REVUELE | Decision 2521022 - BRISEIS, S.A. v. REVUELE Ltd.
Date Published: Sep 28, 2017
OPPOSITION No B 2 521 022
Briseis, S.A., Carretera NAC 340, Km. 449.5, 04410 Benahadux (Almería), Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D 28036 Madrid, Spain (professional representative)
a g a i n s t
Revuele Ltd., Bratin Dol. Str., bl. 26A, en. B, floor 4, app. 27, 1330 Sofia, Krasno Selo Region, Bulgaria (applicant), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8 Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 521 022 is partially upheld, namely for the following contested goods:
Class 3: Essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; perfumes; perfumery and fragrances; animal grooming preparations; eyebrow cosmetics; cosmetics for the use on the hair; cosmetic preparations for eyelashes; colour cosmetics for the skin; cosmetics for personal use; nail base coat [cosmetics]; colour cosmetics for the eyes; cosmetics in the form of rouge; cosmetic preparations for skin care; cosmetics for use in the treatment of wrinkled skin; make-up removing preparations; cosmetics in the form of eye shadow; glitter in spray form for use as a cosmetics; moist paper hand towels impregnated with a cosmetic lotion; cakes of toilet soap; soaps in liquid form; soaps for personal use; hand soaps; soaps and gels; laundry soaps; shaving sticks [preparations]; soaps for household use; soaps in gel form; shampoos; medicated shampoos; dry shampoos; baby shampoo; shampoos for personal use; shampoos for vehicles; shampoos for pets; hair rinses [shampoo-conditioners]; hair dyes; sunscreen preparations; non-medicated creams; mousses [cosmetics]; barrier creams; moisturizers; day creams; cosmetic creams; cleansing creams; exfoliant creams; shower creams; aromatherapy creams; sun creams; anti-aging creams; skin cream; hand creams; perfumed creams; hair creams; night creams [cosmetics]; face cream (non-medicated -); body cream; bleaching preparations [decolorants] for cosmetic purposes; skin cleansers [cosmetic]; cleaner for cosmetic brushes; cleaning preparations for personal use; face scrubs (non-medicated-); cleaning preparations; non-medicated cleansing creams.
Class 5: Hygienic preparations and articles.
2. European Union trade mark application No 13 689 856 is rejected for all the above goods. 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 13 689 856. The opposition is based on Spanish trade mark registration No 313 934. 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 Spanish trade mark No 313 934 on which the opposition is based.
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 04/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 04/02/2010 to 03/02/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 3: Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, cosmetics, hair lotions, dentifrices; perfumery.
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 08/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/04/2016 to submit evidence of use of the earlier trade mark. On 20/04/2016, within the time limit, the opponent submitted evidence of use. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, in particular, the following:
- A total of 50 invoices issued by the opponent, of which 40 are dated within the relevant period; the other 10 are dated 29/01/2010 and in the period 27/02/2015-30/11/2015 and thus close to the relevant period. Furthermore, almost all the invoices were issued to customers in Spain and seven invoices that are dated outside the relevant period were issued to customers outside the European Union. All invoices show use of ‘REVUELE’ for cologne.
- Three photographs showing the use of ‘REVUELE’ on the label of a bottle of cologne.
- Printouts of five online distributors’ web pages, showing use of the mark for cologne.
- Two extracts from the Diario de Almería newspaper dated 13/10/2009 (and not 03/02/2016, as erroneously stated by the opponent in its observations of 20/04/2016) and 25/03/2016 mentioning the mark ‘REVUELE’ in relation to perfume.
The applicant argues that the opponent did not submit translations of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely printouts of distributors’ web pages and pictures of packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The invoices and the newspaper extract dated 13/10/2009 clearly show that the place of use is, inter alia, Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and most of the customers’ addresses, in Spain. Therefore, the evidence relates to the relevant territory.
In addition, according to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. The seven invoices issued by the opponent to some countries outside the European Union (albeit not issued in the relevant period, but nevertheless close to this period) clearly show that the goods were exported from the relevant territory.
Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.
Most of the evidence is dated within the relevant period. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). In the case at hand, even the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the evidence dates from rather close in time to the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. Use of the mark need not be quantitatively significant for it to be deemed genuine.
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, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
In conclusion, the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods.
In the present case, the evidence shows genuine use of the trade mark for the following goods:
Class 3: Perfumery.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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 on which the opposition is based are the following:
Class 3: Perfumery.
