OPPOSITION No B 3 043 281

Micys Company S.p.A., Via Andrea Appiani 25, 20900 Monza (MB), Italy (opponent), represented by Giambrocono & C. S.p.A., Via Rosolino Pilo, 19/b, 20129 Milano, Italy (professional representative)

a g a i n s t

Zhejiang Pure Cosmetics Co. Ltd., No. 407, Yongjun Road, Beiyuan Street, Yiwu City, Zhejiang Province, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 24/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 281 is partially upheld, namely for the following contested goods:

Class 3: Nail polish; False nails; Nail art stickers; Cosmetics; Cotton wool for cosmetic purposes; Nail varnish removers; Nail care preparations; Lipsticks; Beauty masks; Eyebrow pencils; False eyelashes; Soap; Shampoos; Cleaning preparations; Pet shampoos; Abrasives; Essential oils; Incense; Potassium hypochloride.

Class 21: Cosmetic utensils; Toilet cases; Powder puffs; Perfume vaporizers; Make-up brushes; Foam toe separators for use in pedicures; Make-up removing appliances; Brushes; Eyelash brushes; toilet utensils.

2. European Union trade mark application No 17 527 524 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 17 527 524 (word mark ‘Puya’), namely against all the goods in Classes 3 and 21. The opposition is based on European Union trade mark registration No 5 487 533 (word mark ‘PUPA’), European Union trade mark registration No 8 851 231 (word mark ‘PUPA’) and Italian trade mark registration No 1 364 197 (figurative mark ). 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 5 487 533 and European Union trade mark registration No 8 851 231.

a) The goods

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

European Union trade mark registration No 5 487 533

Class 3: Soaps; deodorants for personal use, perfumery; essential oils, cosmetics, hair lotions, dentifrices.

European Union trade mark registration No 8 851 231

Class 21: Sponges; sponge massagers; brushes; massage brushes; hairbrushes; eyelash and eyebrow brushes; nail brushes; combs; eyelash and eyebrow combs; cosmetic brushes; applicator sticks for applying makeup; cosmetics applicators; toilet sponges; make-up brushes; powder puffs.

The contested goods are the following:

Class 3: Nail polish; False nails; Nail art stickers; Cosmetics; Cotton wool for cosmetic purposes; Nail varnish removers; Nail care preparations; Lipsticks; Beauty masks; Eyebrow pencils; False eyelashes; Soap; Shampoos; Cleaning preparations; Pet shampoos; Abrasives; Essential oils; Sandpaper; Incense; Potassium hypochloride.

Class 21: Cosmetic utensils; Toilet cases; Powder puffs; Perfume vaporizers; Make-up brushes; Foam toe separators for use in pedicures; Make-up removing appliances; Brushes; Eyelash brushes; Gloves for household purposes; Glasses [receptacles]; Kitchen utensils; Cake molds [moulds]; Pottery; China ornaments; Toilet utensils; Drinking vessels; Crystal [glassware]; Cages for household pets; Insulating flasks.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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

Cosmetics; soaps; essential oils are identically contained in both the applicant´s and the opponent´s lists of goods.

The contested nail polish; nail varnish removers; nail care preparations; nail art stickers; lipsticks; beauty masks; eyebrow pencils are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested shampoos; pet shampoos overlap with the opponent’s hair lotions. Therefore, they are identical.

The contested cleaning preparations overlap with the opponent’s soaps. Therefore, they are identical.

The contested incense overlaps with the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested false nails and false eyelashes are highly similar to the opponent’s cosmetics, because they have the same purpose of enhancing the appearance of the human body and are complementary. They share distribution channels and are directed at the same consumers. They are also provided by the same manufacturers.

The contested cotton wool for cosmetic purposes is similar to the opponent’s cosmetics. Cosmetics include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while cotton wool for cosmetic purposes is a soft mass of cotton used for applying liquids or creams to or removing them from the skin. Cotton wool for cosmetic purposes is used to apply cosmetics to or remove them from the face or body and is therefore complementary to cosmetics. In addition, these goods usually have the same producers, relevant public and distribution channels.

The contested abrasives are substances or materials used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Therefore, these goods are considered similar.

As this chemical solution can used as a disinfectant, the contested potassium hypochloride is similar to the opponent’s soaps as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

As sandpaper is a strong paper with sand or a similar rough substance stuck to one side, used for rubbing a surface in order to make it smoother, the contested sandpaper is dissimilar to all of the opponent’s goods in Classes 3 and 21 because they have nothing in common. The opponent’s goods in Classes 3 and 21 relate respectively to cosmetic goods and household products, so the contested sandpaper and the opponent’s goods do not have the same nature, purpose or method of use. In addition, they are not complementary nor in competition.

