NABIA | Decision 2750407

Date Published: Sep 22, 2017

OPPOSITION No B 2 750 407

Nabla Cosmetics SRL., Via Paolina 15, 00184 Rome, Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Tomacelli, 146, 00186 Rome,  Italy (professional representative)

a g a i n s t

Eloquentes Aromas Lda., Estrada do Moinho da Cruz, 8670-137 Aljezur, Portugal (applicant)

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 407 is partially upheld, namely for the following contested goods:

Class 3:         Essential oils and aromatic extracts; Toiletries; Soaps; Hand soaps; Extracts of flowers; Aromatherapy oil; Aromatherapy preparations; Aromatic essential oils; Blended essential oils; Distilled oils for beauty care; Essential oils; Essential oils for aromatherapy use; Essential oils for personal use; Essential oils of lemon; Floral water; Mint essence [essential oil]; Lavender oil; Natural essential oils; Natural oils for cosmetic purposes; Pine oil; Rose oil; Skin care oils [non-medicated]; Bath preparations; Hair preparations and treatments; Hair removal and shaving preparations; Skin care preparations; Soaps and gels; Beauty balm creams; Beauty care cosmetics; Cosmetics for use on the skin; Aromatherapy creams; Aromatherapy lotions; Extracts of flowers [perfumes]; Lavender water; Peppermint oil [perfumery]; Rose oil for cosmetic purposes; Scented body spray; Scented water; Massage oils.

2.        European Union trade mark application No 15 402 126 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against part of the goods of the European Union trade mark application No 15 402 126 . The opposition is based on European Union trade mark registration No 11 661 907 ‘NABLA’. 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 3: Cosmetics, namely cosmetics for bronzing the skin, cosmetics for eye-brows, cosmetics for eye-lashes, cosmetics for personal use, cosmetics for protecting the skin from sunburn , cosmetics for sustaining, cosmetics for the treatment of dry skin, cosmetics for the use on the air, cosmetics for the use in the treatment of wrinkled skin, cosmetics for use on the skin, cosmetics in the form of eye shadow, cosmetics in the form of gels, cosmetics in the form of lotions, cosmetics in the form of milk, cosmetics in the form of oils, cosmetics in the form of rouge, cosmetics in the form of powders, eye make-up, eye make-up remover, eyebrow cosmetics, suntan oils [cosmetics], powder for make-up, skin make-up, skin masks [cosmetics], skincare cosmetics, sun barriers [cosmetics], sun blocking lipsticks [cosmetics], sun blocking oils [cosmetics] sun protecting creams [cosmetics], sun-tanning preparations [cosmetics], nail tips [cosmetics], nail varnish remover [cosmetics], night creams [cosmetics], oils for the body [cosmetics], paper and towels impregnated with cosmetics, powder compact refills [cosmetics ], powder compact [cosmetics], nail hardeners [cosmetics], nail polish removers [cosmetics], glitter, glitter in spray for use as a cosmetics, hair cosmetics, liners [cosmetics] for the eyes, make-up pads of cotton wool, make-up pencil, make-up removing lotions, make-up removing milks, make-up removing preparations, milks [cosmetics], moisturisers [cosmetics], nail base coat [cosmetics], nail polish.

Class 18: Toiletry cases sold empty, cosmetic cases sold empty, make up cases, make up bags.

Class 21: Applicator for cosmetics and make up, lipstick holders, cosmetics brushes, make up brushes, facial sponges for applying make-up, powder puffs, make-up removing appliances, eye make-up applicators, containers for cosmetics.

Class 35: Retail or wholesale services for cosmetics.

The contested goods are the following:

Class 3: Animal grooming preparations; Cleaning and fragrancing preparations; Essential oils and aromatic extracts; Toiletries; Soaps; Hand soaps; Cosmetics for animals; Shampoos for pets; Household fragrances; Air fragrancing preparations; Aromatherapy pillows comprising potpourri in fabric containers; Extracts of flowers; Fragrance emitting wicks for room fragrance; Fragrance refills for non-electric room fragrance dispensers; Room scenting sprays; Aromatherapy oil; Aromatherapy preparations; Aromatic essential oils; Blended essential oils; Cake flavorings [essential oils]; Distilled oils for beauty care; Essential oils; Essential oils for aromatherapy use; Essential oils for household use; Essential oils for industrial use; Essential oils for personal use; Essential oils for use in manufacturing processes; Essential oils for use in the manufacture of scented products; Essential oils of lemon; Floral water; Food flavorings [essential oils]; Mint essence [essential oil]; Lavender oil; Natural essential oils; Natural oils for cosmetic purposes; Pine oil; Rose oil; Skin care oils [non-medicated]; Bath preparations; Hair preparations and treatments; Hair removal and shaving preparations; Skin care preparations; Soaps and gels; Beauty balm creams; Beauty care cosmetics; Cosmetics for use on the skin; Aromatherapy creams; Aromatherapy lotions; Aromatics for perfumes; Extracts of flowers [perfumes]; Lavender water; Peppermint oil [perfumery]; Rose oil for cosmetic purposes; Scented body spray; Scented water; Massage oils.

