Betty Make Up | Decision 2628132 - It's A Monthly Thing Limited v. Changmei Lin

Date Published: Sep 28, 2017

OPPOSITION No B 2 628 132

It’s A Monthly Thing Limited, Unit 2, Oyster Park, 109 Chertsey Road, Byfleet, Surrey KT14 7AX, United Kingdom (opponent), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative)

a g a i n s t

Changmei Lin, postica Maddalena 43, 80143 Napoli, Italy (applicant), represented by Annalisa Baino, via Firenze 21, 800145 Napoli, Italy (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 628 132 is partially upheld, namely for the following contested goods:

Class 3:         Cleaning and fragrancing preparations; Toiletries; Cosmetic rouges; Cosmetics in the form of rouge; Body cleaning and beauty care preparations; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics for personal use; Perfumery and fragrances; Eyeliner; Eyeliner pencils; Powder for make-up; Perfumed powder [for cosmetic use]; Loose face powder; Pressed face powder; Face powder; Make-up powder; Lipsticks; Liquid rouge; Eyelid shadow; Cosmetics in the form of eye shadow; Mascara; Hair mascara; Facial concealer; Nail polish; Nail polish remover; Nail polish base coat; Nail polish top coat; Nail glitter; Nail varnish for cosmetic purposes; Nail polish pens; Nail polishing powder; Nail base coat [cosmetics]; Nail polish remover pens; Make up foundations; Creamy foundation; Skin foundation; Liquid foundation (mizu-oshiroi).

2.        European Union trade mark application No 14 513 675 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 513 675, namely against all the goods in Classes 3 and 21. The opposition is based on European Union trade mark registrations No 14 438 014 and No 14 438 022. The opponent invoked Article 8(1)(b) EUTMR.

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. Likelihood of confusion with European Union trade mark registration No 14 438 014

1. The goods and services

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

Class 35: Retail services in relation to female sanitary products, beauty preparations, cosmetics and skincare preparations; subscription services relating to female sanitary products, beauty preparations, cosmetics and skincare preparations; distribution of samples; information and advice relating to the aforesaid services.

Class 41: Providing on-line electronic publications; providing on-line electronic newsletters; writing blogs.

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; Cleaning and fragrancing preparations; Toiletries; Cosmetic rouges; Cosmetics in the form of rouge; False nails; Body cleaning and beauty care preparations; Adhesives for cosmetic purposes; Adhesives for affixing false hair; Seaweed for cosmetology; Cotton sticks for cosmetic purposes; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics for personal use; Cleaner for cosmetic brushes; Make-up pads of cotton wool; Perfumery and fragrances; Eyeliner; Eyeliner pencils; Powder for make-up; Perfumed powder [for cosmetic use]; Loose face powder; Pressed face powder; Face powder; Make-up powder; Lipsticks; Liquid rouge; False eyelashes; Adhesives for affixing false eyelashes; Adhesives for affixing artificial fingernails; Artificial nails for cosmetic purposes; Eyelid shadow; Cosmetics in the form of eye shadow; Mascara; Hair mascara; Facial concealer; Nail polish; Nail polish remover; Nail polish base coat; Nail polish top coat; Nail glitter; Nail varnish for cosmetic purposes; Nail polish pens; Nail polishing powder; Nail base coat [cosmetics]; Nail polish remover pens; Make up foundations; Creamy foundation; Skin foundation; Liquid foundation (mizu-oshiroi).

Class 21: Cosmetic and toilet utensils and bathroom articles; Cleaning articles; Applicators for applying eye make-up; Eye make-up applicators; Applicator sticks for applying makeup; Dental cleaning articles; Appliances for removing make-up, electric; Non-electric make-up removing appliances; Applicators for cosmetics; Cases adapted for cosmetic utensils; Hair color application bottles; Bath brushes; Hot air hair brushes; Skin cleansing brushes; Powder puffs; Mascara brushes.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. In the present case, the earlier trade mark is registered for retail services in relation to female sanitary products, beauty preparations, cosmetics and skincare preparations, and some of the contested goods in Class 3 are included in the broad category of cosmetics.

Therefore, the contested cosmetics (listed twice) and cosmetics for personal use are similar to a low degree to the opponent’s retail services in relation to cosmetics.

Moreover, cosmetics are, according to Article 2 of Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products, ‘any substance or preparation intended to be placed in contact with the various external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance and/or correcting body odours and/or protecting them or keeping them in good condition’.

