CANCELLATION No 30 225 C (INVALIDITY)

HFC Prestige International Holding Switzerland Sàrl, Chemin Louis-Hubert 1-3, 1213 Petit-Lancy, Switzerland (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Erayba Cosmetics, S.A., Serra Montsec, 44-46 Entlo 3ª, 08950 Esplugues de Llobregat, Spain (EUTM proprietor), represented by Olten Patentes y Marcas, Rambla de Catalunya, 66, Planta 6ª, GH, 08007 Barcelona, Spain (professional representative).

On 03/04/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 17 559 601 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 559 601 (3D mark). The application is based on European Union trade mark registration No 15 010 044 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion because the goods are identical, and the marks are similar. The element ‘Wellplex’ of the contested sign has an independent distinctive role and the element ‘Erayba’ is the company name of the EUTM proprietor. The shape of the packaging is weak and the verbal elements ‘Wellplex’ and ‘Erayba’ are the most distinctive elements of the sign. The marks are visually and aurally similar and conceptually the marks have no meanings. The earlier trade mark has at least a normal degree of distinctiveness.

In reply, the EUTM proprietor argues in relation to the comparison of marks that visually, the earlier mark has one verbal element whereas the contested mark has two, that the length of the verbal elements is different, that the marks have a different beginning ‘Erayba’ v ‘WELLA-’ and that the three-dimensional shape of the contested mark clearly differentiates the marks. Aurally, the marks are completely different because they have a different number of letters, syllables and words. ‘Erayba’ has no counterpart in the earlier mark and the coincidence in ‘-PLEX’ is at the end of the marks to which the consumers pay less attention. With regard to the conceptual aspects of the marks, it is argued that the element ‘Erayba’ in the contested sign is the proprietor’s company name, that the EUTM proprietor owns a family of marks ‘Erayba’, which is present on the market, and that ‘Erayba’ enjoys enhanced distinctiveness. ‘WELLPLEX’ is composed of two terms describing the characteristics of the goods, namely the English word ‘WELL’, referring to the quality of the goods, and the ending ‘PLEX’, which refers to ‘phlex’, which is an ingredient of the relevant goods. The non-distinctive term ‘PLEX’ is used in haircare goods by a number of different producers on the market, and haircare professionals are acquainted with this term. Consequently, this conceptual similarity is so weak that it cannot offset the significant visual and aural differences between the marks. The coincidences between the marks are the weak string of letters ‘WELL’ and the non-distinctive ending ‘PLEX’. Therefore, there is no likelihood of confusion.

Furthermore, the EUTM proprietor claims that the earlier trade mark is weak due to the descriptive connotations of the elements ‘WELL(A)’ and ‘PLEX’. It also refers to a decision of the Boards of Appeal of 05/07/2016 in case R 942/2015-4, Sweetly STEVIA SO NATURAL (fig.) / Sweet (fig.), where no likelihood of confusion was found between two trade marks coinciding in a non-distinctive element. The contested mark is referred to as ‘Erayba’ because consumers tend to shorten signs and omit descriptive terms. The contested goods are sold only to hairdressers through exclusive professional distribution channels. Professionals will understand the generic connotations of the verbal elements ‘WELLAPLEX’ and ‘WELLPLEX’.

The EUTM proprietor also argues that ‘Erayba’ has been present on the market for more than thirty years, that it targets professionals and is present in around twenty-five different countries of the European Union and the world. The EUTM proprietor is the owner of more than twenty trade marks that form a family of marks. The marks cover goods of excellent quality and have been extensively used for more than thirty years. The goods are sold only to haircare professionals through exclusive distributors, which means that the relevant public will have a high degree of attention. The contested mark was launched in 2016 whereas the applicant’s trade mark was launched in 2017.

In support of its observations, the EUTM proprietor filed the following evidence:

• Annex 1: photographs concerning the launch of the contested trade mark at a trade fair in 2016,

• Annex 2: a document listing the EUTM proprietor’s registered trade marks worldwide,

• Annex 3: a printout of the entry ‘well’ from Collins English Dictionary,

• Annex 4: website printouts concerning ‘plex’ haircare products,

• Annex 5: examples of registered trade marks containing the element ‘PLEX’,

• Annex 6: a printout from the EUTM proprietor’s website,

• Annex 7: website printouts with offers of ‘ERAYBA WELLPLEX’ goods,

• Annex 8: website printouts with offers of other ‘ERAYBA’ goods,

• Annex 9: photographs concerning the presence of Erayba Cosmetics at various international fairs between 2012 and 2019,

• Annex 10: presentations of Erayba Cosmetics on main social media networks,

• Annex 11: advertisements for ‘ERAYBA’ products,

• Annex 12: results of internet search for the terms ‘Erayba’ and ‘Erayba hair products’,

• Annex 13: articles concerning the EUTM proprietor’s products from various professional internet magazines,

• Annexes 14-19: invoices concerning ‘ERAYBA’ haircare products and advertising materials from various countries of the EU, dated 2013-2018.

