OPPOSITION No B 3 070 609

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Revers Cosmetics Sp. z o.o., ul. Słowikowskiego 39a, 05-090 Raszyn, Poland (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok. 12, 03-984 Warszawa, Poland (professional representative).

On 28/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 609 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all of the goods and services (Classes 3, 5 and 35) of European Union trade mark application No 17 921 818 for the figurative mark . The opposition is based on European Union trade mark registration No 11 493 426 for the word mark ‘Lavera’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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, namely European Union trade mark registration No 11 493 426.

In the present case, the date of filing of the contested trade mark is 08/08/2018.

The earlier trade mark was registered on 29/11/2018. Therefore, the request for proof of use is inadmissible.

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 and services

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

Class 3: Body and skin care and beauty preparations (not for medical purposes); milks, tonics, lotions, creams, emulsions, gels for the face and body; non-medicated cleansing preparations for the face and body; skin astringents not for medical purposes; body mist; non-medicated foot baths, depilatory creams; pumice stones for personal use; soaps; bubble bath; shower creams and gels; skin exfoliating products; make-up removing preparations for the face; talcum powder; shampoos; hair lotions, oils, conditioners and repair preparations; hair dyes; hair spray, gel and mousse; hair brighteners; hair mascaras; shaving creams and gels; after-shave gels and lotions; perfumery; deodorants for personal use; essential oils; bath beads; bath oils and salts; cosmetics; masks; foundation cream; blush; bronzing powder; make up powder; facial shimmer preparations; mascara; eyeliners; cosmetic eye and lip pencils; eye shadows; lip balms; lip gloss; lipsticks; makeup removing preparations; nail polish; nail forms; false nails; nail polish remover; cuticle creams; preparations for strengthening nails; non-medicated concealer sticks; body glitter; sun-tanning lotions and creams for the face and body; fake tan lotions and creams for the face and body; sunscreen creams; after sun lotions and creams for the face and body; Perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoos; gels, mousses, balms and preparations in aerosol form for hairdressing and haircare; hair lacquers; hair-colouring and hair-decolorizing preparations; preparations for waving and setting hair; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

Class 5: Pharmaceutical products and health-care products; medicated lubricants; dietetic substances and sanitary preparations, dietetic substances adapted for medical use; vitamin preparations; disinfectants; royal jelly (for medical purposes); herbal tea for medical or therapeutic purposes; corn remedies; headache pencils; lactose; milking grease; except foodstuffs, dietetic substances and beverages especially for babies, infants and children, included in this class; nutritional supplements that may contain proteins, glucides, lipids, peptides and/or fibres, or micronutrients such as vitamins and/or minerals and/or amino acids and/or fatty acids and/or plants, and/or vegetable extracts and/or purified molecules extracted from vegetables, for beauty and skin, body, face, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for medical and/or cosmetics and/or food purposes; nutritional additives made from meat, fish, poultry and game, meat extracts, fruit and canned vegetables, dried and cooked, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, for beauty and skin, body, face, hair or nail care in the form of capsules, tablets, vials, yeast, powders, bars, creams or beverages, for medical and/or cosmetics and/or food purposes; nutritional supplements that may contain coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, for beauty and skin, body, face, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for medical and/or cosmetics and/or food purposes; nutritional additives made from agricultural, horticultural, forestry and seed products (not included in other classes), fresh fruit and vegetables, seeds, plants and natural flowers, for beauty and skin, body, face, hair or nail care in the form of capsules, tablets, vials, yeast, powders, bars, creams or beverages, for medical and/or cosmetics and/or food purposes; nutritional additives for beauty and skin, body, face, hair or nail care in the form of vials for drinking or beverages, for medical and/or cosmetics and/or food purposes; cosmetics in all galenical forms, not adapted for medical use.

Class 32: Anti-aging beverages, not for pharmaceutical purposes.

Class 44: Medical services; medical clinics; health and beauty care services, hygienic services; aromatherapy services; massage; manicuring; beauty salons, hairdressing salons; hygienic and beauty care; health consultancy; manicuring; operating of wellness equipment, namely operating beauty salons and medical healing and thermal spas, consultancy in the field of hygienic and beauty care, in particular in the field of decorative cosmetics and anti-ageing; nutrition consultation.

