OPPOSITION No B 2 870 171

Revlon (Suisse) S.A., Badenerstr. 116, 8952 Schlieren, Switzerland (opponent), represented by Josep Maria Rovira Peláez, Beautyge Beauty Group, S.L., WTC Almeda Park Tirso de Molina, 40 E, 08940 Cornellá de Llobregat (Barcelona), Spain (employee representative)

a g a i n s t

Esit Green S.L., C/Alemania 31 Nave 39 Poligono Montigala, 08917 Barcelona, Spain (applicant), represented by Carmen Blazquez, Estrella Polar 28 8I, 28007 Madrid, Spain (professional representative).

On 24/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 870 171 is upheld for all the contested goods, namely

Class 3: Cosmetics and cosmetic preparations.

2. European Union trade mark application No 16 200 801 is rejected for all the contested goods. It may proceed for the remaining non contested goods.

3. The applicant bears the costs, fixed at EUR 320.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 200 801 ‘REVYLEN’, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 3 335 833 ‘REVLON’. The opponent invoked Article 8(1)(b) and Article 8(5) 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: Perfumery, cosmetics, hair lotions.

The contested goods are the following:

Class 3: Cosmetics and cosmetic preparations.

Cosmetics are identically contained in both lists of goods.

The contested cosmetic preparations are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

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

REVLON	REVYLEN
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 marks are word marks composed of a single word.

Neither of the marks has a meaning for the relevant public. It follows that the marks ‘REVLON and ‘REVYLEN’, respectively, are distinctive.

Visually, the signs coincide in their overall structure, being both made up of a single word containing almost an identical number of letters (six in the earlier mark against seven in the contested sign). Moreover, the signs coincide in the sequence of letters ‘REV*L*N’. They differ in the letters ‘O’ in the earlier mark and ‘Y*E’ in the contested mark, whereas the letter ‘L’ is placed at the third last position in both marks.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛REV-L-N’, present identically in both signs. The pronunciation differs in the sound of the letters ‛O’ in the earlier mark and ‘Y*E’ of the contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. 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 inherent distinctiveness of the earlier mark must be seen as normal.

5. 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).

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 goods have been found to be identical and the signs are visually similar to a high degree and aurally similar to an average degree. Furthermore, there is no concept which could help to distinguish them.

While the beginning and the ending of the signs is identical ‘REV’ and ‘N’, respectively, the differences in the signs lie in the arrangement of the letters ‘Y-E’ and ‘O’, ‘REVYLEN’/‘REVLON’ which are placed in the last part of the marks.

In this respect it is pointed out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Account is also 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).

In the light of the above considerations, the visual and aural similarities between the signs are deemed to outweigh the dissimilarities between them to such an extent that the relevant consumer will likely believe that the goods in question come from the same or economically linked undertakings.

The applicant argues that there are ‘granted marks belonging to different owners of the opposing mark, which have a similar structure as the suspended mark, “REVILAN” (165261): Nice class: 3. These precedents determine the need for the same criterion because of the principles of equal treatment before the rule of law and respect for the administrative precedent applies’.

Firstly, it is not clear to which trademark the applicant refers to, if it is a national, an international or European Union trade mark. Moreover, it is not possible to determine whether the mark referred to by the applicant is a registration or an application, if it is currently under cancellation proceedings, etc., nor it is possible to know if it is a word mark or a figurative mark. Secondly, even where it was possible to identify the mark applicant refers to, it must be pointed out that the purpose of the present proceedings is to determine the likelihood that the relevant public will confuse the mark applied for with the opposing earlier trade mark registration. Therefore, it is irrelevant whether other marks possibly similar to the contested one have been registered (or applied for, as the case may be) in the European Union or any other trademark system. Under these circumstances, the applicant’s claims must be set aside.

Considering the above, the Opposition Division concludes that 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 European Union trade mark registration No 3 335 833. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

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

Janja FELC

Claudia ATTINA

Michal KRUK

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.