THE EMOTION & BEAUTY LAB | Decision 2573858

Date Published: Sep 24, 2017

OPPOSITION No B 2 573 858

Roger Aoun, 9 Grants Close, London NW7 1DD, United Kingdom (opponent), represented by Silverman Sherliker Solicitors, 7 Bath Place, London EC2A 3DR, United Kingdom (professional representative)

a g a i n s t

The Emotion & Beauty Lab Tebl, 37, rue Pierre Fontaine, 75009 Paris, France (holder), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative).

On 01/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 573 858 is partially upheld, namely for the following contested goods and services:

Class 3: Soaps; perfumery products; perfumes; toilet water; deodorants for personal use (perfumery); essential oils; cleansing milk for toilet use; cosmetics; lotions for cosmetic use; hair lotions; lipstick; beauty masks; shaving products; make-up removing products; cosmetic preparations for slimming; cosmetic preparations for toning purposes; cosmetic preparations for nail care; hair care cosmetics; cosmetic preparations for baths; bath salts, not for medical use; sun care products (cosmetic sun-tanning preparations); sun-tanning preparations (cosmetics); hair colorants; decorative transfers for cosmetic use; tissues impregnated with cosmetic lotions; incense; mouthwashes not for medical use; dentifrices; breath freshening sprays; shampoo; depilatories; depilatory wax; bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; preservatives for leather (polishes); creams for leather.

Class 44: Hygienic and beauty care for the face and body, including massages; balneotherapy and hydrotherapy treatments; hammams (Turkish baths); information on hygiene and beauty care; aromatherapy services; beauty salons; hairdressing salons.

2. International registration No 1 225 069 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 225 069. The opposition is based on, inter alia, international trade mark registration No 1 220 907 designating inter alia, European Union. The opponent invoked Article 8(1)(b) EUTMR having withdrawn the opposition insofar as it was based on other grounds in its communication of 24/03/2016.

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 international trade mark registration No 1 220 907.

The goods and services

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

Class 3: Aftershave moisturising cream; after-sun gels [cosmetics]; age spot reducing creams; alcoholic solvents being cleaning preparations; anti-aging creams; anti-wrinkle cream; aromatherapy creams; artificial tanning preparations; auto-tanning creams; baby oils; base cream; bath oil; beauty masks; body cream; body mask cream; body masks; body oil; body oil spray; body scrub; bronzing creams; cleaning compositions for spot removal; cosmetics; cosmetics for bronzing the skin; cosmetics for the treatment of dry skin; cream for whitening the skin; creams for cellulite reduction; creams for tanning the skin; cuticle cream; depilatories; essential oils for personal use; ethereal oils; exfoliant creams; non-medicated face cream; facial cleansers; facial cream; facial masks; facial scrubs; facial toners [cosmetic]; facial washes [cosmetic]; hair cream; hair removing cream; hand cleansers; hand washes; lip balm; lip cream; lip gloss; lip polisher; lipstick; lotions for cellulite reduction; make-up foundations; massage oil; moisturizer; nail cream; nail gel; nail strengtheners; nappy cream [non-medicated]; night cream; non-medicated foot cream; non-medicated scalp treatment cream; perfumed soap; preservative creams for leather; non-medicated scalp treatments; scouring solutions; shaving cream; skin cleansers; skin cleansing cream; skin toners; soap; spot remover; sun barriers [cosmetics]; sun blocking lipsticks [cosmetics]; sun bronzers; sun tan lotion; sun tan oil; sun-block lotions; sun-tanning oils; sun-tanning preparations; tanning creams; tanning gels [cosmetics]; washing creams; washing preparations for personal use;

waterless soap; wipes impregnated with a skin cleanser; wrinkle resistant cream; soaps; bath salts; bubble bath.

Class 5: Acne cleansers [pharmaceutical preparations]; acne creams [pharmaceutical preparations]; medicated anti-bacterial face washes; antiseptic cleansers; medicated creams for application after exposure to the sun; medicated creams for the lips; crystals for therapeutic purposes; dietary supplements; medicated face cream; medicated face scrubs; medicated foot creams; medicated creams; medicated lip

balm; medicated skin creams; medicinal oils; night creams [medicated]; peptones for pharmaceutical purposes; pharmaceutical creams; pharmaceuticals; medicated protective creams; sanitary preparations for medical purposes; sanitizing wipes; medicated scalp treatments; scrubs [preparations] for medical use; skin care creams for

medical use; therapeutic creams [medical]; therapeutic medicated bath preparations; vaginal washes; disinfectant washes [other than soap]; dietary food supplements.

