EMBLEZZE | Decision 2511783 - VIETTURK s.r.o. v. CHINTOIU CRISTINA

Date Published: Sep 25, 2017

OPPOSITION No B 2 511 783

Vietturk S.R.O., Libusska 319/126 Pisnice, Prague, Czech Republic (opponent), represented by Ana Maria Iacob, Racari No 51, Block 70, Sc. 1 Ap. 7, Sector 3, 031827 Bucharest, Romania (professional representative)

a g a i n s t

Chintoiu Cristina, B-dul Voluntari, nr. 85, bl. 1, sc. 1, et. 2, ap. 4B, Jud. Ilfov,  Voluntari, Romania (applicant), represented by Anghel Luminita Doina, Str. Gherghitei Nr 1, Bl. 94B, Sc B, Ap. 76, Sector 2, 022511 Bucharest, Romania (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 511 783 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 581 798 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 581 798. The opposition is based on Czech trade mark registration No 349 720. The opponent invoked Article 8(1)(a) and (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. The goods and services

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

Class 3: Astringents for cosmetic purposes, alkalis (volatile -) (ammonia) (detergent), aloe vera for cosmetic purposes (preparations -), amber (perfumery), antiperspirant soap, antistatic agents for household use, finishing preparations for ironing, badyánová essence, balms other than for medical purposes, hair dyes, toilet dyes, paints (cosmetic -), the colors on the beard, bleaching and cleaning preparations for skin whitening products (bleach) for cosmetic purposes, bleaching soda, bleaching salts, bergamot oil, abrasives, abrasive cloth, abrasive cloth polishing, grinding preparations, sandpaper, polishing sandpaper, cedarwood (essential oils of -), polishing agent, lemon (essential oils of -), red (jewelry -), cleaning chalk, cleaning milk for toilet purposes, cleaning oils, detergents, cleaning solutions, cleaning dentures (preparations for -), deodorants for human consumption or for animals, depilatories, deodorant soap, diamantinové abrasives, essential essences, essential oils, gaultierový oils, gels (tooth whitening -), geraniol, heliotropine, henna [cosmetic dye], smoothing stones, shaving preparations (-), shaving soap, potassium chlorate, ionone (perfumery), jasmine oil, incense, stone water (removing preparations -) for household use, alum (antiseptic), liquids for washing glass windscreen washers, cologne, corundum (abrasive), cosmetic toilet bags, cosmetics, cosmetic pencils, cosmetics, bath salts, not for medical purposes, blacking creams (cosmetic -), skin whitening creams, skin creams, Quillaia bark for washing, flowers (extracts of -) (perfumery), paint (removing preparations -), hairspray, nail varnishes, adhesives for cosmetic purposes, adhesives for affixing false hair, luster (gloss preparations for forming on the leaves of plants), lip gloss, blusher polishing, polishing stones, polishing preparations, lavender water, lavender oil, make-up, javelský lye, caustic soda to wash, almond soap, almond oil, massage gels other than for medical purposes, mascara (color and shadow on the eyelids and eyelashes), masks (beautifying -) , talcum powder, medicated soaps, perfumery for menthol, mint oil (oil yields), milk for cosmetic purposes (almond -), washing products for personal hygiene and deodorizing products mydélka, soaps (antiseptic -), soap antiperspirants, soap preparations for recovery, brightening fabrics, soaking clothes (preparations for -), nails (artificial -), non-slip liquid on the floor, neutralizing preparations for permanent waving, eyebrows ( cosmetic preparations for -), transfers (decorative -) for cosmetic purposes, bleaching (preparations for -), nail polish remover, (preparations for -), degreasers, except those that are used in industrial processes or manufacturing, drainpipes ( preparations for cleaning -), paint (preparations for -), preservatives for leather (polishes), oil in perfumes, essential oils, oils for cosmetic purposes, oils for toilet purposes, curling (preparations for -), sun care products (cosmetics) sharpening preparations (-), breath fresheners (tape), air fresheners, paper polishing, parfum, perfumes, polishing paste, pastes for razor strops, pumice, hydrogen peroxide for cosmetic purposes, sand cloth, sandpaper, musk (perfumery ), whiting, lotion for cosmetic purposes, sweating (anti -) (toiletries), skin (cosmetic preparations for -), polishes (polishes), pomades for cosmetic purposes, potpourris (mixture of scented matters), cases lipstick, detergents, laundry (preparations for dipping -), laundry (scented bags -), rust removers, dental prosthesis (polishing preparations for -), bath preparations, not for medical purposes, preparations for chemical cleaning products for nail care, powder (make-up), lipstick, rose oil, eyelashes (cosmetic preparations for - ), artificial eyelashes (adhesives for fixing -), safrole, satin and linen (preparations for -), essential oils, silicon carbide (abrasive), fiberglass cloth, sandpaper, stain (removers -), emery, washing soda, for cleaning , breath freshening sprays, compressed air stored in cans for cleaning and dust removal, drying agents for dishwashers, shampoos, cobbler bad luck, laundry starch, stoneblue wallpaper (preparations for cleaning -), turpentine, as a degreasing agent, gum oil, turpentine oil for degreasing, toilet preparations, eau de toilette, flavorings for pastry (essential oils), flavorings for beverages (essential oils), greases for cosmetic purposes, tissues impregnated with cosmetic lotions, mouthwashes, not for medical purposes, cleaning cloths impregnated with cleaning preparations , cotton wool on a stick ( toiletries), cotton wool for cosmetic purposes, cotton sticks for cosmetic purposes, petroleum jelly for cosmetic purposes , perfumery, scented wood , scented sachets for clothes , incense , wax ( depilatory - ) , sartorial wax , polishing wax , wax, shoes , wax floors ( preparations for removing - ) [ scouring preparations], mustache wax , wax bleaching service, waxes for leather, volcanic ash for cleaning, fumigation ( for -) ( perfumery ), extracts of flowers (perfumery ) , color brighteners ( chemicals used in - ) for household use ( laundry ), fabric softeners ( for laundry ), toothpastes.

