OPPOSITION No B 3 013 193

Paula’s Choice, LLC, 705 5th Avenue South, Suite 200, 98104 Seattle, United States of America (opponent), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 8033 München, Germany (professional representative)

a g a i n s t

Katrin Büttner, Eppendorfer Weg 258, 20251 Hamburg, Germany (applicant), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative).

On 14/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 013 193 is partially upheld, namely for the following contested goods and services:

Class 3: Cosmetics, in particular cosmetics for the skin.

Class 35: Retailing or wholesaling in relation to cosmetics, cosmetic instruments and apparatus and medical instruments and apparatus.

Class 44: Hygienic and beauty care for human beings, in particular body and beauty care consultancy, skin care consultancy, beauty care salons, operation of skin care salons and cosmetic treatment of the body.

2. European Union trade mark application No 16 918 005 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 44: Human healthcare services, in particular health consultancy, including personal health consultancy in relation to a healthy lifestyle, medical services, mental and physical health services, healing services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 918 005 ‘paula.b’ (word mark). The opposition is based on European Union trade mark registration No 5 631 494 ‘PAULA’S CHOICE’ (word mark). The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

In its notice of opposition of 21/12/2017, the opponent indicated as grounds of its opposition Article 8(1)(a), Article 8(1)(b) and Article 8(5) EUTMR. However, in its submissions dated 16/03/2020, it only referred to the ground of Article 8(1)(b) EUTMR. Since the opponent did not explicitly and unconditionally withdraw the grounds of Articles 8(1)(a) and 8(5) EUTMR, the Opposition Division will take these grounds into account and examine the opposition in relation to all the grounds as originally indicated in the notice of opposition.

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 and services

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

Class 3: Skin care products, cleansers, make-up removers, toners, exfoliants, moisturisers, creams, lotions, facial and body masks; skin care product kits consisting primarily of cleansers, toners, moisturisers and sunscreens; blemish and oil control products, solutions, lotions, gels and facials masks; sunscreens, tanning lotions, creams and gels, skin lightening lotions, creams and gels; lip care products, lip balms, lip protectors and lipscreen; hair and body care products, body scrub, body lotion, body mist, body creams, body balm, hair and body shampoos, conditioner, shaving cream, shaving gel; make up and cosmetics, foundation, concealer, powder, blush, eyeshadow, eye and brow liners, tints and pencils, mascara, lipstick, lip liner, lip gloss, face and body shimmer, nail polish, base and topcoat, oil-blotting papers for cosmetic purposes.

Class 35: Retail store services, online retail store services and catalogue and mail order retail services featuring skin care products, cosmetics, cosmetic applicators, bags, accessories and books; providing subscriptions to beauty columns and newsletters; providing subscriptions to beauty columns and newsletters via the internet.

Class 44: Providing information about the cosmetic industry, personal care and beauty products; providing information about the cosmetics industry, personal care and beauty products via the internet.

The contested goods and services are the following:

Class 3: Cosmetics, in particular cosmetics for the skin.

Class 35: Retailing or wholesaling in relation to cosmetics, cosmetic instruments and apparatus and medical instruments and apparatus.

Class 44: Hygienic and beauty care for human beings, in particular body and beauty care consultancy, skin care consultancy, beauty care salons, operation of skin care salons and cosmetic treatment of the body; human healthcare services, in particular health consultancy, including personal health consultancy in relation to a healthy lifestyle, medical services, mental and physical health services, healing services.

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

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, 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 cosmetics, in particular cosmetics for the skin (see the aforementioned interpretation of the wording of the applicant’s goods) are identically contained in the opponent’s list of goods.

Contested services in Class 35

The contested retailing in relation to cosmetics, cosmetic instruments and apparatus, if not identical, is at least highly similar to the opponent’s retail store services, online retail store services and catalogue and mail order retail services featuring skin care products, cosmetics, cosmetic applicators. These services at least have the same purpose, nature and method of use. Furthermore, they are provided by the same undertakings and target the same relevant public via the same distribution channels.

