OPPOSITION No B 3 052 817

Pejo, investicije in trgovina, d.o.o., Ankaranska cesta 7b, 6000 Koper, Slovenia (opponent), represented by Odvetniška Družba Čeferin o.p., d.o.o., Taborska cesta 13, 1290, Grosuplje, Slovenia (professional representative)

a g a i n s t

C.P.M. SRL, Via Case Basse snc, 27017 Pieve Porto Morone (PV), Italy (applicant), represented by Dott. Franco Cicogna & C.Srl, Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 29/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 817 is upheld for all the contested goods.

2. European Union trade mark application No 17 868 116 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 17 868 116, . At the time of filing the notice of opposition, the opposition was based on European Union trade mark application No 17 723 859, , covering goods in Classes 1, 3, 5 and 21. However, this mark was registered, on 18/12/2018, only for goods in Classes 1, 5 and 21. The opponent invoked Article 8(1)(a) and (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.

1. The goods

Following the limitation of the earlier trade mark which was requested by the opponent on 04/12/2018 in Opposition proceedings B 3 051 932, and accepted by the Office on 18/12/2018, the goods on which the opposition is based are the following:

Class 1: Finings.

Class 5: Sanitary tampons; disinfectant soap; air deodoriser sprays; deodorants, other than for human beings or for animals; disinfectants and antiseptics; smelling salts; fungicides; herbicides; insecticides; insect repellent incense; fly glue; sanitary panties; sanitary towels; menstruation bandages; belts for sanitary napkins [towels]; mothproofing paper; fly catching paper; parasiticides; pesticides; adult diapers; babies’ diapers [napkins]; insect repellents; panty liners [sanitary]; mothproofing preparations; air purifying preparations; air deodorising preparations; deodorisers and air purifiers; deodorants for textiles; deodorants for clothing; mouthwashes for medical purposes.

Class 21: Cleaning articles; combs; cosmetic utensils; aerosol dispensers, not for medical purposes; perfume sprayers [sold empty].

The contested goods are the following:

Class 3: Nail varnish; false nails; fingernail tips; nail conditioners; nail whiteners; nail gel; false toenails; preparations for reinforcing the nails; nail strengtheners; artificial nails for cosmetic purposes; abrasive boards for use on fingernails; glue for strengthening nails; adhesives for affixing artificial fingernails; abrasive paper for use on the fingernails; nail varnish removers; nail polish pens; nail polishing powder; lotions for strengthening the nails; nail care preparations; artificial fingernails of precious metal; nail base coat [cosmetics]; abrasive emery paper for use on fingernails; fingernail overlay material; nail primer [cosmetics]; nail repair preparations; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; powder for forming sculpted finger nail tips; nail polish remover pens; adhesives for false eyelashes, hair and nails; cosmetic nail care preparations; gel nail removers; cosmetic preparations for nail drying; skin, eye and nail care preparations.

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.

The contested skin, eye care preparations include preparations which may require cosmetic utensils such as brushes, sponges or applicators for their use. Therefore, the aforementioned contested goods and the opponent’s cosmetic utensils in Class 21 can be complementary. Furthermore, these goods have similar purposes, as they are used to enhance or alter the appearance of the face or body. They target the same relevant public, can be manufactured by the same companies and can be distributed through the same channels. Therefore, they are highly similar.

The contested nail varnish; nail conditioners; nail whiteners; nail gel; preparations for reinforcing the nails; nail strengtheners; glue for strengthening nails; nail varnish removers; nail polish pens; nail polishing powder; lotions for strengthening the nails; nail care preparations; nail base coat [cosmetics]; fingernail overlay material; nail primer [cosmetics]; nail repair preparations; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; powder for forming sculpted finger nail tips; nail polish remover pens; cosmetic nail care preparations; gel nail removers; cosmetic preparations for nail drying; nail care preparations, are cosmetic preparations for nails and the contested adhesives for affixing artificial fingernails; adhesives for false eyelashes, hair and nails are also used for fixing false nails, eyelashes or hair. These contested goods target the same relevant public as the opponent’s cosmetic utensils in Class 21. They can be purchased at the same cosmetics stores or in the same supermarket sections. Furthermore, they can be produced by the same undertakings. Therefore, they are at least similar to a low degree.

The contested false nails; fingernail tips; false toenails; artificial nails for cosmetic purposes; artificial fingernails of precious metal are extensions placed over nails. These goods and the opponent’s cosmetic utensils in Class 21 are distributed through the same channels, as it is very common that they are sold in the same cosmetic sections, target the same relevant public and may coincide in producer. Therefore, they are similar to a low degree.

