OPPOSITION No B 3 009 472

Ulrich Jüstrich Holding AG, Dorf 62, 9428, Walzenhausen, Switzerland (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Jit Singh and Livetogive Ltd, 139 Newton Road Great Barr, B43 6BE, Birmingham, United Kingdom (applicants), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 – 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 14/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 009 472 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 197 311 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 197 311 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 10 450 741 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 10 450 741.

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicants requested that the opponent submit proof of use of the trade marks on which the opposition is based, including European Union trade mark registration No 10 450 741.

In the present case, the date of filing of the contested trade mark is 11/09/2017.

Earlier European Union trade mark registration No 10 450 741 was registered on 05/10/2012. Therefore, the request for proof of use is inadmissible.

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 and services

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

Class 3: Toiletries; body cleaning and beauty care preparations; perfumery and fragrances; abrasive preparations for use on the body; adhesives for cosmetic purposes; adhesives for affixing false hair; aloe vera gel for cosmetic purposes; aloe vera preparations for cosmetic purposes; balms, other than for medical purposes; chalk for cosmetic use; cosmetic kits; cleaner for cosmetic brushes; cosmetic preparations for body care; cosmetic preparations for slimming purposes; cosmetics; cosmetics and cosmetic preparations; cosmetics containing keratin; cosmetics for personal use; cosmetics in the form of oils; cosmetics containing hyaluronic acid; cosmetics containing panthenol.

Class 8: Hygienic and beauty implements for humans and animals; hair styling appliances; manicure and pedicure tools; clippers for personal use [electric and non electric]; hair cutting and removal implements; body art tools; cuticle scissors; electric hair crimper; electric hair straightening irons; electric irons for styling hair; eyelash curlers; eyelash separators; hand tools for exfoliating skin; hand tools for removing hardened skin; hand tools for use in beauty care; hand-operated apparatus for the cosmetic care of eyebrows; manual clippers; pedicure implements; hand-pumped sprayers.

Class 21: Cosmetic and toilet utensils and bathroom articles.

Class 35: Online retail store services relating to cosmetic and beauty products.

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

Perfumery; cosmetics are identically contained in both lists of goods.

The contested aloe vera gel for cosmetic purposes; aloe vera preparations for cosmetic purposes; balms, other than for medical purposes; chalk for cosmetic use; cosmetic kits; cosmetic preparations for body care; cosmetic preparations for slimming purposes; cosmetics and cosmetic preparations; cosmetics containing keratin; cosmetics for personal use; cosmetics in the form of oils; cosmetics containing hyaluronic acid; cosmetics containing panthenol are included in the broad category of the earlier cosmetics. Therefore, they are identical.

The contested fragrances are included in the broad category of the earlier perfumery. Therefore, they are identical.

The contested abrasive preparations for use on the body are included in the broad category of the earlier abrasive preparations. Therefore, they are identical.

The contested body cleaning and beauty care preparations overlap with the earlier soaps. Therefore, they are identical.

The contested toiletries overlap with the earlier cosmetics. Therefore, they are identical.

The contested adhesives for cosmetic purposes; adhesives for affixing false hair; cleaner for cosmetic brushes are similar to a low degree to the earlier cosmetics because they coincide in distribution channels, relevant public and producer.

Contested goods in Class 8

The contested hygienic and beauty implements for humans and animals; hair styling appliances; manicure and pedicure tools; clippers for personal use [electric and non electric]; hair cutting and removal implements; body art tools; cuticle scissors; electric hair crimper; electric hair straightening irons; electric irons for styling hair; eyelash curlers; eyelash separators; hand tools for exfoliating skin; hand tools for removing hardened skin; hand tools for use in beauty care; hand-operated apparatus for the cosmetic care of eyebrows; manual clippers; pedicure implements; hand-pumped sprayers are similar to a low degree to the earlier cosmetics because they have the same purpose and they coincide in relevant public and producer.

Contested goods in Class 21

The contested cosmetic and toilet utensils; bathroom articles are similar to a high degree to the earlier cosmetics because they have the same purpose and they are complementary. Moreover, they coincide in distribution channels, relevant public and producer.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested online retail store services relating to cosmetic and beauty products are similar to the opponent’s cosmetics in Class 3.

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 and services found to be identical or similar to various degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

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 word element ‘JUST’ of the earlier mark is not meaningful in certain territories, for example in those countries where English or French are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public for whom the term ‘JUST’ is meaningless. On the contrary, it is likely to expect that for this part of the public the remaining elements of the marks will be associated to a meaning, with the exception of the letters ‘JST’ of the contested sign.

The earlier mark is a figurative mark, consisting of the term ‘JUST’ encompassed within an open oval in the upper end of which it is placed a small depiction of a white cross in the centre of a square black field. It is likely to expect that consumers might associate this element to the Swiss flag, which apart from the red colour, possesses the same elements and proportions. Under these elements the words and number ‘ORIGINAL – SINCE 1930’ are placed in a significantly smaller font size.

The contested sign consists of the sequence of three letters ‘JST’ depicted using black ordinary capital letters . The initial letter ‘J’ is slightly longer than the remaining underlined letters ‘S’ and ‘T’, under which the word ‘COSMETICS’ is placed, written also in black capital letters, but in a significantly smaller font size.

