NAIL ART PROFESSIONALS | Decision 2788142

Date Published: Sep 24, 2017

OPPOSITION No B 2 788 142

You Cosmetics S.L., CL. Ciencia, 35-39 – Nave 1 Pol. Ind. Les Massotes, 08850 Gava (Barcelona), Spain (opponent), represented by Pons Consultores de Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Nail Art Studio S.R.L., Str. Calarasilor nr. 77, TG. Mures, Romania (applicant), represented by Paula Adriana Acsinte, 17 Decebal, BL S16 Entrance 2 Floor AP 30 Sector 3, 030964 Bucharest, Romania (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 788 142 is partially upheld, namely for the following contested goods and services:

Class 3: False nails; nail strengtheners; nail polish; nail gel; nail glitter; nail cream; nail conditioners; abrasive boards for use on fingernails; nail primer [cosmetics]; nail hardeners [cosmetics]; nail tips [cosmetics]; nail base coat [cosmetics]; glue for strengthening nails; abrasive paper for use on the fingernails; nail repair preparations; lotions for strengthening the nails; nail whiteners; artificial nails for cosmetic purposes; nail polish base coat; fingernail overlay material; artificial fingernails of precious metal; cosmetic nail care preparations; cosmetic preparations for nail drying; adhesives for affixing artificial fingernails; gel nail removers; nail polish remover pens; nail varnish for cosmetic purposes; nail polish top coat; nail varnish remover [cosmetics]; abrasive emery paper for use on fingernails; nail polish remover; adhesives for false eyelashes, hair and nails.

Class 35: Online retail store services relating to cosmetic and beauty products.

2. European Union trade mark application No 15 600 851 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 600 851. The opposition is based on European Union trade mark registration No 7 486 475. 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 goods and services

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

Class 3: False nails.

Class 35: Retailing in shops and wholesaling of false nails.

Class 44: Hygiene and beauty care for human beings; manicuring and pedicuring services.

The contested goods and services are the following:

Class 16: Photographs [printed]; unmounted and mounted photographs; brag books [photo albums]; leaflets; printed informational folders.

Class 35: Providing consumer product information relating to cosmetics; online retail store services relating to cosmetic and beauty products; advertising via electronic media and specifically the internet; providing business information via a web site.

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

Contested goods in Class 3

False nails are identically contained in both lists of goods.

The contested nail strengtheners; nail polish; nail gel; nail glitter; nail cream; nail conditioners; abrasive boards for use on fingernails; nail primer [cosmetics]; nail hardeners [cosmetics]; nail tips [cosmetics]; nail base coat [cosmetics]; glue for strengthening nails; abrasive paper for use on the fingernails; nail repair preparations; lotions for strengthening the nails; nail whiteners; artificial nails for cosmetic purposes; nail polish base coat; fingernail overlay material; artificial fingernails of precious metal; cosmetic nail care preparations; cosmetic preparations for nail drying; adhesives for affixing artificial fingernails; gel nail removers; nail polish remover pens; nail varnish for cosmetic purposes; nail polish top coat; nail varnish remover [cosmetics]; abrasive emery paper for use on fingernails; nail polish remover are all cosmetics for nail care purposes. These goods and the opponent’s false nails are similar to a high degree, as they have the same purpose and they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested adhesives for false eyelashes, hair and nails are similar to the opponent’s false nails, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

Contested goods in Class 16

The contested photographs [printed]; unmounted and mounted photographs; brag books [photo albums]; leaflets; printed informational folders are printed matter. The opponent’s goods in Class 3 are nail care items, while the opponent’s services in Classes 35 and 44 consist of retailing, wholesaling and beauty care services. The contested goods and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Therefore, they are dissimilar.

Contested services in Class 35

The contested online retail store services relating to cosmetic and beauty products are similar to the opponent’s retailing in shops of false nails. The services under comparison have the same nature, as both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use. Furthermore, they have the same relevant public.

The contested providing consumer product information relating to cosmetics is a service provided to consumers in order to furnish information and offer consultation on the products sold/services provided. The contested advertising via electronic media and specifically the internet consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity via the internet. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services. The contested providing business information via a web site is a specialised service aimed at helping a business in acquiring, developing and expanding market share by means of the web. The contested services and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Therefore, the contested services are dissimilar to all of the opponent’s goods and services.

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 and services found to be identical or similar in Classes 3 and 35 are directed at the public at large and at business customers with specific professional knowledge or expertise in the beauty and nail care sector. The degree of attention is average.

The signs

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.

The verbal elements ‘NAILS’ of the earlier mark and ‘NAIL’ of the contested sign are English words that are not meaningful in some territories, for example for the Polish- and Bulgarian-speaking parts of the public. The Opposition Division will proceed with the evaluation of the decision focusing on the abovementioned parts of the public.

The earlier mark is a figurative mark that includes the words ‘ART’ and ‘NAILS’ in stylised black title case letters. These word elements are separated by a hyphen, which has no distinctive character, since it merely serves to separate the abovementioned components. The component ‘ART-NAILS’ is, owing to its large size and central position, the dominant element of the mark.

