PRODIGE MAKE-P MASSAGER | Decision 2569112 - CLARINS v. VIVIPHARMA S.p.A.

Date Published: Sep 22, 2017

OPPOSITION No B 2 569 112

Clarins, 9 rue du Commandant Pilot, 92200 Neuilly-sur-Seine, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Vivipharma S.p.A., Via Guardia del Consiglio, 15, 47891 Galazzano, San Marin (applicant), represented by Dott. Franco Cicogna & C.Srl, Via Visconti di Modrone 14/A, 20122 Milan, Italy (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 569 112 is partially upheld, namely for the following contested goods and services:

Class 3:        Soaps; cosmetics in general, including perfumes; solid perfumes; antiperspirants [toiletries]; soaps; soaps in liquid form; bar soap; foam bath; shampoo; essential oils; hair care lotions; permanent waving and setting preparations for the hair; gel; tints for the hair; face creams for cosmetic use; mascara; eyeliner; eyelid shadow; make-up pencils; mud based face masks; lipstick; make up foundations; body cream; nail polish; nail strengtheners; sun-tanning oils and creams.

Class 44: Beauty care for human beings; beauty centres, including, anti-stress, Turkish baths, saunas, Jacuzzi, beauty parlours, UVA rays, hydrotherapy, electrotherapy, rejuvenation, facial and body beauty, relaxation, slimming, spa therapy, hydrotherapy for airways, mud therapy; beauty care for human beings; services of a hair and beauty salon; tanning and beauty centres; beauty treatment services; beauty salons; manicuring, beauty care; manicure services; pedicurist services; beauty care for human beings.

2.        European Union trade mark application No 14 166 607 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 some of the goods and services of European Union trade mark application No 14 166 607 , namely some of the goods and services in Classes 3 and 44. The opposition is based on:

• French trade mark registration No 98 752 679 for the word mark ‘PRODIGE’
• Benelux trade mark registration No 644 732 for the word mark ‘PRODIGE’.

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the following marks:

• French trade mark registration No 98 752 679 for the word mark ‘PRODIGE’
• Benelux trade mark registration No 644 732 for the word mark ‘PRODIGE’.

The Opposition Division finds it appropriate to first examine the evidence in relation to the opponent’s French trade mark registration No 98 752 679.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 23/06/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 23/06/2010 to 22/06/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 3:        Make-up products.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 14/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/08/2016 to submit evidence of use of the earlier trade marks. On 01/08/2016, the opponent requested an extension of the time limit. On 22/08/2016, the Office granted this extension, and extended the time limit until 19/10/2016. On 11/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

2011

• Ten invoices demonstrating that ‘rouges’ were sold for a total amount of about EUR 5 595. The invoices were issued to French companies.
• An extract from the website Fan de beauté, in which ‘Rouge Prodige’ is highlighted. The article is in French and no translation was submitted. The document is dated 27/09/2011.

2012

• Nine invoices demonstrating that ‘blushes’ were sold for a total amount of about EUR 19 640, that ‘rouges’ were sold for a total amount of about EUR 12 700 and that ‘glosses’ were sold for a total amount of about EUR 930. The invoices were issued to French companies.

2013

• Ten invoices demonstrating that ‘blushes’ were sold for a total amount of about EUR 300, that ‘rouges’ were sold for a total amount of about EUR 1 800 and that ‘glosses’ were sold for a total amount of about EUR 70. The invoices were issued to French companies.
• Extracts from two French magazines (Elle France and Marie Claire), in which ‘Blush Prodige’ and ‘Gloss Prodige’ are highlighted. The articles are in French and no translation was submitted. Furthermore, the dates are indicated by the opponent but are not shown in the documents.

2014

• Seven invoices demonstrating that ‘blushes’ were sold for a total amount of about EUR 2 900, that ‘rouges’ were sold for a total amount of about EUR 1 500 and that ‘glosses’ were sold for a total amount of about EUR 140. The invoices were issued to French companies.