In their observations of 26/06/2018, the applicants argue that the earlier trade mark’s element ‘JUST’ has a low distinctive character given that many trade marks include this element. In support of their argument the applicants refer to some trade mark registrations in the EUIPO register.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘JUST’. Under these circumstances, the applicants’ claims must be set aside.

The elements ‘JUST’ and ‘JST’ have no meaning per se in Italian. Thus, they are considered distinctive.

However, as regards the remaining elements of the signs, account must be taken of the fact that, firstly, the depiction of the flag of the earlier mark is non-distinctive, as it simply can indicate the Swiss origin of the products. Also, the word ‘ORIGINAL’ of the earlier mark and the word ‘COSMETICS’ of the contested sign are almost identical to their equivalent in Italian, namely ‘originale/originali’ and ‘cosmetici’. In relation to those goods and services which relate to cosmetics or at least to beauty care, and considering that the word ‘ORIGINAL’ simply transmit a positive, generic information about the goods and/or the company responsible for their origin, these elements are deemed to be weak if not non-distinctive.

Furthermore, the Opposition Division considers that at least a part of the Italian public is accustomed to see the English word ‘SINCE’ in relation to a year, as in the case of the earlier mark’s ‘SINCE 1930’, so that this expression will be understood and it is necessarily non-distinctive, as it simply can indicate the year in which the activity of the opponent or the existence of the trade mark began.

Also, the graphic stylization of the signs is minimal and as such it is at most weak, if not non-distinctive.

The element ‘JUST’ in the earlier sign and the element ‘JST’ in the contested sign are the dominant elements as they are the most eye-catching by virtue of their position, features and size.

Visually, the signs coincide in the letters ‘J*ST’, forming the dominant and distinctive element of the contested sign and three out of four letters of the dominant and distinctive element of the earlier mark. They differ in the letter ‘u’ of the earlier mark and in the additional weak or non-distinctive elements of both signs, including the at most weak graphic representation of the signs.

Therefore, the signs are visually similar to an average degree.

Aurally, the earlier mark’s dominant and distinctive element will be pronounced as one word while the contested sign’s initial and dominant element ‘JST’ will be pronounced as an acronym and therefore ‘J-S-T’, followed by, in the case of the earlier mark, the weak or non-distinctive secondary element ‘ORIGINAL – SINCE 1930’ and in the case of the contested sign, the weak and secondary element ‘COSMETICS’, if pronounced at all.

Although the conflicting signs coincide in the pronunciation of some letters, they have a different rhythm and intonation. Overall, the signs are phonetically similar to not more than a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, although limitedly to weak or non-distinctive secondary elements meaning, the signs are considered to be, to this extent, conceptually not similar.

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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive or weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Class 3 covered by the earlier right and the goods and services in Classes 3, 8, 31 and 35 covered by the contested application have been found partly identical, partly highly similar, party similar to an average degree and partly similar to a low degree. They are directed at the public at large and also at professionals, whose degree of attention is considered to be average.

The signs are visually similar to an average degree and phonetically similar to at least a low degree. From a conceptual point of view, they are not similar. However, account must be taken of the fact that they are almost identical insofar their dominant and distinctive elements are concerned, namely the element ‘JUST’ of the earlier mark and the three letters ‘JST’ of the contested sign. All of their remaining element are secondary, weak or non-distinctive.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the almost identically coinciding element, that is to say, respectively ‘JUST’ and ‘JST’ plays an independent distinctive role in both signs.

Also, it is of crucial importance the fact that differences between the signs are confined to weak/non‑distinctive or secondary elements and aspects.

As already pointed out, considering all the above, there is a likelihood of confusion on the part of the public, in particular the part, such as the Italian-speaking, for whom the dominant and distinctive elements of the signs are meaningless. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 450 741. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 10 450 741 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

For the sake of completeness, it must be considered that according to the applicants, the EUIPO had the opportunity, previously, to assess the likelihood of confusion in a case rather similar to the case at hand, namely 03/07/2012, R127/2012, RODA v RDA where it stated in paragraph 17:

‘small differences in short words may frequently lead to a different overall impression. Furthermore, in general, in respect of word marks which are relatively short, such as those in this case, the central elements are as important as the elements at the beginning and end of the sign (see, to that effect, judgments of 6 July 2004, T-117/02, Chufafit, § 48; 20 April 2005, T-273/02, § 39)’.

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.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same, in consideration of other factor, such as the goods at hand or the fact that the marks have a meaning or not, or even the nature of the signs, whether they are word mark or figurative mark. It is clear that the circumstances of the case presented by the applicants are not the same. In that case, the goods involved were goods in Class 33, for which, in general, the aural aspect of the comparison acquires more importance. Also, unlike the instant case, the signs were both word marks, and the earlier mark was deemed to be meaningful. As a consequence, the Opposition Division is not obliged to follow the outcome of that case, given the different conditions and surrounding circumstances. On the contrary, as already mentioned, it has to examine each case on its own individual merits.

It follows that the applicants’ argument must be dismissed.

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 applicants are the losing party, they 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

Riccardo RAPONI

Andrea VALISA

Aurelia PEREZ BARBER

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.