DECISION

of the First Board of Appeal

of 3 December 2020

In case R 2946/2019-1

C.P.M. SRL
Via Case Basse, snc 27017 Pieve Porto Morone (PV) Italy	Applicant / Appellant

represented by Dott. Franco Cicogna & C. S.r.l., Via Visconti di Modrone, 14/A, 20122 Milano, Italy

v

PEJO, investicije in trgovina, d.o.o.
Ankaranska cesta 7b SI-6000 Koper Slovenia	Opponent / Defendant

represented by Odvetniška družba Čeferin O.P., d.o.o., Taborska cesta 13, SI-1290 Grosuplje, Slovenia

APPEAL relating to Opposition Proceedings No B 3 052 817 (European Union trade mark application No 17 868 116)

The First Board of Appeal

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 2 March 2018, C.P.M. SRL (‘the applicant’) sought to register the figurative mark

for the following list of goods:

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.

2. The application was published on 23 March 2018.

3. On 24 May 2018, PEJO, investicije in trgovina, d.o.o. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods. The grounds of opposition were those laid down in Article 8(1)(a) and Article 8(1)(b) EUTMR.

4. The opposition was based on EUTM registration No 17 723 859 for the figurative mark

filed on 23 January 2018 and registered on 18 December 2018 for the following goods:

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].

5. By decision of 29 October 2019 (‘the contested decision’), the Opposition Division refused the applied for mark for all the contested goods on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The contested ‘skin, eye care preparations’ include preparations which may require cosmetic utensils such as brushes, sponges or applicators for their use. Therefore, they can be complementary to the opponent’s ‘cosmetic utensils’ in Class 21. 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. They are highly similar;

• The remainder of the contested goods in Class 5 were considered similar at least to a low degree to the opponent’s goods. They can be purchased in the same stores and can be produced by the same undertakings, distributed though the same distribution channels or may coincide in producer;

• The goods are directed at both the public at large and at business customers with specific professional knowledge or expertise;

• Visually the signs coincide in the word ‘DIVA’, but differ in the word ‘FEEL’ of the contested sign and the figurative components. The figurative element is abstract and the verbal elements have a stronger impact. As a result the signs are similar to an average degree;

• Aurally the signs are similar to an average degree as they coincide in the pronunciation of the word ‘DIVA’, present identically in both signs. They differ in the sound of the word ‘FEEL’ which has no counterpart in the earlier mark;

• ‘Diva’ means a female celebrity, famous artist or opera singer. The word ‘FEEL’ is meaningless for the relevant public (Spanish and Italian speaking). As the word ‘DIVA’ conveys an identical concept in both signs, the signs are conceptually highly similar;

• 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. The goods are similar to varying degrees;

• Considering the coincidence of the word ‘DIVA’ in both marks, consumers could associate them and believe that the contested mark is a sub-brand of the earlier mark configured in a different way according to the type of goods or services that it offers. Despite the additional figurative and verbal elements in the contested sign, these cannot counteract the identity of the element ‘DIVA’ and the degree of similarity between the marks;

• As a result there is a likelihood of confusion on the part of the relevant public and the contested mark is rejected for all the goods, including those found similar to a lesser degree. Further, as the opposition is successful based on Article 8 (1)(b) EUTMR, there is no need to examiner the grounds based on Article 8 (1)(a) EUTMR.

6. On 20 December 2019, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 2 March 2020.

7. In its response received on 16 April 2020, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

8. The arguments raised in the statement of grounds may be summarised as follows:

• The contested goods in Class 3 relate to the care and the beautifying of nails and have no similarity in terms of their nature, usual origin or method of use with the goods of earlier mark which are goods for sanitary and medical purposes and utensils intended for cleaning purposes. The sector of the care and the beautifying of nails is very specific and requires specific products which are already contained in the goods listed in Class 3. The conflicting goods as a result, have different natures, purposes and methods of use, they come from different manufacturers and target different consumers, via different outlets and channels. One cannot be substituted for the other and, therefore, they are not in competition or interchangeable;

• Bearing in mind that the relevant goods are intended for women, it is the word ‘DIVA’ that is allusive for these goods. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue. Therefore, the only element in common between the signs is a weak element which is allusive for the goods;

