‘BEAUTY’ and its distinctiveness is likewise average. The English word ‘factor’ will be understood as meaning ‘circumstance, fact, or influence that contributes to a result’ since this word is very similar to the equivalent word in Polish ‘faktor’. This word as such, and without a noun to complement, define or contextualise it (e.g. straightening factor), has no particular meaning in relation to the relevant goods and is therefore of average distinctiveness.

The contested sign features figurative elements having an essentially ornamental function (i.e. standard typeface and background), which do not detract the consumer’s attention from the (distinctive) verbal elements to which more importance will be given. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Although the contested sign has no elements that could be considered clearly more dominant than other, the element at the very bottom, ‘FACTOR’, is to some extent secondary due to its position, smaller size and finer print.

Visually, the signs have the letters ‘B*BEAUTY’ in common, although arranged in a different manner, namely in the earlier mark forming a single word while in the contested sign the first letter ‘B’ is depicted above the verbal element ‘BEAUTY’. The signs differ in the second letter of the earlier mark, ‘E’, and the additional verbal element ‘FACTOR’ of the contested sign, the impact of which is less due to its secondary role. Although rather standard and of limited impact, the signs also differ in the figurative elements featured in the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are visually similar to a below-average degree.

Aurally, when pronouncing the contested sign, a substantial part of the public will not pronounce the contested sign’s single letter ‘B’ (in red), because it will be perceived as a repetition of the first letter of the sign’s verbal element, as explained above. However, it cannot be excluded that a part of the public will also enunciate the letter ‘B’, sounding it out as a syllable (i.e. /be/), according to the Polish pronunciation rules.

Therefore, the contested sign may be pronounced either as 1) BEAU / TY / FAC / TOR or as 2) BE / BEAU / TY / FAC / TOR. The earlier mark, for its part, will be pronounced as BE / BEAU / TY. Consequently, in the second scenario the pronunciation of the signs differs in only the sound of the additional word at the end of the sign ‘FACTOR’ while in the case where the letter ‘B’ is not pronounced, the signs additionally differ to this extent.

Considering the above, the aural similarity may be average or high depending on whether the letter ‘B’ is pronounced or not, as the word ‘FACTOR’ of the contested sign is at the end of the contested sign.

Conceptually, neither of the signs has a meaning as a whole. Although the public in the relevant territory will perceive the meanings of the letter ‘B’ (conveying the letter that it evidently represents) and that of the word ‘FACTOR’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

3. 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.

4. Global assessment, other arguments and conclusion

The goods are identical. They target the general public, which has an average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally the degree of similarity can be average or high. The similarity arises mainly from the word ‘BEAUTY’, common to both signs and the preceding elements ‘Be’ v ‘B’, despite being arranged in a different manner. The main differences are confined to non‑distinctive or secondary elements and aspects. Conceptually, the signs are not similar (for the part of the public on which the present assessment is focussed) since the letter ‘B’ and the word ‘FACTOR’ convey a meaning. However, the meanings conveyed by them are not very influential in the overall impression and are not capable of counteracting the visual and phonetic similarities. This is because the letter will be somewhat linked to the (meaningless) word ‘BEAUTY’ (depicted below it in the sign) and the element ‘FACTOR’ has a secondary role due to its position and size. Therefore, the combination of these circumstances may lead to a situation where the public cannot safely distinguish between the commercial origins of the goods under the trade marks at issue.

Moreover, 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 undertaking or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, although the relevant public may detect certain visual and aural differences between the conflicting signs, the likelihood that the public may perceive the contested sign as a restyling of the earlier mark is very real.

In view of the above and the relevant circumstances of the case, as well as the interdependence principle between the relevant factors, namely that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17) and that the consumer only rarely has the chance to directly compare two trade marks and must rely on their imperfect recollection, the Opposition Division concludes that the average degree of similarity of the signs (overall) coupled with the identity of the goods does not allow for a safe exclusion of the likelihood of confusion.

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

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 278 055. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Irena LYUDMILOVA LECHEVA

Birgit FILTENBORG

Andrea VALISA

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.