The word ‘ART’ will be understood throughout the entire relevant territory and by both the general and professional consumers as meaning creative activity resulting in the production of artistic materials (music, literature, painting, sculpture), or skill in doing a specified thing, typically acquired through practice. It can be reasonably assumed that the relevant public will infer this meaning because there are words in the relevant languages formed from the root ‘ART’ and meaning ‘artistic’, namely ‘artystyczny’ in Polish and ‘артистичен’ – which is transliterated as ‘artistichen’ – in Bulgarian. It follows that the word ‘ART’ has a weak distinctive character, and therefore is of limited relevance in the present comparison, as it alludes to the nature or characteristics of the relevant goods and services (which function as or relate to the embellishment of the human body) and conveys a generally positive message about the skilfulness and creativity involved in the design and production of the relevant goods, as well as in the rendering of the services in question.

The word ‘NAILS’ is meaningless and hence distinctive for the relevant public.

The mark also includes a graphic device consisting of a letter ‘N’ on a black rectangle, the latter being non-distinctive because it is a mere carrier of the aforementioned letter. The letter ‘N’ is distinctive due to its lack of any connection with the relevant goods and services. However, it is not considered to play an independent role in the present comparison, since it will be perceived by consumers as a graphic depiction of the first letter of the distinctive element ‘NAILS’.

The contested mark is a figurative mark that includes the words ‘NAIL’, which is meaningless and hence distinctive for the relevant public, and ‘ART’, in slightly stylised black upper case letters. The word element ‘ART’ is weak for the reasons set out above.

The mark also includes the word ‘PROFESSIONALS’ in slightly stylised upper case bold black letters, which will be understood in its English meaning, as competent or skilled in a particular activity. This is because it is a basic English word that will be understood by the relevant public, and also because it is very similar to the equivalent word in the official languages of the territory taken into consideration (‘profesjonalny’ in Polish and ‘професионален’ – which is transliterated as ‘profesionalen’ – in Bulgarian). This component of the mark has no distinctive character, since it refers to the fact that the goods and services are designed/provided by professionals or target a professional public, as well as because of its laudatory meaning (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 29-32).

The mark also contains a fanciful graphic device constituted by two intersecting elements, each consisting of three angular lines with different orientations. Because of its remarkable dimensions, this is the dominant element of the mark. Furthermore, although it cannot be excluded that a part of the public might perceive it as the letters ‘N’ and ‘A’ (referring to the words ‘NAIL ART’), in the perception of a substantial part of the relevant public it will lack any clear meaning, and so is distinctive.

In any case, 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). Therefore, the verbal portion of the mark, in particular its distinctive element ‘NAIL’, has more relevance than the graphic device mentioned above. The same applies to the stylisations of the marks.

Visually, the signs coincide in the strings of letters ‘NAIL*’, which is distinctive, and ‘ART’, which is weak and, therefore, of limited relevance. The components of the marks are in reverse order. The signs differ only in the last letter, ‘S’, of the word ‘NAILS’ of the earlier mark and in elements of limited significance.

First, the marks differ in the graphic device of the contested sign and in the letter ‘N’ of the earlier mark, which have a limited impact in the present comparison due to the graphic nature of the former (and its ancillary role for the part of the public that sees it as the letters ‘N’ and ‘A’, an abbreviation of ‘NAIL ART’) and the lack of an independent role in the sign in the case of the latter.

Second, the remaining differences lie in non-distinctive elements, namely the hyphen, the black square of the earlier mark and the word ‘PROFESSIONALS’ of the contested sign.

In view of the above, and considering that the most distinctive elements of the marks are almost identical, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NAIL*’ and ‘ART’. The pronunciation differs in the sound of the letter ‘S’ of the earlier mark, placed at the end of the word, where consumers do not focus their attention, and in the sound of the non-distinctive word ‘PROFESSIONALS’ of the contested mark. Due to its ancillary role and small size, the letter ‘N’ of the earlier mark will most probably not be pronounced. The same applies to the graphic device, for the part of the public that sees in it the letters ‘N’ and ‘A’.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to the extent that they coincide in the word ‘ART’. However, this commonality must be seen in the context of the limited distinctive character of that element.

Although the differing word ‘PROFESSIONALS’ of the contested sign will evoke a concept, this is not sufficient to establish any conceptual dissimilarity, as this element is non-distinctive and cannot indicate the commercial origin of the mark. The same applies to the black square of the contested sign.

The remaining elements of the marks do not convey any relevant semantic concept; therefore, they do not influence the conceptual comparison of the signs.

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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to various degrees and partly dissimilar. They target the general public and professionals. The degree of attention is considered average. The earlier mark enjoys a normal degree of distinctive character in connection with the relevant goods and services.

The signs are visually and aurally similar to an average degree, in particular because they have in common the distinctive elements ‘NAIL’/‘NAILS’, which differ in only one letter at the end of the word ‘NAILS’, where consumers do not tend to focus their attention. The marks also coincide in the element ‘ART’, which, despite being weak, will not be overlooked by consumers, due to its verbal nature. The other differences between the signs result from elements that have limited significance because they are graphic elements (the graphic device of the contested sign, despite its dominance, and the stylisation of the marks), non-distinctive elements (the word ‘PROFESSIONALS’ of the contested sign, the black square and the hyphen of the earlier mark) or secondary elements (the ancillary letter ‘N’ of the earlier mark and the letters ‘N’ and ‘A’ for the part of the public that perceives them in the graphic device of the contested sign).

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public specified above. 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 those of the earlier trade mark.

The rest of the contested goods and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pierluigi M.
VILLANI

Orsola LAMBERTI

Francesca CANGERI SERRANO

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.

NAIL ART PROFESSIONALS | Decision 2788142

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