• It is well known that ‘DIVA’ is a term very commonly used in relation to cosmetics and in the beauty care sector. This is because ‘DIVA’ recalls the feminine world and brings to mind the idea of enhanced beauty to which cosmetics and beauty care goods/utensils are used;

• The earlier mark is the word ‘DIVA’ in standard characters and the contested mark is structurally complex, composed both of verbal and figurative elements. The word ‘FEEL’ is on one level and underneath the word ‘DIVA’ and a peculiar eye-catching figurative element consisting of a multitude of dots put together under this. The figurative element, due to its stylisation, position, dimension and quantity of space occupied in the sign, is deemed at least to be co-dominant in the contested mark and has a significant impact on the visual impression. The length of the signs differ as well as their overall composition resulting in a visual different overall impression;

• Aurally, the signs are dissimilar as the pronunciation differs. The earlier sign will be pronounced as ‘DIVA’ which is the only word of which it is composed and the contested sign will be pronounced as ‘FEEL DIVA’;

• Conceptually, for the Italian and Spanish consumers, the signs will evoke the same concept from the word ‘DIVA’. The latter recalls the feminine world, the concept of enhanced beauty and wellness to which the goods under analysis are directed. Therefore, the only common element is allusive for the conflicting goods and therefore weak in relation to them. The word ‘Feel’ is meaningless also for the relevant consumers and as a result is distinctive;

• There are currently many registered trade marks for goods in Classes 3 and 21 that include the word ‘DIVA’ and these are attached in Annex 1 and Annex 2 showing examples of the use of the word ‘DIVA’ on the market for beauty care goods. This demonstrates that marks consisting of the word ‘DIVA’ coexist and therefore this term cannot be a monopolized term in the sector of cosmetics/beauty care;

• The relevant territory is the European Union and the goods of the conflicting signs target both the professional and general public. The earlier goods include chemical and medical goods which are directed to a public who pays a high level of attention when buying them. The contested goods target both an informed general public and a professional public, namely professionals who work in the area of nail-care. The degree of attention is, therefore, both normal and high;

• Generally in beauty shops customers can themselves either choose the product they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of cosmetic/beauty product is generally made visually. Consumers need to analyse the product because cosmetics/beauty care goods are chosen by virtue of the specific characteristics of the single product. Consequently the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them;

• The element ‘DIVA’ is considered weak for the relevant goods and the impact of this element should not be overestimated for the goods. In addition the contested mark features a number of additional verbal and figurative elements and the low distinctiveness of ‘DIVA’ will result in consumers focussing on the other elements within the contested sign;

• The Opposition Division in two previous cases (22/01/2016, B 2 463 621, DIVAS / XENIA DIVA; 26/06/2016, B 2 400 599, DIVA (fig.) / DD DEVIL’S DIVA (fig.)) found no likelihood of confusion between the marks considering ‘DIVA’ a weak element and as a result the difference existing between the signs sufficient;

• In an overall assessment the signs convey a different overall impression and there is no likelihood of confusion between them. The appeal should be upheld and contested mark be allowed to proceed to registration for all the products in Class 3.

9. The arguments raised in response may be summarised as follows:

• The appeal should be dismissed as unfounded and the applicant ordered to bear the costs of the proceedings;

• As far as the conflicting goods are concerned, they target the same relevant public and can be manufactured by the same companies. Furthermore, some of the contested goods and the earlier marks cosmetic utensils in Class 21 are, due to their purpose and nature, even complementary and therefore highly similar. In addition the utensils in Class 21 do not only serve for cleaning purposes, as cosmetic utensils cover a broad range of products. The goods of the earlier mark have identical distribution and market channels as the contested mark, overall they are similar and this can result in confusion among consumers;

• In comparing the marks, the word ‘DIVA’ in relation to the relevant goods, has no descriptive or generic meaning nor is it a laudatory term. Furthermore, ‘DIVA’ does not in any way allude to the characteristic of the goods of the earlier mark;

• The average consumer will not perceive the word ‘DIVA’ as denoting goods intended for women. The word ‘DIVA’ describes any person who exudes great style and personality with confidence and expresses its own style. The term ‘DIVA’ cannot be reserved as referring only to women. Furthermore, the majority of the earlier mark’s goods are intended both for women and men;