The contested goods and services are the following:
Class 3: Essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; animal grooming preparations; eyebrow cosmetics; cosmetics for the use on the hair; cosmetic preparations for eyelashes; colour cosmetics for the skin; cosmetics for personal use; nail base coat [cosmetics]; colour cosmetics for the eyes; cosmetics in the form of rouge; cosmetic preparations for skin care; cosmetics for use in the treatment of wrinkled skin; make-up removing preparations; cosmetics in the form of eye shadow; glitter in spray form for use as a cosmetics; perfumes; perfumery and fragrances; moist paper hand towels impregnated with a cosmetic lotion; cakes of toilet soap; soaps in liquid form; soaps for personal use; hand soaps; soaps and gels; laundry soaps; shaving sticks [preparations]; soaps for household use; soaps in gel form; shampoos; medicated shampoos; dry shampoos; baby shampoo; shampoos for personal use; shampoos for vehicles; shampoos for pets; hair rinses [shampoo-conditioners]; hair dyes; sunscreen preparations; non-medicated creams; mousses [cosmetics]; barrier creams; moisturizers; depilatory creams; day creams; cosmetic creams; cleansing creams; exfoliant creams; shower creams; aromatherapy creams; sun creams; anti-aging creams; skin cream; hand creams; perfumed creams; hair creams; night creams [cosmetics]; face cream (non-medicated -); body cream; medical toothpastes; preparations for cleaning dentures; tooth polish; dentifrices; dental bleaching gels; mouthwashes, not for medical purposes; denture polishes; laundry preparations; commercial laundry detergents; laundry detergents for household cleaning use; bleaching preparations [decolorants] for cosmetic purposes; bleaching preparations; skin cleansers [cosmetic]; carpet cleaning preparations; cleaner for cosmetic brushes; cleaning preparations for personal use; face scrubs (non-medicated -); shoe cleaners [preparations]; cleaning preparations; non-medicated cleansing creams; window cleaners in spray form.
Class 5: Pharmaceutical creams; spermicidal creams; night creams [medicated]; orgasm creams; creams (medicated -) for the feet; medicated skin creams; dental preparations and articles; hygienic preparations and articles; nutritional supplements; medicated food supplements; food for diabetics; antiseptic cleansers.
Class 35: Business analysis, research and information services; advertising, marketing and promotional services; commercial trading and consumer information services; business management; negotiation of commercial transactions for performing artists; business management organisation; business management supervision; mediation and conclusion of commercial transactions for others.
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
Perfumery (and its synonyms perfumes and fragrances) is identically contained in both lists of goods.
The contested toiletries overlap with the opponent’s perfumery. Therefore, they are identical.
The contested fragrancing preparations overlap with the opponent’s perfumery. Therefore, they are identical.
The contested animal grooming preparations overlap with the opponent’s perfumery. Therefore, they are identical.
The contested essential oils and aromatic extracts are similar to a high degree to the opponent’s perfumery, as these goods have the same purpose and nature. They can have the same producers, end users and distribution channels.
The contested eyebrow cosmetics; cosmetics for the use on the hair; cosmetic preparations for eyelashes; colour cosmetics for the skin; cosmetics for personal use; nail base coat [cosmetics]; colour cosmetics for the eyes; cosmetics in the form of rouge; cosmetic preparations for skin care; cosmetics for use in the treatment of wrinkled skin; make-up removing preparations; cosmetics in the form of eye shadow; glitter in spray form for use as a cosmetics; moist paper hand towels impregnated with a cosmetic lotion; sunscreen preparations; non-medicated creams; mousses [cosmetics]; barrier creams; moisturizers; day creams; cosmetic creams; cleansing creams; exfoliant creams; shower creams; aromatherapy creams; sun creams; anti-aging creams; skin cream; hand creams; perfumed creams; hair creams; night creams [cosmetics]; face cream (non-medicated-); body cream; bleaching preparations [decolorants] for cosmetic purposes; skin cleansers [cosmetic]; face-scrubs (non-medicated-) are similar to a high degree to the opponent’s perfumery, as they have the same general purpose (substances that people use to make themselves look more attractive, including to avoid the appearance of aging, etc.). They can have the same producers, end users and distribution channels.
The contested cakes of toilet soap; soaps in liquid form; soaps for personal use; hand soaps; soaps and gels; laundry soaps; shaving sticks [preparations]; soaps for household use; soaps in gel form; cleaning preparations (listed twice); cleaner for cosmetic brushes; cleaning preparations for personal use; non-medicated cleansing creams are similar to the opponent’s perfumery, as they can have the same producers, end users and distribution channels.
The contested shampoos; medicated shampoos; dry shampoos; baby shampoo; shampoos for personal use; shampoos for vehicles; shampoos for pets; hair rinses [shampoo-conditioners]; hair dyes are similar to a low degree to the opponent’s perfumery, as they can have the same end users and distribution channels.
The contested depilatory creams are dissimilar to the opponent’s perfumery. These goods have different natures and purposes; they differ in their methods of use and producers and they are not in competition or complementary.
The contested medical toothpastes; preparations for cleaning dentures; tooth polish; dentifrices; dental bleaching gels; mouthwashes, not for medical purposes; denture polishes are dissimilar to the opponent’s perfumery. These goods have different natures and methods of use; they differ in producers and they are not in competition or complementary.
