OPPOSITION No B 3 102 650

Laboratorium Kosmetyczne Dr Irena Eris Spółka z ograniczoną odpowiedzialnością, Armii Krajowej 12, 05-500, Piaseczno, Poland (opponent), represented by Sulima Grabowska Sierzputowska Biuro Patentów I Znaków Towarowych SP. K., ul. Puławska 182, 02-670, Warsaw, Poland (professional representative)

a g a i n s t

Eris' Gift (Beijing) Health Technology Co. Ltd., Rm. 119, 1/F, Bldg. 8, Jia No. 27, Chaoyang N. Rd., Chaoyang, Beijing, People’s Republic of China (applicant), represented by Metida Law Firm Žabolienė And Partners, Business center Vertas Gynéjų str. 16, 01109, Vilnius, Lithuania (professional representative).

On 08/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 650 is partially upheld, namely for the following contested goods:

Class 3: Perfumes; beauty masks; Cosmetics; Facial cleansing milk; cleaning preparations; Polishing preparations; Furbishing preparations; Essential oils; Dentifrices; Cosmetics for animals.

2. European Union trade mark application No 18 082 223 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 082 223 for the word mark ‘ERIS’ GIFT’. The opposition is based on European Union trade mark registration No 4 117 461 and Polish trade mark registration No 98 986 both for the word mark ‘DR IRENA ERIS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR insofar the Polish trade mark.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 117 461.

a) The goods and services

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

Class 3: Cosmetics; creams, emulsions, lotions, gels, skin oils and balsams; soaps; wash and bath preparations; hair cleaning and hair care preparations; perfumery products; perfumes; toilet waters and eau de colognes; essential oils; deodorants and antiperspirants; make-up and make-up removing preparations; lip care and lip make-up preparations; nail care and nail colouring preparations; intime hygiene preparations; suntan preparations and preparations protecting against UV; self-tan preparations; depilatory preparations; make-up powders; after-bath powders; hygienic powders; dentifrices and preparations for oral care; toiletries.

Class 5: Cosmetics for medical use; medicinal creams, emulsions, liquids, gels, oils and balsams, bath salts for medicinal use, medicinal baths.

Class 44: Cosmetic clinic services; beauty salon services.

The contested goods and services are the following:

Class 3: Perfumes; beauty masks; Cosmetics; Facial cleansing milk; cleaning preparations; Polishing preparations; Furbishing preparations; Essential oils; Dentifrices; Cosmetics for animals.

Class 10: Esthetic massage apparatus; Fumigation apparatus for medical purposes; Massage apparatus; Dental apparatus and instruments; galvanic therapeutic appliances; Cushions for medical purposes; Love dolls [sex dolls]; Sex toys; Artificial breasts; Orthopedic articles.

Class 35: Advertising; commercial administration of the licensing of the goods and services of others; sales promotion for others; Business management and organization consultancy; Rental of vending machines; personnel management consultancy; Relocation services for businesses; presentation of goods on communication media, for retail purposes; Invoicing; Procurement services for others [purchasing goods and services for other businesses].

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 Perfumes; Cosmetics; Essential oils are identically contained in both lists of goods in the same class.

The contested goods beauty masks; Facial cleansing milk; cleaning preparations; Cosmetics for animals are included in the opponent’s broader category of cosmetics. Therefore, they are identical.

The contested Dentifrices are similar to the opponent’s cosmetics as they have the same purpose. Furthermore, they usually coincide in relevant public and distribution channels.

The contested Furbishing preparations; polishing preparations are similar to the opponent’s soap as they can have the same purpose. Furthermore, they usually coincide in relevant public and distribution channels.

Contested goods in Class 10

The contested goods Esthetic massage apparatus; Fumigation apparatus for medical purposes; Massage apparatus; Dental apparatus and instruments; galvanic therapeutic appliances; Cushions for medical purposes; Love dolls [sex dolls]; Sex toys; Artificial breasts; Orthopedic articles are not similar to the opponent’s goods and services in Classes 3, 5 and 44. Although the contested goods can be used for medical or aesthetic purposes as the opponent’s goods and services, the opponent’s goods and services do not have the same nature or method of use as the applicant’s goods and they are not complementary in the sense that the contested goods are indispensable for the use of the opponent’s goods and services or vice versa. Furthermore, they normally do not have the same manufacturers.