• Visually the figurative components of the contested mark are decorative and have limited impact, as a result the comparison is to be carried out between the verbal elements ‘DIVA’ and ‘FEEL DIVA’. The word ‘DIVA’ of the contested mark is shown in a larger font than the word ‘FEEL’ and is clearly meant to pop out as the dominant part of the mark. Furthermore, it is placed in the central position, which means that it attracts more attention in comparison to the other elements. Consequently, the signs are visually similar;

• Aurally one of the verbal elements of the contested mark is pronounced identically to the only word of the earlier mark, as a result the marks are aurally similar;

• Conceptually, the meaning of the common element in both signs is strong enough to establish that the relevant public will assign this particular meaning to the entire sign especially since the verbal element ‘FEEL’ and the figurative element are meaningless. As both marks convey an identical message there is a conceptual similarity and confusion on the part of the public is unavoidable;

• In terms of the claimed proliferation of ‘DIVA’ in the beauty market, the existence of a few such trade mark registrations per se does not mean that this element is weak and has a low degree of distinctive character. Further, the examples provided do not constitute evidence that consumers have been exposed to widespread use of marks that include the element DIVA;

• The references to the Opposition Division decisions of 22/01/2016, B 2 463 621, DIVAS / XENIA DIVA and 26/06/2016, B 2 400 599, DIVA (fig.) / DD DEVIL’S DIVA (fig.) relate to very different marks and are therefore not applicable to the present case;

• The conflicting marks are similar visually, aurally and conceptually. The goods that target both the general public and business customers with specific professional knowledge or expertise were found also to be similar. There is, as a result, a likelihood of confusion as the consumer could assume that the goods come from the same undertakings or economically-linked undertakings;

• The appeal should be dismissed and the applicant ordered to bear the costs of the proceedings.

Reasons

10. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Scope of the appeal

11. The applicant appeals the contested decision in its entirety, and it is directed at the claims of similarity of the goods of the signs at issue, and the likelihood that there will be confusion between the signs.

12. The opponent’s response is limited to the observations in reply to the applicant’s submissions.

Article 8(1)(b) EUTMR

13. Pursuant to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for will not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. A likelihood of confusion includes a likelihood of association with the earlier trade mark.

14. The finding of a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (12/10/2004, C-106/03, Hubert, EU:C:2004:611, § 51). A likelihood of confusion must be appreciated globally, by reference to the perception which the relevant public has of the signs and of the goods or services in question, 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; and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The relevant public

15. When the goods are primarily intended for the public at large, as in the case at hand, the relevant public must be deemed to be composed of the average consumer, who is reasonably well-informed and reasonably observant and circumspect (see 26.04.2007, C-412/05 P, Travatan, EU:C:2007:252, § 62). Furthermore, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. His or her level of attention is likely to vary according to the category of goods or services in question (see 07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 18).

16. The Board notes that the level of attention paid by the relevant public is likely to be higher than average not only in respect (for example) of antifungal nail treatments, which can affect one’s state of health, but also in respect of hygienic and cosmetic goods, since consumers tend to be attentive in the acquisition of body and face care products, on the grounds of aesthetic considerations or personal preferences, sensitivity, allergies, types of skin and hair and so forth, as well as the expected effect of the products (see 18/10/2011, T-304/10, Caldea, EU:T:2011:602, § 58).

17. Thus the level of attention of the average consumer is likely to vary between average and higher than average.

Comparison of the goods and services

18. Goods and services are identical when they appear with the same wording in both lists of goods and services or when the goods or services of the earlier mark include as a broader category the goods or services of the contested mark. If the goods or services of the earlier mark are covered by a broader category of goods or services than the contested mark is applied for, the conflicting goods and services are identical as well since the Office cannot dissect ex officio this broader category of the applicant’s goods or services (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29).

19. In assessing the similarity of goods and services, all the relevant factors pertaining to the relationship between those goods and services should be taken into account. Those factors include their nature, their purpose and method of use, and whether they are in competition with, or complementary to, each other (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, their distribution channels (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37).

20. The goods applied for which are at issue in the present appeal 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.

21. The earlier right specifies a number of goods, but the contested decision concentrated on the earlier ‘cosmetic utensils’ in Class 21, finding all the contested goods to be similar to, at least, a low degree with these goods, with the exception of abrasion products, which were found to be similar to fungicides (to a low degree). The Board does not disagree with the findings of the contested decision but will, to a certain extent, expand upon them.