Contested goods in Class 21

Brushes; powder puffs are identically contained in both lists of goods.

The contested make-up brushes; eyelash brushes are included in the broad category of the opponent’s brushes. Therefore, they are identical.

The contested cosmetic utensils include, as a broader category, the opponent’s brushes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested toilet utensils include, as a broader category, the opponent’s toilet sponges. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

As the contested foam toe separators for use in pedicures are little devices whose purpose is to keep client's toes perfectly spaced during pedicure services, they are similar to a low degree to the opponent’s nail brushes because they are complementary. Moreover, they have the same purpose, which is the good application of a nail polish. They coincide in relevant consumers, distribution channels and producers.

Make-up removing appliances are products used to remove cosmetics, whereas cosmetic applicators are simple devices for applying make-up. Therefore, the contested make-up removing appliances are similar to a low degree to the opponent’s cosmetic applicators because they are complementary. Moreover, they coincide in distribution channels, end users and producers.

The contested perfume vaporizers are similar to a low degree to the opponent’s perfumery in Class 3 as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

A toilet case is a case adapted for toilet utensils whereas cosmetic utensils are beauty tools such as brushes. In addition, it is common to find toilet cases specifically designed for the storage of brushes. Thus, the contested toilet cases are similar to a low degree to the opponent’s brushes because they usually coincide in the relevant public and distribution channels. Furthermore, they are complementary.

However, the remaining contested gloves for household purposes; glasses [receptacles]; kitchen utensils; cake molds [moulds]; pottery; china ornaments; drinking vessels; crystal [glassware]; cages for household pets; insulating flasks are dissimilar to all of the opponent’s goods in Classes 3 and 21 because they have nothing in common. They have a different nature, purpose and method of use. They are neither complementary nor in competition. Further, they differ in producers and end consumers.

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 identical or similar (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise in the cosmetic industry.

The degree of attention may therefore vary from average to high, depending on the specialised nature of the goods.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

EUTM No 5 487 533 ‘PUPA’ EUTM No 8 851 231 ‘PUPA’	PUYA
Earlier trade marks	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 ´PUPA´ is meaningful in certain territories, e.g. it will be understood by the Spanish-speaking public as the word ‘pain’, by the English-speaking part of the public as a term describing the life stage of some insects undergoing transformation between immature and mature stages. Since a clear concept in one of the conflicting signs could assist the public in setting the signs apart, the Opposition Division deems it appropriate to focus the comparison of the signs on the public in France, for which the earlier marks will not be associated with a meaning.

Then, taking into account that the word ‘PUPA’ does not have a meaning, it is distinctive for the relevant goods.

The verbal element ‘PUYA’ of the contested sign refers to a plant which is native to South America. As it is a rare scientific term in the botanic field which is not known for the average consumer, the Opposition Division considers that the word “PUYA” will be perceived as an invented word that holds no meaning for the relevant public.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in three out of four letters, namely ‘PU*A’. They only differ in their third letter ‘P’/’Y’. It must be noted that the signs have an identical beginning, which bolsters the impression of similarity.

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

Aurally, the pronunciation of the signs coincides in their beginnings (/PU/) and endings (A). They only differ in the sound of one letter, namely (P)/(Y), which is furthermore placed in the middle of the sign. This difference will thus be less noticeable to the consumer. Moreover, the denominations are likely to be stressed in the first syllable /PU/, which makes the rhythm and intonation similar.

Therefore, the signs are aurally similar to at least 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.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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, Sabel, EU:C:1997:528, § 22).

In the present case, the contested goods have been found to be partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s goods. The relevant public, consisting of the general public, displays a degree of attention that may vary from average to high due to specialisation of some of the goods (for instance abrasives and potassium hypochloride).

Moreover, the signs are visually and aurally similar to at least an average degree, to the extent that they coincide in their beginning ‘PU’ and their ending vowel ‘A’. Considering that neither of the marks will be associated with a meaning that could help the consumer telling the conflicting signs apart, the Opposition Division finds that the different third letter is not sufficient to rule out likelihood of confusion.

Account is indeed 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).

Considering all the above, there is a likelihood of confusion on the part of the general public in France. 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 identical or similar (including to a low degree) to those of the earlier trade marks.

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 Opposition Division will now examine the opposition in relation to the Italian trade mark registration No 1 364 197, which was also claimed as an earlier right.

f) The goods

The goods on which the opposition is based are 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.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 25: Articles of clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas Trees.

The remaining contested goods are the following:

Class 3: Sandpaper.

Class 21: Drinking vessels; crystal [glassware]; glasses [receptacles]; gloves for household purposes; kitchen utensils; cake molds [moulds]; pottery; insulating flasks; China ornaments; cages for household pets.