Class 10: Apparatus for the therapeutic stimulation of the body; apparatus for the therapeutic stimulation of the muscles; bio therapeutic facial masks; body toner apparatus [therapeutic]; face masks for medical use; gas laser apparatus for medical treatment; high frequency electromagnetic therapy apparatus; hot air therapeutic apparatus; hot therapy apparatus; hot therapy instruments; lasers for medical purposes; low frequency electric therapy apparatus; magnets for therapeutic use; medical skin abraders; medical therapy instruments; static electric therapy apparatus; therapeutic apparatus incorporating massaging facilities; hair prostheses; therapeutic hosiery; visible light treatment instruments; water therapy apparatus for medical use; water treatment apparatus for medical use.

Class 35: Retail services connected with the sale of aftershave moisturising cream, after-sun gels [cosmetics], age spot reducing creams, alcoholic solvents being cleaning preparations, anti-aging creams, anti-wrinkle cream, aromatherapy creams, artificial tanning preparations, auto-tanning creams, baby oils, base cream, bath oil, beauty masks, body cream, body mask cream, body masks, body oil, body oil spray, body scrub, bronzing creams, cleaning compositions for spot removal, cosmetics, cosmetics for bronzing the skin, cosmetics for the treatment of dry skin, cream for whitening the skin, creams for cellulite

reduction, creams for tanning the skin, cuticle cream, depilatories, essential oils for personal use, ethereal oils, exfoliant creams, non-medicated face cream, facial cleansers, facial cream, facial masks, facial scrubs, facial toners [cosmetic], facial washes [cosmetic], hair

cream, hair removing cream, hand cleansers, hand washes, lip balm, lip cream, lip gloss, lip polisher, lipstick, lotions for cellulite reduction, make-up foundations, massage oil, moisturizer, nail cream, nail gel, nail strengtheners, nappy cream [non-medicated], night cream, non-medicated foot cream, non-medicated scalp treatment cream, perfumed soap, preservative creams for leather, non-medicated scalp treatments, scouring solutions, shaving cream, skin cleansers, skin cleansing cream, skin toners, soap, spot remover, sun barriers [cosmetics], sun blocking lipsticks [cosmetics], sun bronzers, sun tan lotion, sun tan oil, sun-block lotions, sun-tanning oils, sun-tanning preparations, tanning creams, tanning gels [cosmetics], toiletries and skin care preparations, washing creams, washing preparations for personal use, waterless soap, wipes impregnated with a skin cleanser, wrinkle resistant cream, soaps, bath salts, bubble bath, acne cleansers [pharmaceutical preparations], acne creams [pharmaceutical preparations], medicated anti-bacterial face washes,

antiseptic cleansers, medicated creams for application after exposure to the sun, medicated creams for the lips, crystals for therapeutic purposes, dietary supplements, medicated face cream, medicated face scrubs, medicated foot creams, medicated creams, medicated lip balm, medicated skin creams, medicinal oils, night creams [medicated], peptones for pharmaceutical purposes, pharmaceutical creams, pharmaceuticals, medicated protective creams, sanitary preparations for medical purposes, sanitizing wipes, medicated scalp treatments, scrubs [preparations]for medical use, skin care creams for medical use, therapeutic creams [medical], therapeutic medicated bath

preparations, vaginal washes, disinfectant washes [other than soap], dietary food supplements, apparatus for the therapeutic stimulation of the body, apparatus for the therapeutic stimulation of the muscles, bio therapeutic facial masks, body toner apparatus [therapeutic], face masks for medical use, gas laser apparatus for medical treatment, high frequency electromagnetic therapy apparatus, hot air therapeutic apparatus, hot therapy apparatus, hot therapy instruments, lasers for medical purposes, low frequency electric therapy apparatus, magnets

for therapeutic use, medical skin abraders, medical therapy instruments, static electric therapy apparatus, therapeutic apparatus incorporating massaging facilities, hair prostheses, therapeutic hosiery, visible light treatment instruments, water therapy apparatus for medical use, water treatment apparatus for medical use.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; coaching; publication services; meditation training; personal development courses; educational services relating to beauty therapy; instruction in cosmetic beauty; educational seminars relating to beauty therapy; conferences, exhibitions and seminars.