Class 5: Aloe vera for medical purposes (preparations of -), antibacterial, disinfectant, aseptic cotton wool, mud (medicinal -), for mud baths, bacterial poisons, balms for medical purposes, cotton for medical purposes, bicarbonate of soda for pharmaceutical purposes, protein food accessory protein food for medical purposes, protein preparations for medical purposes, biocides (pesticides), herbal teas for medical purposes, herbs (medicinal -), smoking herbs for medical purposes, dental cements, cigarettes (non-tobacco -) for medical purposes, tobacco-free cigarettes for medical purposes, agents (chemical -) for medical and veterinary purposes, suppositories, preparations for cleaning contact lenses, deodorants other than for human consumption or for animals, deodorants for clothing and textiles, detergents for medical purposes, baby diaper panties, dezifenkční, disinfectants for hygienic purposes, disinfectants for chemical toilets, dietary food adjusted for medical purposes, digestives for pharmaceutical purposes, food supplements, minerals, nutritional supplements, cedar wood, an insect, oral cavity (care products -) for medical purposes, enzymes - food supplements, enzymes for medical purposes, ethers for pharmaceutical purposes, eucalyptus for pharmaceutical use, pharmaceutical preparations, phosphates for pharmaceutical purposes, gauze bandage, glucose for medical purposes, glycerine for medical purposes, glycerophosphates, rubber for medical purposes, hemostatic sticks, herbicides, nematode (anti -), insects (repellents -), insect repellent incense, healing (healing) mushrooms (not food), mustard plasters, dark wood for medical purposes, mushrooms healing (no food), weight loss (medical preparations for -), hygienic diapers, sanitary napkins, sanitary pads, chemical preparations for pharmaceutical purposes, chemical preparations for medical purposes, chemical preparations for veterinary purposes, chemical-pharmaceutical products, surgical dressings, surgical Drapes, cooling sprays for medical purposes, insecticides, poisons, tincture of iodine, jojoba, roots (medicinal -), bath (therapeutic preparations for the -), corns (rings -), corns (medicines to -), corns ( patches for -), larvae (preparations for destroying -), medicines for dental, medicinal teas, medicinal roots, medicinal plants, first aid kits (portable -) including the contents, medical preparations for hair growth, licorice (sticks of -) for pharmaceutical purposes , liquid drugs, better to fly, adhesive preparations for catching flies (on flytrap), etching sticks, masking tape, liniments (liniment), zoom (pharmaceutical preparations for the treatment of -), ointments for burns from the sun, ointments for pharmaceutical purposes, sanitary tampons, sanitary napkins, menthol for pharmaceutical purposes, mineral water for medical purposes, powdered milk (for infants), modeling wax (dental -), moleskin for medical purposes [imitation], moths (anti -), sea water for health baths, callouses (preparations for -), washing preparations for medical purposes, mice (preparations for destroying -), patch, patch (- corns), patches (mustard -), plasters for medical purposes, tanning tablets, parasites (anti -) tape (adhesive -) for medical purposes, tape (adhesive -) for medical purposes, adhesive tapes for medical purposes, pesticides (preparations for destroying vermin), bibs ( child -), diapers, mildew (chemical preparations for treating -), gas for medical purposes, skin (pharmaceutical preparations for the care of -), rats (poisons -), mineral water salts, and salts for medical purposes, soil sterilization (preparations for -), sterilization products, tobacco extracts (like insecticides), tablets for pharmaceutical use, tablets decreased appetite, weight loss tablets, tablets fumigatory, hemostatic rods, sticks against warts, fumigating sticks, tissues impregnated with pharmaceutical lotions, coal animal for pharmaceutical use, the insert (menstrual -), inserts for women, washout agents, elution preparations, lotions for dogs, air deodorizing preparations, medical wipes. 

