DERMAYON | Decision 2735994

Date Published: Sep 24, 2017

OPPOSITION No B 2 735 994

Avantgarde S.P.A., Via Pontina Km. 30, 400, 00040 Pomezia (Roma), Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

Jean Michel Pot, 9 rue noel ballay, 28000 Chartres, France (applicant), represented by Selarl Jean-Louvel-Saoudi (JLS), 2 bis rue Winston Churchill, 57000 Metz, France (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 994 is upheld for all the contested goods.

2.        European Union trade mark application No 15 243 108 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 243 108 ‘’. The opposition is based on, inter alia, Italian trade mark registration No 1 436 039 ‘DERMON’. 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 Italian trade mark registration No 1 436 039.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3:        Essential oils and aromatic extracts; skin care oils [non-medicated]; essential oils; natural oils for cosmetic purposes; scented oils; perfumery and fragrances; body cleaning and beauty care preparations; cosmetics; cosmetics and cosmetic preparations; massage oils and lotions; oils for cosmetic purposes; lacquer for cosmetic purposes; facial preparations; scented body lotions and creams; body deodorants [perfumery]; perfumery; make-up; bath preparations; skin care preparations; soaps and gels; deodorants for human beings or for animals; cosmetics for use on the skin; shower and bath gel; beauty milk; beauty care cosmetics; beauty lotions; shower and bath foam; beauty serums; cosmetics in the form of creams.

The contested essential oils [listed twice]; perfumery [listed twice]; cosmetics [listed twice]; soaps are contained in the list of goods of the earlier trade mark. Therefore, these goods are identical.

The contested skin care oils [non-medicated]; natural oils for cosmetic purposes; body cleaning and beauty care preparations; cosmetic preparations; massage lotions; oils for cosmetic purposes; lacquer for cosmetic purposes; facial preparations; scented body lotions and creams; make-up; bath preparations; skin care preparations; cosmetics for use on the skin; shower and bath gel; beauty milk; beauty care cosmetics; beauty lotions; shower and bath foam; beauty serums; cosmetics in the form of creams are included in the broader category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested scented oils; massage oils are natural oils, typically obtained by distillation, that have the characteristic odour of the plant or other source from which they are extracted. They are included in the broader category of, or overlap with, the opponent’s essential oils, which are liquids carrying a distinctive scent or essence frequently used in order to give a pleasant scent. Therefore, they are identical.

The contested fragrances; body deodorants [perfumery]; deodorants for human beings or for animals are included in the broader category of, or overlap with, the opponent’s perfumery. Therefore, they are identical.

The contested gels are a broad category of goods that includes, inter alia, gels for cosmetic purposes. The opponent’s cosmetics include, inter alia, cosmetic gels. Therefore, given that these goods overlap, they are identical.

The contested aromatic extracts include, as a broader category, the opponent’s essential oils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 found to be identical are directed at the public at large.

The degree of attention is, on the whole, average.

3. The signs

DERMON
Earlier trade mark	Contested sign

The relevant territory is Italy.

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

The earlier mark is a word mark consisting of the word ‘DERMON’. The Opposition Division does not agree with the applicant’s assertions that the earlier mark is a short mark in which small differences are perceived more. Even though it is not denied that the length of the signs may influence the effect of the differences between them and therefore, in short words small differences may frequently lead to a different overall impression, this is not the case of the signs in questions. According to the Office’s practice, the sign is considered short when it consists of three or fewer letters/numbers. In the present comparison the earlier mark is formed by six letters and the contested sign includes eight letters. Therefore, the abovementioned argument of the applicant must be set aside.

