Peony | Decision 2707779
Date Published: Oct 1, 2017
OPPOSITION No B 2 707 779
Peony De Sy, S.L.U., Passeig de Gràcia, 100 pral. 2ª, 08008 Barcelona, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative)
a g a i n s t
So Susan Ltd, Unit 1, 21 Park Road, London, City of London NW1 6XN, United Kingdom (applicant).
On 05/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 707 779 is upheld for all the contested goods.
2. European Union trade mark application No 14 292 701 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 292 701. The opposition is based on, inter alia, European Union trade mark registration No 12 301 289. 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 12 301 289.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Nail polish.
Class 44: Beauty salons.
The contested goods are the following:
Class 21: Cosmetics applicators; Cosmetics brushes; Applicators for cosmetics; Make-up sponges; Make-up brushes.
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 21
The contested Cosmetics applicators; Cosmetics brushes; Applicators for cosmetics; Make-up sponges; Make-up brushes and the opponent’s cosmetics have the same purpose, namely to beautify one’s appearance. Furthermore, they can coincide in producer, end user and distribution channels. Furthermore they are complementary. Therefore, they are highly similar.
- 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 highly similar are directed at the public at large. The degree of attention is considered average.
- The signs
PEONY DE SY | Peony |
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 earlier mark is the word mark ‘PEONY DE SY’.
The contested sign is the word mark ‘Peony’.
Account must be taken of the fact that where both marks are registered as word marks, the typeface actually used by the respective office in the official publication (e.g. the EUTM Bulletin) is immaterial. Differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.
The English word ‘peony’ will be perceived by part of the relevant public as ‘a garden plant with large red, pink, or white flowers’ (Cambridge dictionary). The element ‘DE’ will be perceived by part of the relevant public as a Spanish preposition. For the Danish- and/or Swedish-speaking part of the relevant public the element ‘SY’ will be perceived as the verb ‘to sew’. However, for part of the public the elements as such and the combination thereof will not be perceived as carrying any identifiable meaning.
However, for part of the relevant public, such as the non-English-speaking part of the relevant public, none of the elements will carry a meaning for the relevant goods and it will therefore be distinctive.
According to the case law, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, considering that the similarities between the signs will be higher to the extent that for significant part of the public the signs do not bear any meaning, for reasons of economy of proceedings the Opposition Division will focus its examination on this part of the public.
It follows that, the terms ‘PEONY DE SY’ of the earlier mark and ‘Peony’ of the contested sign have no meaning for the relevant part of the public and are, therefore, distinctive. Furthermore, the signs do not have any elements that could be considered more dominant (visually eye-catching) than others.
Visually and aurally, the signs coincide in the sequence (and the sound) of the letters ‘PEONY’, presenting the first element of the earlier mark and all the letters of the contested sign. They differ in the additional elements ‘DE’ and ‘SY’ of the earlier mark, which has no counterpart in the contested sign.
Therefore, the signs are visually and aurally, at least, similar to an average degree.
Conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity 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 in question from the perspective of the relevant part 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
As has been concluded above, the contested goods were found highly similar to those of the earlier mark.
Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness for the relevant part of the public. It has been also established above that the signs are visually and aurally, at least, similar to an average degree, due to the sequence of letters ‘PEONY’, forming the entire contested sign and the initial part the earlier mark.
Considering all the above, there is a likelihood of confusion on the part of the public that would not understand a meaning of the term ‘PEONY’ (and the additional elements of the earlier mark) and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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 in its entirety.
As the earlier right ‘PEONY DE SY’ 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
Irina SOTIROVA | André Gerd Günther BOSSE | Plamen IVANOV |
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.