OPPOSITION No B 3 055 385

Humajor Co., 11F Aprosquare, 55, Seocho-daero 77-gil, Seocho-gu, Seoul, Republic of Korea (opponent), represented by Ibidem Abogados Estrategas, S.L.P., Juan de la Cierva, 43, Elche Parque Empresarial, Planta 2, local 1.1, 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

T2G Wojciech Lysak, Wojska polskiego 8, 41-208 Sosnowiec, Poland (applicant), represented by Marks & Us Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009

Bilbao (Vizcaya), Spain (professional representative).

On 21/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 385 is upheld for all the contested goods.

2. European Union trade mark application No 17 867 024 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 867 024 . The opposition is based on European Union trade mark registration No 15 659 832 ‘Dr.FORHAIR‘ (word 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.

a) The goods

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

Class 3: Cosmetics; mask pack for cosmetic purposes; hair rinses; hair shampoo; make-up; pore tightening pack (cosmetics); cosmetic creams and lotions for face and body care; non-medicated toiletries, soap; sun-block lotions; massage creams; mask pack; baby creams; body lotion; pre-moistened or impregnated cleansing pads with a cleaning preparation; impregnated tissues or wipes for cleaning; cleansers; cosmetics for hair and scalp; make-up for the face and body.

After a limitation requested by the applicant on 23/07/2018, the contested goods are the following:

Class 3: Hair thickening fibers.

The contested hair thickening fibers are preparations applied to hair and are used for cosmetic (i.e. beautifying) purposes. As such, they are included in the broad category of, or overlap with, the opponent’s cosmetics for hair. Therefore, they are considered identical.

In view of the above findings, the applicant’s arguments claiming the dissimilarity of the goods are not persuasive and must be dismissed.

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 are directed both at the public at large and professionals. The degree of attention will be average for both parts of the public because the goods are relatively normal consumer products with a reasonable price. For these reasons, the Opposition Division cannot agree with the applicant that the degree of attention of the public will be high.

c) The signs

Dr.FORHAIR
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 elements ‘FORHAIR‘ and ‘Hair‘ are meaningful for a part of the public in the European Union, namely for those consumers who speak English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the EU.

Given that the relevant goods are cosmetics for hair (earlier trade mark) and hair thickening fibers (contested sign), the elements ‘FORHAIR‘ (which will be naturally broken down into ‘for hair‘) and ‘Hair‘ are non-distinctive. This is because these elements designate the purpose of use of the goods and the part of the body on which the goods are used.

The elements ‘Dr.‘ of the earlier trade mark and ‘Dr‘ of the contested sign are universally understandable abbreviations for ‘doctor’. As the relevant goods are, in essence, cosmetics for hair, these elements will be perceived as indicating that the goods have some healing properties; therefore, their distinctiveness is low.

The contested sign contains a rectangular black background which is a common geometrical shape depicted in a basic colour. Consequently, it is considered non-distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

The curved red line above the letter ‘i’ in the contested sign is a relatively simple geometrical element and is, therefore, weak. In addition, it is not that clearly perceptible (being red on a black background) which means that its significance is further reduced.

Moreover, 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). Consequently, the verbal element ‘DrHair’ in the contested sign has a stronger impact than the figurative elements of the sign.

Visually, the signs coincide in the sequence of letters ‘Dr****HAIR’, ‘Dr‘ being weak and ‘HAIR‘ being non-distinctive. The fact that the common element ‘HAIR’ is depicted in upper case in the earlier trade mark and in title case in the contested sign has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

The marks differ in ‘.FOR’ of the earlier trade mark and in the figurative elements of the contested sign which are however either weak or non-distinctive.

The signs coincide in some of their verbal constituents which are on equal footing concerning their distinctiveness. The impact of the differing elements would therefore be decisive and in the present case these elements (‘.FOR’ in the earlier and the figurative elements in the contested sign) are also of limited distinctiveness.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DR’ (or ‘DOCTOR’) and ‘HAIR’, present identically in both signs. The pronunciation differs in the syllable ‛FOR’ of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are 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 similar meanings, the signs are conceptually similar to an average degree.

In view of the above findings, the overall impressions created by the marks are similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent 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 is composed of a weak element ‘Dr.’ and a non-distinctive element ‘FORHAIR’. Therefore, the distinctiveness of the earlier mark as a whole must be seen as low.

e) Global assessment, other arguments and conclusion

The marks are similar and the goods are identical. The earlier trade mark’s degree of distinctiveness is low and the level of attention of the relevant public (both the public at large and professionals) is average.

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).

In view of the above, it is likely that the public will confuse the commercial origin of the identical goods offered under the trade marks in dispute. Although the degree of distinctiveness of the earlier trade mark is low, it is considered that the marks are sufficiently similar for confusion to occur in relation to identical goods.

Even though the coinciding elements may be perceived as non-distinctive (‘HAIR’) or weak (‘Dr’) in relation to the goods in question, it must be borne in mind that the fact that a coinciding element has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the earlier mark or of the elements of which it is composed must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or an element with a low degree of 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).

In its observations, the applicant argues that there is a registered EUTM ‘HAIR DOCTOR’ covering goods in Class 3 which, according to the applicant, co-exists with the earlier trade mark without any risk of confusion. However, this argument is not persuasive of lack of confusion in the present case because the mark ‘HAIR DOCTOR’ has clearly more differences compared to the earlier trade mark ‘Dr.FORHAIR‘ than the contested sign here. Furthermore, formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. The applicant however did not put forward any further arguments or evidence in this respect. Consequently, the applicant’s claim must be rejected as unfounded.

The applicant also refers to previous decisions of the Office and the Court in cases ‘ASIANE’ vs. ‘ARIANE’ and ‘SIR’ vs. ‘ZIRH’ to support its claim that the marks in dispute here are not similar. However, these previous decisions are clearly not on a part with the present case because those marks are completely different from the marks at stake here.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the European Union. 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 EUTM No 15 659 832. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

Cindy BAREL

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.