The applicant argues that the relevant public is not only composed of professionals but also of the public at large. The degree of attention of the public will be average. It also reiterates that the verbal element ‘WELLPLEX’ has an independent distinctive role in the contested sign. The element ‘Erayba’ will be seen as a company name or an umbrella brand. The element ‘WELLPLEX’ is not descriptive for the goods and the ending ‘-PLEX’ is not negligible. The three-dimensional aspect of the contested mark does not sufficiently differentiate the marks. Overall, there is likelihood of confusion.

In reply, the EUTM proprietor reiterates the visual and aural differences between the marks. It also argues that consumers will recognise ‘WELLA’, a well-known haircare mark, in ‘WELLAPLEX’. ‘PLEX’ will be recognised and understood by the relevant public as a non-distinctive term commonly used on the market. The EUTM proprietor submitted further evidence to prove this claim. The elements ‘ERAYBA’ v ‘WELLA’ will clearly distinguish the marks. Consequently, there is no likelihood of confusion.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

Class 3: Soaps, perfumery, essential oils, hair lotions, preparations for the cleaning, care and beautification of the skin, scalp and hair, hair styling products, hair tinting, bleaching, dyeing and coloring preparations.

The contested goods are the following:

Class 3: Cosmetic preparations for the hair and scalp; conditioner; dyes; and gels; foams; creams; moisturizers; hairsprays; skin-care masks and hair care lotions.

The contested cosmetic preparations for the hair and scalp; conditioner; dyes; and gels; foams; creams; moisturizers; hairsprays; skin-care masks and hair care lotions are identical to the applicant’s preparations for the cleaning, care and beautification of the skin, scalp and hair, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

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.

Contrary to the EUTM proprietor’s arguments, it is considered that the goods found to be identical target the public at large and that the degree of attention of this public will be average. This is because the goods are relatively common body care products that are normally bought by the public at large. Nothing in the list of goods suggests that they would target only professionals.

The particular circumstances in which the goods or services covered by the mark at issue are or are intended to be marketed may vary in time and according to the wishes of its proprietor. The analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest of the relevant public that it should not be exposed to the risk of being misled as to the commercial origin of the goods or services in question, cannot be dependent on the commercial intentions, whether carried out or not and which are naturally subjective, of the trade mark proprietors (16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 38).

For the above reasons, the EUTM proprietor’s claims that its goods are offered only through specialised distribution channels and only to professionals (hairdressers) who will display a high degree of attention must be dismissed.

3. The signs

Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark.

The contested mark is a three-dimensional mark consisting of a stylised cuboidal packaging with a geometrical figurative element in the middle and the verbal elements ‘Erayba’ and ‘Wellplex’ in the upper-central part of the mark.

The EUTM proprietor argues that the strings of letters ‘WELLA’ in the earlier mark and ‘Well’ in the contested sign refer to the English word ‘well’ and that because this word refers to the quality of the goods, these strings of letters are weak. It also argues that the string of letters ‘PLEX’ that the marks have in common refers to ‘phlex’, which is an ingredient of haircare products, and that it is, therefore, non-distinctive. The EUTM proprietor also submitted evidence demonstrating actual use of the element ‘PLEX’ for haircare products by a number of different manufacturers.

Although ‘well’ means, essentially, ‘in a good or satisfactory way’ in English (information extracted from Oxford English Dictionary on 23/03/2020 at https://www.lexico.com/definition/well), the relevant public is not likely to readily perceive the string of letters ‘WELL’ in both marks as a clear reference to the quality of the goods. This is because this string of letters does not stand alone but is fully integrated in a longer verbal element, ‘WELLAPLEX’ in the earlier mark and ‘Wellplex’ in the contested sign, where the remaining letters do not form an English word. Moreover, the perception of ‘WELLA’/‘Well’ as a reference to the quality of the goods is even less likely for the non-English-speaking public. Consequently, the strings of letters ‘WELLA’ in the earlier mark and ‘Well’ in the contested sign are considered to be distinctive to normal degree (and not weak, as claimed by the EUTM proprietor).

Furthermore, the average consumer is not likely to be acquainted with the fact that the string of letters ‘PLEX’ refers to an ingredient of the relevant goods. Such specific information is likely to be known only to professionals. Although the EUTM proprietor submitted some evidence demonstrating that the string of letters ‘PLEX’ is used by a number of different manufacturers for haircare products, the evidence does not show to what extent and in which territories these goods were present in the market, and through which trade channels they were offered for sale and to which type of public. Consequently, the EUTM proprietor failed to prove that the public at large in the whole European Union had become acquainted with ‘PLEX’. Therefore, it must be concluded that the string of letters ‘PLEX’ is distinctive to a normal degree for the relevant public for all the relevant goods. There are no reasons to consider the string of letters ‘PLEX’ weak or non-distinctive.

Therefore, the verbal elements ‘WELLAPLEX’ and ‘Wellplex’ as a whole have no clear meaning in relation to the relevant goods and are, therefore, distinctive to a normal degree. These verbal elements are not simply composed of terms describing the characteristics of the goods, as argued by the EUTM proprietor.

