EYE SHAKER | Decision 2734955
Date Published: Sep 28, 2017
OPPOSITION No B 2 734 955
Martin Lasnik, Hauptstraße 52, 8582 Rosental an der Kainach, Austria (opponent), represented by Wirnsberger & Lerchbaum Patentanwälte OG, Mühlgasse 3, 8700 Leoben, Austria (professional representative)
a g a i n s t
Lancome Parfums et Beaute & Cie, 29 rue du Faubourg Saint-Honoré, 75008 Paris, France (applicant), represented by José Monteiro, L’Oreal (Société Anonyme), 41 rue Martre, 92117 Clichy Cedex, France (employee representative).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 734 955 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 384 852. The opposition is based on European Union trade mark registration No 13 149 752. The opponent invoked Article 8(1)(b) EUTMR.
EYESHAKER | EYE SHAKER |
Earlier trade mark (word mark) | Contested sign (word mark) |
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 3: Polishing preparations.
Class 9: Optical devices, enhancers and correctors.
The contested goods are the following:
Class 3: Make-up preparations.
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.
The opponent’s polishing preparations in Class 3 are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested make-up preparations are products for personal care that one might put on one’s face to make oneself more attractive or to improve one’s appearance.
According to the opponent, the German word Reinigungsmittel, included in the specification of the earlier mark, has been incorrectly translated into the second language of the application, namely English, as polishing preparations instead of cleaning agents. In the case of a discrepancy between the translation and the original wording of the list of goods and/or services of an EUTM, where the first language of the application is one of the languages of the Office, it is the version of the list of goods as filed in the first language that will be considered the definitive one.
However, even taking into account the meaning of the original word Reinigungsmittel, it will be understood as relating to chemical agents intended for cleaning physical objects, such as furniture or upholstery. Considering the above, the conflicting goods are usually manufactured by different undertakings. They have different purposes, methods of use and end consumers. Moreover, they are neither complementary nor in competition with each other. The mere fact that they might have the same sales outlets is not sufficient to establish a degree of similarity between the goods.
The contested goods likewise have no similarity to the opponent’s goods in Class 9, optical devices, enhancers and correctors (devices that create, manipulate, or measure electromagnetic radiation). These goods have different natures, serve different purposes, are not produced by the same manufacturers and do not have the same distribution channels or end consumers. They are neither in competition nor complementary.
Consequently, contrary to the opponent’s argument, these goods are dissimilar.
- 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 goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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 opponent is the losing party, he must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Anna MAKOWSKA | Carlos MATEO PÉREZ | Inés GARCÍA LLEDÓ |
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.