22. The contested goods are a mixture of various products, most being used in relation to ‘nails’, though not all: ‘adhesives for false eyelashes and hair’ and ‘skin and eye care preparations’ are also specified.

23. It is clear that the contested goods are not limited to cosmetic products, and may include items with a medicinal purpose, such as prosthetics and various therapeutic treatments, for instance. However, and equally, they do not exclude cosmetic goods. In this context, the contested items share similar purposes, as they are used to enhance or alter the appearance of the face or body. They thus target the same relevant public, can be manufactured by the same companies and can be distributed through the same channels. This strongly indicates some level of similarity of other cosmetic goods. The Board will examine this issue in detail now.

24. The Board thus agrees with the assessment of the contested decision that ‘skin and eye care preparations’ include preparations that may require cosmetic utensils such as brushes, sponges or applicators for their use. This also creates a complementarity between them, and these items are likely to be considered as highly similar by the consuming public. ‘Adhesives for false eyelashes and hair’ are considered below.

25. In terms of the remaining ‘nail products’ these can be categorised as follows:

• First, ‘preparations’, that is, mixtures of chemicals of some sort or another:

Nail varnish; nail conditioners; nail whiteners; nail gel; preparations for reinforcing the nails; nail strengtheners; glue for strengthening nails; adhesives for affixing artificial fingernails; nail varnish removers; 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; adhesives for false and nails; cosmetic nail care preparations; gel nail removers; cosmetic preparations for nail drying.

• Next, ‘tools’ – or physical items for use in relation to nail care:

Nail polish pens; nail polish remover pens; abrasive boards for use on fingernails; abrasive paper for use on the fingernails; abrasive emery paper for use on fingernails.

• Third, false nails of various types:

False nails; fingernail tips; false toenails; artificial nails for cosmetic purposes; artificial fingernails of precious metal.

26. The applicant argues that the world of nail care is very specific, with the contested goods in Class 3 being utensils used for the care and the beautifying of nails, while, on the other hand, the utensils in Class 21 are for cleaning purposes.

27. The Board is not convinced by this. The Nice Classification system in relation to this Class (Edition 11-2020) covers specifically ‘cosmetic and toilet utensils’ and cites various goods as examples that are clearly not limited to cleaning products – ‘electric and non-electric combs and toothbrushes, dental floss, foam toe separators for use in pedicures, powder puffs, fitted vanity cases’, which hardly limit the type of utensil, and could include anything from a finishing brush, an eyelash curler, tweezers, eyeshadow applicators, facial rollers or, indeed, more exotic items such as sonic derma-planing tools.

28. In any event, the explanatory notes to Class 21 on the WIPO website state ‘[t]his Class does not include, in particular … cleaning preparations (Cl. 3)’ (https://www.wipo.int/classifications/nice/nclpub/en/fr/?basic_numbers=show&class_number=21&explanatory_notes=show&lang=en&menulang=en&mode=flat&notion=&pagination=no&version=20200101; consulted 25 November 2020). So the distinction the applicant makes is not valid.

29. In relation to cosmetics in general, Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products defines a ‘cosmetic product’ as ‘any substance or mixture intended to be placed in contact with the external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance, protecting them, keeping them in good condition or correcting body odours’.

30. This definition clearly includes nails, and is a good starting point for discussing the issue of similarity between the conflicted goods in this case. The General Court has ruled (13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394, § 56):

‘As regards the Board of Appeal’s finding … all the goods covered by the marks at issue fall under the definition ‘cosmetic product’ in Article 1 of Directive 76/768, it should be noted that that fact could constitute a relevant factor for the purposes of assessing the similarity of those goods within the meaning of Article 8(1)(b) of Regulation No 40/94 in so far as falling under the same definition would tend to indicate, in particular, that those goods share similar natures, intended purposes or methods of use, or indeed that those goods are in competition with each other or are complementary’.

31. For sake of clarity, the Board notes that the Regulation No 1223/2009 repealed the Directive No 76/768 which was referred to by the General Court and the definition of the term ‘cosmetic product’ is broadly the same in both legal instruments. In particular, both definitions cover products for nails.

32. Nails might be a specific part of the beauty and cosmetic industry – there are ‘nail-bars’, for example, which are clearly directed to their care and enhancement – but, equally, one could say the same of hairdressing in relation to hair. Both are part of the same marketplace, both are sold side by side in the same sections of large stores or in dedicated shops. Such products may be complementary in terms of their use – matching eye-shadow, lipstick and nail colour (i.e. nail polish or extensions, for example).