Class 35: Administrative processing of purchase orders, artistic agencies (business management -), updating and maintenance of data in computer databases, updating of advertising materials, cost analyzes, window dressing, tax returns (preparation and elaboration -), procurement services for others [purchasing goods and services for other businesses], auctions, operational efficiency and rationalization of work (assessments -), billing, mail advertising, import and export agencies, commercial information and advice for consumers (consumer advice), commercial information agencies, commercial management of licensing of goods and services; other communication media (presentation of goods on communication media), for retail purposes, copying or reproduction (reproduction) of documents, papers etc., retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies, marketing, marketing studies, fashion shows for advertising purposes (organization -), wages and payroll (preparation -), recruitment, purchase prices, wholesale prices (analysis -), business activity (services, consultancy -), business management and business consultancy, business management for independent service providers , commercial or business information (providing -), commercial or business consultancy (professional -), business or entrepreneurial survey, valuation of business enterprises, search engine optimization, optimizing the operation of websites, organizing exhibitions (commercial or advertising), HR consulting, computer databases (compilation of information into -), computer databases (systemization of information into -), business (pricing and estimates of -), businesses (services provided in connection with the relocation -) organization of trade fairs for commercial and advertising purposes, providing business information via the website, employment services (employment agencies), telephone sales (telemarketing), production (manufacturing) advertising films, forecasts (economic or economic -), rental of photocopying machines, office rental machinery and equipment, rental of vending machines, rental stalls, rental of advertising time on communication media, advertising materials, rental of advertising space, operational audit, market research, opinion polling, subscription (providing subscription), telecommunication services (for others), subscriptions newspapers and magazines (providing -) subscription for third parties (procurement -), modeling (services of models) for advertising and sales promotion, demonstration of goods, movement (migration) operations, enterprises (services relating to -) transfer of official communications, typing, copywriting, psychological testing for the selection of staff, advertising, advertising agencies, advertising materials (sending to customers -), advertising texts (issuing, publishing, announcements, declaration, publishing -), distribution of advertising materials to customers (leaflets, booklets , prints, samples), management (advisory services business or company), management of commercial or industrial enterprises assistance ( - ) , secretarial service , compiling statistics , negotiating and concluding commercial transactions for third-party services ( telephone messages, queries ) services business mediation services in graphic design for advertising purposes, services price comparison , services, management of hotels , business project management for construction projects , comparative service ( in prices ) , outsourcing services ( business assistance ) , shorthand , stenography , bookkeeping , accounts ( drawing up of statements of - ), auction management , administration of files in computer (file management), bookkeeping ( accounting ) , data retrieval in computer files [ for others] , search of sponsors, location of freight cars by computer , putting up posters , clipping service for reports , goods samples (distribution - ) , processing texts.