Therefore, the scope of the category cosmetics is broad and encompasses the contested cleaning and fragrancing preparations; toiletries; cosmetic rouges; cosmetics in the form of rouge; body cleaning and beauty care preparations; cosmetic preparations; perfumery and fragrances; eyeliner; eyeliner pencils; powder for make-up; perfumed powder [for cosmetic use]; loose face powder; pressed face powder; face powder; make-up powder; lipsticks; liquid rouge; eyelid shadow; cosmetics in the form of eye shadow; mascara; hair mascara; facial concealer; nail polish; nail polish remover; nail polish base coat; nail polish top coat; nail glitter; nail varnish for cosmetic purposes; nail polish pens; nail polishing powder; nail base coat [cosmetics]; nail polish remover pens; make up foundations; creamy foundation; skin foundation; liquid foundation (mizu-oshiroi). As a result, these contested goods are similar to a low degree to the opponent’s retail services relating to cosmetics.

By contrast, since the contested essential oils and aromatic extracts; seaweed for cosmetology are raw or semi-finished products that are intended not to be placed as such on external parts of the body but rather to be included in the composition of cosmetics, they cannot be considered cosmetics. Moreover, they are not skincare preparations, female sanitary products or beauty preparations. The same holds true for the contested false nails; adhesives for cosmetic purposes; adhesives for affixing false hair; cotton sticks for cosmetic purposes; cleaner for cosmetic brushes; make-up pads of cotton wool; false eyelashes; adhesives for affixing false eyelashes; adhesives for affixing artificial fingernails; artificial nails for cosmetic purposes. Although, as expressly indicated for some, these contested goods do have a cosmetic purpose, they do not fall under the categories of female sanitary products, beauty preparations, cosmetics and skincare preparations. Therefore, they are dissimilar to the opponent’s retail services in relation to female sanitary products, beauty preparations, cosmetics and skincare preparations.

Indeed, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

This condition is not fulfilled in the present case, since the abovementioned contested goods are, at most, similar to some of the goods to which the opponent’s retail services relate.

Moreover, the abovementioned contested goods are also not similar to the opponent’s subscription services relating to female sanitary products, beauty preparations, cosmetics and skincare preparations; distribution of samples; information and advice relating to the aforesaid services (i.e. to retail services, subscription services and distribution of samples) in Class 35 or to the opponent’s services in Class 41, namely providing on-line electronic publications; providing on-line electronic newsletters; writing blogs.

These contested goods have a different nature, purpose, method of use and target public, as well as different distribution channels, from the opponent’s services in Classes 35 and 41. They are, moreover, neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 21

Bearing in mind what was said above regarding the comparison between retail services of specific goods and those specific goods, it has to be considered that the contested goods are dissimilar to the opponent’s retail services in relation to female sanitary products, beauty preparations, cosmetics and skincare preparations in Class 35.

Indeed, these contested goods might be considered at most similar to female sanitary products; beauty preparations, cosmetics and skincare preparations to which the opponent’s retail services relate. Therefore, they cannot be found similar to a low degree to the opponent’s retail services.

Finally, these contested goods are also not similar to the opponent’s remaining services, namely subscription services relating to female sanitary products, beauty preparations, cosmetics and skincare preparations; distribution of samples; information and advice relating to the aforesaid services (i.e. retail services in relation to female sanitary products, beauty preparations, cosmetics and skincare preparations, subscription services relating to female sanitary products, beauty preparations, cosmetics and skincare preparations and distribution of samples) in Class 35 and providing on-line electronic publications; providing on-line electronic newsletters; writing blogs in Class 41.

Indeed, the contested goods in Class 21 have a different nature, purpose, method of use and target public, as well as different distribution channels, from the opponent’s remaining services in Classes 35 and 41. They are, moreover, neither complementary nor in competition. Therefore, they are dissimilar.

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 the services found to be similar to a low degree are directed at the public at large.

The degree of attention is considered average (21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 38; 14/04/2011, T-466/08, ACNO FOCUS, EU:T:2011:182, § 49).

3. The signs

BETTY BOX
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 marks at issue both contain elements that 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.

The earlier mark is a word mark consisting of the elements ‘BETTY’ and ‘BOX’. The first element, ‘BETTY’, is a common diminutive of the name Elizabeth and will therefore be perceived as such. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The second element, ‘BOX’, designates a container. As the expressions ‘cosmetics case’ and ‘cosmetics box’ are commonly used on the cosmetics market as descriptive indications, it is considered that most of the relevant public will perceive this element as, at least, allusive of the storage of the cosmetics to which the retail services in question relate. As a result, this word has a limited degree of distinctive character.