33. In addition to this, and in past decisions, the Board has found cosmetics to be similar to cosmetic utensils. In 02/07/2020, R 23/2020-2, Eveye / Evoeye, § 21-22, the Second Board found: ‘As regards the earlier mark’s “cosmetics”, in the Board’s view, it is more appropriate, to ascribe an average degree of similarity between these goods (24/11/2016, R 40/2016-4, em michelle phan (fig.) / EM et al., § 11 and 13/10/2014, R 1222/2013-5, OLIVE TREE SPA CLINIC (fig.) / LE PETIT, OLIVIER (fig.), § 15) and the following goods of the contested sign:

Class 8 – Electric cosmetic appliances;

Class 21 – Non-electric cosmetic utensils.

This, given that irrespective of their different nature and purpose of use, both these product groups are aimed at the same customers as the earlier mark’s “cosmetics” and complement each other mutually in their use for personal care. They are generally offered by the same manufacturers and sold together through the same distribution channels’.

34. In 07/07/2018, R 2227/2017-4, NUTRASKIN (fig.) / NUTRADERM, § 25 the Fourth Board stated:

‘With regard to the contested goods in Class 21, the Opposition Division correctly reasoned that the contested goods ‘brushes [except paintbrushes]; brushes; eye make-up applicators; applicators for applying eye make-up; eyebrow brushes; skin cleansing brushes; applicators for cosmetics; cosmetic brushes; cosmetic utensils; mascara brushes; sponges; eyelash combs’ are highly similar to the earlier goods ‘cosmetics’ which earlier goods are also similar to ‘cosmetic bags [fitted]; cases adapted for toilet utensils; electric hair combs; comb (electric); cases adapted for cosmetic utensils; hair combs; combs’. The conflicting goods in Classes 21 and 3 have the same purpose, namely to beautify and enhance one’s appearance. Moreover, they have the same relevant public and distribution channels and, in particular the highly similar ones, may have the same producers and are complementary to each other (10/05/2017, R 1768/2016-4, YOOPY/JOOP, § 20; 24/11/2016, R 40/2016-4, em michelle phan/EM, § 14). This as such is not disputed by the applicant’.

35. The Board thus considers that nail care is very much part of the cosmetic industry and that preparations for nails are, in general, similar to cosmetic preparations.

36. In the context of these findings, and in reference to the following preparations

‘nail varnish; nail conditioners; nail whiteners; nail gel; preparations for reinforcing the nails; nail strengtheners; glue for strengthening nails; adhesives for affixing artificial fingernails; nail varnish removers; 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; adhesives for false and nails; cosmetic nail care preparations; gel nail removers; cosmetic preparations for nail drying’

the Board considers that they 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. They are at least similar to a low degree.

37. ‘Adhesives for false eyelashes and hair’, also share a comparable level of similarity, and for the same reasons.

38. The Board finds that the ‘tools’ or physical items for use in relation to nail care as listed above, are very similar, if not the same as cosmetic utensils, that is ‘nail polish pens; nail polish remover pens; abrasive boards for use on fingernails; abrasive paper for use on the fingernails; abrasive emery paper for use on fingernails’. The applicant considers these goods to be utensils, stating in submissions that the ‘… applied-for list in class 3 already include the kind of utensils used for the care and the beautifying of nails as, to set an example, Abrasive boards for use on fingernails; Nail polish pens; Nail polish remover pens’. If they are used for a cosmetic purpose, then they are, in effect, cosmetic utensils.

39. The contested decision found ‘abrasive boards for use on fingernails; abrasive paper for use on the fingernails; abrasive emery paper for use on fingernails’ similar to a low degree to ‘fungicides’ in Class 5, given that antifungal nail treatment kits include disposable files or abrasive paper, and they can thus share 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. The Board does not diverge from this finding, but given that the applicant considers that these products are cosmetic utensils, considers this part of its analysis unnecessary.

40. As pointed out in the contested decision, the contested ‘false nails; fingernail tips; false toenails; artificial nails for cosmetic purposes; artificial fingernails of precious metal’ are extensions placed over nails. They are part of the cosmetic industry, as are utensils in Class 21, being distributed through the same channels, sold in the same cosmetic sections in large stores and supermarkets, targeting the same relevant public and may coincide in producer. Therefore, they are similar to less than an average degree.

