LAVA ART | Decision 2768334

Date Published: Sep 24, 2017

OPPOSITION No B 2 768 334

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by RWZH Rechtsanwälte, Barthstrasse 4, 80339 München, Germany (professional representative)

a g a i n s t

Reneste Co. Ltd, Gangnam Gu, Yoksam dong 741-11, Seoul, Republic of Korea (applicant), represented by Codex Advokat Oslo AS, Kristian Augusts gate 7b, 0028 Oslo, Norway (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 768 334 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 345 631 for the word mark ‘LAVA ART’. The opposition is based on, inter alia, European Union trade mark registration No 4 339 727 for the word mark ‘lavera Neutral’. 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 4 339 727.

1. The goods

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

Class 3:         Perfumery goods; essential oils; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lipstick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, aftershave balm; deodorants; products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

The contested goods are the following:

Class 3:         Personal care products; cosmetics, namely creams, milks, lotions, gels and powders for the face, body and hands; make-up powder; makeup preparations; cosmetic sun-protecting preparations; skin care products; pads or wipes impregnated or pre- moistened with personal purification lotions or cosmetics lotions; perfumery; hair care products.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 3

The contested personal care products include, as a broader category, the opponent’s skin-cleansing lotions and creams, hand and body lotions and creams. 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 cosmetics, namely creams, milks, lotions, gels and powders for the face, body and hands; make-up powder; makeup preparations; cosmetic sun-protecting preparations; skin care products; pads or wipes impregnated or pre- moistened with personal purification lotions or cosmetics lotions are covered by, or overlap with, the earlier term cosmetics. These goods are, therefore, identical.

The contested perfumery; hair care products are contained identically in the earlier 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 will be average.

3. The signs

lavera Neutral	LAVA ART
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).

The element ‘lavera’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘Neutral’ of the earlier mark will be understood as something which is neither acid nor alkaline by many members of the relevant public. This will be the case for the English speakers, for example, and speakers of other languages which incorporate the same word, for example German. ‘Neutral’ will also be understood by speakers of other languages which incorporate a similar word. This would be the case, for example, in Finnish where the word is ‘neutraali’ and in Dutch ‘neutraal’. Finally, some members of the relevant public, such as the Hungarian speakers, may not understand ‘Neutral’ at all. For all the members of the relevant public who do understand this word, it will be considered weak in connection with the goods, which are all sorts of cosmetics and personal care products, as it will be seen as referring to the ‘PH neutral’ quality of the products. For those members of the relevant public who do not understand it, it will be seen as distinctive.

The first word of the contested sign, ‘LAVA’, will be understood by all the members of the relevant public as referring to ‘hot molten or semifluid rock erupted from a volcano’ (www.oxforddictionaries.com) since an identical or very similar word exists in all the languages of the relevant territory. It is distinctive in connection with the goods. Additionally, Spanish speakers will understand ‘lava’ as deriving from the verb ‘lavar’ meaning ‘to wash’. It will be understood as the imperative ‘wash’ or the third person singular present tense. For Spanish speakers, this word will be seen as weak in connection with the goods as it simply refers their ability to wash or cleanse.

The word ‘ART’ in the contested sign will be understood by the majority of the members of the relevant public as referring to as ‘works produced by human creative skill and imagination’ (www.oxforddictionaries.com). Since it has no meaning in connection with the goods, it is deemed distinctive.

Although each word of the contested sign will be understood separately, there is no meaning as a whole for any of the members of the relevant public.

Visually, the signs coincide in the letters ‘l-a-v-*-*a/L-a-v-a’. The use of uppercase or lowercase letters is not significant since the signs are word marks, meaning that they may be represented in lowercase or uppercase letters. This is because the word itself is protected, and not its specific representation. The signs differ in the extra letters ‘e-r’ in the first element of the earlier mark. They also differ in their second words. Although ‘Neutral’ is weak for some consumers, it will not be disregarded altogether. Similarly, ‘LAVA’ at the beginning of the contested sign will not be disregarded by the Spanish speakers who see it as weak, owing to its position at the beginning of the mark

Therefore, taking into account the extra letters in the first word of the earlier mark as well as the second element in each mark, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘l-a-v-*-*a/L-a-v-a’, present identically in both signs. The pronunciation differs in the extra letters ‘e-r’ in the first element of the earlier mark. They also differ in their second words. Although ‘Neutral’ is weak for some consumers, it will not be disregarded altogether, but in any event it is much less likely to be pronounced than the first word ‘lavera’. On the other hand, ‘LAVA’ will be pronounced in the contested sign, even where it is considered weak, as it is the initial word and will not be overlooked when referring to the sign.