The contested abrasive boards for use on fingernails; abrasive paper for use on the fingernails; abrasive emery paper for use on fingernails can be used for manicures and can also be used for the treatment of fungus-infected nails. It is common that antifungal nail treatment kits include disposable files or abrasive paper. Therefore, the aforementioned contested goods and the opponent’s fungicides in Class 5 target the same relevant public, can coincide in their distribution channels and moreover, since these goods are sold in a kit, the public can expect that they are produced under the control of the same entity. Therefore, they are similar to a low degree.

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 similar to varying degrees are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The relevant public’s degree of attention varies from average to relatively high, depending on the price, specialised nature and the frequency of purchase of the goods at issue, also bearing in mind that some of the goods, for example antifungal nail treatments, can affect one’s state of health.

3. Distinctiveness of the earlier mark and the comparison of 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 ‘FEEL’ in the contested sign is an English word which is meaningless in certain territories, for example, in Italian- and Spanish-speaking countries. Furthermore, these parts of the public will perceive the meaning of the verbal element ‘DIVA’ in both signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public.

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

The earlier mark is the verbal element ‘Diva’ depicted in standard title-case letters, although it is registered as a figurative sign. The word ‘diva’ means a female celebrity, a famous artist or an opera singer. It is not related in any way with the relevant goods and therefore, the distinctiveness of the earlier mark is seen as normal.

The contested sign is a figurative trade mark containing the verbal elements ‘FEEL’ and ‘DIVA’ depicted in rather standard typeface. ‘FEEL’ is placed above ‘DIVA’ and the two words are separated by a horizontal line.

The considerations as regards the meaning and distinctiveness of the word ‘DIVA’ for the earlier mark apply equally for the contested sign.

The word ‘FEEL’ is meaningless for the relevant public and is therefore distinctive.

The horizontal line is a basic figurative element and has no trade mark significance.

The applicant argued that the contested sign contains a peculiar and eye-catching figurative element. However, this figurative element is an abstract element that does not convey any semantic content. Furthermore, it has a rather decorative role in the overall impression of the contested sign. Consequently, it has limited capacity to attract consumers’ attention in the overall perception of the contested sign and is considered less distinctive than the verbal elements of the sign.

Taking into account the position and size of each of the elements, the figurative element is not the most visually outstanding component in the contested sign as the applicant argued. At most, it can be considered co-dominant, together with the verbal element ‘DIVA’.

Visually, the signs coincide in the verbal element ‘DIVA’ which has an average degree of distinctiveness. The signs differ in the verbal element ‘FEEL’, which has a normal degree of distinctiveness, and the figurative element of the contested sign, which is less distinctive than the verbal elements. The horizontal line in the contested sign has very little impact on the comparison, if any.

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). Furthermore, in the present case the figurative device is an abstract element and consequently, contrary to the applicant’s argument, the verbal elements of the contested sign will have a stronger impact when the sign is perceived.

The word ‘DIVA’ in the contested sign is depicted in larger letters than the word ‘FEEL’. Visually, it is placed in the central position of the contested sign, whilst the other elements are positioned above and below it. The verbal element ‘DIVA’ in the contested sign is contained entirely as an independent verbal element and it is the only word of the earlier mark. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DIVA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛FEEL’ of the contested sign, which have no counterparts in the earlier mark.

Taking into account that one of the verbal elements of the contested sign is pronounced identically to the only word of the earlier mark, the signs are aurally similar to an average degree.

Conceptually, the verbal element ‘DIVA’, conveys identical concepts in both signs, whilst the differing elements, namely the verbal element ‘FEEL’ and the figurative element, are meaningless. Therefore, the signs are conceptually highly 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. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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 similar to varying degrees. They target both the general public and business customers with specific professional knowledge or expertise. The degree of attention in relation to the goods varies from average to relatively high.

The signs are visually and aurally similar to an average degree and conceptually highly similar. The degree of distinctiveness of the earlier trade mark is normal.

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 into account that the word ‘DIVA’, present in both signs, is meaningful and conveys the same concept, consumers will associate the signs with each other due to their coincidences. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The potentially higher degree of attention which the relevant public may display in relation to the purchases in question is incapable of calling the above finding into question.

Although the contested sign contains additional elements, these cannot counteract the similarity between the signs given that they both coincide in the word ‘DIVA’. Furthermore, taking into account the abovementioned principle of interdependence, the lesser degree of similarity between some of the goods is offset by a greater degree of similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking parts of the public. This also applies in relation to the goods which are similar to a low degree. 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 17 723 859. It follows that the contested trade mark must be rejected for all the contested goods.

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 ground of the opposition, namely Article 8(1)(a) 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, 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

Solveiga BIEZA

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.