The contested goods and services are the following:

Class 3: Cosmetic products; Perfumery; Essential oils; Preparations for washing purposes; Personal deodorants; Breath freshening sprays; Cosmetic products; Shaving preparations; Shaving cream; After-shave preparations; Bath salts, not for medical purposes; Baths (Cosmetic preparations for -); Cologne; Cosmetic creams; Hand creams; Body milks and balms; Masks; Hair-waving preparations; Nail polish; Cosmetic lotions; Hair spray; Perfumery oils; Toothpastes, tooth powders and mouthwashes; tonics; Gels; Conditioner; Bath preparations; Salts being body care cosmetics for aiding slimming; Masks for cosmetic treatments; Exfoliating creams; Make-up preparations; cosmetic slimming aids; Perfume; Skin care preparations; Lip stick; Lipsticks; Shampoo; Hair preparations and treatments; Eye shadow; Powders; Liquid foundation; Glosses; Mascara; Mascara; Nail varnish removers; laundry powders and liquids; Rinsing agents for laundry; Detergents; Windscreen cleaning liquids; Car care products; Liquids for washing surfaces; Sachets for perfuming linen; Soaking preparations for laundry use; Tissues impregnated with cosmetic lotions; Cleaning agents; Wheat pastes; Soaps; Soaps in liquid form; Grease-removing preparations; Cleaning and polishing preparations for parquet flooring; Polish for furniture and flooring; Creams for leather; Furbishing preparations; Cosmetics for suntanning.

Class 5: Sanitary preparations for personal hygiene; Pre-moistened antibacterial wipes; Antibacterial cotton pads for cleansing problematic complexions; Disinfectant swabs; Materials for dressings; Sanitary towels; Tampons; Pantyliners; Thermal water.

Class 35: Business management; Consultancy relating to business organisation and management; organisation of exhibitions for trade and advertising purposes; Demonstration of goods and presentation of services for commercial or advertising purposes; Sales promotion; Publication of publicity texts; Dissemination of advertising matter; Rental of advertising space; Updating of advertising material; Wholesaling and retailing of cosmetics, hygiene articles, perfumes, household chemicals, and cosmetic accessories and utensils; Wholesaling and retailing via the internet of cosmetics, hygiene articles, perfumes, household chemicals, and cosmetic accessories and utensils.

Some of the contested goods and services are identical or similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and professional consumers. The degree of attention may vary from average to high, depending on the various goods and services and, also, the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

LAVERA
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 earlier mark consists of the word ‘LAVERA’, which is meaningless for the majority of the relevant public. However, it cannot be excluded that part of the public, such as the Spanish-speaking consumers might perceive the earlier mark as ‘la vera’, which is a noun that refers to an edge or a bank (of a river). However, this meaning has no direct link to the relevant goods and services. Furthermore, the French-speaking part of the public may perceive the earlier mark as the third singular person of the verb ‘to wash’ (‘laver’) in the future tense. For part of the goods and services that relate to the process of washing or cleaning, such as soaps in Class 3, it is of rather limited distinctiveness, while for the remaining part of the goods and services that do not relate to washing or cleaning, ‘LAVERA’ is distinctive.

To sum up, ‘LAVERA’ is distinctive for the majority of the relevant public in relation to all goods and services, as it is either meaningless or has no direct link to the goods and services at issue. The exception is that ‘LAVERA’ is of rather limited distinctiveness for the French-speaking part of the public in relation to some of the goods that are related to washing or cleaning.

The contested sign is figurative and includes the verbal element ‘LAVOQUÉ’ in black and bold upper-case letters in a standard font. Positioned below is the word ‘COSMETICS’ in much smaller and thinner print. As regards the ‘LAVOQUÉ’ it is meaningless throughout the entire relevant territory, and is therefore distinctive. The English word ‘COSMETICS’ is considered to be understood throughout the entire territory due to close equivalents in the respective languages. To give some examples, it is ‘kostmetik’ in Danish, ‘cosmétiques’ in French, ‘Kosmetik’ in German, ‘kozmetikum’ in Hungarian, ‘kosmetyki’ in Polish, ‘kozmetika’ in Slovak and ‘cosméticos’ in Spanish. For goods and services related to cosmetics, such as cosmetic products in Class 3 and wholesaling and retailing of cosmetics in Class 35, ‘COSMETICS’ is non-distinctive, while for the remaining goods and services, such as business management in Class 35, it still may allude to the cosmetic industry and is there of limited distinctiveness. However, in any case, due to its small size and subordinate position, it plays a secondary role in the contested sign and thereby has less impact in the comparison of signs. It is rather the element ‘LAVOQUÉ’ that is visually dominating in the said sign.