The contested goods and services are the following:

Class 3: Toiletries; eau de cologne; perfumed toilet waters; perfume water; aromatics for perfumes; cologne impregnated disposable wipes; pomanders; perfumery; fragrances for personal use; solid perfumes; fragrance preparations; synthetic perfumery; scented body spray; body sprays [non-medicated]; perfumed tissues; aromatics for fragrances; deodorants and antiperspirants; make-up; bath preparations; hair preparations and treatments; skin care preparations; hair removal and shaving preparations; anti-bacterial face washes (non-medicated -); cleaning agents for the hands; anti-bacterial soap; shower soap; soaps in liquid form; soaps for personal use; soap; antiperspirant soap; non-medicated toilet soaps; deodorant soap; disinfectant soap; perfumed soaps; body shampoos; soap solutions; soaps for body care; hand soaps; soaps in gel form; washing preparations for personal use; non-medicated beauty preparations; colour cosmetics for the skin; cosmetics for use on the skin; cosmetics in the form of creams; paper hand towels impregnated with cleaning agents; foams for use in the shower; pre-moistened cosmetic wipes; impregnated tissues for cleaning [non-medicated, for use on the person]; facial wipes impregnated with cosmetics; moist wipes for sanitary and cosmetic purposes; cotton sticks for cosmetic purposes; cotton balls for cosmetic purposes; cosmetics; non-medicated cosmetics; make-up pads of cotton wool; cosmetic pads; perfumed lotions [toilet preparations]; baby care products (non-medicated -); paper hand towels impregnated with cosmetics; mineral water sprays for cosmetic purposes; tissues impregnated with cosmetic lotions; moist wipes impregnated with a cosmetic lotion; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; moist paper hand towels impregnated with a cosmetic lotion; cosmetics for personal use.

Class 5: Pantyliners; pants (sanitary -); menstruation bandages; disposable pants of cellulose for holding a babies' napkin in place; disposable pants of paper for holding a babies napkin in place; babies' disposable diaper pants of cellulose; babies' disposable diaper pants of paper; diaper-pants (babies' -); disposable diapers; disposable nappies made of paper for incontinents; adult diapers; babies' diapers of cellulose or paper; nappies for babies and incontinents; absorbent sanitary articles; air purifying preparations; shoe deodorizers; deodorants, other than for human beings or for animals; deodorants for clothing and textiles; odour absorbing materials; fabric deodorizers; preparations for the neutralising of odours; air deodorising preparations; disinfectants for hygiene purposes; disinfectants impregnated into tissues; sanitizing wipes.

Class 35: Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; retail services in relation to disposable paper products; retail services in relation to cleaning articles; retail services in relation to toiletries; retail services in relation to cleaning preparations; wholesale services in relation to toiletries; wholesale services in relation to cleaning preparations; wholesale services in relation to fragrancing preparations; wholesale services in relation to hygienic implements for humans; wholesale services in relation to disposable paper products; wholesale services in relation to beauty implements for humans; import-export agency services; commercial administration of the licensing of the goods and services of others; mediation of trade business for third parties; procurement of contracts [for others]; arranging of buying and selling contracts for third parties; mediation of contracts for purchase and sale of products; arranging the buying of goods for others; mediation of agreements regarding the sale and purchase of goods; procuring of contracts for the purchase and sale of goods; export agency services; import agency services; procurement services for others [purchasing goods and services for other businesses]; import and export services; business intermediary and advisory services in the field of selling products and rendering services.