The contested wholesaling in relation to cosmetics, cosmetic instruments and apparatus is at least similar to the opponent’s retail store services, online retail store services and catalogue and mail order retail services featuring skin care products, cosmetics, cosmetic applicators as they have the same purpose and nature. Furthermore, they usually coincide in provider.

The contested retailing in relation to medical instruments and apparatus is at least similar to the opponent’s retail store services, online retail store services and catalogue and mail order retail services featuring skin care products, cosmetics, cosmetic applicators. They have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. In addition, the retail services under comparison concern goods that are commonly retailed together in the same outlets (e.g. pharmacies or other specialised shops) and they target the same public.

The contested wholesaling in relation to medical instruments and apparatus consists exclusively of sales activities and activities revolving around the actual sale of goods to other undertakings (retailers), which then sell the goods to end consumers. It is, therefore, at least similar to a low degree to the opponent’s retail store services, online retail store services and catalogue and mail order retail services featuring skin care products, cosmetics, cosmetic applicators. Even though the relevant public and distribution channels are different, these services have the same nature, purpose and method of use and are complementary to each other.

Contested services in Class 44

The contested hygienic and beauty care for human beings, in particular body and beauty care consultancy, skin care consultancy, beauty care salons, operation of skin care salons and cosmetic treatment of the body (see the aforementioned interpretation of the wording of the applicant’s services) includes, as a broader category, or overlaps with, the opponent’s providing information about the cosmetic industry, personal care and beauty products. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

However, the contested human healthcare services, in particular health consultancy, including personal health consultancy in relation to a healthy lifestyle, medical services, mental and physical health services, healing services (see the aforementioned interpretation of the wording of the applicant’s services), being basically medical and healthcare services, have nothing relevant in common with the opponent’s services in Class 44, which belong to the category of beauty consultancy. Although the natures and methods of use of the services may coincide, given that both encompass consultancy services (as exemplified in the specification of the contested services), there is a notable difference in the purposes of these services as well as their usual providers. These services require professional knowledge and expertise in related, but nonetheless separate, fields which, at least in the case of human healthcare services, must be certified/licensed. It should also be noted that the distribution channels are different as a result of the fact that medical services are usually rendered through registered healthcare establishments and beauty consultancy is provided by cosmeticians and beauty centres. These services are neither complementary nor in competition. Although they may target the same public and despite the other potential coincidences discussed above, they are dissimilar.

Furthermore, the contested human healthcare services, in particular health consultancy, including personal health consultancy in relation to a healthy lifestyle, medical services, mental and physical health services, healing services bear even less similarity to the remaining opponent’s goods and services, which cover a wide range of beauty care and cosmetic products in Class 3, as well as retail services related to care products, cosmetics, cosmetic applicators, bags, accessories and books, and providing subscriptions to beauty columns and newsletters in Class 35. Considering the above, it is clear that these goods and services differ in their purposes, natures and methods of use. Furthermore, they do not have the same relevant public, producers/providers or distribution channels. They are neither complementary nor in competition. Considering this, the contested services are likewise dissimilar to all of the opponent’s goods and services in Classes 3 and 35.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large and, furthermore, some of the contested services (e.g. wholesaling of medical instruments and apparatus) also target business customers with specific professional knowledge or expertise given that they refer to the business of selling goods to retailers.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

PAULA’S CHOICE	paula.b
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 signs’ common verbal component, ‘PAULA’, will be associated with a female given name throughout the European Union. As it bears no relation to the goods or services in question, it has a normal degree of distinctiveness thereof in both signs.

In the earlier mark the component ‘PAULA’ is followed by an apostrophe and the letter ‘S’, which will be perceived, at least by the English-speaking public in the relevant territory, as a standard way of indicating possession. This affects the comprehension of ‘PAULA’S’ in the earlier mark, and it will be perceived as ‘(something) belonging to/possessed by Paula’.

