CELL FLASH | Decision 2599796
Date Published: Sep 25, 2017
OPPOSITION No B 2 599 796
Cel Technologies & Systems, S.L., Barrio Barretaguren S/N, 01474 Artziniega, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)
a g a i n s t
Diffulice Sàrl, Place Chauderon 18, 1003 Lausanne, Switzerland (holder), represented by Isabelle Marcus Mandel, 16 Avenue Hoche, 75008 Paris, France (professional representative).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 599 796 is upheld for all the contested goods.
2. International registration No 1 262 197 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 262 197. The opposition is based on Portuguese trade mark registration No 233 498 (CEL), Spanish trade mark registration No 270 267 (CEL), Spanish trade mark registration No 2 523 242 (CEL) and European Union trade mark registration No 10 695 914 (CEL TECHNOLOGIES & SYSTEMS). 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.
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 10 695 914.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Premoistened or impregnated cleansing tissues or wipes; cosmetic pads, tissues or wipes; skin-care products, liquid soaps and powder; cosmetic soaps; hair shampoo and body and creams and hand lotion and body; bubble bath; preparations for perfuming the atmosphere; deodorants for personal care; essentials oils; perfume; chemical preparations for the care and treatment of the hair; dentifrices, mouth elixirs not for medical purposes; disposable dispensers filled with soaps, lotions, shampoos, creams.
Class 5: Sanitary preparations; disinfectants; antibacterial preparations; sanitary napkins, towels, pads, tampons, knickers and panty-liners, all the aforesaid being for sanitary or menstruation purposes; absorbent pads, shields and undergarments for incontinence purposes; pads and wipes impregnated with medicinal lotions; incontinence pads or napkins, absorbent sanitary shields and underclothing, protective chair and bed pads, all for incontinence purposes; protective undergarments for personal absorbency needs; room air fresheners; deodorants and deodorisers (other than for personal use); disinfectants; preparations for destroying vermin; fungicides, weedkillers and insect repellents, chemical sanitary preparations; clothing made primarily of paper, namely disposable napkins.
Class 16: Goods of absorbent paper for sanitary, cleaning or drying purposes, including tissues of paper, towels of paper, rolls of paper and table napkins of paper; disposable wipes and tissues; clothing made primarily of paper, namely disposable bibs; disposable napkins; printing and writing paper; disposable dispensers filled with paper.
Class 21: Absorbent articles for cleaning purposes; polishing wipes; drying cloths; towels and wiping cloths of nonwoven fabric; dispensers for hand towels, toilet tissue, paper tissue, sanitary napkins, handkerchiefs, wipers, soaps and lotions; dispensers; room perfume sprays.
Class 35: Advertising; business management; business administration; office functions; wholesaling and retailing in shops and via global computer networks of all kinds of goods of paper, soaps, perfumery, cosmetics and dispensers for soaps and paper.
The contested goods are the following:
Class 3: Soaps for personal use, cosmetic products particularly creams, milks, lotions, gels and powders for face, body and hand care; beauty masks; cosmetic products for bathing and showering; cosmetic products for depilation, cosmetic creams for skin, body, face care and beauty; cosmetic preparations for slimming.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘particularly’, used in the holder’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 (see the judgment of 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 soaps for personal use are included in the broad category of, or overlap with, the opponent’s cosmetic soaps. Therefore, they are identical.
The contested cosmetic products particularly creams, milks, lotions, gels and powders for face, body and hand care; beauty masks and cosmetic creams for skin, body, face care and beauty are included in the broad category of, or overlap with, the opponent’s skin-care products. Therefore, they are identical.
The contested cosmetic products for bathing and showering include, as a broader category the opponent’s hair shampoo, bubble bath. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cosmetic preparations for slimming overlap with the opponent’s skin-care products, as there are for example some body creams with slimming purposes on the market. Therefore, these goods are identical.
The contested cosmetic products for depilation are highly similar to the opponent’s chemical preparations for the care and treatment of the hair as they share the same purpose, namely to enhance the outer appearance of the consumer; they also share the same distribution channels, end users and producers.
