OPPOSITION No B 3 073 432

Celine, 16 rue Vivienne, 75002 Paris, France (opponent), represented by Caroline Main, 2 rue du Pont-Neuf, 75001 Paris, France (employee representative)

a g a i n s t

Celina Blanche, Åsögatan 148, 11632 Stockholm, Sweden (applicant).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 432 is upheld for all the contested goods.

2. European Union trade mark application No 17 964 215 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 964 215 for the word mark ‘CELINA BODY’. The opposition is based on European Union trade mark registration No 12 086 674 for the figurative mark and on European Union trade mark registration No 3 977 063 for the word mark ‘CELINE’. The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and Article 8(5) EUTMR in relation to European Union trade mark registration No 3 977 063 only.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

European Union trade mark registration No 12 086 674

Class 3: Soaps (except medicinal soaps); perfumery, eau-de-toilette, eau de cologne; aftershave preparations; ethereal oils; cosmetics, including foundation, lipsticks, lip polisher, eye-shadow, mascaras, eyebrow pencils, make-up; powders, creams, lacquers and lotions for the hair, face and body (for cosmetic purposes); make-up removing preparations; deodorants (for personal use); gels and preparations for the shower and bath; shampoos; toiletries and make-up kits; products for the care and decoration of the nails, including nail varnish.

European Union trade mark registration No 3 977 063

Class 25: Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear.

The contested goods are the following:

Class 3: Skincare cosmetics; makeup; perfumery and fragrances; bath and shower oils [non-medicated]; beauty lotions; beauty milk; beauty serums; body and facial butters; body and facial creams [cosmetics]; body and facial oils; body cleansing foams; body and facial gels [cosmetics]; body glitters; body mist; body washes; cleaning masks for the face; face and body masks; feminine hygiene cleansing towelettes; foot scrubs; hair and body wash; hand cleansers; hand gels; hand washes; herbal extracts for cosmetic purposes; makeup setting sprays; moist wipes for sanitary and cosmetic purposes; shower and bath foam; shower and bath gel; skin care preparations; skin cleansing foams; washing creams; cuticle conditioners; cuticle removers; cotton swabs for cosmetic purposes; cotton balls for cosmetic purposes; cotton wool for cosmetic purposes; cuticle cream; organic cosmetics; perfumed body lotions [toilet preparations]; perfumed lotions [toilet preparations]; pedicure preparations; natural cosmetics; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics.

Class 25: Lingerie; ladies’ underwear; bath robes; lounging robes; swimwear; beach robes; sportswear; ankle socks; athletic tights; baby bodysuits; babies’ undergarments; babies’ pants [underwear]; baby doll pyjamas; bodices [lingerie]; bikinis; bustiers; caftans; bridesmaids wear; bridal garters; bralettes; bra straps; chemise tops; chemises; casualwear; casual trousers; casual shirts; cashmere clothing; camisoles; eye masks; hosiery; hooded pullovers; hooded sweatshirts; knitted underwear; knickers; knee-high stockings; maternity sleepwear; maternity tops; maternity shorts; maternity shirts; maternity lingerie; maternity leggings; maternity pants; loungewear; one-piece clothing for infants and toddlers; non-slip socks; negligees; nighties; nightwear; pajama bottoms; overalls for infants and toddlers; pyjamas; sleep masks; socks; socks and stockings; sports bras; sports clothing [other than golf gloves]; slips [underclothing]; strapless bras; stockings; sports socks; sports shirts with short sleeves; sports pants; sports singlets; sports jackets; sports jerseys; teddies [underclothing]; swim wear for children; thongs; underwear; yoga pants; yoga shirts.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 3

The contested perfumery and fragrances are included in, or overlap with, the broad category of the opponent’s perfumery covered by European Union trade mark registration No 12 086 674. Therefore, they are identical.

The contested skincare cosmetics; makeup; bath and shower oils [non-medicated]; beauty lotions; beauty milk; beauty serums; body and facial butters; body and facial creams [cosmetics]; body and facial oils; body cleansing foams; body and facial gels [cosmetics]; body glitters; body mist; body washes; cleaning masks for the face; face and body masks; feminine hygiene cleansing towelettes; foot scrubs; hair and body wash; hand cleansers; hand gels; hand washes; herbal extracts for cosmetic purposes; makeup setting sprays; moist wipes for sanitary and cosmetic purposes; shower and bath foam; shower and bath gel; skin care preparations; skin cleansing foams; washing creams; cuticle conditioners; cuticle removers; cuticle cream; organic cosmetics; perfumed body lotions [toilet preparations]; perfumed lotions [toilet preparations]; pedicure preparations; natural cosmetics; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics are included in, or overlap with, the broad category of the opponent’s cosmetics covered by EUTM No 12 086 674. Therefore, they are identical.

