Stiletto | Decision 2800012
Date Published: Sep 22, 2017
OPPOSITION No B 2 800 012
Botica Comercial Farmacéutica, Ltda., Av. Rui Barbosa, 3450, S. José dos Pinhais, Paraná 83065-260, Brazil (opponent), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 - 1º, 1050-186 Lisboa, Portugal (professional representative)
a g a i n s t
Kenkä- ja Asusteliike Stiletto Oy, Puistokatu 46, 85800 Haapajärvi, Finland (applicant), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 800 012 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 543 309. The opposition is based on European Union trade mark registration No 4 497 889, Portuguese trade mark registration No 235 612 and French trade mark registration No 1 421 484, all for the word mark ‘STYLETTO’. 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 4 497 889 which is identical to the other earlier marks and encompasses the broadest list of goods.
- The goods and services
The goods on which the opposition is based are the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions; perfumery, depilatory preparations, shampoos, colognes, deodorants; dentifrices; oils for toilet purposes; oils for perfumes and scents; oils for cosmetic purposes; breath freshening sprays; shaving preparations; smoothing preparations (starching); shampoos for pets; cosmetics for animals; cosmetic preparations for baths; bath salts, not for medical purposes; cotton sticks for cosmetic purposes; beauty masks; mouth washes (not for medical purposes); sun-tanning preparations (cosmetics); hair dyes; hair-waving preparations; hair dyes; eyebrow cosmetics; eyebrow pencils; cosmetic kits; cosmetic creams; cosmetic preparations for skincare; bleaches for cosmetic use; make-up removing preparations; deodorant soap; extracts of flowers (perfumes); incense; medicated soaps; lipsticks; hair lacquers; nail polish; cosmetic pencils; cleansing milk for toilet purposes; tissues impregnated with cosmetic lotions; make-up preparations; preparations for perfuming linen; false eyelashes; pumice stone; soap for foot perspiration; pomades for cosmetic use; softeners; talcum powder for toilet use; cosmetic dyes; color-removing preparations; toiletries; false nails; nail care preparations; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
Following a limitation of the application of 02/11/2016, the contested goods and services are the following:
Class 18: Leather belts and straps; trunks, bags and traveling bags; umbrellas and parasols; bags and backbags; wallets.
Class 35: Advertising; marketing; business management; retail and wholesale services in relation to clothing, accessories, textiles, bags, and sports equipment; sales services provided via computer networks and electronic commerce in relation to clothing, accessories, textiles, bags and sports equipment.
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 18
The contested goods are articles of leather used to fasten, support or hold clothes or other items, items used for carrying things when travelling and objects used to protect oneself from the rain or sun. On the other hand, the opponent’s goods are various kinds of beauty care and cosmetics products used to improve the appearance of persons or animals as well as bleach and other preparations used for cleaning grinding, smoothing, or polishing.
The conflicting goods have no point of contact whatsoever as they differ in nature and method of use. They are intended for different purposes and target different public. They are produced by different undertakings and sold through different distribution channels. Finally, they are not in competition nor are they complementary. They are therefore dissimilar overall.
Contested services in Class 35
The contested advertising; marketing; business management are services provided to commercial entities in order to assist them in the sale of their goods, promoting their launch and sale reinforcing their position on the markets or, more generally, to support and develop their business. These services are fundamentally dissimilar to the opponent’s goods in Class 3, as they do not share providers, distribution channels, are not complementary nor are they in competition. In particular it is noted that advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods being advertised.
Retail and wholesale services in relation to clothing, accessories, textiles, bags, and sports equipment and the opponent’s goods in Class 3, namely soaps, perfumery, essential oils, cosmetics, hair lotions; perfumery, depilatory preparations, shampoos, colognes, deodorants; dentifrices; oils for toilet purposes; oils for perfumes and scents; oils for cosmetic purposes; breath freshening sprays; shaving preparations; smoothing preparations (starching); shampoos for pets; cosmetics for animals; cosmetic preparations for baths; bath salts, not for medical purposes; cotton sticks for cosmetic purposes; beauty masks; mouth washes (not for medical purposes); sun-tanning preparations (cosmetics); hair dyes; hair-waving preparations; hair dyes; eyebrow cosmetics; eyebrow pencils; cosmetic kits; cosmetic creams; cosmetic preparations for skincare; bleaches for cosmetic use; make-up removing preparations; deodorant soap; extracts of flowers (perfumes); incense; medicated soaps; lipsticks; hair lacquers; nail polish; cosmetic pencils; cleansing milk for toilet purposes; tissues impregnated with cosmetic lotions; make-up preparations; preparations for perfuming linen; false eyelashes; pumice stone; soap for foot perspiration; pomades for cosmetic use; softeners; talcum powder for toilet use; cosmetic dyes; color-removing preparations; toiletries; false nails; nail care preparations; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesale is the sale of commodities in quantity, usually for resale. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. The same reasoning made above applies to the contested sales services provided via computer networks and electronic commerce in relation to clothing, accessories, textiles, bags and sports equipment.
Similarity between retail or wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the sales services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar. Therefore, the contested sales services are all dissimilar to the opponent’s goods in Class 3.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in respect of the earlier European Union trade mark registration No 4 497 889.
The opponent has also based its opposition on the following earlier marks:
- Portuguese trade mark registration No 235 612 ‘STYLETTO’ covering the following goods in Class 3: cosmetic perfumery goods, cosmetics, soaps of all kind including medicinal soaps, disinfectants, deodorants or soaps made from mineral-medicinal salts, beauty and beauty products and lotions (included in this class);
- French trade mark registration No 1 421 484 ‘STYLETTO’ covering the following goods in Class 3: cosmetic products and perfumes.
Since these marks are identical to the one which has been compared and cover a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
It follows that the opposition shall be rejected in its entirety.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Janja FELC | Claudia ATTINÀ | Natascha GALPERIN |
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.