2015 (until 10/06/2015, within the timeframe)

• Nine invoices demonstrating that ‘blushes’ were sold for a total amount of about EUR 830 and that ‘glosses’ were sold for a total amount of about EUR 1 250. The invoices were issued to French companies.
• An extract from L’Observatoire des Cosmétiques, dated 12/05/2015, in which ‘Blush Prodige’ is highlighted. The article is in French and no translation was submitted.

Place of use

The invoices and the articles show that the place of use is France. Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within the relevant period. Therefore, there are sufficient indications as regards the time of use of the earlier mark.

Extent of use

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The documents listed above, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate sales over a continuous period of five years.

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the mark (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36 to 38, and the case-law cited therein).

Therefore, even though the volume of sales included in the invoices is not particularly impressive in relation to some products, it is offset by the continuous use during the period.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, demonstrate that the earlier sign is used in such a way as to establish a clear link between the goods (make-up products) and the opponent, as the opponent’s name and the mark under which the goods are invoiced are clearly indicated on all of the invoices submitted. In the articles submitted, the sign is also visible. The Opposition Division considers, therefore, that the evidence demonstrates use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a) ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered, taking herewith into account the emphasis in the previous paragraph, requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31, and the case-law cited).

With regard to omissions in the mark when used, if the omitted element is in an accessory position in the presentation of the sign and not distinctive, the omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). The same applies with respect to additions to the mark as used.

Having regard to the aforesaid considerations, to decide whether the form of the mark as used constitutes use of the form of the mark as registered, the Opposition Division will have to establish if the differing elements between the marks as used and registered are negligible.

In the present case, the earlier mark is registered as follows:

• ‘PRODIGE’ (word mark).

In the invoices, the mark is always depicted in the same sequence, namely ‘[description of the goods (“Rouge”, “Blush” or “Gloss”)] – PRODIGE – [name of the sub-brand]’; for instance, as follows:

ROUGE        PRODIGE        116CORAL TULIP

It is settled case-law that if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33, et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36, et seq.). Therefore, the addition of the element ‘rouge’, ‘blush’ or ‘gloss’ is acceptable, given the non-distinctive character of these elements.

Moreover, the addition of the names of sub-brands in the invoices is also acceptable inasmuch as several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

Furthermore, as regards the depiction of the sign in the magazines, it is always indicated as ‘ROUGE/BLUSH/GLOSS Prodige’. As explained above, these additions are acceptable.

It follows that the use of the sign in the way described above constitutes use of the mark as registered or in a form essentially the same as that registered and therefore constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, especially in relation to gloss, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

The opponent proved genuine use of the earlier trade mark in relation to ‘Rouge’, ‘Blush’ and ‘Gloss’. Rouges and blushes were sold for more than EUR 20 000 and glosses were sold for about EUR 3 000 in total in the relevant timeframe. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the French trade mark for make-up products.

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 French trade mark registration No 98 752 679.

1. The goods and services

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

Class 3: Make up products.

The contested goods and services are the following:

Class 3: Soaps; cosmetics in general, including perfumes; solid perfumes; antiperspirants [toiletries]; soaps; soaps in liquid form; bar soap; foam bath; shampoo; essential oils; hair care lotions; permanent waving and setting preparations for the hair; gel; tints for the hair; face creams for cosmetic use; mascara; eyeliner; eyelid shadow; make-up pencils; mud based face masks; lipstick; make up foundations; body cream; nail polish; nail strengtheners; sun-tanning oils and creams.