Comparison of the marks

41. 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).

42. The signs to be compared are:

    Earlier mark	Contested sign

43. The unitary character of the European Union trade mark means that an earlier EUTM can be relied on in opposition proceedings against any application for registration of an EUTM 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 contested decision referred to the Spanish and Italian-speaking public. The Board finds it appropriate to follow this approach.

44. The Board agrees with the contested decision that the word ‘diva’ will be generally understood by the European public: the younger generation associates it with famous female pop-singers, ‘pop divas’, highly advertised by the music entertainment industry, whereas the older generation will associate it more with the world of opera/operetta, meaning a leading, famous female singer (a diva assoluta).

45. However, in the view of the Board, the word is not weak in terms of its capacity to act as a trade mark in relation to the contested goods, as argued by the applicant. There may be some laudatory effect engendered by its use, as in ‘using these products can make you look like a diva’, but this is quite a narrative journey for a consumer to make and would only introduce allusion, not description, into the word. In 22/01/2015, R 447/2014-5, AQVA DIVA (fig.) / agua viva (fig.), § 33, the Fifth Board found ‘DIVA’ to be distinctive for goods in Class 3. As did the First Board in 29/06/2012, R 1793/2011-4, JEQUITI DIVA / DIVA, § 29, where ‘DIVA’ is described as having an average distinctive character.

46. In 14/05/2012, R 2545/2010-4, Casta Diva (fig.) / DIVA, § 38, the Fourth Board concluded that the ‘[t]he inherent distinctive character of the earlier mark must be seen as normal as the earlier mark “DIVA” does not describe any characteristic of the protected goods’.

47. The word ‘feel’ will be understood by English-speaking consumers as a noun or a verb meaning ‘consciousness, sensory awareness, sensation (physical or mental); a particular feeling, impression’ (https://www.oed.com/view/Entry/68977?; accessed 25 November 2020). It has no direct meaning in relation to the goods. In any event, as pointed out in the contested decision, the word is likely to be meaningless in relation to most native speakers of Italian and Spanish. In particular, as the General Court has consistently held, the Spanish public has an understanding of basic English words – or may identify the English meaning if it is close to its Spanish spelling (see 14/9/2011, T-485/07, O-live, EU:T:2011:467). However, ‘FEEL’ is not a basic English word and differs from its Spanish and Italian equivalents sentir and sentire.

48. In the view of the Board, the marks are conceptually highly similar, as also concluded by the contested decision. For English speakers, the verbal elements in the contested sign ‘FEEL DIVA’ are not grammatically correct and have no direct meaning – but they may allude to an impression such as ‘feel like a diva’ or ‘have that diva feeling’. In any event, even if perceived, this merely reinforces the link with the earlier sign.

49. Aurally, there is the distinguishing effect of the word ‘FEEL’, but the whole of the earlier sign is captured in the later and the presence of the shared ‘DIVA’ will not be reduced. The contested decision was correct to find that the marks are of, at least, average verbal similarity.

50. Visually, the contested decision found the marks to be similar to an average degree, and the Board agrees. This finding is based on the observation that they coincide in the distinctive verbal element ‘DIVA’, with the other elements being insufficient to mitigate against the effect of this correspondence, despite the presence of the distinctive element ‘FEEL’. The contested decision observes that the word ‘DIVA’ in the contested sign is depicted in larger letters than the word ‘FEEL’, and visually, is placed in the central position of the contested sign, whilst the other elements are positioned above and below it. As one might expect, it has the ‘starring role’ in the contested sign.

51. The applicant argues that the figurative element plays a significant effect on the visual impression projected by the contested sign. The Board does not agree. The main visual element – which might be described as a ‘crest of bubbles’, is likely to be considered as a mere abstract decoration by the relevant public – as such devices proliferate in marks of trade – and, in this case, is less distinctive than the verbal elements. The horizontal line in the contested sign has very little impact on the comparison, if any.

52. As pointed out in the contested decision, 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).

53. In conclusion, overall the marks are found to be similar to at least an average degree.

Overall assessment of the likelihood of confusion

54. 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).

55. The Board has found the two marks in conflict to be similar conceptually, visually and aurally to varying degrees. The shared element in both is capable of distinguishing the goods at issue, while the level of attention of the relevant pubic, for the purposes of assessing confusion, is average.