Contested services in Class 35

The contested Advertising; commercial administration of the licensing of the goods and services of others; sales promotion for others; Business management and organization consultancy; Rental of vending machines; personnel management consultancy; Relocation services for businesses; presentation of goods on communication media, for retail purposes; Invoicing; Procurement services for others [purchasing goods and services for other businesses] are not similar to the opponent’s goods and services. They have different nature and purpose. Furthermore, they are offered by different undertakings and are targeted at a different relevant public and, contrary to the opponent’s argument, they are not complementary. It has to be recalled that goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

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 are directed at the public at large.

The degree of attention is average.

c) The signs

DR IRENA ERIS	ERIS' GIFT
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for the reasons that will be explained in detail below.

The element ‘DR’ in the earlier mark is a common abbreviation for ‘Doctor’ in the relevant language. Given that the relevant goods are cosmetics and toiletry, this element will be perceived as a reference to the health-related properties of the goods and therefore is non-distinctive.

The element ‘IRENA’ of the earlier mark will be understood as a feminine given name. This element has no direct and immediate relation with the relevant goods and is, therefore, considered to be distinctive.

The element ‘ERIS’ refers to the name of the goddess of discord, sister of Ares. However, it is considered that for the majority of the relevant public the element ‘ERIS’ will be assumed to be a surname in the earlier trade mark, given its position, and as a person’s name or a surname in the contested sign, the giver of the gift due to the presence of the apostrophe.

In marks consisting of a first name and a surname, surnames have in principle an intrinsic value higher than that of given names as indicators of the commercial origin of the products. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family

link). However, it is true that cases where the first name is particularly rare may constitute an exception to this principle. It is the opinion of the Opposition Division that the first name ‘IRENA’ is not a rare name. On the contrary, it is quite a common name, in particular in the English-speaking territories but it is also used outside those territories. In any case, the public will perceive ‘IRENA’ as a fairly common female first name. The surname ‘ERIS’ on the other hand is not a frequent surname. Therefore, the general principle is applicable, that is the relevant public will give more importance to the element ‘ERIS’ in this case.

The element ‘GIFT’ of the contested sign will be understood as something that is being offered, a present. it is considered that this element is weak as it can be perceived by the relevant public as a reference that the relevant goods can be sold as a set gift, a set of products packaged together for individual sale as a gift, as it quite common for cosmetics and toiletry related goods.

Visually and aurally, the signs coincide in the distinctive element ‘ERIS’ (although in the contested sign there is the apostrophe). However, they differ in ‘DR’ (which is non-distinctive) and ‘IRENA’ of the earlier mark and ‘GIFT’ of the contested sign (which is weak).

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning as the element ‘ERIS’ in both marks can be perceived as the identification attributes for a person, the signs are conceptually similar to a below-average degree.

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 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.

The opponent did not explicitly claim that its European Union trade mark is particularly distinctive by virtue of intensive use or reputation as it refers exclusively to its earlier Polish trade mark registration.

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 non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar and partly dissimilar. They are targeted at the general public whose degree of attention is average. The distinctiveness of the earlier mark is normal.

The marks are visually and aurally similar to an average degree, and conceptually similar to a below-average degree to the extent that they both include the element ‘ERIS’ which has an independent distinctive role in both marks.

Consumers might misled and attribute a common origin to the goods concerned. The presence of the name ‘IRENA’ in the earlier mark will not suffice to safely distinguish the signs in the minds of the consumers. Furthermore, the element ‘DR’ of the earlier mark is non-distinctive and the word ‘GIFT’ of the contested sign is weak and in any case, as explained above, has an accessory role to the element ‘ERIS’.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.

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).

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.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the examined English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the earlier Polish trade mark registration No 98 986 for goods in Classes 3 and 5.

Since this mark is identical to the one which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

There is no need to assess the enhanced degree of distinctiveness of this trade mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of this trade mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

a) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar and consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and be detrimental to, the distinctive character or repute of the earlier trade mark. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence, or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements of laid down in Article 7(2) EUTMDR, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when the opposing party has not submitted any evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark, within the time limit set by the Office, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.