OPPOSITION No B 3 052 876

The Boots Company PLC, 1 Thane Road, NG2 3AA, Nottingham, United Kingdom (opponent), represented by Miguel Mendes, 1 Thane Road, NG2 3AA, Nottingham, United Kingdom (employee representative)

a g a i n s t

JM World Au Pty LTD, 20A/390 Eastern Valley Way, 2069 Roseville, Australia (applicant), represented by A2 Estudio Legal, C/ Alcalá 143 3º Derecha, 28009 Madrid, Spain (professional representative).

On 21/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 876 is upheld for all the contested goods.

2. European Union trade mark application No 17 657 123 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 657 123 ‘BOTANIC BEAU’, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 16 264 012 ‘BOTANICS’. The opponent invoked Article 8(1)(b) and Articles 8(4) and (5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

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 16 264 012.

1. The goods

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

Class 3: Cosmetics; toiletries; skin preparations; shave balm; cleansing balm; lip balm; balms; bubble bath; hand and body butter; softening cleanser; hair colourants; conditioner; hand and body cream; cleansing cream; day cream; night cream; eye cream; shower cream; hydrating day cream; hydrating night cream; mattifying day cream; mattifying gel cream; protecting day cream; replenishing night cream; hydrating eye cream; anti-aging day cream; anti-aging night cream; bath elixir; deep cleansing foam; shave gel; eye gel; lavender gel; grains for buffing; hand and body lotion; moisture body lotion; day lotion; face mask; skin clay mask; hydrating mask; moisturiser; anti-ageing moisturiser; skin moisturiser; cleansing mousse; hand and body oil; facial oil; cleansing oil; cleansing balm; eye make-up remover; face wipes; aromatherapy oil; essential oils; lavender oil; eucalyptus oil; tea tree oil; rosemary oil; citronella oil; massage oil; microdermabrasion polish; body polish; make-up remover; face scrub; exfoliating body scrub; body scrub; gel scrub; purifying face scrub; hair care serum; anti-ageing serum; eye correction serum; facial serum; skin calming serum; beauty serums with anti-ageing properties; skin relief serum; bath soak; body soufflé; shampoo; conditioner; toning spritz; cleansing toner; revitalising toner; face wash; hair and body wash; foam wash; face wipes; make-up pads of cotton wool.

The contested goods are the following:

Class 3: Beauty masks; cosmetics; cosmetics for animals; essential oils; hair care lotions; hair colorants; hair conditioners; hair oils; hair rinses; hair waving preparations; perfumery; perfumes; shampoos; aromatic oils for the bath; baby lotion; bath soaps; bath salts, not for medical purposes; body sprays; body sprays, namely, water in atomized containers used to produce a cooling effect; cosmetic preparations for skin care; cosmetic soaps; milks [cosmetics]; cosmetics as an integral component of non-medicated skincare preparations; facial cleansing milk; facial cream; facial lotion; facial washes; hair butter; detanglers; hair detangling preparations; hair moisturisers; heat protectant sprays for hair; liquid bath soaps; moisturizing body lotions; mouthwashes, not for medical purposes; skin moisturisers; skin cream; skin softeners; wave-set lotions.

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.

Cosmetics; essential oils, hair colorants and shampoos are identically contained in both lists of goods (including synonyms).

The contested beauty masks; cosmetics for animals; hair care lotions; hair conditioners; hair oils; hair rinses; hair waving preparations; aromatic oils for the bath; baby lotion; bath soaps; bath salts, not for medical purposes; body sprays; body sprays, namely, water in atomized containers used to produce a cooling effect; cosmetic preparations for skin care; cosmetic soaps; milks [cosmetics]; cosmetics as an integral component of non-medicated skincare preparations; facial cleansing milk; facial cream; facial lotion; facial washes; hair butter; detanglers; hair detangling preparations; hair moisturisers; heat protectant sprays for hair; liquid bath soaps; moisturizing body lotions; skin moisturisers; skin cream; skin softeners; wave-set lotions are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested perfumery; perfumes are similar to the opponent’s cosmetics as they have the same general purpose, namely to cover up or enhance the odour or fragrance of the body. Additionally, they usually coincide in producer, relevant public and distribution channels.

The contested mouthwashes, not for medical purposes are similar to the opponent’s cosmetics. On the one hand, cosmetics include preparations for enhancing or protecting the appearance, odour or fragrance of the body. On the other hand, mouthwashes are liquids used for rinsing the mouth or for gargling, for personal hygiene purposes, for beautification purposes or to make the breath smell pleasant. Cosmetics are similar to mouthwashes as they have the same purpose, namely to enhance or cover the appearance or the odour of the body, including the teeth. Additionally, they usually coincide in relevant public and distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large.

The degree of attention is average.

3. The signs

BOTANICS	BOTANIC BEAU
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 common elements ‘BOTANICS’ and ‘BOTANIC’ are meaningful in certain territories, for example in those countries where French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France.

The consumers in the relevant territory will associate the words ‘BOTANICS’ of the earlier mark and ‘BOTANIC’ of the contested sign with the science of plants. Therefore, both these elements refer to goods containing plant extracts. Since both words refer to characteristics of the relevant goods, their distinctiveness is equally limited.

The element ‘BEAU’ of the contested sign will be associated with ‘handsome’. Bearing in mind that the relevant goods are cosmetics, this element is non-distinctive for these goods as they are also intended to enhance men’s appearance.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘BOTANIC’. They are in the same order and position and are at the beginning of the marks. However, they differ in the last letter/sound, ‘S’, of the earlier mark and in the additional letters/sounds ‘BEAU’ in the contested sign which have no counterparts in the other sign.

Therefore, taking into account the conclusions regarding the distinctiveness of the elements in the marks, the signs are visually and aurally similar to an average 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 similar meaning, the signs are conceptually similar to 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.

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 initially claimed that the earlier trade mark enjoyed enhanced distinctiveness in the European Union, but then restricted its scope to Ireland, the Netherlands and the United Kingdom. Consequently, the opponent did not explicitly claim that its mark is particularly distinctive in the relevant territory (France) 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 c) of this decision, the inherent distinctiveness of the earlier mark must be seen as lower than normal for all the goods in question.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical and similar, and target the public at large whose degree of attention will be average.

The signs are visually, aurally and conceptually similar to an average degree.

The degree of the earlier mark’s inherent distinctiveness is lower than normal. However, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 63 and 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Furthermore, 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).

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.

Indeed, it is highly conceivable 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 target group of the goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. 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 16 264 012. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark in the relevant territory, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation in Ireland, the Netherlands and the United Kingdom, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 16 264 012 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Claudia ATTINÀ

Loreto URRACA LUQUE

Biruté SATAITE-GONZALEZ

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.