The contested laundry preparations; commercial laundry detergents; laundry detergents for household cleaning use; bleaching preparations; carpet cleaning preparations; shoe cleaners [preparations]; window cleaners in spray form are dissimilar to the opponent’s perfumery. These goods have different natures; they differ in their methods of use, producers and distribution channels; they are not in competition or complementary.
Contested goods in Class 5
The contested hygienic preparations and articles are similar to a low degree to the opponent’s perfumery, as they have the same purpose. They can have the same end users and methods of use.
The contested pharmaceutical creams; spermicidal creams; night creams [medicated]; orgasm creams; creams (medicated-) for the feet; medicated skin creams are all dissimilar to the opponent’s perfumery in Class 3. These goods have different natures; they differ in their methods of use and producers and they are not in competition or complementary.
The contested dental preparations and articles are all dissimilar to the opponent’s perfumery in Class 3. These goods have different natures; they differ in their methods of use, producers and distribution channels. Furthermore, they are not in competition or complementary.
The contested nutritional supplements; medicated food supplements; food for diabetics are all dissimilar to the opponent’s perfumery in Class 3. These goods have different natures; they differ in their methods of use and producers and they are not in competition or complementary.
The contested antiseptic cleansers are dissimilar to the opponent’s perfumery in Class 3. These goods have different natures and purposes; they differ in their methods of use, producers and distribution channels. Furthermore, these goods are not in competition or complementary.
Contested services in Class 35
The contested business analysis, research and information services; advertising, marketing and promotional services; commercial trading and consumer information services; business management; negotiation of commercial transactions for performing artists; business management organisation; business management supervision; mediation and conclusion of commercial transactions for others are all fundamentally different in nature and purpose from the opponent’s perfumery. Apart from clearly being different in nature, since services are intangible whereas goods are tangible, they also clearly serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.
The fact that business analysis, research and information services may relate to perfumery, as perfumery products may appear in advertisements or form part of marketing services, commercial trading and consumer information services, is insufficient for finding similarity.
The same goes for business management; negotiation of commercial transactions for performing artists; business management organisation; business management supervision; mediation and conclusion of commercial transactions for others. These services are provided by specialist companies and differ from the opponent’s goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.
Therefore, all these services are clearly dissimilar to the opponent’s goods.
- 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 is considered average.
- The signs
REVUELO | REVUELE |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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).
Both the earlier mark and the contested sign are word marks.
The earlier sign consists of the word ‘REVUELO’. This word exists in Spanish, meaning, inter alia, ‘stir, disturbance’ (cf. Real Academia Española online www.rae.es: ‘turbación y movimiento confuso de algunas cosas’) and ‘to take to flight again; to fly around’ (cf. Real Academia Española online www.rae.es: ‘volar haciendo giros’; ‘levantar de nuevo el vuelo’). Nevertheless, it has no meaning in relation to the goods at issue and consequently it is of average distinctiveness for the relevant public.
The contested sign consists of the word ‘REVUELE’, which is the first and third person singular of the subjunctive of the Spanish verb ‘REVOLAR’ (‘que yo revuele’/‘que el/ella revuele’), which is semantically very close to the noun ‘revuelo’ (cf. Real Academia Española online www.rae.es, revolar : ‘dar segundo vuelo’; ‘volar haciendo giros’). Consequently, the distinctiveness of the sign is average.
Visually, the signs coincide in the string of letters ‘REVUEL*’, which forms the beginning of both marks, being the first six letters in the seven-letter sequence of both marks. The signs differ in only their last vowels: ‘O’ in the earlier mark and ‘E’ in the contested sign.
Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to a very high degree.
Aurally, the pronunciation of the signs coincides in the sound of their first six letters, ‘REVUEL*’, present identically in both signs. The pronunciation differs in their final letters, the vowel ‘O’ in the earlier sign and the vowel ‘E’ in the contested mark.
The very minor difference between the signs does not outweigh the overwhelming similarity arising from the phonemes corresponding to the letters ‘REVUEL*’, which the marks have in common. In addition, the signs have the same length, rhythm and intonation.
Therefore, the signs are aurally similar to a very high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to at least an 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 in relation to 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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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 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).
Furthermore, 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 covered are from the same or economically linked undertakings.
In the present case, the signs at issue are visually and aurally similar to a very high degree on account of the identical sequence of six letters that they have in common, out of a total of seven letters for both marks, which, in addition, constitute the first part of both marks. The signs are conceptually similar to at least an average degree. Furthermore, neither of the signs has any dominant or non-distinctive element. 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).
Taking into account that the only difference between the signs lies in their final letter and the identity and similarity (to various degrees) between the goods at issue, the Opposition Division considers that consumers with an average degree of attention may legitimately make a connection between the conflicting signs and assume that the goods are from the same undertaking or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 313 934. It follows 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 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 and services 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
Gueorgui IVANOV | Edith Elisabeth VAN DEN EEDE | Michele M. BENEDETTI-ALOISI |
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.