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

Perfumery; antiperspirant soap; deodorant soap; cotton sticks for cosmetic purposes; cosmetics; washing preparations for personal use are identically contained in both lists of goods (including synonyms).

The contested toiletries include, as a broader category, the opponent’s cosmetics. 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 eau de cologne, albeit worded slightly differently, is identical to the opponent’s cologne.

The contested perfumed toilet waters; perfume water; pomanders; fragrances for personal use; solid perfumes; fragrance preparations; synthetic perfumery; scented body spray; body sprays [non-medicated]; cologne impregnated disposable wipes; perfumed tissues are included in the broad category of, or overlap with, the opponent’s perfumery, which includes perfumes, fragrances and perfumery articles for personal use and household fragrances. Therefore, they are identical.

The contested aromatics for perfumes; aromatics for fragrances overlap with the opponent’s essential oils, which are substances with various applications, including use in the composition of perfumes. Therefore, they are identical.

The contested deodorants and antiperspirants; make-up; bath preparations; hair preparations and treatments; skin care preparations; hair removal and shaving preparations; non-medicated beauty preparations; colour cosmetics for the skin; cosmetics for use on the skin; cosmetics in the form of creams; foams for use in the shower; pre-moistened cosmetic wipes; facial wipes impregnated with cosmetics; moist wipes for cosmetic purposes; non-medicated cosmetics; perfumed lotions [toilet preparations]; baby care products (non-medicated -); paper hand towels impregnated with cosmetics; mineral water sprays for cosmetic purposes; tissues impregnated with cosmetic lotions; moist wipes impregnated with a cosmetic lotion; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; moist paper hand towels impregnated with a cosmetic lotion; cosmetics for personal use are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested anti-bacterial face washes (non-medicated -); cleaning agents for the hands; anti-bacterial soap; shower soap; soaps in liquid form; soaps for personal use; soap; non-medicated toilet soaps; disinfectant soap; perfumed soaps; body shampoos; soap solutions; soaps for body care; hand soaps; soaps in gel form are included in the broad categories of, or overlap with, the opponent’s washing products for personal hygiene; cleaning solutions. Therefore, they are identical.

The contested paper hand towels impregnated with cleaning agents; impregnated tissues for cleaning [non-medicated, for use on the person]; moist wipes for sanitary purposes are included in the broad categories of, or overlap with, the opponent’s cleaning cloths impregnated with cleaning preparations. Therefore, they are identical.

The contested cotton balls for cosmetic purposes, albeit worded slightly differently, are identical to the opponent’s cotton wool for cosmetic purposes, which refers to fluffy wadding of a kind originally made from raw cotton, used for cleaning the skin or bathing wounds (information extracted from Oxford Living Dictionaries online at https://en.oxforddictionaries.com/definition/cotton_wool).

The contested make-up pads of cotton wool; cosmetic pads are highly similar to the opponent’s cotton wool for cosmetic purposes. The goods under comparison have the same or very similar nature and coincide in their purpose and method of use. They have the same channels of trade and the same producers and target the same relevant public.

Contested goods in Class 5

Diaper-pants (babies’ -); deodorants, other than for human beings or for animals; deodorants for clothing and textiles; air deodorising preparations; disinfectants for hygiene purposes are identically contained in both lists of goods (albeit slightly different wording in some cases).

The contested pantyliners; menstruation bandages; disposable nappies made of paper for incontinents; nappies for babies and incontinents are included in the broad categories of, or overlap with, the opponent’s sanitary napkins, sanitary pads. Therefore, they are identical.

The contested pants (sanitary -) include, as a broader category, the opponent’s baby diaper panties. 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 disposable pants of cellulose for holding a babies’ napkin in place; disposable pants of paper for holding a babies napkin in place; babies’ disposable diaper pants of cellulose; babies’ disposable diaper pants of paper are included in the broad category of, or overlap with, the opponent’s baby diaper panties. Therefore, they are identical.