Therefore, the element ‘BETTY’ is the most distinctive element of the earlier mark.

The contested sign is a figurative mark consisting of the words ‘BETTY’ and ‘MAKE-UP’ written in, respectively, title case and upper case pink letters. Taking account of the fact that the goods in question mainly consist of cosmetics (in particular, make-up), the second element, ‘MAKE-UP’, is descriptive and, therefore, non-distinctive for some of the contested goods and is allusive of the rest of them and, therefore, it has a limited degree of distinctive character in relation to them.

As a result, the element ‘BETTY’ is the most distinctive element of the contested sign.

The element ‘BETTY’ is, moreover, at the top of the sign and is twice as large as the element ‘MAKE-UP’. Therefore, although the latter will not be disregarded and, as a result, is not negligible, the fact remains that the element ‘BETTY’ is clearly more dominant (visually eye-catching) than the element ‘MAKE-UP’.

Visually, the signs coincide in their first and distinctive element, ‘BETTY’. However, they differ in their second words, that is, ‘BOX’ in the earlier mark and ‘MAKE-UP’ in the contested sign. They further differ in the graphical depiction of the contested sign, including the colour of the words, which has no counterpart in the earlier trade mark.

Bearing in mind that consumers generally pay more attention to the beginning of a mark than to its end, the limited degree of distinctiveness or non-distinctiveness of the differing elements ‘BOX’ and ‘MAKE-UP’ and the similar structure of the signs, namely ‘BETTY’ as the first element followed by another element, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in their first word, ‛BETTY’, present identically in both signs. It differs in their second words, that is, ‛BOX’ in the earlier mark and ‘MAKE-UP’ in the contested sign.

Bearing in mind the above regarding the distinctive and dominant elements of the signs, the signs are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar on account of the coinciding given name ‘BETTY’, in spite of the conceptual difference introduced by the differing elements ‘BOX’ and ‘MAKE-UP’. Indeed, the earlier mark’s element ‘BOX’ is allusive of the containers that are likely to be used to store the cosmetics to which the retail services in question relate, and ‘MAKE-UP’ of the contested mark is descriptive for some of the contested goods and allusive for other contested goods. It follows that these elements are of limited significance from a conceptual point of view.

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

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, but merely alleged that the coinciding element, ‘BETTY’, has a high degree of distinctiveness, since it makes no reference to any characteristic or quality of the goods and services and has a sound that makes it easy to remember.

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 services 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 an allusive element in the mark as stated above in section c) of this decision, but cannot be considered high as was claimed by the opponent.

5. 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).

In the present case, some of the contested goods are similar to a low degree, while others are dissimilar, to the opponent’s services in Classes 35 and 41.

However, taking into account the interdependence between the relevant factors, it is concluded that there is a likelihood of confusion for the contested goods in Class 3, which were found to be similar to a low degree to the opponent’s services.

Indeed, the signs are visually similar to an average degree and conceptually and aurally similar to a high degree. Moreover, the differences between the signs are confined to their second elements, namely ‘BOX’ in the earlier mark and ‘MAKE-UP’ in the contested sign, which have a limited degree of distinctiveness or no distinctiveness at all, while the coinciding element, ‘BETTY’, is distinctive and is the dominant element of the contested sign.

Taking into account, in particular, 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), and that the goods themselves are ordinary consumer products to which the average consumer will not pay a high degree of attention during their purchase, it is the Opposition Division’s opinion that the average consumer might overlook the differences, lying in the second elements, between the marks.

In light of the foregoing and bearing in mind that the earlier mark is a word mark that enjoys an average degree of distinctiveness, 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 to designate the opponent’s own line of products (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49, by analogy).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public of the European Union for the contested goods that are similar to a low degree to the opponent’s services. 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 must be upheld and the contested application rejected on the basis of earlier European Union trade mark registration No 14 438 014 for the contested goods in Class 3 that were found to be similar to a low degree to the opponent’s services in Class 35.

As the similarity between the goods and services is one of the conditions for a finding of likelihood of confusion in the meaning of Article 8(1)(b) EUTMR, there can be no likelihood of confusion between the earlier mark and the contested sign for the contested goods in Classes 3 and 21 that are dissimilar to the services covered by earlier European Union trade mark registration No 14 438 014. Therefore, the opposition based on this earlier mark and directed at these goods cannot be successful.

However, the opponent has also based its opposition on earlier European Union trade mark No 14 438 022, ‘BETTY’S’. Therefore, an assessment of the existence of a likelihood of confusion with this earlier mark has to be carried out with respect to those contested goods that were found to be dissimilar to the opponent’s services in the above comparison.

