LAVIE | Decision 2738683
Date Published: Sep 28, 2017
OPPOSITION No B 2 738 683
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
LMC Italia S.r.l.s., Via Roma 11, 61021 Carpegna, Italy (applicant), represented by Praxi Intellectual Property S.P.A., Corso Vittorio Emanuele II, 3, 10125 Torino, Italy (professional representative).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 738 683 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 and services of European Union trade mark application No 15 363 492. The opposition is based on European Union trade marks No 4 339 727, No 11 493 426 and No 11 522 596 and German trade mark registration No 2 036 920. 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 No 11 493 426 and German trade mark registration No 2 036 920.
- The goods and services
The goods of European Union trade mark No 11 493 426 on which the opposition is based are the following:
Class 03: Body and skin care and beauty preparations (not for medical purposes); milks, tonics, lotions, creams, emulsions, gels for the face and body; non-medicated cleansing preparations for the face and body; skin astringents not for medical purposes; body mist; non-medicated foot baths, depilatory creams; pumice stones for personal use; soaps; bubble bath; shower creams and gels; skin exfoliating products; make-up removing preparations for the face; talcum powder; shampoos; hair lotions, oils, conditioners and repair preparations; hair dyes; hair spray, gel and mousse; hair brighteners; hair mascaras; shaving creams and gels; after-shave gels and lotions; perfumery; deodorants for personal use; essential oils; bath beads; bath oils and salts; cosmetics; masks; foundation cream; blush; bronzing powder; make up powder; facial shimmer preparations; mascara; eyeliners; cosmetic eye and lip pencils; eye shadows; lip balms; lip gloss; lipsticks; makeup removing preparations; nail polish; nail forms; false nails; nail polish remover; cuticle creams; preparations for strengthening nails; non-medicated concealer sticks; body glitter; sun-tanning lotions and creams for the face and body; fake tan lotions and creams for the face and body; sunscreen creams; after sun lotions and creams for the face and body; Perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoos; gels, mousses, balms and preparations in aerosol form for hairdressing and haircare; hair lacquers; hair-colouring and hair-decolorizing preparations; preparations for waving and setting hair; 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, 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, after-shave balms 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.
Class 32: Anti-aging beverages, not for pharmaceutical purposes.
The goods of German trade mark registration No 2 036 920 on which the opposition is based are the following:
Class 14: Jewellery.
The contested goods and services are the following:
Class 3: Perfumery; Dentifrice; Perfume; Essential oils; Cosmetics; Hair care lotions; Hair preparations and treatments.
Class 14: Jewellery; Precious stones; Clocks; Precious metals; Paste jewellery [costume jewelry (Am.)]; Time instruments.
Class 18: Bags; Leather and imitation leather; Handbags, purses and wallets; Key-cases of leather and skins.
Class 25: Clothing; Dresses; Shirts; Jerseys [clothing]; Skirts; Trousers; Jackets [clothing]; Coats; Raincoats; Waist belts; Footwear; Wedding dresses; Boots; Bathing suits; Lingerie; Headgear; Gymnastic shoes.
Class 43 Bar services; Restaurants; Cafés.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Contested goods in Class 3
Perfumery; dentifrice; perfume; essential oils; cosmetics; hair care lotions are identically contained in both lists of goods (including synonyms).
The contested hair preparations and treatments include, as broader categories the opponent’s shampoos; conditioners and repair preparations; hair brighteners. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods they are considered identical to the opponent’s goods.
Contested goods in Class 14
Jewellery is identically contained in both lists of goods.
The contested paste jewellery [costume jewelry (Am.)] is included in the broad category of the opponent’s jewellery. Therefore they are identical.
The contested time instruments; clocks are highly similar to the opponent’s jewellery.
They can share the same purpose (decorative, even if in the case of time instruments they have the additional purpose of measuring time), can be manufactured by the same undertakings and they coincide in end users and distribution channels (jewellery stores).
The contested precious stones are similar to the opponent’s jewellery. The distribution channels (jewellery stores) and relevant public coincide and they may come from the same producer.