Likewise, the earlier mark’s verbal element ‘CHOICE’ will be understood, at least by English-speaking consumers, as ‘the act or an instance of choosing or selecting; the opportunity or power of choosing; a person or thing chosen or that may be chosen; a supply from which to select’ (information extracted from Collins English Dictionary on 10/09/2020 at https://www.collinsdictionary.com/dictionary/english/choice). Together with the verbal element ‘PAULA’S’, it will evoke a positive connotation for a selection or preference of the relevant goods and/or services made/recommended by Paula. Therefore, the element ‘CHOICE’ is somewhat subordinated to the other verbal element ‘PAULA’S’ and, as a result, its distinctiveness may also be slightly reduced.

In the contested sign, the common verbal component ‘paula’ is followed by a full stop and the letter ‘b’. While the full stop is an element of little trade mark significance (21/06/2018, R 2427/2017‑5, tec.nicum (fig.) / T TECNIUM (fig.), § 95), the letter ‘b’ refers to this letter of the alphabet. For some consumers this may evoke an initial letter of the surname of a girl named Paula and, since it has no particular meaning for the relevant goods and services, it has a normal degree of distinctiveness thereof.

Considering all the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland and Malta for which the signs have more commonalities.

Visually and aurally, the signs coincide in the distinctive verbal component ‘PAULA’ and its sound. They differ in the letters ‘S’ (earlier mark) and ‘b’ (contested sign), which follow the coinciding component in the respective signs, and in their sound. They also differ in the additional verbal element ‘CHOICE’ of the earlier mark and its sound, the distinctiveness of which is slightly reduced, and which has no counterpart in the contested sign. The differences due to the earlier mark’s apostrophe and the contested sign’s full stop have only a limited impact, if any, on the visual and aural comparison of the signs.

The fact that the earlier mark is written in upper case while the contested sign is written in lower case is immaterial in the present case, because, in the case of word marks, it is the word as such that is protected and not its written form (21/09/2012, T‑278/10, WESTERN GOLD / WeserGold et al., EU:T:2012:1257, § 44, 46), as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here.

It is important to note that the coinciding component is placed at the beginning of both signs, which is where consumers generally tend to focus on 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.

Considering all the above, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The public under analysis will perceive the earlier mark as a selection (or preference) made/recommended by Paula, whereas the contested sign will be seen as referring to a girl named Paula whose surname may, at least for some consumers, begin with the letter ‘b’. As the signs will be associated with similar meanings because they both refer to the same female given name, they 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element with reduced distinctiveness in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the relevant public in the relevant territory.

As stated above, the contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and services. Those found to be identical or similar (to varying degrees) target the public at large and business customers, whose degree of attention varies from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs in conflict are similar to at least an average degree on all levels (visually, aurally and conceptually), as explained in detail in section c) of this decision. This is because the signs share the distinctive verbal component ‘PAULA’, which serves as an identifier of commercial origin in the earlier mark, for the reasons given above, and which is found at the beginning of the contested sign where it catches the consumers’ attention first. Consequently, the differences between the signs, as indicated above, are not sufficient to counteract the similarities between them and to exclude a likelihood of confusion.

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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, it is conceivable that the relevant public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking, under the ‘PAULA’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 631 494. 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 sign must be rejected for the goods and services found to be identical and similar (to varying degrees) to those of the earlier trade mark, including those contested services that are similar to only a low degree to the opponent’s services. This is because, bearing in mind the aforementioned interdependence principle, the low degree of similarity between those services is clearly offset by the overall at least average similarity between the signs.

The rest of the contested services 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 06/03/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 16/03/2020.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based with its observations which were received on 16/03/2020.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

The Opposition Division

Boyana NAYDENOVA

Martin MITURA

Holger Peter KUNZ

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.