Representing its client Phiacademy Doo Beograd, owner of ‘PHI-BROWS’ trade mark, the team of IP Consulting Ltd. filed an opposition against all the goods and services of international registration designating the European Union No 1 380 184 for the word mark ‘PhiLashes’. The opposition is against all the goods and services in Classes 3, 8, 31 and 44. It is based on international trade mark registration No 1 314 918 designating Germany, Austria, Portugal, Sweden and United Kingdom for the figurative mark
The opponent invoked Article 8(1)(b) EUTMR.
Likelihood of confusion
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. A global assessment of several factors is necessary. 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.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.
In the present case, the goods and services found to be identical or at least lowly similar are directed at the public at large and the professional public.
The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase, their sophistication and their price. In particular, in case of services related to patients’ health the level of attentiveness of the relevant public will be high.
The trade mark signs
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, Sabel, EU:C:1997:528, § 23).
Neither of the signs, considered as a whole, has clear univocal meaning for the relevant public.
In the present case, it is expected that the relevant public will read the signs as ‘PHI-BROWS’ and ‘Phi- Lashes’ respectively.
Neither of the signs has elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Considering this fact, the signs are visually and aurally similar to an average degree.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the UK territory and, therefore, the opposition filed by IP Consulting Ltd is partly well founded on the basis of the opponent’s international trade mark registration No 1 314 918 designating UK.
Regarding the another international trade mark registration No 1 314 918 designating Germany, Austria, Portugal and Sweden the outcome cannot be any different. The reason is that these earlier rights designating other territories are protected for the same goods and services. Therefore, there is no need to examine the other earlier rights invoked by the opponent.
The team of IP Consulting Ltd. managed to prove that the contested trade mark must be rejected for the goods or services found to be identical or at least lowly similar to those of the earlier trade mark.