The earlier Italian mark No 1 364 197 is registered for the entire class headings of Classes 3, 14, 21, 25 and 28 of the Nice Classification. It was filed on 05/10/2010. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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

Sandpaper is strong paper that has a coating of sand on it. It is used for rubbing and polishing surfaces to make them smoother. Therefore, the contested sandpaper is similar to a high degree to the opponent’s polishing preparations.

Contested goods in Class 21

The contested gloves for household purposes; glasses [receptacles]; kitchen utensils; cake molds [moulds]; pottery; insulating flasks are included, or overlap with, in the broad category of the opponent’s household or kitchen utensils and containers. Therefore they are identical.

The contested drinking vessels; crystal [glassware] are included in the broad category of, or overlap with, the opponent’s glassware. Therefore, they are identical.

As porcelain can refer to ornaments made of porcelain, together with the fact that china is a synonym of porcelain, the contested china ornaments are included in the broad category of the opponent’s porcelain. Therefore, they are identical.

The cages for household pets are identically contained in both the contested list and the opponent’s alphabetical list of Class 21. Therefore, they are identical.

g) 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 or highly similar are directed at the public at large.

The degree of attention may therefore vary from average to high, depending on the price of the goods (for instance, it would be higher than average for more expensive pieces of crystal [glassware]).

h) The signs

	PUYA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 earlier figurative mark consists of the slightly stylised white verbal element ‘PUPA’, centred on a bright red background.

The element ‘PUPA’ of the earlier mark will be understood as an Italian slang term of endearment, namely ‘sweetheart’, by the relevant public. Bearing in mind that the relevant goods are household-related, this element is considered to be of average distinctiveness.

The figurative elements, which are the slight stylisation of the verbal element ‘PUPA’ and the red rectangular background, are considered to be commonplace and banal. As such, they are non-distinctive elements of a purely decorative nature.

Regarding the contested word mark, it is composed of the word ‘PUYA’. Considering what has been stated above in section c) of this decision, which equally applies here, the contested sign holds no meaning for the relevant public.

As the letter (Y) does not exist in the Italian alphabet, the verbal element ‘PUYA’ will be instantly recognized as a foreign word for the relevant public.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in in three out of four letters, namely ‘PU*A’. They differ in their third letter ‘P’/’Y’, and in the additional graphic representation of the earlier mark, which has no counterpart in the contested sign. It must be noted that the letter ‘Y’ is particularly striking to the relevant public, as this letter does not exist in the Italian alphabet.

Therefore, the signs are visually similar to a slightly higher than average degree.

Aurally, the pronunciation of the signs coincides in their beginnings (/PU/) and endings (A). They differ in one letter, namely (P)/(Y).

Therefore, the signs are aurally similar to a higher than average degree.

Conceptually, although the public in the relevant territory will easily perceive the meaning of the earlier mark 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.

i) 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. Considering what has been stated above in section h) of this decision, the distinctiveness of the earlier mark must be seen as normal.

j) 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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, Sabel, EU:C:1997:528, § 22).

In the present case, the contested goods have been found to be identical or highly similar to the opponent’s goods. The relevant public, consisting of the public at large, displays a degree of attention that may vary from average to high due to the price of some of the goods (for instance crystals [glassware]). The earlier mark is deemed to have an average degree of distinctiveness.

The signs are aurally and visually similar to a (slightly) higher than average degree. It must be reiterated that the shorter a sign, the more easily the public is able to perceive all of its single elements. In the present case, they are both rather short signs, which means that the differentiating letter ´Y´ will be immediately noticed by the public and since such a letter does not exist in the Italian alphabet, it will be easily memorised.

Indeed, it is true, as the opponent argues, that visual and aural similarity of signs, together with identical goods, commonly leads to a likelihood of confusion, also bearing in mind the principle of interdependence, meaning that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods when evaluating likelihood of confusion. However, the conceptual differences may in certain circumstances counteract the visual and phonetic similarities between the signs concerned if at least one of the two signs at issue, from the view of the relevant public, has a clear and specific meaning so that the public is capable of grasping it immediately (22/06/2004, T 185/02, Picaro, EU:T:2004:189, § 56; and 12/01/2006, C 361/04 P, Picaro, EU:C:2006:25, § 20).

The earlier mark has a clear and specific semantic content, unlike the contested sign which will be seen and memorised as a foreign word. Consequently, it follows that the conceptual differences separating the signs at issue are, in the present case, sufficient to counteract the visual and phonetic similarities.

Considering all the above, and even given the fact that some of the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition insofar it is based on this Italian trade mark must be rejected.

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

Tu Nhi VAN

Lars HELBERT

Denitza STOYANOVA-VALCHANOVA

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.