O HUI CC CUSHION | Decision 2424649 - Amorepacific Corporation v. LG HOUSEHOLD & HEALTH CARE LTD.
Date Published: Oct 1, 2017
OPPOSITION No B 2 424 649
Amorepacific Corporation, 181, 2-ga, Hangang-ro, Yongsan-gu, Seoul, Republic of Korea (opponent), represented by Ballester IP, Avda. de la Constitución, 16, 1°D, 03002 Alicante, Spain (professional representative)
a g a i n s t
LG Household & Health Care Ltd., 58, Saemunan-ro, Jongno-gu, Seoul, Republic of Korea (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).
On 08/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 424 649 is upheld for all the contested goods.
2. European Union trade mark application No 13 084 793 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 084 793. The opposition is based on, inter alia, European Union trade mark registration No 12 769 411. 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 12 769 411.
- The goods
The goods on which the opposition is based are, after invalidity decision No 10 884 C of 11/11/2015, the following:
Class 3: Nail art stickers; badian essence; shaving stones; hair gel; perfumes; lavender oils; false eyelashes; cosmetic preparations for baths; cosmetic soaps; shampoo; dentifrices; nail varnish for cosmetic purposes.
The contested goods are the following:
Class 3: Toiletries; essential oils and aromatic extracts; cleaning and fragrancing preparations; cosmetics; milky lotions for skin care; perfumes; cleansing creams; shampoos; hair rinses; hair oils; sun care lotions; nail polish; nail decolorants; mask pack for cosmetic purposes; soaps; massage cream, not medicated; perfumed body lotions; skin lotions; bath gels; shower gels; massage oil; cosmetic creams; nail enamel; varnish-removing preparations; bath powder; perfumed powder; hair lotions; body creams; body cleansing foams; cleansing lotions; body cleaning and beauty care preparations; eye shadows; lipsticks.
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 toiletries include, as a broader category, the opponent’s dentifrices. 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 essential oils and aromatic extracts include, as a broader category, the opponent’s badian essence. 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 cleaning preparations include, as a broader category, the opponent’s shampoo. 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 fragrancing preparations include, as a broader category, the opponent’s perfumes. 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 include, as a broader category, the opponent’s nail varnish for cosmetic purposes. 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 bath gels; bath powder are included in the broad category of, or overlap with, the opponent’s cosmetic preparations for baths. Therefore, they are identical.
The contested soaps include, as a broader category, the opponent’s cosmetic soaps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Perfumes; shampoos are identically contained in both lists of goods (including synonyms).
The contested nail polish; nail enamel are included in the broad category of, or overlap with, the opponent’s nail varnish for cosmetic purposes. Therefore, they are identical.
The contested body cleaning and beauty care preparations include, as a broader category, or overlap with, the opponent’s cosmetic preparations for baths. 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 body cleansing foams and the opponent’s cosmetic preparations for baths overlap. Therefore, these goods are considered identical.
The contested hair lotions are similar to a high degree to the opponent’s hair gel. These goods have the same purpose of caring for the hair. Moreover, they may have the same producers, end users and distribution channels.
The contested milky lotions for skin care; cleansing creams; sun care lotions; mask pack for cosmetic purposes; massage cream, not medicated; perfumed body lotions; skin lotions; shower gels; massage oil; cosmetic creams; perfumed powder; body creams; cleansing lotions; eye shadows; lipsticks are cosmetic products that are similar to the opponent’s cosmetic soaps because they may have the same producers, end users and distribution channels.
The contested nail decolorants; varnish-removing preparations are similar to the opponent’s nail varnish for cosmetic purposes because these goods may have the same producers, end users and distribution channels. Moreover, they are complementary.
The contested hair rinses; hair oils are similar to the opponent’s shampoo because they may have the same producers, end users and distribution channels.
- 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 different degrees are directed at the public at large, including professionals. The degree of attention is considered average.
For reasons of procedural economy and as explained in more detail in the comparison of the signs, the Opposition Division will not take into consideration the professional public. Given that the non-professional part of the public is more prone to confusion, the examination will proceed on this basis.
- The signs
CC CUSHION | O HUI CC CUSHION |
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 common elements ‘CC’ and ‘CUSHION’ are meaningless for part of the non-English-speaking general public. These elements may have a meaning in relation to the goods (or at least some of them) for professionals in the relevant sector and, to a lesser extent, for some non-professional consumers, particularly if they are English-speaking. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the non-English-speaking general public for which these elements are meaningless. This is undoubtedly a significant and sufficient part of the public in the relevant territory for the assessment of likelihood of confusion. The elements ‘CC’ and ‘CUSHION’, at least for those consumers who would not associate them with any concept, have a normal degree of distinctiveness.
Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Visually and aurally, the signs coincide in that the earlier mark, ‘CC CUSHION’, is completely incorporated into the contested sign. However, they differ in the additional first two elements, ‘O HUI’, of the contested sign. Although these additional elements, which are at the beginning of the contested sign, result in its having a different structure and length from the earlier mark, the inclusion of the distinctive elements ‘CC CUSHION’ in their entirety is significant. Therefore, the signs are visually and aurally similar to a higher than average degree.
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical or similar to different degrees. The signs are visually and aurally similar to a higher than average degree and there is no concept that could help in distinguishing the signs, at least for the part of the public taken into consideration, namely part of the non-English-speaking general public.
Account must also be 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).
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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion for a significant part of the relevant public, namely part of the non-English-speaking general public whose degree of attention is considered average. As stated above, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. There is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 769 411. It follows that the contested trade mark must be rejected for all the contested goods.
As earlier EUTM registration No 12 769 411 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Sandra IBAÑEZ | Benoit VLEMINCQ | Martina GALLE |
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.