The contested precious metals are dissimilar to the opponent’s jewellery. In most cases, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (judgment of 13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, Guidelines for Examination in the Office, Part C, Opposition Page 40 FINAL VERSION 1.0 01/02/2017 § 49-51). According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (judgment of 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). The contested precious metals are also dissimilar to all of the opponent’s other goods in Classes 3, 14 and 32. The nature, purpose and method of use differ. The goods are neither complementary nor are they competitive. In addition the distribution channels, relevant public and usual origin do not normally coincide.
Contested goods in Class 43
Contrary to the opponent’s arguments the contested bar services; restaurants; cafés are dissimilar to the opponent’s anti-aging beverages, not for pharmaceutical purposes. A low level of similarity can be found between services that provide food and drink and the food and drink themselves if the consumer may think that the production of those goods may be the responsibility of the same undertaking that offers the restaurant service. For example, ice-cream in an ice-cream shop. However in the present situation this is not the case as anti-aging beverages are not normally served in bars, restaurants or café. These contested services are also dissimilar to all of the opponent’s other goods in Classes 3 and 14. The nature, purpose and method of use differ. The goods and services are neither complementary nor are they competitive. In addition the distribution channels, relevant public and usual origin do not normally coincide.
Contested goods in Classes 18 and 25
The remaining goods in Classes 18 and 25 are dissimilar to all of the opponent’s goods in Classes 3, 14 and 32. The nature, purpose and method of use of the goods are different. They are neither complementary nor are they in competition. Distribution channels will not normally coincide and the goods will normally not come from the same producer.
In particular the opponent’s goods in Class 3 have the purpose of cleaning, beautifying and caring for the body. The goods in Class 14 are mainly for personal adornment although the time instruments have the additional purpose of telling the time. Clothing in Class 25, on the other hand, is meant to be worn by people, for protection and/or fashion and the goods in Class 18 may also be used as fashion accessories, most of which have the main purpose of carrying items. It is true that some top fashion trademarks are also present in the field of perfumery and jewellery, but this is the exception rather than the rule and is limited mainly to major brands.
- 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 and similar to varying degrees are directed at the public at large.
The degree of attention is considered to vary from average to high. At least some of the goods in Class 14 will be given a high degree of attention given that they tend to be costly. In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed for these goods.
- The signs
LAVERA | |
Earlier trade marks | Contested sign |
The relevant territory is the European Union and Germany.
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 earlier European Union trade mark No 11 493 426 and German trade mark registration No 2 036 920 are identical as portrayed above and for the sake of the comparison will be referred to jointly as the earlier marks.
The contested sign is made up of the word element ‘LAVIE’ which also has no meaning in relation to the goods at issue. The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With this in mind the Opposition Division considers that the French-speaking part of the public may perceive the word as referring to ‘LA VIE’ which means ‘THE LIFE’ or ‘LIFE’. The Romanian-speaking part of the public, on the other hand, may see the word as the juxtaposition of the Romanian words ‘LA’ and ‘VIE’ which as a whole means ‘At the vineyard’. Each of the parts ‘LA’ and ‘VIE’ also have individual meanings in Romanian. ‘LA’ is a musical note and ‘VIE’ means ‘alive, immortal, vigorous’. In any case none of these possible interpretations have any meaning in relation to the goods in question and so it can be concluded that the verbal element ‘LAVIE’ is distinctive for the goods at issue.
The word ‘LAVIE’ appears in a black capital serif font. The bar on the letter ‘A’ is missing and the letter ‘L’ and ‘A’ overlap but this figurative aspect is quite subtle and not particularly striking. Centred above the word element is a figurative device depicting a simple line drawing of two mermaids that seem to be holding hands. The mermaids have no meaning in relation to the goods at issue and so this figurative device is distinctive though less dominant than the verbal element ‘LAVIE’.
The earlier marks are word marks made up of the verbal element ‘LAVERA’, which has no meaning in relation to the goods at issue and therefore is distinctive. The Italian speaker may perceive the meaning of the words ‘LA VERA’ which means ‘THE TRUTH’ and the Spanish speaker or those familiar with Spain may perceive the meaning ‘LA VERA’ which is a town in the West of Spain. However none of these possible interpretations have any meaning in relation to the goods at hand and so ‘LAVERA’ is distinctive in relation to these goods.