Class 44: Beauty care for human beings or animals; beauty centres, including, anti-stress, Turkish baths, saunas, Jacuzzi, beauty parlours, UVA rays, hydrotherapy, electrotherapy, rejuvenation, facial and body beauty, relaxation, slimming, spa therapy, hydrotherapy for airways, mud therapy; beauty care for human beings or animals; services of a hair and beauty salon; tanning and beauty centres; beauty treatment services; beauty salons; manicuring, beauty care; manicure services; pedicurist services; beauty care for human beings or animals.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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

The opponent’s goods are make-up products. Make-up products consist ‘of things such as lipstick, eye shadow, and powder which some women put on their faces to make themselves look more attractive or which actors use to change or improve their appearance’ (information extracted from Collins Dictionary on 23/08/2017 at https://www.collinsdictionary.com/dictionary/english/makeup).

The contested cosmetics in general, including perfumes include, as a broader category, the opponent’s make-up products. 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 face creams for cosmetic use; mascara; eyeliner; eyelid shadow; make-up pencils; lipstick; make up foundations are included in the broad category of the opponent’s make-up products. Therefore, they are identical.

The contested solid perfumes; antiperspirants [toiletries] are highly similar to the opponent’s make-up products. The opponent’s goods and the contested goods are all cosmetics or hygiene-related products and they serve the same purpose of improving the appearance. They are manufactured by the same companies and distributed through the same channels. In addition, these goods target the same consumers.

The contested hair care lotions; permanent waving and setting preparations for the hair; gel; tints for the hair are common cosmetic products that are applied to the hair to style or colour it in a certain way. The contested mud based face masks; body cream; nail polish; nail strengtheners are cosmetics that are used to clean the body or the face or to improve the appearance of the nails. They are highly similar to the opponent’s make up products, as these goods have the same purpose, namely improving the appearance of consumers, and the same producers, distribution channels and relevant public.

The contested soaps (mentioned twice in the specification); soaps in liquid form; bar soap; foam bath; shampoo are substances used with water for washing and cleaning. They are similar to the opponent’s make-up products, as all these are goods used for personal grooming. They are used to keep the face or the body clean and to improve appearance. They have the same nature and are sold both in the same perfumeries and in the same section of department stores.

The contested essential oils are similar to the opponent’s make-up products. They have the same purpose and distribution channels. Moreover, they target the same relevant public.

The contested sun-tanning oils and creams are similar to the opponent’s make-up products. These goods have the same purpose. They are also sold in the same outlets (perfumeries) or side by side in supermarkets. Their producers and their relevant consumers are the same.

Contested services in Class 44

The contested beauty care for human beings (three times); beauty centres, including, anti-stress, Turkish baths, saunas, Jacuzzi, beauty parlours, UVA rays, hydrotherapy, electrotherapy, rejuvenation, facial and body beauty, relaxation, slimming, spa therapy, hydrotherapy for airways, mud therapy; services of a hair and beauty salon; tanning and beauty centres; beauty treatment services; beauty salons; manicuring, beauty care; manicure services; pedicurist services are services provided with the purpose of maintaining or improving a person’s appearance. These services and the opponent’s make-up products have the same purpose and target the same relevant public. Furthermore, they are complementary to each other. Moreover, the companies that provide the contested services may also sell make up products to clients for further use at home, so the distribution channels of these goods and services may be the same. Therefore, these services are similar to the opponent’s make-up products in Class 3.

The contested beauty care for animals (mentioned three times in the specification) is dissimilar to the opponent’s make-up products. The contested services are used to improve the appearance of animals, while the opponent’s goods target human beings. Make-up for dogs or cats does not exist. To that extent, these goods and services, in addition to having different natures and methods of use, are not complementary. They also differ in their distribution channels and are provided by different companies.

The opponent cites a judgment of the General Court and a Board of Appeal decision that found a degree of similarity between beauty services in Class 44 and goods in Class 3. The Opposition Division endorses this approach. Nevertheless, in the cases cited, there was no distinction between services for human beings and services for animals and, to that extent, beauty services included services for both human beings and animals. In the present case, there is a clear distinction that leads the Opposition Division to assess the similarity between the goods and services separately. Therefore, the present decision is not in contradiction with the cases cited.

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 and services found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is average.