2. Likelihood of confusion with European Union trade mark No 14 438 022, ‘BETTY’S’

1. The goods and services

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

Class 5: Female sanitary products; tampons; sanitary towels.

Class 35: Retail services in relation to female sanitary products.

The remaining contested goods are the following:

Class 3: Essential oils and aromatic extracts; False nails; Adhesives for cosmetic purposes; Adhesives for affixing false hair; Seaweed for cosmetology; Cotton sticks for cosmetic purposes; Cleaner for cosmetic brushes; Make-up pads of cotton wool; False eyelashes; Adhesives for affixing false eyelashes; Adhesives for affixing artificial fingernails; Artificial nails for cosmetic purposes.

Class 21: Cosmetic and toilet utensils and bathroom articles; Cleaning articles; Applicators for applying eye make-up; Eye make-up applicators; Applicator sticks for applying makeup; Dental cleaning articles; Appliances for removing make-up, electric; Non-electric make-up removing appliances; Applicators for cosmetics; Cases adapted for cosmetic utensils; Hair color application bottles; Bath brushes; Hot air hair brushes; Skin cleansing brushes; Powder puffs; Mascara brushes.

Contested goods in Class 3

The abovementioned contested goods do not fall under the category of female sanitary products, so they cannot be considered similar to a low degree to the opponent’s retail services relating to these goods in Class 35.

Moreover, they are also not similar to the opponent’s female sanitary products; tampons; sanitary towels in Class 5. In particular, they differ in their natures and purposes, since the contested goods are not sanitary products, the purpose of which is to absorb the female menstrual flow, like the opponent’s female sanitary products; tampons; sanitary towels. They obviously have different methods of use and, although they might target the same end consumer and may be found on neighbouring shelves in the same outlets, this is not sufficient to conclude that they are similar. Moreover, they do not usually have the same commercial origin and they are neither complementary nor in competition. Therefore, they are dissimilar.

Moreover, the cases referred to by the opponent do not call this finding into question.

In particular, as regards the decision of 29/04/2014, 7 262 C, the Opposition Division observes that it was stated in that decision that ‘Sanitary products such as diapers or tampons are lowly similar to the goods of the earlier right …’. In that connection, it is noted that such ‘goods of the earlier right’ included various kinds of cosmetics, but none of the following contested goods: essential oils and aromatic extracts; seaweed for cosmetology; false nails; adhesives for cosmetic purposes; adhesives for affixing false hair; cotton sticks for cosmetic purposes; cleaner for cosmetic brushes; make-up pads of cotton wool; false eyelashes; adhesives for affixing false eyelashes; adhesives for affixing artificial fingernails; artificial nails for cosmetic purposes. Therefore, this decision has no relevance to the present case.

For the same reasons, the statements made by the Opposition Division in its decision of 15/03/2011, B 1 665 093 (NIVEA Baby Toddies versus Todi bear), namely that sanitary towels, panty liners, menstruation tampons, napkin-pants of paper, cellulose and cotton, disposable, napkins of paper, cellulose and cotton, disposable, all the aforesaid goods for incontinency are similar to a low degree to cosmetics; wipes impregnated with cosmetic lotions in Class 3, are not relevant for the purposes of the present comparison.

Finally, the statements of the Opposition Division in the decision that the opponent quotes as being of ‘22 February 2016 in Proya Cosmetic vs. Iron & Smith’, according to which, ‘the contested hygienic preparations and articles have close connections with the opponent’s cosmetics in Class 3 […] it is considered that they are similar’ are not relevant either, since none of the above mentioned contested goods in Class 3 can be considered as cosmetics as already explained.

Contested goods in Class 21

As regards the contested goods in Class 21, it is recalled that none of them falls under the category of female sanitary products, so they cannot be considered similar to a low degree to the opponent’s retail services relating to these goods in Class 35. In addition, they are not similar to the opponent’s female sanitary products; tampons; sanitary towels in Class 5.

In particular, these two sets of goods differ in nature and purpose, since the contested goods in Class 21 are not sanitary products and do not have the purpose of absorbing the female menstrual flow, as the opponent’s goods in Class 5 do. They obviously have different methods of use and, although they might target the same end consumer and may be found on neighbouring shelves in the same outlets, this is not sufficient to conclude that they are similar. Moreover, they do not usually have the same commercial origin and they are neither complementary nor in competition. Therefore, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested goods are also dissimilar to the goods and services protected by earlier European Union trade mark registration No 14 438 022, ‘BETTY’S’, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected for these remaining contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.