56. It must be taken into account that, due to its size, position and inherent distinctiveness the coinciding verbal element ʽDIVAʼ retains its distinctive value and plays an important role in the overall impression created by the contested sign. In line with the case-law of the Court, it must be accepted that, in order to establish the likelihood of confusion, it suffices that because the coinciding verbal element ʽDIVAʼ plays an independent distinctive role in the contested mark, without necessarily being dominant, the origin of the goods covered by the latter may be attributed by the public also to the goods covered by the earlier mark, and vice versa (see to that effect, 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 32-33, 36, 06/09/2012, C‑327/11 P, U.S. Polo Assn., EU:C:2012:550, § 46).

57. Taking all these elements into account, and carrying out the multi-factorial evaluation required, the Board finds that there is a likelihood of confusion between the signs, even in relation to the goods that share no more than a low level of similarity. The Courts have pointed out that the reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38), and the Board believes that they would. In this context, it is noted 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), while 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).

58. Further, it is settled case-law that where the relevant public considers that the goods might be produced, if not by precisely the same enterprise, but from one that is economically linked this is an instance of ‘likelihood of confusion’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). In other words, as the contested decision argues, ‘confusion’ pursuant to Article 8(1)(b) EUTMR covers situations where the consumer does not directly confuse the trade marks themselves, but also where the consumer makes a connection between the signs and assumes that the goods they brand are produced/supplied from a related business.

59. In addition, 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).

60. Insofar as the applicant relies on the relative importance of visual aspect in the context of the choice of the goods in question, the Board finds that this argument is ineffective to the extent that the signs were found visually and aurally similar (at least) to an average degree. Although the additional verbal and figurative elements of the contested sign have to be taken into account when assessing the visual similarities between the signs, these details are insufficient to counterbalance the overall impression of visual, verbal and conceptual similarity between the signs (30/11/2011, T-477/10, SEc Sports Equipment, EU:T:2011:707, § 46-47). The contested decision is thus confirmed in full.

61. The main thrust of the applicant’s submissions in contesting this finding is its contention that the word ‘DIVA’ is a ‘weak’ trade mark, that is, it tends to describe a quality in the goods as opposed to ‘sign-posting’ a particular commercial supplier and thus consumers would tend to look to the other parts of the contested mark and thus distinguish the contested signs. The Board has dealt with the trade mark ‘strength’ of the word ‘DIVA’ above, but wishes to comment further on this, and one other final submission in the statement of grounds.

62. The applicant refers to a list of registrations in Annex 1 of the submissions on appeal, many specifying Class 3 goods, arguing that the word ‘DVIA’ is commonly used in marks of trade. The Board cannot agree, noting the conclusion of the Fourth Board in 14/05/2012, R 2545/2010-4, Casta Diva (fig.) / DIVA, § 38, where it is stated that ‘… applicant argues that the distinctiveness of the earlier mark is weak making reference to a number of other marks on the Register including the word “DIVA”. This argument fails. The existence of other trade mark registrations, randomly selected by a search on the Register, is not conclusive to prove the weakness of the mark, at least as long as there is no information about the use of those other marks and their perception by the relevant public’.

63. The applicant also refers to two Opposition Division decisions (22/01/2016, B 2 463 621, DIVAS / XENIA DIVA; 26/06/2016, B 2 400 599, DIVA (fig.) / DD DEVIL’S DIVA (fig.)) where confusion was not found. First, the Board points out that Opposition Division decisions are not binding on the Board of Appeal and, in any event, relate to very different marks, these cases not being on ‘all fours’ with the present matter.

64. In 22/01/2016, B 2 463 621, DIVAS / XENIA DIVA and 26/06/2016, B 2 400 599, DIVA (fig.) / DD DEVIL’S DIVA (fig.) the the goods at issue were clothing goods, and the marks in conflict contained a variety of additional, distinguishing matter: versus and versus . These examples cannot undermine the conclusion of the Board in this case.

65. The contested decsion is confirmed and the appeal rejected.

Costs

66. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

67. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

68. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opposition fee of EUR 320 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 170.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicant to the opponent in the opposition and appeal proceedings is EUR 1 170.

Signed G. Humphreys

Signed A. Kralik

Signed Ph. von Kapff

Registrar: Signed H.Dijkema