3. The signs

PRODIGE
Earlier trade mark	Contested sign

The relevant territory is France.

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 trade mark is the single-word mark ‘PRODIGE’.

The contested sign is a figurative mark comprising the word ‘PRODIGE’ in upper case letters and below it, in a smaller typeface, the words ‘Make-up’ and ‘Massager’.

The word ‘PRODIGE’ will be understood by the relevant public as meaning ‘prodigy’. Considering the goods at issue, this word has an average degree of distinctiveness. It carries a certain positive message, but is rather vague and fanciful and will be perceived by the public as a distinctive element capable of identifying trade origin.

The word ‘Make-up’ will be understood by the relevant public. Even though it is an English word, it has spread to France and is now included in French dictionaries (information extracted from L’internaute on 23/08/2017 at http://www.linternaute.com/dictionnaire/fr/definition/make-up/). For some of the goods and services in question, this word is non-distinctive, as it describes their nature. In addition, for some of the goods, essential oils for instance, the word is weak, as it might indicate a compatibility with such products. The word ‘Massager’, as such, is meaningless for the relevant public. Nevertheless, it is similar to the French word ‘masseur’ and even more similar to the French word ‘massage’. Therefore, it will be understood by the relevant public. This word is therefore non-distinctive or in any case rather weak (due to the slight misspelling) for the contested services in Class 44, as it will be perceived as describing a part of the service supplied. The word ‘Massager’ is also non-distinctive (or very weak) in relation to some of the contested goods in Class 3, especially essential oils. For the remaining goods, the word has an average degree of distinctiveness.

The word ‘PRODIGE’ in the contested sign, given its position and size, is more eye catching than the words ‘Make-up’ and ‘Massager’.

Visually and aurally, the marks are similar, as they contain the same word, ‘PRODIGE’, which is the sole element of the earlier trade mark and the most eye-catching and, for some of the goods and services, the only distinctive element of the contested sign.

Account should be taken of the fact that the earlier mark is entirely included in the contested sign, where ‘PRODIGE’ plays an independent distinctive role. In such a case, the earlier mark and the contested sign should be considered similar (11/06/2014, T-401/12, Jungborn, EU:T:2014:507, § 35; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30, 37; 01/07/2009, T-16/08, Center Shock, EU:T:2009:240, § 44; 02/05/2017, R 2292/2016-2, SEVENFRIDAY / SEVEN et al., § 41).

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the present case, the fact that ‘PRODIGE’ is the only word of the earlier mark and is the first verbal element of the contested mark enhances the degree of similarity.

Furthermore, the General Court has already determined that only the dominant part of the mark will normally be pronounced by consumers (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Finally, consumers do not tend to pronounce non-distinctive verbal elements (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 44).

Given all of the above, the signs are visually and aurally highly similar. In addition, for the part of the relevant public that will not pronounce the elements ‘Make-up’ and ‘Massager’ in the contested sign, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coinciding element, ‘PRODIGE’, will be understood by the relevant public as meaning ‘prodigy’. The words ‘Make-up’ and ‘Massager’ will also be understood.

The marks are therefore conceptually highly similar due to the reduced impact of the additional elements ‘Make-up’ and ‘Massager’ of the contested sign.

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.

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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the conflicting signs are visually, aurally and conceptually highly similar (or aurally identical for a considerable part of the public).

The contested goods and services are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of goods and services provided under the opponent’s mark, even for the goods and services for which the words ‘Make-up’ and ‘Massager’ do have some distinctive character.

In the present case, the coinciding word (which constitutes the entire earlier mark) is the dominant and, for part of the goods and services, the only distinctive element of the contested sign.

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration.

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

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• Benelux trade mark registration No 644 732 for the word mark ‘PRODIGE’, registered for make-up in Class 3.

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, there is no need to assess the proof of use filed in relation to this mark, as no likelihood of confusion exists with respect to those remaining dissimilar services in Class 44.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Robert MULAC

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.