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 opponent’s list of goods in Class 3 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.

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 contested cosmetics for use on the skin are identically contained in both lists of goods.

The contested distilled oils for beauty care; essential oils for personal use; natural oils for cosmetic purposes; skin care oils [non-medicated]; Rose oil for cosmetic purposes; massage oils include as the broader category of, or overlap with the opponent’s oils for the body [cosmetics]. 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 hair preparations and treatments; are included in the broader category of the opponent’s hair cosmetics. Therefore, they are identical.

The contested toiletries; hair removal and shaving preparations; bath preparations; skin care preparations; beauty balm creams; beauty care cosmetics; aromatherapy creams; aromatherapy lotions are included in or overlap with the opponent’s cosmetics for personal use. Therefore, they are identical.

The contested essential oils and aromatic extracts; aromatherapy oil; aromatherapy preparations; aromatic essential oils; blended essential oils; essential oils; essential oils for aromatherapy use; essential oils of lemon; mint essence [essential oil]; lavender oil; natural essential oils; pine oil; rose oil; peppermint oil [perfumery] coincide with the opponent’s oils for the body [cosmetics] in nature and purpose, since essential oils are also used to enhance appearance through direct use in the body or aromatherapy and they have also beautifying properties. They are directed at the same end users and distributed through the same channels. Therefore, they are highly similar. The Opposition Division does not agree with the applicant’s argument that the end users of essential oils buy these goods only for their medicinal proprieties and that therefore, the purpose of cosmetics and essential oils is different. As the applicant rightfully noticed, the purpose of the essential oils is to improve ‘inner’ states and conditions. Consequently, the purpose of essential oils is broader and covers the purpose of cosmetics, since they have various properties, including medicinal, psychological, but also beautifying. They affect indirectly (e.g. by alleviating stress and sleep disorders) and/or directly (through use on the body) the appearance of a person. To this extent essential oils coincide in purpose with cosmetics.

The contested extracts of flowers; floral water; extracts of flowers [perfumes]; lavender water; scented body spray; scented water coincide with the opponent’s cosmetics for personal use in purpose. They are directed at the same users, manufactured by the same providers and distributed through the same channels. Therefore, they are highly similar.

The contested soaps; hand soaps; soaps and gels coincide with the opponent’s cosmetics for personal use as they are directed at the same users, manufactured by the same providers and distributed through the same channels. Therefore, they are similar.

The remaining contested goods, namely animal grooming preparations; cleaning and fragrancing preparations; cosmetics for animals; shampoos for pets; household fragrances; air fragrancing preparations; aromatherapy pillows comprising potpourri in fabric containers; fragrance emitting wicks for room fragrance; fragrance refills for non-electric room fragrance dispensers; room scenting sprays; cake flavorings [essential oils]; essential oils for household use; essential oils for industrial use; essential oils for use in manufacturing processes; essential oils for use in the manufacture of scented products; food flavorings [essential oils]; aromatics for perfumes are dissimilar to all the opponent’s goods and services. These remaining contested goods are types of animal grooming preparations, different types of preparations for household use, edible flavorings and essential oils being raw materials to be used in industry and manufacture of other goods. Consequently they have no relevant points of contact with any of the opponent’s goods and services, which are cosmetics, and accessories for storage and application of cosmetics, mainly make-up. It applies also to the opponent’s retail services of cosmetics. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The opponent argues that the perfumed preparations for the house are complementary to the cosmetics, they share distribution channels and, therefore, are similar. Although, these goods, indeed, can be sold in the same places, they are not complementary. Goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). It is also to be noted that complementarity is not conclusive on its own for finding a similarity between goods. Consequently, the goods at issue share only distribution channels and it is not sufficient for establishing similarity.

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 or similar to various degrees are directed at the public at large. The degree of attention will be average, since they are not sophisticated or particularly expensive goods.

3. The signs

NABLA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, for reasons of aural and conceptual comparison, the Opposition Division finds it appropriate to focus on the Polish-speaking part of the relevant public.