The contested disposable diapers; adult diapers; babies' diapers of cellulose or paper are included in the broad category of, or overlap with, the opponent’s diapers. Therefore, they are identical.

The contested absorbent sanitary articles include, as a broader category, the opponent’s sanitary napkins. 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 shoe deodorizers; fabric deodorizers are included in the broad category of the opponent’s deodorants other than for human consumption or for animals. Therefore, they are identical.

The contested disinfectants impregnated into tissues; sanitizing wipes are included in the broad category of, or overlap with, the opponent’s medical wipes. Therefore, they are identical.

The contested preparations for the neutralising of odours overlap with the opponent’s air deodorizing preparations, because deodorizing preparations refer to substances capable of masking or neutralizing odors. Therefore, they are identical.

The contested air purifying preparations and the opponent’s air deodorizing preparations have very similar natures and purposes and coincide in their producers, distribution channels and relevant public. Therefore, they are highly similar.

The contested odour absorbing materials have certain connections with the opponent’s deodorants other than for human consumption or for animals, because all these goods are used for the same purpose of destroying or masking odours and may coincide in their producers, distribution channels and relevant public. Therefore, they are highly similar.

Contested services in Class 35

Toiletries, cleaning preparations and cleaning articles include some sanitary preparations, such as nasal cleaning preparations for personal sanitary purposes or douching preparations for personal sanitary purposes. Therefore, toiletries, cleaning preparations and cleaning articles overlap with sanitary preparations and are identical. Consequently, the contested department store retail services connected with the sale of toiletries; retail services in relation to toiletries; retail services in relation to cleaning preparations; retail services in relation to cleaning articles overlap with the opponent’s retail services for sanitary preparations. These services are identical. The same reasoning applies for the contested wholesale services in relation to toiletries; wholesale services in relation to cleaning preparations, which overlap with the opponent’s wholesale services for sanitary preparations. Therefore, they are identical.

The contested import-export agency services; export agency services; import agency services; import and export services are identical to the opponent’s import and export agencies, either because they are identically contained or because they are included in the opponent’s services.

Procurement services for others [purchasing goods and services for other businesses] are identically contained in both lists of services.

In trade mediation is a method of resolving an industrial dispute whereby a third party consults with those involved and recommends a solution which is not, however, binding on the parties. Procurement is the act or process of buying, including any negotiations that this involves on price and availability. Consequently, the contested mediation of trade business for third parties; procurement of contracts [for others]; arranging of buying and selling contracts for third parties; mediation of contracts for purchase and sale of products; arranging the buying of goods for others; mediation of agreements regarding the sale and purchase of goods; procuring of contracts for the purchase and sale of goods; business intermediary and advisory services in the field of selling products and rendering services; commercial administration of the licensing of the goods and services of others are included in the broad category of the opponent’s business activity (services, consultancy -). Therefore, the services under comparison are identical.

The contested department store retail services connected with the sale of beauty products; retail services in relation to disposable paper products are highly similar to the opponent’s retail services for sanitary preparations. The services at issue have the same nature, since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they have the same relevant public and distribution channels, because they concern closely related goods.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale. Consequently, the contested wholesale services in relation to fragrancing preparations; wholesale services in relation to hygienic implements for humans; wholesale services in relation to disposable paper products; wholesale services in relation to beauty implements for humans are highly similar to the opponent’s wholesale services for sanitary preparations. The services at issue have the same nature, purpose and method of use. Furthermore, they have the same relevant public and distribution channels, because they concern closely related goods.

The contested department store retail services connected with the sale of machines for household use, hand tools, optical goods, domestic electrical and electronic equipment share certain connections with the opponent’s retail services for sanitary preparations. The services at issue have the same nature, since they are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Therefore, they are similar.

2. The signs

Earlier trade mark	Contested sign

The EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54). An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon examining the marks side by side.

In the present case, the slight difference in the nuance of the colours would not be perceived by the consumer and is considered an insignificant difference between the signs.