Class 44: Hygienic and beauty care for human beings; pharmacy advice; beauty salon services; spas; beauty treatment services; make-up services; massage services; manicure services; beauty consultation; beauty treatment; facial beauty treatment services; consultation services relating to skin care.

The contested goods and services are the following:

Class 4: Scented or non-scented candles for lighting; Christmas tree candles; wicks and wax for lighting; illuminating greases; paraffin; castor oil; fuels (including motor spirit) and lighting fuel; alcohol used as fuel; gas for lighting.

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 holder’s list of goods, indicates that the specific goods 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 contested soaps; cosmetics; lipstick; beauty masks; depilatories; depilatory wax; sun-tanning preparations (cosmetics); preservatives for leather (polishes); are identically included in the opponent’s list, albeit with a slightly different wording. Therefore, they are considered identical.

The contested sun care products (cosmetic sun-tanning preparations) include, as broader category the opponent’s after-sun gels [cosmetics]. 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 include, as broader category the opponent’s essential oils for personal use. 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 creams for leather include, as broader category the opponent’s preservative creams for leather. 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 salts, not for medical use are included in the broader category of the opponent’s bath salts. Therefore, they are considered, identical.

The contested shaving products include, as broader category the opponent’s shaving cream. 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 cleansing milk for toilet use; make-up removing products are included under the opponent’s skin care preparations. Therefore, they are considered, identical.

The contested lotions for cosmetic use; cosmetic preparations for slimming; cosmetic preparations for toning purposes; cosmetic preparations for nail care; hair care cosmetics; cosmetic preparations for baths; decorative transfers for cosmetic use; hair lotions; hair colorants; shampoo are included in the broader category of the opponent’s cosmetics. Therefore, they are considered, identical.

The contested tissues impregnated with cosmetic lotions overlaps with the opponent’s wipes impregnated with a skin cleanser. 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 substances for cleaning; bleaching preparations and other substances for laundry use, they are considered identical to the opponent’s soaps.

The contested perfumery products; perfumes; deodorants for personal use (perfumery); toilet water and the opponent’s cosmetics have the same purpose to enhance or alter the appearance or fragrance of the body. They coincide in producers and distribution channels and, furthermore, target the same consumers. Therefore, they are considering similar to high degree.

The contested polishing, degreasing and abrasive preparations and the opponent’s soaps have the same nature and purpose as all are used to clean. They can coincide in distribution channels and target the same public. Therefore, they are similar.

The contested mouthwashes not for medical use; dentifrices; breath freshening sprays; breath freshening sprays and the opponent’s pharmaceuticals in Class 5, which include medicated versions of the contested goods. They can have the same purpose. They can coincide in producers and distribution channels and, furthermore are often sold together in the same shops and are targeted at the same public. Therefore, they are considered, similar.

The contested incense is similar to low degree to the opponent’s ethereal oils. The use of essential oils is indispensable for the use of perfume burners. These goods are often sold together in the same shops and are targeted at the same public.

Contested goods in Class 4

The holder’s goods scented or non-scented candles for lighting; wax for lighting; illuminating greases; paraffin; castor oil consisting of candles, although often contain fragrance/perfume, this is not enough to find similarity. They have different nature and purpose, do not have the same producers and distribution channels and target different consumers. They are not complementary or in competition. Therefore, these goods are dissimilar to the opponent’s goods and services in Classes 3, 5, 10, 35, 41 and 44.

The contested Christmas tree candles; wicks for lighting; fuels (including motor spirit) and lighting fuel; alcohol used as fuel; gas for lighting these goods are decoration candles or necessary products for the function of candles or lighting products and in some cases are such as candles and wicks are complementary to them, but they are not complementary to the opponent’s goods and services in Classes 3, 5, 10, 35, 41 and 44, nor do they any other relevant relation to them. Consequently, these goods are dissimilar.

Contested services in Class 44

The contested hygienic and beauty care for the face and body, including massages includes, are included in the broader category of the opponent’s hygienic and beauty care for human beings. Therefore, they are considered identical

The contested balneotherapy and hydrotherapy treatments; hammams (Turkish baths); aromatherapy services consist of services to improve the beauty and wellness of people. These services overlap with the opponent’s spas. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services, they are considered identical to the opponent’s services.

The contested information on hygiene and beauty care overlaps with the opponent’s beauty consultation. Therefore the contested services are considered identical to the opponent’s services.