Therefore, especially in view of the fact that the earlier mark may well be referred to by ‘lavera’ alone, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

In the present case, the signs are visually similar to a low degree and aurally similar to an average degree. There is no conceptual link between them. The goods at issue have been found identical.

In the Opposition Division’s view, the relevant consumers will not confuse the signs, even taking into account the identity of the goods. There are two main reasons for reaching this conclusion.

First, ‘lavera’ and ‘lava’ display differences visually and aurally. While ‘lava’ is a short two syllable word, ‘lavera’ contains extra letters, an extra vowel and is a three syllable word. Second, and perhaps most importantly, ‘LAVA’ will be associated by all members of the relevant public with the idea of hot, molten rock which erupts from a volcano. This is a striking concept, bringing to mind fire and burning rock. ‘Lavera’, on the other hand, does not convey any meaning. Furthermore, while the second element of the earlier mark will be seen as weak by the majority of consumers, the second element of the contested sign has a normal degree of distinctiveness, and therefore carries weight in the sign.

Furthermore, it is true that for Spanish-speaking consumers ‘LAVA’ in the contested sign may be seen as weak. Where this scenario arises, the connections between the signs are even weaker, since more emphasis will be placed by the consumer on the word ‘ART’ as the element identifying and distinguishing the applicant’s products.

Finally, even proceeding on the assumption that the earlier mark enjoys an enhanced degree of distinctiveness, the Opposition Division holds the view that the differences between the signs cannot be overcome by this extra degree of distinctiveness. In particular, the powerful concept conveyed to all members of the relevant public by the word ‘LAVA’ in the contested sign essentially neutralises the visual and aural similarities with the word ‘lavera’ in the earlier mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 9 032 111 for the word mark ‘lavera Body SPA’ for goods in Class 3.

• European Union trade mark registration No 11 187 457 for the word mark ‘lavera creme soft’ for goods in Class 3.

• European Union trade mark registration No 11 193 158 for the word mark ‘lavera wirkt natürlich schön’ for, inter alia, goods in Class 3.

• European Union trade mark registration No 11 200 334 for the word mark ‘lavera soft creme’ for goods in Class 3.

• European Union trade mark registration No 11 212 396 for the word mark ‘lavera Men sensitiv’ for goods in Class 3.

• European Union trade mark registration No 11 270 816 for the word mark ‘Lavera Natural Effective Beautiful’ for, inter alia, goods in Class 3.

• European Union trade mark registration No 11 295 541 for the word mark ‘Lavera naturally effective beauty’ for, inter alia, goods in Class 3.

• European Union trade mark registration No 11 421 682 for the word mark ‘lavera. active la beauté naturelle.’ for, inter alia, goods in Class 3.

• European Union trade mark registration No 13 000 741 for the word mark ‘lavera Baby & Kinder Sensitiv’ for goods in Class 3.

Since these marks contain an identical initial element, ‘lavera’, to the mark which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Furthermore, while the earlier mark compared above contained one extra word (Neutral), the other earlier marks all contain between two and four extra words which bear no similarity to the contested sign and serve to further distinguish the signs from one another. Finally, even though the opponent claimed enhanced distinctiveness for all of the other earlier rights, even assuming that this enhanced distinctiveness has been proven, the Opposition Division holds that there are sufficient elements to distinguish the signs from one another as explained above regarding the earlier right ‘lavera Neutral’. This reasoning can be applied by analogy to all the other earlier rights as well.

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, it 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.

The Opposition Division

Chantal VAN RIEL

Lucinda CARNEY

Richard BIANCHI

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.