Visually, the signs coincide in the first three letters ‘LAV’ and in the letter ‘E’ However, they differ in the remaining letters ‘RA’ in the earlier marks and ‘I’ in the contested sign. In addition they differ in the figurative aspect of the verbal element of the contested sign and in the distinctive figurative device of the two mermaids that have no counterparts in the earlier marks. Therefore, 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 ‛LAV’, present identically in both signs. The pronunciation differs in the sound of the letters ‛E-RA’ of the earlier marks and ‘IE’ of the contested sign. The rhythm and intonation differs considerably, the earlier marks being longer and the letter ‘R’ marking quite a noticeable difference. Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar or, for part of the public, dissimilar.
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.
According to the opponent, the earlier marks have been extensively used and enjoy 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 marks have enhanced distinctiveness.
- Global assessment, other arguments and conclusion
The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have 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 goods have been found to be partly identical, partly similar to varying degrees and partly dissimilar. The signs are visually and aurally similar to a low degree and are not conceptually similar. The level of attention of the relevant public varies from average to high.
The opponent argues that the figurative element of the contested mark is hardly visible due to its minimal size and that it is not distinctive. The opponent is of the opinion that a figurative element showing two mermaids will not be seen as an indicator of origin by the average consumer who tends to perceive the verbal element as an indication of origin. As a result the contested sign can be reduced to its verbal element ‘LAVIE’. The Opposition Division does not share this view, however. It is true that the verbal elements tend to have a greater impact on consumers who will most likely refer to a sign by its verbal element rather than by describing the figurative device. This does not mean, however, that the figurative aspect has no impact at all. The mermaid device may be smaller than the verbal element but it is by no means negligible. It will be clearly perceived by the public and it has no meaning in relation to the goods in question. Therefore it is distinctive and can serve as an indicator of origin.
Although the signs coincide aurally and visually in the element ‘LAV’ at the beginning of the verbal elements and in an additional letter ‘E’, the differences between the signs are enough to prevent a likelihood of confusion among the relevant public even those with only an average degree of attention. The endings of the verbal elements are different and lead to quite a different overall impression of the marks when perceived visually or aurally. In addition the signs are not conceptually similar (or dissimilar), the contested sign having the additional distinctive figurative element of the mermaids which is clearly perceivable and which broadens the gap between the marks.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. The differences between the signs prevail over the enhanced distinctiveness of the earlier marks and avoid a likelihood of confusion on the part of the consumer who will not confuse the marks even with respect to identical goods because they are just not similar enough.
Therefore, it is not necessary to examine the evidence of extensive use/reputation in relation to these marks.
The opponent has also based its opposition on the following earlier trade mark:
European Union trade mark registration No 4 339 727:
LAVERA NEUTRAL
Enhanced distinctiveness was also claimed for the mark ‘LAVERA NEUTRAL’. This mark is less similar to the contested sign than ‘LAVERA’ which has already been compared. This is because it contains an additional word ‘NEUTRAL’, which although may be perceived as weak in relation to the goods at hand as it will evoke the meaning ‘neutral’ to part of the public, it still broadens the gap between the signs even for that part of the public. This mark covers a broader scope of goods including goods in Class 25. However, the outcome cannot be different with respect to the goods for which the opposition has already been rejected because no likelihood of confusion was found even for identical goods directed at consumers with a high level of attention. Therefore, no likelihood of confusion exists with respect to the goods of European Union trade mark registration No 4 339 727 even assuming that this mark has enhanced distinctiveness.
The opponent has also based its opposition on the following earlier trade mark:
European Union trade mark registration No 11 522 596:
LAVERÉ
Enhanced distinctiveness is claimed in relation to the marks that include the word ‘LAVARA’. Therefore the Opposition Division understands that no enhanced distinctiveness is claimed for the mark ‘LAVARÉ’ and so the degree of distinctiveness for this mark would be normal. This mark has a level of similarity when compared to the contested sign that is on a par with the mark ‘LAVERA’ which has already been compared. The accent on the ‘E’ which differentiates it further is counterbalanced by the fact that the word ends in ‘E’ like the verbal element of the contested sign. The differences between the verbal elements in addition to the distinctive figurative element present in the contested sign are enough to avoid likelihood of confusion for the consumers in the relevant territory, the European Union, whose level of attention is average.
Moreover, they 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.
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
Sigrid DICKMANNS | Lynn BURTCHAELL | Martin EBERL |
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.