The stylisation of the earlier mark, namely the combination of normal and bold letters and the very small (almost imperceptible) circle attached to the letter ‘P’, will have only a limited impact because the use of normal and bold letters is relatively common and the circle is very small.

Regarding the contested sign, the cuboidal packaging with several wide stripes in various shades of colour is a basic shape with a simple stylisation. Therefore, these elements are weak.

The conjoined geometrical figurative element in the middle part of the contested sign is relatively elaborate and is, therefore, distinctive to a normal degree.

The verbal element ‘Erayba’ has no meaning in relation to the relevant goods and is, therefore, distinctive to a normal degree.

The verbal element ‘WELLAPLEX’ of the earlier mark is the dominant element of the earlier trade mark because it clearly overshadows the almost imperceptible little circle attached to the letter ‘P’.

The packaging of the contested mark is the dominant element of the mark due to its large size.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 BEST TONE (FIG. MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Therefore, it is considered that the verbal elements ‘Erayba’ and ‘Wellplex’ (both distinctive) have a stronger impact on the consumer than the figurative and three-dimensional components of the contested mark. ‘Wellplex’ will play a stronger visual role in the perception of the mark than the element ‘Erayba’ because it is depicted in larger characters and is placed in a more prominent position (in the upper-central part of the mark), while the element ‘Erayba’ is quite small and is placed near the edge of the packaging.

Finally, the Cancellation Division concurs with the applicant’s assertion that the verbal element ‘Wellplex’ is a separate distinctive element of the contested sign (among other distinctive or weak elements). This is because this element is distinctive to a normal degree and is clearly visually detached from the other elements of the mark.

Visually, the signs coincide in ‘WELL*PLEX’. However, they differ in the additional letter ‘A’ of the earlier mark and in all the other elements of the marks that have no counterpart in the trade mark of the other party, as described in detail above.

The verbal element ‘Wellplex’, which is a separate distinctive verbal element of the contested sign, is highly similar to the only verbal element of the earlier mark, ‘WELLAPLEX’, because it differs only in the additional letter ‘A’ and the (rather commonplace) stylisation of the letters.

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

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 ‘WELL*PLEX’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‛A’ of the earlier sign, which has no counterpart in the contested mark.

The pronunciation also differs, in principle, in the additional sound of the letters ‘ERAYBA’ of the contested mark, which have no counterpart in the earlier mark. In view of the stylisation, size and placement of the two verbal elements of the contested sign, and given that the verbal element ‘WELLPLEX’ is distinctive, the contested mark can be referred to aurally in three possible ways: either as ‘WELLPLEX’ alone, or ‘WELLPLEX ERAYBA’ or ‘ERAYBA WELLPLEX’. For the above reasons, it is very unlikely that the contested sign would be referred to only as ‘ERAYBA’, as claimed by the EUTM proprietor.

Therefore, the degree of aural similarity between the marks is at least average.

Conceptually, the verbal elements ‘WELLAPLEX’, ‘Wellplex’ and ‘Erayba’ do not have any readily perceptible meaning for the relevant public. The geometrical figurative element of the contested mark and the (almost imperceptible) little circle in the earlier mark are abstract images and, therefore, have no meaning. The only concept that can be found is of the three-dimensional packaging of the contested sign (which is a weak element). 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.

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. For the above reasons the earlier trade mark cannot be considered weak, as argued by the EUTM proprietor.

5. Global assessment, other arguments and conclusion

The goods are identical. The degree of distinctiveness of the earlier trade mark is normal. The level of attention of the relevant public, which is the public at large, will be average.

The marks have been found visually similar to an average degree and aurally similar at least to an average degree. Conceptually, the marks are not similar.

Account is 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).

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.

Taking all the above into account, it is considered that the marks are sufficiently similar to cause confusion on the part of the relevant public. Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the element ‘Wellplex’ of the contested sign, which is highly similar to the only verbal element of the earlier mark ‘WELLAPLEX’, plays an independent distinctive role in the contested sign.

The EUTM proprietor argues that the element ‘Erayba’ of the contested mark refers to the proprietor’s company name and that it enjoys enhanced distinctiveness since it has been present on the market in many countries for more than thirty years. The EUTM proprietor also argues that it owns a family of ‘Erayba’ marks and that the contested EUTM was actually launched on the market before the launch of the earlier trade mark. The EUTM proprietor submitted various items of evidence to substantiate these claims.

The right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM.

The EUTM proprietor refers to a previous decision of the Boards of Appeal of the Office to support its arguments. 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 Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office 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.

In the present case, the previous case referred to by the EUTM proprietor is not relevant to the present proceedings. This is because the highly similar element ‘WELL(A)PLEX’ that the marks have in common is distinctive and not non-distinctive as was the case in the Boards of Appeal decision referred to.

The EUTM proprietor also argues that consumers will recognise ‘WELLA’, a well-known haircare mark, in the earlier mark ‘WELLAPLEX’. However, it did not submit any evidence to substantiate this argument and, therefore, it must be dismissed.

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

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 15 010 044. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Plamen IVANOV

Vít MAHELKA

Michaela SIMANDLOVA

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.