As seen above, the earlier mark is weakly distinctive, at most, for the French-speaking part of the public in relation to some of the goods. For the purpose of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the most advantageous scenario for the opponent would be to assess the signs from the perspective of the non-French-speaking part of the public. Furthermore, since the opponent’s evidence of enhanced distinctiveness / reputation relates to Germany, as will be seen below, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

As regards the visual aspect of the comparison of the signs, it is remarked that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Having this in mind, the fact that the number of letters present in the elements ‘LAVERA’ and ‘LAVOQUÉ’ almost coincide (six letters vs seven letters), as well as the fact that they share the first three (‘LAV’) letters, do not have a decisive impact on the visual aspect of the comparison at hand. As the opponent pointed out in its observations, it is generally admitted that that consumers pay more attention to the beginning of the mark. However, this consideration does not prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

Account must be taken to the fact that the signs have clearly perceivable differences following their three first letters, namely ‘-ERA’ and ‘-OQUÉ’. Furthermore, although the additional elements of the contested sign have a very limited impact on the comparison of signs since they, at least in relation to a part of goods and services, are weak or non-distinctive (the verbal element ‘COSMETICS’ and the configuration and positioning of the elements), they cannot be completely ignored and do contribute to the visual differentiating of the signs to a certain degree.

Taking the abovementioned into account, the signs are visually similar to only a very low degree.

Aurally, in regards to the element ‘COSMETICS’ in the contested sign, due to its small size and secondary position within the sign (and also its lack of distinctiveness for part of the goods and services), it is likely that the consumer will not pronounce this element (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342; 03/06/2015, joined cases T-544/12, PENSA PHARMA, EU:T:2015:355 and T-546/12, pensa, EU:T:2015:355).

The earlier mark will be pronounced ‘LA/VE/RA’, while the contested sign as ‘LA/VO/KE’. Despite coinciding in their first syllable, the aural differences between the signs are rather clear due to the differing two last syllables of the signs.

Therefore, the signs are aurally similar to only a very low degree.

Conceptually, neither of the signs has a meaning as a whole. The word ‘COSMETICS’ will evoke a concept for the public, which however is non-distinctive for the part of the goods and services that are related to cosmetics, while it is weakly distinctive for the remaining ones.

As non-distinctive elements cannot indicate commercial origin, for the part of the goods and services that are related to cosmetics, the attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

While for the remaining part of the goods and services that are unrelated to cosmetics, only the contested sign will convey a distinctive concept, albeit weak, while the other sign remains without any meaning. Therefore, for these goods and services, the signs are not conceptually 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. 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 trade mark enjoys a high degree of distinctiveness as result of its extensive use within the European Union and particularly in Germany in connection with part of the goods and services for which it is registered, namely those in relation to cosmetics and preparations for body and beauty care. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The filing date of the contested mark is 08/08/2018. Therefore, the opponent was required to prove that the earlier mark enjoyed enhanced distinctiveness prior to that date.

The opponent submitted the following evidence:

Attachment 1:		Affidavit of the Opponent’s managing director, dated 24/04/2019, regarding the marketing and distribution under the Lavera mark. It is stated that the company Lavera Naturkosmetik GmbH, today known as Laverana GmbH & Co. KG, was founded in 1987, and that natural cosmetics have been produced under the ‘Lavera’ trade mark and are sold, inter alia, in Germany. These products has been distributed in well-known drugstores, perfume stores and supermarket chains. Furthermore, it is stated that to maintain and increase sales and the awareness of ‘Lavera’ products, the opponent continuously invests in the marketing of its products, for instance by television advertising together with known German figures, or by organising a fashion show at the Berlin Fashion Week.
Attachment 2:		Copy of an undated extract showing a map where several pinpoints can be seen, presumably of the opponent’s distributors. Copy of a printout extracted on 28/11/2016 from the opponent’s website containing a list of the opponent’s international export partners, inter alia containing partners in Denmark, Poland, Lithuania, Hungary, the Czech Republic, Greece, Finland, Italy and Spain.
Attachments 3 and 4:		Excerpts from the opponent’s website dated 10/12/2018 and 29/11/2018 referring to various European partner (online-) shops. Excerpts from the websites of the online stores of drugstores and perfumeries, such as DM, Douglas, Alnatura, Müller, Rossmann, Edeka, Rewe and Real, all dated 23/04/2019, showing the earlier mark used on goods such as various creams and lotions, deodorants, lip balms, lip liners, eye liners, highlighters, face masks, shower gels and shampoos. The sign is represented as follows:
Attachment 5:		Copies of certificates/quality seals the opponent received for its Lavera products; GREEN BRAND Germany 2015/2016 issued in February 2015 and NATRUE certificate of natural products dated 11/07/2015.
Attachment 6:		Extracts from the opponent’s own website dated 10/12/2018 informing that the lavera products have been awarded top marks by independent test magazine ÖKO-TEST around 740 times since June 1992. Also from the opponent’s own website is listing of awards won by the opponent for its ‘Lavera’ products between 2015 and 2018 (such as the TINA ANTI-AGEING AWARD for 2016/2017 and GERMAN BEAUTY AWARD 2015). Copy of an online article from the website organic-market.info, dated 07/02/2017, ‘Vivaness: the event for natural beauty professionals’, regarding the natural cosmetics industry and mentioning ‘Lavera’ as a natural cosmetic manufacturer that was in the top five nominees in the category of a sustainability award in Germany. Extracts from the opponent’s newsletters, comprising the years 2012 and 2014. The newsletters include information of the test results in the period between 2012 and 2014 of the opponent’s ‘lavera’ goods performed by various German magazines, such as ÖKO-TEST.
Attachment 7:		Screenshots of four images from seemingly two Youtube videos, one dated 09/09/2016 and the other 16/01/2019. Both seems to be commercials for the opponent’s lavera products. It is stated that this video features the German actress and singer Yvonne Catterfeld and that it appeared on television.
Attachment 8:		Excerpts showing pictures of the ‘Cosmoprof’ beauty trade fair and the advertising of the ‘Lavera’ products.
Attachment 9:		Copy of the opponent’s booklet of 2013, which was said to be available on the European market as advertising means on occasion of the opponent’s 25th birthday.
Attachment 10:		Copies of two online articles of the national German newspaper ‘Süddeutsche Zeitung’, both published 10/02/2016. The first is titled ‘Natural cosmetics – no longer eco but mainstream’ stating that ‘Lavera’, is, after Weleda, the company with the highest turnover on the German market for natural cosmetics. The other article is titled ‘Not everything that means natural cosmetics is’ – however, this article does not mention the earlier mark Lavera.

Enhanced distinctiveness requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

In relation to the affidavit (Attachment 1), it should be noted that the probative value of statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish enhanced distinctiveness or reputation, since statements originating from the sphere of the opponent have to be considered as having less probative value than evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declarations are supported by the other items of evidence.

Having examined the material listed above, the Opposition Division considers that the evidence does indicate a certain use of the opponent’s Lavera mark on goods such as cosmetics and various beauty care products in Class 3, in particular for Germany. However, the Opposition Division concludes that the evidence submitted by the opponent is insufficient for demonstrating that the earlier trade mark acquired a high degree of distinctiveness through its use.

In Attachments 5 and 6 copies of certificates and printouts submitted from the opponent’s website ‘lavera.de’ show a listing of various awards won and certifications achieved by the opponent for its ‘Lavera’ products between 2015 and 2018, such as ÖKO-TEST awards, the ‘GREEN BRAND Germany’ certification for 2015/2016 and GERMAN BEAUTY AWARD 2015. However, the fact that some of the opponent’s products won awards or were certified does not necessarily mean that these products are also known by the relevant public. Winning of awards does not inevitably show recognition of the mark in relation to the products by the relevant public, but may rather prove recognition of the quality of the products themselves and/or of the product’s design or other characteristics by certain bodies of experts. Awards are generally given after an assessment by an expert panel. The criteria for handing out awards do not necessarily take into account the degree of recognition of the mark within the general public. For example, as for the awards or certifications such as ÖKO-TEST, NATRUE and ‘GREEN BRAND Germany’, these do not seem to reflect the reputation of the opponent’s products or their recognition by the public, but rather they acknowledge that the goods are environmental-friendly and that the brand practices ecological sustainability. Moreover, the opponent did not file any further details of the criteria for handing out the said awards and certificates.

While the affidavit of the opponent’s managing director (Attachment 1) provides information regarding the history and profile of the opponent, as well as mentioning several distribution channels of its products, it does not give any indications on the actual recognition of the part of the public.

