LAVENDER ILLUSION | Decision 2562356 - ACH. BRITO & Cª, S.A. v. L'OREAL (Société Anonyme)
Date Published: Sep 25, 2017
OPPOSITION No B 2 562 356
Ach. Brito & Cª, S.A., Rua dos Castelões Sul, 346, 4485-103 Fajozes, Portugal (opponent), represented by J.E. Dias Costa, LDA., Rua do Salitre, 195, 1269-063 Lisboa, Portugal (professional representative)
a g a i n s t
L'Oreal, 14 rue Royale, 75008 Paris, France (applicant), represented by Carlos Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 562 356 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 14 054 911. The opposition is based on Portuguese trade mark registrations No 155 966 and No 310 156 and European Union trade mark registration No 10 522 092. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In the observations filed with the Office on 31/08/2016, the applicant requested that the opponent submit proof of use of its Portuguese trade mark registrations No 155 966 ‘LAVANDA’ and No 310 156 . However, at this point the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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 Portuguese trade mark registration No 155 966.
- The goods
The goods on which the opposition is based are the following:
Class 3: Perfumery; soaps
Following the limitation done by the applicant, the contested goods are the following:
Class 3: Toilet soap; perfumery; perfume; toilet water; eau-de-cologne; deodorants for body use; perfumed bath and shower gels; creams, milks, lotions, gels and scented body powders; all the aforesaid goods containing lavender extract.
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 contested toilet soap; all the aforesaid goods containing lavender extract is included in the broad category of the opponent’s soaps. Therefore, these goods are identical.
The contested perfumery, perfume; toilet water; eau-de-cologne; deodorants for body use; all the aforesaid goods containing lavender extract are included in the broad category of the opponent’s perfumery. Therefore, these goods are identical.
All the remaining contested perfumed bath and shower gels; creams, milks, lotions, gels and scented body powders; all the aforesaid goods containing lavender extract are cosmetics and as such are highly similar to the opponent’s perfumery. They share the same purpose, distribution channels, end users and they are often produced by the same manufacturer.
- 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 or similar are directed at the public at large. The public’s degree of attentiveness may vary from average to higher than average, depending on their sophisticated nature, the frequency of purchase and their price, in particular in relation to luxury version of the goods in question.
- The signs
LAVANDA | LAVENDER ILLUSION |
Earlier trade mark | Contested sign |
The relevant territory is Portugal.
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).
Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters; furthermore, for the same reasons, they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). The earlier mark consists of the word ‘LAVANDA’ and the contested sign is composed of two words ‘LAVENDER ILLUSION’.
The earlier mark ‘LAVANDA’ will be perceived by the relevant public as referring to a garden plant with sweet-smelling, bluish-purple flowers (in English, ‘lavender’). Taking into account the relevant goods, which are cosmetics, it is considered that this term is rather weak in relation to them, as all of them may contain lavender essences and/or aroma.
The contested sign is composed of two English word elements ‘LAVENDER ILLUSION’. For the part of the public that will understand both terms the word ‘ILLUSION’ will not be perceived as a sole verbal element but as a combination with the word ‘LAVENDER’ as referring to a scent of lavender that ‘appears to exist but does not actually exist in reality’ (consulted on 24/07/2017, Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/illusion). Likewise, for this part of the public the contested sign will be weak in relation to the goods in question. For the remaining part of the public that will only recognize the word ‘LAVANDA’ in the contested sign (due to its similar spelling, at least partially) this element will also be weak in relation to the relevant goods. For the part of the public that will not perceive any meaning in the verbal elements constituting the contested sign their distinctiveness should be considered as normal in relation to the goods under dispute.
Visually, the signs coincide in some letters forming the only verbal element of the earlier mark and the first verbal element of the contested sign, namely ‘L-A-V-*-N-D-*’
However, in this regard, it should be borne in mind that the earlier mark is weak in relation to the goods in question and, therefore, the above-mentioned coincidence is present in the weak element. The signs differ in the remaining letters present in the first word ‘LAVENDER’ and the letters forming the second word of the contested sign ‘ILLUSION’, which have no counterpart in the earlier mark.
Considering the above, and the fact that the signs coincide in the letters forming the weak element, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘L-A-V-*-N-D-*’ constituting the verbal element of the earlier mark, which, however, has been found weak in relation to the goods in question. The signs differ in the sound of the remaining letters forming the word ‘LAVENDER’ and in the sound of the letters constituting the term ‘ILLUSION’ of the contested sign, which have no counterpart in the earlier mark. Consequently, since the structure of the signs in question is different (one word sign versus two word sign), their rhythm and intonation, when pronouncing them, are also very distinct.
