OPPOSITION No B 3 070 200

Vittorino Ruggero Bortolin, Matteotti, 9, 24030 Presezzo, Italy (opponent), represented by Lecce & Calciati S.r.l. Internazionale Brevetti, Via Ariberto 24, 20123 Milan, Italy (professional representative)

a g a i n s t

Delia Cosmetics Sp. Z O.O., ul. Leśna 5, 95‑030 Rzgów, Poland (applicant), represented by Maria Przybylska-Karczemska, ul. 10 Lutego 3/1, 90‑303 Łódź, Poland (professional representative).

On 29/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 200 is upheld for all the contested goods.

2. European Union trade mark application No 17 892 902 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some the goods of European Union trade mark application No 17 892 902 for the figurative sign , namely against all the goods in Class 3. The opposition is based on Italian trade mark registration No 1 519 523 for the word mark ‘BIOGENA’. The opponent invoked Article 8(1)(b)EUTMR.

PRELIMINARY REMARK

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 892 902. Following a limitation made by the applicant, the remaining goods of the contested trade mark are all the contested.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Italian trade mark registration No 1 519 523 for the word mark ‘BIOGENA’.

The date of filing of the contested application is 21/06/2018.The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Italy from 21/06/2013 to 20/06/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Cosmetics; hair lotions.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 27/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/09/2019 to submit evidence of use of the earlier trade mark. On 02/08/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: extract from the records of the Chamber of Commerce of Bergamo, indicating the registration of the company Valetudo S.r.l. in 1983, and mentioning Vittorino Bortolin as representative of the company which produces cosmetics.

• Annex 2: product description of the line of goods ‘BIOGENA’ and pictures of their packaging, undated: , ,

, ,

, ,

, .

They are dermo-cosmetic lotions and soaps.

• Annex 3: extracts of brochures in Italian of the line of products ‘BIOGENA’, dated 2012, 2013 and 2014, and pictures of advertising material dated 2015, 2016and 2017. Invoices for payments for the printing of the advertising material dated from 2012 to 2017. The invoices were issued by the companies TeknoMedia edizioni srl, Chrysalis Communication and adpharm communications.

• Annex 4: copies of 33 invoices to customers in Italy. The trade mark ‘BIOGENA’ appears, inter alia, in relation to lotions, face cleansers and shampoos, and they demonstrate the sales of the goods between 2012 and 2019.

• Annex 5: extracts of agency contracts relative to the part of the contracts referring to goods, inter alia, under the trade mark ‘BIOGENA’ (lotions and creams), during the period 2012-2019, with agents in several cities in Italy.

• Annex 6: a report of the company Valetudo, showing a table with annual sales, regarding inter alia, the line of products ‘BIOGENA’ (from 2009 to 2019) in euros.

• Annex 7: pictures of participation of the opponent’s trade mark ‘BIOGENA’ in events: ‘Sidemast 2015 Milano’ and copy of a sponsor contract for this event. Copy of a brochure relative to a convention ‘UNICO spa’ 2018, in Sardinia. Copy of a sponsor contract for a dermatologic sector event in Naples, dated 2018.

The invoices, brochures and agency and sponsor contracts show that the place of use is Italy. This can be inferred from the language of the documents (Italian), the currency mentioned (euro), and some addresses in Italy. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the documents outside the relevant period are dated 2019, which is very close to the relevant period. Therefore, the mark has been used during the relevant period, between 21/06/2013 and 20/06/2018.

The documents filed, namely invoices, sponsor and agency contracts, brochures and packaging images, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Several of the product pictures show that the trade mark is used with other trade marks. However, this is common practice in some markets, where not only the product’s trade mark appears, but also the company sign or the line of products’ trade mark. In this case the trade mark is used with other trade marks without altering its distinctive character. In addition, the use of the logo together with the trade mark ‘BIOGENA’ in some of the documents and pictures submitted does not alter the distinctive character of the earlier mark as they are two clearly different and identifiable elements.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub category or sub categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for lotions, creams and hair lotions. These goods can be considered to form an objective subcategory of cosmetics, namely creams and lotions, hair lotions. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for cosmetics creams and lotions, hair lotions.

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

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

Class 3: Cosmetics creams and lotions and hair lotions.

The contested goods are the following:

Class 3: Cosmetics; toilet soaps and cleaning preparations, including bath and shower preparations; perfumery goods; personal deodorants; antiperspirants [toiletries]; colorants for toilet purposes; cosmetic preparations for cleaning, protection, care, nutrition, beautification and correction of imperfections in the skin of the face and body, and cosmetic preparations for care and beautification of the eyes, nails and hair; serums; creams; gel; lotions; tonics; cleansing milks; masques; lotions; ointments; lip stick; sticks; cosmetics for colouring (colorants); glitter for cosmetic purposes; glosses; cosmetics for make-up; concealers; make-up powders and fluids; make-up removing preparations; eyebrow pencils, eyeliners and lip liners; eyelid shadow; eyebrow and eyelash mascaras; lipstick; coloured cosmetics for the skin of the face and neck; nail polish; nail varnish remover and nailcare preparations; shaving mousses and gels; aftershave lotions and balms; sun-tanning preparations (cosmetics); after-sun and self-tanning preparations; sets of perfumery articles and cosmetics; hair washing, styling, care and conditioning preparations; colouring shampoos and preparations and hair dyes; highlighting dyes; hair-bleaching and colour-removing preparations; eyebrow pencils and mascaras; straightening, curling and waving preparations; hair balms and conditioners; hair spray and hair-fixing products, including colorants; depilatory preparations.

