THE CASE
Phiacademy Doo Beograd, Bulevar Oslobodenja 137, 11000 Beograd, Serbia (opponent), represented by IP Consulting Ltd., 6-8,Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative) filed an opposition against Malwina Zieba (applicant).
On 09/09/2021, the opponent filed an opposition against all the services of Europea Union trade mark application No 18 483 712 (figurative mark). The opposition is based on, inter alia, international trade mark registration designating Romania No 1 498 239 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.
THE SERVICES
The services on which the opposition is based are, inter alia, the following: Class 44: Medical and cosmetic services.
The contested services are the following:
Class 44: Medical services; permanent makeup services.
Medical services are identically contained in both lists of services.
The contested permanent makeup services are included in the broad category of the opponent’s cosmetic services. Therefore, they are 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 services found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature or price of the services, or their impact on users’ health.
THE SIGNS
Visually, the signs coincide in the verbal element ‘PowderBrows’, which is the only verbal element of the earlier mark and the co-dominant element of the contested sign. The signs differ in the contested sign’s verbal element ‘ACADEMY’, which, however, plays a secondary role within the sign. They further differ in their respective figurative elements, which are, in any event, of less iTherefore, the signs are visually similar to, at least, an average degree.
Aurally, the signs coincide in the pronunciation of the verbal element ‘PowderBrows’. They differ in the sound of the contested sign’s element ‘ACADEMY’. However, this will very likely not be pronounced because it is at the bottom of the sign and consumers have a tendency to shorten signs.
Therefore, the signs are aurally highly similar, if not identical.
Conceptually, although the public in the relevant territory will perceive the abovementioned meanings of the contested sign’s element ‘ACADEMY’ and its depiction of a crown, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are conceptually not similar.
CONCLUSION
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating Romania No 1 498 239. It follows that the contested trade mark must be rejected for all the contested services.