The contested services beauty salons are identically included in the opponent’s list, albeit with a slightly different wording. Therefore, they are considered identical.

The contested hairdressing salons are included in the broader category of the opponent’s beauty salon services. Therefore, they are considered, identical.

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 and business customers with specific professional knowledge or expertise in the field of cosmetics, beauty and health treatment services.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs are figurative. The common element ‘BEAUTYLAB’, although in the contested sign it appears separately in two words, may be perceived by a part of the public in the relevant territory as the combination of the English words ‘BEAUTY’ referred to a combination of qualities, such as shape, colour, or form, that pleases the aesthetic senses, especially the sight and ‘LAB’ as an abbreviation of laboratory. Therefore, the whole expression will be perceived as referring to a laboratory, which provides beauty items or services and, therefore, it is suggestive, at least, for some of the relevant and the services. Therefore, for this part of the relevant public, the degree of distinctiveness of this element must be seen as minimal. For the other part of the public for whom all or some of these words are meaningless, this expression is distinctive. Consequently, the Opposition Division finds it appropriate to focus analysis of this decision on this part of the public for whom this expression has no meaning, such as for example part of the Hungarian-, Italian- and Spanish-speaking part of the public.

As regards the earlier trade mark, it is composed also of a figurative element, the letters ‘b’ and ‘L’ which although depicted in a very stylised way, some consumers may perceive as two letters. However, they do not have any independent role in the sign, since they would be perceived as the acronym of the words following it, namely ‘Beauty’ and ‘Lab’. This element is the visually dominant element of the earlier mark. In relation to the figurative element, it has to be recalled that in any case, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

The words ‘THE EMOTION’ of the contested sign will be perceived by the relevant public as the strong feeling deriving from one's circumstances, mood, or relationships with others, as it is very close to the equivalent word in the official language in the relevant territories, in Hungarian ‘EMOCIONÁLIS’, in Italian ‘L’EMOZIONE’, in Spanish ‘LA EMOCIÓN’. Bearing in mind that the relevant goods and services are designed to make people feel good in the field of beauty and wellness this element is allusive for these goods and services as it alludes to the possibility that the goods and services produce pleasant emotions. The symbol ‘&’ placed in the middle of the contested sign will be perceived as the ampersand symbol meaning, ‘and’, and its distinctiveness is normal in relation to the goods and services in question.

Even it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, contrary to the holder’s opinion this is not a fixed rule as, in the present case, the initial part of the earlier mark is a figurative element, which usually has a lesser impact on consumers than the verbal component while the beginning of the contested sign is the allusive part of the sign.

The typefaces of both signs are slightly stylised, but this is considered purely decorative.

Visually, the signs coincide in the expression ‘BEAUTYLAB’ considered distinctive. However, they differ in the graphical representation of the marks, including their slightly stylised typeface and the fact that the common element in the earlier mark appears as a single word and in the contested sign it appears separated by one space between ‘BEAUTY’ and ‘LAB’. The signs also differ in the additional figurative element of the earlier mark and the additional verbal elements of the contested sign.

In view of the above, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛BEAUTYLAB’, present identically in both signs. The pronunciation differs in the sound of the letters ‛LB’ of the earlier sign (only for the part of the public that perceives them,) and the sound of the letters of ‘THE EMOTION &’.

Therefore, the signs are similar to an average degree taking into account that the verbal element of the earlier mark is totally included in the contested sign.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘THE EMOTION &’, included in the contested sign, will be associated with the meanings explained above. Since one of the signs will be associated with a different meaning, the signs are not conceptually similar. Even though the earlier mark includes the letters ‘L’ and ‘B’, they simply reinforce the words ‘BEAUTY’ and ‘LAB’ so does not have a great conceptual weight.

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 (as this claim was withdrawn).

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 and services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The conflicting goods and services are identical or similar to various degrees. The degree of attention of the relevant public may vary from average to high and the distinctiveness of the earlier mark is normal.

The marks in question are visually and aurally similar to an average degree. This is because the distinctive element of the earlier mark ‘BEAUTYLAB’ is fully reproduced in the contested sign (even though in the contested sign it is separated by one space between ‘BEAUTY’ and ‘LAB’). The signs are conceptually different. Nevertheless, the differences between the signs are based on secondary and allusive elements which will not detract the consumer’s attention from the coinciding, distinctive verbal elements BEAUTYLAB/BEAUTY LAB.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

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 or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). It can be expected that at least a part of the public in the relevant territories who does not understand English could be led to believe that the conflicting goods come from the same undertaking or economically-linked undertakings. They might believe that the goods and services designated by the contested sign, belong to different range of products or kind of services but have the same origin or at least that there is an economic link between the various companies or undertakings which market them (03/07/2003, T-129/01 ‘Budmen’, § 57).