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 cosmetics includes, as a broader category, the opponent’s cosmetics creams and lotions. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested serums; creams; gel; lotions; tonics; cleansing milks; masques; lotions; ointments shaving mousses and gels; aftershave lotions and balms; sun-tanning preparations (cosmetics); after-sun and self-tanning preparations are included in, or overlap with, the broad category of the opponent’s cosmetics creams and lotions. Therefore, they are identical.

The contested hair washing, care and conditioning preparations; hair balms and conditioners are included in, or overlap with, the broad category of the opponent’s hair lotions. Therefore, they are identical.

The contested toilet soaps and cleaning preparations, including bath and shower preparations; perfumery goods; personal deodorants; antiperspirants [toiletries]; cosmetic preparations for cleaning, protection, care, nutrition, beautification and correction of imperfections in the skin of the face and body, and cosmetic preparations for care and beautification of the eyes, nails and hair; colorants for toilet purposes; lip stick; sticks; cosmetics for colouring (colorants); glitter for cosmetic purposes; glosses; cosmetics for make-up; concealers; make-up powders and fluids; make-up removing preparations; eyebrow pencils, eyeliners and lip liners; eyelid shadow; eyebrow and eyelash mascaras; lipstick; coloured cosmetics for the skin of the face and neck; nail polish; nail varnish remover and nailcare preparations; sets of perfumery articles and cosmetics; hair styling; colouring shampoos and preparations and hair dyes; highlighting dyes; hair-bleaching and colour-removing preparations eyebrow pencils and mascaras; straightening, curling and waving preparations; hair spray and hair-fixing products, including colorants depilatory preparations are similar to the opponent’s cosmetics creams and lotions and hair lotions. They coincide in purpose (to improve or enhance body health or appearance)and in producer, and target the same public. Moreover, they are sold through the same outlets.

2. The signs

BIOGENA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 earlier mark is the word mark ‘BIOGENA’. This verbal element could be understood as the feminine form of ‘BIOGENO’, which in Italian means the hypothetical protein assumed to be the basis of the formation and functioning of body cells and tissues. However, as it is a very specialised word, not widely known, it will not be associated with this meaning by the majority of the relevant public.

Both signs’ verbal element consists of a single string of letters. Account must be taken of the fact that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The common element ‘BIO’ will be associated with organic or natural ingredients in a product. Bearing in mind that the relevant goods are cosmetics, this element is weak for the entire relevant public because it suggests that the relevant goods are organic or environmentally friendly. The component ‘GENA’ is meaningless and, therefore, has an average degree of distinctiveness.

The contested sign is a figurative sign composed of the verbal element ‘BIOGENA’ in blue, positioned vertically, with a stylised letter ‘i’ depicting an Aesculapian snake, which alludes to the Greek god of medicine. It is, therefore, weak in relation to the relevant goods because it conveys the idea that these goods have medical properties. Below it and in a rather small size is the verbal element ‘PHARMA’, underlined, which the relevant public will associate with the abbreviation of ‘pharmaceutical’ as the equivalent word in Italian is very similar, farmacia. This element is secondary due to its size and position, and weak because it conveys the idea that the relevant goods are pharmaceutical, a characteristic that the relevant cosmetics goods can have. The verbal element ‘BIOGENA’ has the meaning explained above. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; and 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59). The verbal element ‘BIOGENA’ is the dominant element of the contested sign.

Visually, the signs coincide in their verbal element ‘BIOGENA’ which is the sole element of the earlier sign. They differ in the additional element ‘PHARMA’ of the contested sign which is secondary due to its size and position, and weak, as mentioned above. They also differ in the figurative elements of the contested sign, including the weak element of the Aesculapian snake.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BIOGENA’, present identically in both signs. The pronunciation differs in the sound of the component ‘PHARMA’ of the contested mark, but as it is a weak and secondary element will likely not be pronounced.

Therefore, the signs are aurally at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘BIO’, included in both signs, will be associated with the meaning explained above, which is weak, as well as the contested sign’s elements ‘PHARMA’ and Aesculapian snake. To that extent, the signs are conceptually similar to a very low degree.

3. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section b) of this decision.

4. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, 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; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly similar.

The signs are visually similar to a high degree, aurally similar to at least a high degree and conceptually similar to a low degree. The earlier mark’s sole verbal element is included in the contested sign as its dominant element. The signs differ only in minor elements: the contested sign’s secondary verbal element and stylised script, and a weak figurative element. The applicant states that the signs have a low degree of distinctiveness due to the presence of the element ‘BIO’. It should be recalled that, according to the case-law, the weaker distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public (see 08/02/2011, T‑194/09, Líneas aéreas del Mediterráneo, EU:T:2011:34, § 30, as regards non-distinctive elements).

Bearing in mind the identity between the goods, the differences between the signs are considered insufficient to outweigh their high degree of visual and aural similarity resulting from the coincidence in the element ‘BIOGENA’, which constitutes the sole element in the earlier mark and the dominant element in the contested sign.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 519 523. 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, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

The Opposition Division

Andrea VALISA

Aurelia PEREZ BARBER

Michele M.BENEDETTI-ALOISI

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.