Consequently, the signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and a part of the contested goods and services are identical, namely the following:

Class 3: Toiletries; eau de cologne; perfumed toilet waters; perfume water; aromatics for perfumes; cologne impregnated disposable wipes; pomanders; perfumery; fragrances for personal use; solid perfumes; fragrance preparations; synthetic perfumery; scented body spray; body sprays [non-medicated]; perfumed tissues; aromatics for fragrances; deodorants and antiperspirants; make-up; bath preparations; hair preparations and treatments; skin care preparations; hair removal and shaving preparations; anti-bacterial face washes (non-medicated -); cleaning agents for the hands; anti-bacterial soap; shower soap; soaps in liquid form; soaps for personal use; soap; antiperspirant soap; non-medicated toilet soaps; deodorant soap; disinfectant soap; perfumed soaps; body shampoos; soap solutions; soaps for body care; hand soaps; soaps in gel form; washing preparations for personal use; non-medicated beauty preparations; colour cosmetics for the skin; cosmetics for use on the skin; cosmetics in the form of creams; paper hand towels impregnated with cleaning agents; foams for use in the shower; pre-moistened cosmetic wipes; impregnated tissues for cleaning [non-medicated, for use on the person]; facial wipes impregnated with cosmetics; moist wipes for sanitary and cosmetic purposes; cotton sticks for cosmetic purposes; cotton balls for cosmetic purposes; cosmetics; non-medicated cosmetics; perfumed lotions [toilet preparations]; baby care products (non-medicated -); paper hand towels impregnated with cosmetics; mineral water sprays for cosmetic purposes; tissues impregnated with cosmetic lotions; moist wipes impregnated with a cosmetic lotion; tissues impregnated with cosmetics; impregnated cloths for cosmetic use; moist paper hand towels impregnated with a cosmetic lotion; cosmetics for personal use.

Class 5: Pantyliners; pants (sanitary -); menstruation bandages; disposable pants of cellulose for holding a babies' napkin in place; disposable pants of paper for holding a babies napkin in place; babies' disposable diaper pants of cellulose; babies' disposable diaper pants of paper; diaper-pants (babies' -); disposable diapers; disposable nappies made of paper for incontinents; adult diapers; babies' diapers of cellulose or paper; nappies for babies and incontinents; absorbent sanitary articles; shoe deodorizers; deodorants, other than for human beings or for animals; deodorants for clothing and textiles; fabric deodorizers; preparations for the neutralising of odours; air deodorising preparations; disinfectants for hygiene purposes; disinfectants impregnated into tissues; sanitizing wipes.

Class 35: Department store retail services connected with the sale of toiletries; retail services in relation to cleaning articles; retail services in relation to toiletries; retail services in relation to cleaning preparations; wholesale services in relation to toiletries; wholesale services in relation to cleaning preparations; import-export agency services; commercial administration of the licensing of the goods and services of others; mediation of trade business for third parties; procurement of contracts [for others]; arranging of buying and selling contracts for third parties; mediation of contracts for purchase and sale of products; arranging the buying of goods for others; mediation of agreements regarding the sale and purchase of goods; procuring of contracts for the purchase and sale of goods; export agency services; import agency services; procurement services for others [purchasing goods and services for other businesses]; import and export services; business intermediary and advisory services in the field of selling products and rendering services.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods and services.

Furthermore, the following contested goods and services were found to be similar (to different degrees) to those covered by the earlier trade mark:

Class 3: Make-up pads of cotton wool; cosmetic pads.

Class 5: Air purifying preparations; odour absorbing materials.

Class 35: Department store retail services connected with the sale of beauty products, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; retail services in relation to disposable paper products; wholesale services in relation to fragrancing preparations; wholesale services in relation to hygienic implements for humans; wholesale services in relation to disposable paper products; wholesale services in relation to beauty implements for humans.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 349 720. It follows that the contested trade mark must be rejected for all the contested goods and services.

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, 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

Adriana VAN ROODEN

Boyana NAYDENOVA

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.