gummy | Decision 2752486
Date Published: Sep 28, 2017
OPPOSITION No B 2 752 486
Foneks Kozmetik Sağlik Ve Eğitim Hizmetleri Sanayi Ve Ticaret Limited Şirketi, Karadeniz Mahallesi Mehmet Akif Caddesi 1117/1 Sk. No 6 Gaziosmanpasa, Istanbul, Turkey (opponent), represented by Ing. C. Corradini & C. S.r.l., Piazza Luigi di Savoia, 24, 20124 Milan, Italy (professional representative)
a g a i n s t
Halil, 155 Nye Bevan Estate, London, City of London E5 0AH, United Kingdom (applicant).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 486 is upheld for all the contested goods.
2. European Union trade mark application No 15 385 982 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 15 385 982. The opposition is based on international trade mark registration No 1 025 179 designating, inter alia, Benelux. 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.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 3: Cosmetics, soaps.
The contested goods are the following:
Class 3: Styling gels; Hair styling preparations; Hair styling spray; Hair styling waxes; Shaving balms; Shaving creams; Shaving gels; Shaving soaps; Shaving lotions; Hair care preparations.
Class 8: Shaving blades; Safety razors; Straight razors; Razors, electric or non-electric; Scissors.
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 opponent’s cosmetics are a broad category of products intended to beautify the hair, skin, or complexion. The contested styling gels, hair styling preparations, hair styling spray, hair styling waxes, shaving balms, shaving creams, shaving gels, shaving lotions and hair care preparations fall within this broad category and therefore are considered identical to the opponent’s cosmetics.
The contested shaving soaps are included in the broad category of the opponent’s soaps. Therefore, they are identical.
Contested goods in Class 8
The contested shaving blades, safety razors, straight razors, razors, electric or non-electric and scissors are tools used in face, body and nail care treatments together with the appropriate cosmetics, which are covered by the earlier trade mark in Class 3, to achieve the desired result. For example razors are normally used with shaving creams or foams, and manicure scissors are used together with manicure cosmetic products. These goods have therefore a common purpose of personal hygiene and beauty care. Moreover, they coincide in distribution channels and are directed at the same public. Finally, the producers of some of the goods in question (e.g. shaving blades, razors and cosmetics for shaving) are often the same. Therefore, the contested goods in Class 8 and the opponent’s cosmetics are considered similar.
- The signs
GUMMY | gummy |
Earlier trade mark | Contested sign |
Since both marks are word marks, the difference in the use of lower or upper case letters is immaterial.
Therefore, the signs are identical.
- Global assessment, other arguments and conclusion
The signs were found to be identical and a part of the contested goods, namely all the contested goods in Class 3 are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.
Furthermore, the contested goods in Class 8 were found to be similar to those covered by the earlier trade mark. 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.
It follows that the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 025 179 designating Benelux. The contested trade mark must therefore be rejected for all the 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.
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
Cynthia DEN DEKKER | Zuzanna STOJKOWICZ | Ioana MOISESCU |
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.