For the sake of completeness, it has to be mentioned that the holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the holder are not relevant to the present proceedings taking into account that they refer to trade marks that include the element ‘BEAUTY’ or ‘LAB’, which play an independent distinctive role and are accompanied by other descriptive elements. In the present case the earlier mark is a fanciful word considered distinctive for a part of the relevant public, for whom ‘BEAUTYLAB’ (together or separately by one space has no meaning and, therefore, is distinctive). Nevertheless, contrary to the holder’s opinion even in cases where ‘BEAUTYLAB’ would be understood, it would be the combination of the figurative and distinctive elements in the sign that would give the mark at least a minimum degree of distinctiveness. In this regard it has to be recalled that in determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, an overall assessment needs to be made of the greater or lesser capacity of the mark to identify the goods and services for which it has been registered as coming from a particular undertaking (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323 §. 22). On the other hand, the distinctiveness of the earlier mark is just one of the requirements to take into account in the assessment of the likelihood of confusion to analyse together with the other different requirements explained above. It follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian-, Italian- and Spanish-speaking part of the relevant public as the dissimilarities found between the signs, described above, will not detract the consumer’s attention from the common expression ‘BEAUTY LAB’ (depicted in one or two words). Therefore, the impact of these differences, based on the additional allusive and secondary elements and aspects, is insufficient to exclude a likelihood of confusion between the marks at issue. Therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating the European Union. 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 for the goods and services found to be identical, similar or lowly similar 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.

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

Polish trade mark registration No Z.356759 for the word mark ‘BEAUTYLAB’ registered for goods in Classes 3, 5, 42 and 44.
United Kingdom trade mark registration No 2253190 for the word mark ‘BEAUTYLAB’ registered for goods in Classes 3, and 42.
United Kingdom trade mark registration No 3002104 for the figurative mark ‘’ registered for goods in Classes 3, 5, 10, 35, 41 and 44.
United Kingdom trade mark registration No 3048068 for the figurative mark ‘’ registered for goods in Classes 3, 5 and 44.
United Kingdom trade mark registration No 3048071 for the figurative mark ‘’ registered for goods in Classes 3, 5 and 44.
International trade mark registration No 1001129 designating Lithuania, Romania, Bulgaria, Latvia, Slovakia, Estonia, Croatia, Slovenia for the word mark ‘BEAUTYLAB’ registered for goods in Classes 3 and 44.
International trade mark registration No 1241963 designating Spain, European Union, Portugal, Austria, Denmark, Poland, Italy, Benelux, Germany, France for the figurative mark ‘’ registered for goods in Classes 3, 5 and 44.
Irish trade mark registration No 240405 for the word mark ‘BEAUTYLAB’ registered for goods in Classes 3, 5, 42 and 44.
Italian trade mark registration No 302008901653168 for the word mark ‘BEAUTYLAB’ registered for goods in Classes 3, 5, 42 and 44.
United Kingdom trade mark registration No 2490931 for the figurative mark ‘’ registered for goods in Classes 3, 7 and 11.
International trade mark registration No 1244140 designating the European Union for the figurative mark ‘’ registered for goods in Classes 3, 5 and 44.

The other earlier rights invoked by the opponent cover goods in Classes 7 and 11 that refer to tanning apparatus and installations and their parts and fittings and services in Class and 42 which refer to design and interior decoration services and education and entertainment services and are clearly different to those applied for in the contested trade mark in Class 4 Scented or non-scented candles for lighting; Christmas tree candles; wicks and wax for lighting; illuminating greases; paraffin; castor oil; fuels (including motor spirit) and lighting fuel; alcohol used as fuel; gas for lighting. They do not have the same nature, purpose, origin or distribution channels. They are not complementary or in competition and, furthermore, are not addressed to the same consumers. Consequently, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods.

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

Orsola LAMBERTI

María Clara

IBÁÑEZ FIORILLO

Lucinda CARNEY

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 EMOTION &amp; BEAUTY LAB | Decision 2573858

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THE EMOTION & BEAUTY LAB | Decision 2573858