(EU trade mark– Opposition proceedings– Application for the EU figurative mark CCLABELLE VIENNA– Earlier EU word mark LABELLO– Relative ground for refusal– Likelihood of confusion– Article8(1)(b) of Regulation (EU) 2017/1001

1On 12December 2017, the applicant, MsMaria Alexandra Canisius, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14June 2017 on the European Union trade mark (OJ 2017 L154, p.1).

2Registration as a mark was sought for the following figurative sign:

3The goods in respect of which registration was sought are in Classes 3, 16 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15June 1957, as revised and amended, and correspond to the following description:

–Class 3: ‘Toiletries; cleaning and fragrancing preparations; nail varnish; cosmetics; make-up’;

–Class 16: ‘Paper tissues for cosmetic use’;

–Class 25: ‘Clothing’.

4The trade mark application was published in European Union Trade Marks Bulletin No9/2018 of 15January 2018.

5On 13April 2018, the intervener, Beiersdorf AG, filed a notice of opposition pursuant to Article46 of Regulation 2017/1001 to registration of the mark applied for in respect of all of the goods referred to in paragraph3 above.

6The opposition was based on, inter alia, the earlier EU word mark LABELLO, which was registered on 3August 1998 under the number 15750 in respect of goods in Class 3 corresponding to the following description: ‘Cosmetic preparations’. Furthermore, the intervener claimed that the earlier mark had a reputation in, inter alia, Germany, Italy and the Netherlands.

7The grounds relied on in support of the opposition were those set out in Article8(1)(b) of Regulation 2017/1001 and Article8(5) of that regulation.

8By decision of 2August 2019, the Opposition Division upheld the opposition based on Article8(5) of Regulation 2017/1001 and rejected the EU trade mark application in its entirety.

9On 1October 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10By decision of 16September 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO partially upheld the appeal and annulled the Opposition Division’s decision as regards the goods in Class 25. First, it found that there was a likelihood of confusion within the meaning of Article8(1)(b) of Regulation 2017/1001 as regards the goods in Classes 3 and 16 covered by the mark applied for. Secondly, as regards the clothing in Class 25 covered by that mark, it found that there was no likelihood of confusion, within the meaning of that provision, in the present case and that the conditions for the application of Article8(5) of that regulation were also not satisfied.