Therefore, taking into account that the aural coincidence will be placed in the element which is weak in relation to the goods in question and bearing in mind the further phonetic differences between the signs, it is considered that there is only a low degree of aural similarity between the marks.
Conceptually, for the part of the public that will understand the contested sign as referring to an illusion of a scent of lavender, the signs will be conceptually similar to a low degree because they refer to the concept of ‘LAVANDA’ which has been found weak in relation to the relevant goods. Furthermore, for the part of the public that will only understand the word ‘LAVANDA’ the signs are conceptually not similar, because the contested sign conveys no concept.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
In its observations of 02/02/2017, the applicant claims that the term ‘LAVANDA’ constituting the earlier mark does not identify the commercial origin of the goods in question and, therefore, is no-distinctive in relation to them.
However, according to case-law, in opposition proceedings before the Office the validity of national trade marks may not be called into question for absolute grounds (such as lack of distinctive character, descriptive or generic character), under Article 7 CTMR. Therefore, it is necessary to acknowledge a certain degree of distinctiveness in a registered national mark (judgment of 24/05/2012, C-196/11, ‘F1-Live’, paragraphs 41 and 47). The Opposition Division accordingly notes that the earlier mark ‘LAVANDA’ is a registered Portuguese trade mark and that, in terms of absolute grounds for refusal, it had at least the minimum degree of distinctive character required for registration at the date of filing and therefore, in the present case the earlier mark ‘LAVANDA’ has only a low degree of distinctiveness in relation to the goods at issue.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).
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).
In the present case, the opponent did not claim that its earlier mark enjoys enhanced distinctiveness in relation to the goods for which it has been registered. Consequently, in the present case the distinctiveness of the earlier mark must be seen as low, as explained above.
The goods are identical and similar to a high degree and the degree of attention of the relevant public will vary from normal to higher than average depending on the frequency of purchase and their price, in particular in relation to a luxury version of the relevant goods.
In the present case, the signs coincide only in some letters forming the weak element ‘LAVANDA’, as explained in detail above in section c) of this decision. Furthermore, they display significant dissimilarities regarding the remaining letters of the word ‘LAVENDER’ and the second word ‘ILLUSION’ of the contested sign. The elements ‘LAVANDA’ and ‘LAVENDER’ are weak either for the whole or for the part of the public, whereas the remaining verbal element ‘ILLUSION’ of the contested sign has no meaning for a part of the public and, therefore, has a normal distinctiveness in relation to the relevant goods, at least in relation to this part of the public. Furthermore, and whichever the particular comprehension of the contested sign as a whole, this element contributes to important differences between the signs on all levels: visual, phonetic and conceptual.
According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; and 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22). Such differences reduce the likelihood of confusion between conflicting trade marks. This clearly applies to the present case in which, because of the remaining differentiating verbal component ‘ILLUSION’ of the contested sign, as described in detail in section c) of this decision, and taking into consideration the rather weak distinctiveness of the earlier mark ‘LAVANDA’ in relation to the relevant goods, the conflicting signs can be safely distinguished.
The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the goods in question are identical and highly similar cannot, in the present case, compensate for the differences identified between the signs, because of the reduced capacity of the earlier sign to act as an indicator of commercial origin.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent also based its opposition on the following earlier marks:
- Portuguese trade mark registration No 310 156 and covering the goods in class 3, and
- EUTM registration No 10 522 092 ‘ACH. BRITO LAVANDA’ and covering the goods in Class 3.
The other earlier rights invoked by the opponent are less similar to the contested mark, because they contain further verbal and figurative elements which are not present in the contested trade mark and that set the signs under the dispute even more apart, making them clearly distinguishable. In particular, regarding the earlier EUTM registration, the term ‘LAVANDA’ is identical or close in all the EU languages (‘lavanda’ in Croatian, Italian, Spanish, Latvian ‘lavande’ in French, lavandă in Rumanian ‘lavendel’ in German, Danish, Swedish, ‘lawenda’ in Polish, laventeli in Finish, ‘levanda’ in Lithuanian, ‘Лавандула’(‘lavandula’) in Bulgarian, ‘levandule’ in Czech, ‘levanduľa’ in Slovak and ‘levendula’ in Hungarian) and, therefore, it will be weak in all the relevant territory. Consequently, the outcome in relation to this earlier right cannot be different as in in relation to the earlier mark, which has been just compared above. Moreover, the remaining earlier rights cover the same scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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
Gueorgui IVANOV | Monika CISZEWSKA | Ewelina ŚLIWIŃSKA |
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.