The contested cotton swabs for cosmetic purposes; cotton balls for cosmetic purposes; cotton wool for cosmetic purposes are similar to the opponent’s cosmetics covered by EUTM No 12 086 674. On the one hand cosmetics include preparations for enhancing or protecting the appearance, odour or fragrance of the body, while on the other hand the contested goods are soft masses of cotton used for applying or removing liquids or creams to the skin. Therefore, they are complementary to cosmetics. Additionally, they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 25

The contested lingerie; ladies’ underwear; lounging robes; swimwear; beach robes; sportswear; ankle socks; athletic tights; baby bodysuits; babies’ undergarments; babies’ pants [underwear]; baby doll pyjamas; bodices [lingerie]; bikinis; bustiers; caftans; bridesmaids wear; bridal garters; bralettes; chemise tops; chemises; casualwear; casual trousers; casual shirts; cashmere clothing; camisoles; hosiery; hooded pullovers; hooded sweatshirts; knitted underwear; knickers; knee-high stockings; maternity sleepwear; maternity tops; maternity shorts; maternity shirts; maternity lingerie; maternity leggings; maternity pants; loungewear; one-piece clothing for infants and toddlers; non-slip socks; negligees; nighties; nightwear; pajama bottoms; overalls for infants and toddlers; pyjamas; socks; socks and stockings; sports bras; sports clothing [other than golf gloves]; slips [underclothing]; strapless bras; stockings; sports socks; sports shirts with short sleeves; sports pants; sports singlets; sports jackets; sports jerseys; teddies [underclothing]; swim wear for children; thongs; underwear; yoga pants; yoga shirts are included in the broad category of the opponent’s clothing and underwear covered by EUTM No 3 977 063. Therefore, they are identical.

The contested bath robes are similar to the opponent’s clothing and underwear covered by EUTM No 3 977 063. In principle, bath robes fall outside the normal definition of clothing because the purpose of clothing is essentially to cover the body, whereas the main purpose of bathrobes is to absorb moisture after a bath. Nevertheless, they coincide in their method of use, target public and sales outlets. Moreover, they are manufactured by the same undertakings.

The contested bra straps are similar to the opponent’s underwear covered by EUTM No 3 977 063. Although removable bra straps can be sold separately from brassieres, they are merely part of this type of garments and cannot be used on their own. Therefore, the compared goods are complementary. Moreover, they coincide in the target public, sales outlets and originate from the same undertakings.

The contested eye masks; sleep masks are similar to a low degree to the opponent’s clothing and underwear covered by EUTM No 3 977 063 because they coincide in distribution channels and producer.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention is average.

c) The signs

European Union trade mark registration No 12 086 674 European Union trade mark registration No 3 977 063 CELINE	CELINA BODY
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the verbal elements of the signs are meaningful in the English-speaking part of the European Union, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United Kingdom.

The earlier mark ‘CELINE’, (EUTM No 3 977 063), is a word mark like the contested mark, ‘CELINA BODY’. The earlier mark ‘CÉLINE’ (EUTM No 12 086 674) is, however, a figurative mark where this word appears in standard upper-case letters. This typeface is so common and minimal in character that it will not attract consumers’ attention away from the word itself. Both ‘CÉLINE’ and ‘CELINE’ will be perceived as female first names by the public under analysis. Likewise, the word ‘CELINA’ is likely to be perceived as a foreign version of the very same female name. As these female names do not refer in any way to the relevant goods, they have a normal degree of distinctiveness.

In English, the word ‘BODY’ means ‘the physical structure, including the bones, flesh, and organs, of a person or an animal’ (information extracted from Oxford Dictionary on 18/10/2019 at https://www.lexico.com/en/definition/body). Since it refers to the use of the goods in question, it has a weak distinctive character. As a whole the contested sign ‘CELINA BODY’ will be perceived by the relevant public as the mere combination of these two words without conveying a univocal meaning.

Visually, the signs coincide in the sequence of letters ‘CELIN*’, present identically in the marks. However, they differ in the vowels (‘E’ versus ‘A’) placed at the end of the earlier marks and the first word’s ending of the contested sign, where they are less striking because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs also differ in the additional word ‘BODY’ of the contested sign (which, as explained above, has limited distinctiveness), as well as in the stylisation and the diacritical mark above the first ‘É’ of EUTM No 12 086 674, both having a minimal visual impact in the sign.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the first five letters of the marks. As regards the diacritical mark above the first ‘É’ in EUTM No 12 086 674, this will have no aural impact for the part of the public under analysis as it does not exist in English. However, the last vowel ‘A’ in the first word of the contested sign will have the effect of adding an extra syllable to the pronunciation of the word in comparison to the pronunciation of the earlier marks where the last vowel ‘E’ will be soundless. Moreover, the pronunciation differs in the additional word ‘BODY’ of the contested sign, which has no counterpart in the earlier signs, but is less distinctive. Given that it is the beginning of the signs that first catches the attention of consumers, the signs are aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the marks will be associated with the same female name (in different versions) and this meaning is not altered by the presence of the additional element BODY of the contested mark, they are conceptually highly similar.

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

d) Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

As has been set out in the considerations above, the goods at issue are partly identical and partly similar (to varying degrees) and target the general public, whose degree of attention is average. The signs are visually and conceptually similar to a high degree and, aurally similar to an above-average degree. In addition, the earlier marks have an average degree of inherent distinctiveness in relation to the relevant goods.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, 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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 12 086 674 and No 3 977 063. 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 marks, there is no need to assess their enhanced degree of distinctiveness due to reputation, as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, she 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

Begoña URIARTE VALIENTE

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.