The owner of an international trade mark No 1 119 310, represented by the team of IP Consulting, filed an Opposition against all the goods of EUTM application No 13 811 997. The opponent invoked Article 8(1)(b) EUTM – a likelihood of confusion.
According to the Decision a likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Also several factors interdependent are included namely 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.
– Both trade marks are for identical goods namely in class 3 – “cosmetics” and the goods “make-up preparations” from the contested application are part of the general term “cosmetics”;
– The earlier trade mark consists of the word VELVET (written in a square). The dominant and the distinctive part of the trade mark is the word VELVET. VELVET means “a type of woven tufted fabric in which the cut threads are evenly distributed, with a short dense pile, giving it a distinctive feel”. The contested application consists of the words: DREAM VELVET. The word DREAM means “a cherish aspiration, ambition or ideal”. Thus the word “DREAM” in combination with VELVET would be perceived by the consumer as “DREAMED / CHERISHED VELVET” – thus the word is defining the main term – VELVET. Phonetically, conceptually and visually the trade marks are undoubted similar.