The contested sign is a figurative sign composed of the verbal element ‘DERMAYON’ written in a slightly stylised typeface, with a small dot placed above the letter ‘Y’ between its two strokes.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

On numerous occasions the Boards of Appeal have established that ‘DERM(A)’ is a term of Greek origin widely understood throughout the European Union to denote ‘skin’, ‘cutis’ or ‘dermis’. It forms words in English such as ‘dermatologist’, ‘dermatoid’, ‘dermatitis’, ‘dermatosis’ or ‘dermabrasion’. The same or similar equivalents exist in other languages, including Italian (‘dermatologo’, ‘dermatologia’ or ‘dermatite’). Not only is it a term used in medical circles, it is also known to the population at large. Thus it is a ‘generally known fact’ that ‘DERM(A)’ is a term interchangeable with ‘skin’ (31/05/2001, R 645/2000-1, Dermo-Gel, § 15; 22/02/2006, R 1006/2005-2, Dermacare, § 14; 22/04/2009, R 1715/2008-2, Derma Comfort, § 12; 29/04/2015, R 2030/2014-2, Dermabrilliance, § 21; and 18/03/2016, R 1399/2015-2 DERMAL MEDICAL VISION, § 22). Furthermore, the General Court has also confirmed that ‘DERMA’ is used in the formation of adjectives which describe the skin (21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 44).

Therefore, in the present case, it can be reasonably assumed that the Italian public will readily discern the prefix ‘DERM-’ or ‘DERMA-’ respectively, included in both signs, as referring to skin.

Bearing in mind that relevant goods are basically cosmetics, perfumery, essential oils in Class 3, which can be used on the skin and/or have an effect on its condition, it is considered that this element is descriptive (and, therefore, non-distinctive) for these goods, and this argument was also submitted by the applicant. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue, though not completely insignificant.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters/sounds ‘DERM**ON’ and they differ in the additional letters/sounds ‘AY’ placed in the middle of the contested sign.

Visually, the signs also differ in the slight stylisation of the contested sign, as described above. However, this stylisation is not considered particularly overwhelming and it will not distract the consumer’s attention from the word it embellishes.

It is important to note that some of the coinciding letters/sounds, namely ‘DERM’, are at the beginning of both signs. 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.

Given that the marks have the same beginnings and endings and that the differences between them are ‘hidden’ in their middle parts, and considering the limited impact of the element ‘DERM’, 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 and their individual elements.

Although the signs as a whole do not have any meaning for the public in the relevant territory, their initial parts, ‘DERM’ and ‘DERMA’, will be perceived as referring to skin. Given that the coinciding concept lies in the parts of the signs deemed descriptive, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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 relevant goods 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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 concluded above, the goods are identical and they target the public at large with an average degree of attention. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs, as explained in detail above in section c) of this decision. Similarities between the signs, as indicated above, stem from the fact that the signs have identical beginnings and endings, ‘DERM’ and ‘ON’ respectively. Although the coinciding element ‘DERM(A)’ is considered to be descriptive for the goods in question, the fact still remains that this element constitutes the first part of both signs, which is where consumers generally tend to focus when confronted with a trade mark. Consequently, the identical first element – notwithstanding its descriptiveness – should not be neglected when assessing the likelihood of confusion between the marks. In addition, the identical endings of the signs cannot be disregarded either.

The differences between the signs, as indicated above, are not sufficient to counteract their similarities. This is mainly because they are confined to the middle parts of the signs which will receive less attention from the public than the identical beginnings and endings.

The applicant refers to many previous decisions of the Office regarding signs which include the elements ‘DERM-’ or ‘DERMA’, to support his arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. In this regard, it should be noted that the outcome of this decision is in line with the outcome of previous Opposition Division’s decision No B 2 388 372 of 28/07/2015 which was issued under almost identical circumstances, with the only differences in the stylisation of the contested sign and in the list of goods of the contested application.

Based on an overall assessment, and taking into account the principle of imperfect recollection and the interdependence principle both mentioned above, the Opposition Division concludes that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 436 039.

It follows from the above that the contested sign must be rejected for all the contested goods.

As the earlier Italian trade mark registration No 275 106 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 applicant is the losing party, he 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

Vít MAHELKA

Martin MITURA

Ric WASLEY

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.