Regarding the holder’s argument that its products are exclusively sold in its special beauty saloons, and are therefore having different distribution channels as the opponent’s products, it cannot be taken into account, as the comparison of goods and services must be carried out taking into account all the goods and services as they appear in the register. Therefore, it is irrelevant for the outcome of the opposition, whether or not the products are actually sold in the same place, since only the possibility of such a case (present or future) is sufficient to find the similarity between the goods.
- 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 highly similar are directed at the public at large. The degree of attention is average.
- The signs
CEL TECHNOLOGIES & SYSTEMS | CELL FLASH |
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).
Both signs are word marks, consisting of the words ‘CELL’, ‘FLASH’ in the contested sign and the words ‘CEL’, ‘TECHNOLOGIES’, ‘SYSTEMS’ and the sign ‘&’ in the earlier mark. Being word marks, these signs have no element that could be considered more dominant (visually eye-catching) than other elements.
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 elements ‘CEL’ and ‘CELL’ of the marks have several concepts throughout the whole relevant territory. However, in certain territories they are meaningless. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on French-, Portuguese- and Spanish-speaking publics as they do not perceive these elements with any meaning, and, therefore, they are considered distinctive in relation to the relevant goods.
Regarding the expression ‘TECHNOLOGIES & SYSTEMS’ in the earlier mark, it is considered that the relevant public will understand its meaning due to the similar equivalences in French (‘technologies’/’systèmes’), Portuguese (‘tecnologias’/’sistemas’) and Spanish (‘tecnologías’/’sistemas’), and due to the fact that the ampersand symbol ‘&’ is used as the shorthand for the conjunction ‘and’ commonly used in trade (16/02/2017, R 1050/2016-1 metal&glass, § 18). Therefore, as a whole, as the expression refers to technical procedures or methods applied in the industry or commerce, such as in the manufacture of cosmetics products, it is considered weak in relation to the goods at issue.
The second word ‘FLASH’ of the contested sign denotes something that shines in a bright but brief, sudden, or intermittent way. It is also considered that the relevant French, Portuguese and Spanish public will understand the meaning of this English word as it is commonly used in these languages. Therefore, this element is considered weak for all the relevant goods.
Visually, the signs coincide in the string of letters ‘CEL’ creating the most distinctive elements in both marks. Moreover, the coinciding string of these letters is placed in the initial parts of both signs which usually first catch the attention of the reader. On the other hand, the differences in the marks are limited to their weak elements, ‘TECHNOLOGIES & SYSTEMS’ in the earlier mark and ‘FLASH’ in the contested sign, and to the additional letter ‘L’ in the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the signs coincide in the identical pronunciation of their first and distinctive elements ‘CEL’ and ‘CELL’. They differ in the pronunciation of their remaining elements which have, however, less impact on the comparison of the marks due to their limited distinctive character.
Therefore, the signs are considered aurally similar to a high degree.
Conceptually, ‘CEL’ and ‘CELL’ have no clear or unambiguous meaning for the public in the relevant territory. The additional elements, ‘TECHNOLOGIES & SYSTEMS’ in the earlier mark and the element ‘FLASH’ in the contested sign, will be associated with the abovementioned meanings. However, these elements are considered weak and therefore they have only little impact on the comparison of the signs.
In any case, since the signs will be associated with dissimilar meanings, they 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.
- 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.
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 some weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the contested goods are identical or highly similar to the opponent’s goods and they target the public at large. The degree of attention in relation to the goods in question is average. The marks were found to be visually similar to an average degree, aurally similar to a high degree and conceptually not similar.
Account is also 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.
Considering the above and the fact that the main differences between the signs lie in their weak elements that have only little impact on the overall comparison of the marks and in the additional letter ‘L’ in the first element of the contested sign, it is highly conceivable that the relevant consumer will perceive that the goods at issue marked with the signs at dispute come from the same undertaking or from economically linked undertakings. This finding is also reinforced by the fact that the beginnings of the marks are the same, the pronunciation of the signs is, apart from the weak elements, identical and the goods were found to be identical or highly similar.
Consequently, there is a likelihood of confusion on the part of the French, Portuguese and Spanish-speaking parts 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 registration No 10 695 914. It follows that the contested trade mark must be rejected for all the contested goods.
As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Justyna GBYL | Begoña | Frédérique SULPICE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.