Regarding the screenshots of the opponent’s website, such as Attachments 2 and 3, it must be noted that without any further and additional objective evidence, the screenshots do not establish the intensity of the commercial use of the earlier marks, which may be shown by, inter alia, a certain number of visits or emails received via the websites as well as the volume of interest/business generated under the mark.

As far as the excerpts submitted as Attachments 3 and 4 showing the opponent’s ‘Lavera’ products being offered by various online retailers are concerned, these only provide proof of goods branded with Lavera mark being present on the market.

The documents submitted by the opponent relating to advertising material, such as Attachments 7, 8 and 9, demonstrate that some promotional efforts have been undertaken. However, it must be pointed out that there is a lack of information specifically on where this material was published. Therefore, the Opposition Division is also lacking important information concerning the public’s exposure (for example distribution numbers) of the material submitted. Likewise, there are no distribution numbers submitted for the booklet in Attachment 9. Also, in relation to the videos referred to in Attachment 7, the opponent claims that these were shown on television. However, there is no information given on which television channels these videos were broadcasted on, and how many people were exposed to these commercials. Most importantly, there are few indications on the effect of this marketing effort.

As regards the online article from the national German newspaper ‘Süddeutsche Zeitung’ submitted as Attachment 10, this does indeed give some indications regarding recognition of the earlier mark, as it states that Lavera is the company with the second highest turnover on the German market for natural cosmetics. However, this one article is considered too scarce to prove recognition on part of the relevant public, especially since this information is not supported by other pieces of evidence such as objective turnover numbers, annual reports or market shares, or even more articles from news sources confirming the same statements.

The Opposition Division notes that, by analogy, pursuant to settled case-law (see judgment of 18/01/2011, T-382/08, ‘Vogue’), use, let alone enhanced distinctiveness and reputation, cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the relevant market. Therefore, there is a restriction on the Opposition Division to engage in speculations and assumptions when assessing evidence of use.

Therefore, it is considered that the evidence submitted as a whole does not provide sufficient and clear information, originating from objective sources, about the recognition of the earlier mark in relation to any of the goods for which reputation is claimed and in the relevant territory. The opponent could have filed more documentation that would indicate recognition, for example, declarations made by independent parties attesting to the reputation of the mark, verified data as to the market share held in relation to the relevant goods, opinion polls and market surveys, audits and/or other commercial documents.

As a result, the Opposition Division cannot, without making suppositions, conclude that the evidence submitted by the opponent demonstrates that the earlier trade mark is widely known and recognised by the public in the relevant territory and consequently acquired high distinctiveness or a reputation in relation to the claimed goods.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods and services in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the goods and services are assumed to be identical. The relevant public consists of the public at large and professional consumers; whose degree of attention varies from average to high depending on the goods and services. The earlier mark, as a whole, enjoys a normal degree of inherent distinctiveness.

The signs are either conceptually not similar or this aspect remains neutral depending on the different goods and services. Visually and aurally the signs are considered similar to a very low degree only because they coincide in their three first letters ‘LAV’, which, however, do not form an independent element in any of the marks. When assessing the overall impression created by the signs, having in mind the possibility of a likelihood of confusion of the average consumer, it is considered that these very low visual and aural similarities are counteracted by the differences that are clearly perceivable.

The differences in the remaining parts of the signs, such as ‘-ERA’ and ‘-OQUÉ’, contribute to the distinguishing between the signs both in the visual and the aural aspects. In the Opposition Division’s opinion these differences are sufficient to enable the consumers to differentiate between the signs and thereby to exclude any likelihood of confusion between the marks for the German-speaking part of the public, even in case of an average degree of attention and even assuming the goods and services are identical.

As for the remaining public, the result will not differ as the situation will be the same for the majority of the public in terms of the comparison of the signs and the distinctiveness of the earlier mark. While for the French-speaking part of the public there is even a smaller chance of any likelihood confusion taking into consideration that the earlier mark ‘LAVERA’ has a low degree of inherent distinctiveness for part of the goods and services that are related to cleaning and washing. Consequently, there is no likelihood of confusion for the remaining part of the public either.

Therefore, the opposition must be rejected.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

2. Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must also be rejected as far as this ground is concerned.

Since the opposition is unsuccessful in both legal grounds invoked, the opposition as such must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta Maria CHYLIŃSKA

Tu Nhi VAN

Claudia MARTINI

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.