The earlier mark is a word mark made up of a single word ‘NABLA’, which is a denomination for the symbol , which is used in mathematics and stands for gradient, or is a type of musical stringed instrument. It does not, however, undermine the distinctiveness of the mark in relation to the relevant goods. However, this word is not very frequently and widely used and is not likely to be known amongst the entire Polish-speaking general public. 

The contested sign is a figurative mark composed of the verbal element ‘NABIA’ in slightly oriental stylisation. In the background of the verbal element, there is the figurative element, which is composed of layers of circles containing floristic elements, namely representations of little flowers, separated by diamond-shaped elements and six leave-like elements connected by two semi-circle lines.

The word ‘NABIA’ refers to the pre-roman goddess of rivers and springs, which was worshiped in Portugal and northern Spain. However, the relevant Polish-speaking public will not associate it with the goddess and will perceive the word ‘NABIA’ as a fanciful word. Therefore, it is distinctive. Although the figurative background contains floral patterns, it is fanciful and distinctive as a whole.

The Opposition Division does not agree with the applicant that the figurative flower-like element is dominant. Due to its size and central position, the word element ‘NABIA’ is equally eye-caching as the figurative element. It is also the frontal positioning of the verbal element that gives it additional emphasis and makes the figurative element to be recognised as a background.  Consequently, the Opposition Division finds that the contested sign has no element that could be clearly perceived as dominant.

Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, both signs are composed of five letters and coincide in four of them. They differ in the penultimate, although visually similar, letter of the verbal elements (‘L’ in the earlier mark and ‘I’ in the contested sign). They also differ in the figurative element of the contested sign. It is also taken into account that the verbal element, as explained above will have more impact.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of four out of five letters and both are divided into two syllables ‘NA’, ‘BLA’ and ‘NA’, ‘BIA’, therefore there is no change in the rhythm nor intonation of the signs. The arguments invoked and evidence submitted by the applicant in its observations do not apply, since the applicant’s comparison is made only for the English-speaking public, whereas, as explained above, the Opposition Division first takes into account the perspective of the Polish consumers.

Overall, the signs are aurally similar to a high degree.

Conceptually, part of the relevant public will perceive the word ‘NABLA‘ of the earlier mark as the denomination of the symbol  or the music instrument and for part of the public it will be meaningless, since it is a specific term used in advanced mathematics or a specialised musical term. The contested sign as a whole will not be associated with any meaning by the relevant public. The graphic element of the contested sign will not be associated with any specific meaning. Should it convey, on account of its vaguely floral patterns, a concept of flowers or scents, this concept would be non-distinctive in relation to the relevant cosmetic and perfumery goods. Consequently, for the part of the public, which understands the earlier mark, the signs are not conceptually similar, for the other part the conceptual comparison is not possible and does not influence the assessment of the similarity.

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.

A sign is deemed to possess a ‘normal’ degree of inherent distinctiveness if there is no indication for a limitation thereof (e.g. due to a descriptive character, laudatory meaning etc.). This means that the sign in question is fully distinctive, in the sense that its capacity to identify the goods and services for which it has been registered as coming from a particular undertaking is not in any way diminished or impaired.

Any higher degree of distinctiveness acquired by the earlier mark, which is often claimed by the opponent in order to broaden its scope of protection, has to be proven by its proprietor by submitting appropriate evidence.

The signs made up of fanciful words lack the conceptual link to the relevant goods and that indeed affect their distinctiveness. However, the Court stated also that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). By analogy a mark will not necessarily have a higher degree of distinctive character just because it is made up of a fanciful word.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods are partly identical, partly similar to a high or average degree and partly dissimilar. The signs are visually similar to an average degree and aurally similar to high degree. Conceptually the signs are not similar for part of the public and for part of the public the conceptual comparison is not possible.

The earlier mark enjoys normal degree of distinctiveness and the degree of attention of the relevant public is average. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). That is particularly important in the present case, where the visual differences between the verbal elements of the signs are confined to one, visually similar letter placed in the middle of the signs and are likely to be overlooked by the public. Furthermore, it is considered that the figurative elements of the contested sign are not sufficient to counteract the high similarity between the earlier mark and the verbal element of the contested sign. Indeed, especially for the part of the public that will not associate the term ‘NABLA’ with any meaning, it is highly conceivable that the contested sign may be perceived as a figurative version of the earlier mark.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 402 126. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Birgit Holst FILTENBORG

Michaela SIMANDLOVA

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.