BABY ROSE | Decision 2758699
Date Published: Sep 25, 2017
OPPOSITION No B 2 758 699
Rose Bikes GmbH, Schersweide 4, 46395 Bocholt, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)
a g a i n s t
Gülbebe Tekstil Konfeksiyon Sanayi Ticaret Limited Sirketi, Yunus Emre Mahallesi, Yakup Sokak, No:6, Bursa, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).
On 06/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 758 699 is partially upheld, namely for the following contested goods and services:
Class 25: Clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, ready-made leather linings (parts of clothing), T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pajamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits; clothing for sports (for exclusive use for sports), clothing for babies, namely, shirts, pants, coats, dresses; underclothing, namely, boxer shorts, brassieres, briefs, pants; socks; footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, walking boots, booties, sporting shoes, slippers; shoe parts namely insoles for footwear; headgear, namely caps, skull caps, sports caps, hats, berets; gloves (clothing), stockings, belts (clothing), camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts; babies’ clothing, babies’ footwear, babies’ underwear, babies’ bibs not of paper; children’s clothing, children’s underwear, children’s headgear, children’s footwear.
Class 35: Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; Providing office functions; Business management; Business administration; Business investigations, valuations, expert business appraisals; Auctioneering; The bringing together, for the benefit of others, of woven or non-woven textile fabrics, textile goods for household use, curtains, bed covers, sheets (textile), pillowcases, blankets, quilts, towels, flags, pennants, labels of textile, swaddling blankets, babies’ blankets, diaper changing textile sheets for babies, diaper changing clothes for babies, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, ready-made leather linings (parts of clothing), T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pajamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits, clothing for sports (for exclusive use for sports), clothing for babies, namely, shirts, pants, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of coats, dresses, underclothing, namely, boxer shorts, brassieres, briefs, pants, socks, footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, walking boots, booties, sporting shoes, slippers, shoe parts namely heelpieces, insoles for footwear, footwear uppers, headgear, namely caps, skull caps, sports caps, hats, berets, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of gloves (clothing), stockings, belts (clothing), camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts, babies’ clothing, babies’ footwear, babies’ underwear, babies’ bibs not of paper, children’s clothing, children’s underwear, children’s headgear, children’s footwear enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.
2. European Union trade mark application No 15 035 314 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 035 314, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 3 452 018. The opponent invoked Article 8(1)(b) EUTMR.
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 goods and services
After the partial surrender that took place in the course of the opposition proceedings, the final list of goods and services on which the opposition is based is the following:
Class 25: Clothing for bicycle sports; footwear for bicycle sports; headgear for bicycle sports.
Class 35: Negotiating and concluding of franchise agreements; Retailing of bicycles and bicycle parts, stationery exercise bicycles, care preparations for bicycles, cleaning apparatus for bicycles, varnish protectors for bicycles, repair kits for bicycles, assembly stands for bicycles, tools for use with bicycles, pumps for bicycles, panniers for bicycles, bicycle trailers, bicycle child carriers, protective covers for bicycles, luggage carriers for bicycles, locks for bicycles, bicycle racks for cars, drinking bottles and drinking bottle holders, drinking systems, bottle belts, clothing for cycling sports, footwear for bicycle sports, overshoes, outer soles, leisure shoes, headgear for bicycle sports, bicycle helmets for cycling sports, protective wear for cyclists, goggles for cyclists, sunglasses, bags and rucksacks, bicycle navigation systems, pulse meters, weighing scales, speedometers for bicycles, cameras for bicycles, electronic muscle stimulator, dietary supplements, swim suits, neoprene suits, flippers for swimming, swimming goggles, swimming kickboards, training apparatus for swimming sports, swimming caps, nose clips for swimmers, snorkels, earplugs for swimmers, body care preparations, maps, books, calendars, compact discs, videos and DVDs, beach shoes, massage apparatus, towels, care preparations, reflective strips, activity trackers, smartphone accessories, batteries and storage batteries.
The contested goods and services are the following:
Class 25: Clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, ready-made leather linings (parts of clothing), T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pajamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits; clothing for sports (for exclusive use for sports), clothing for babies, namely, shirts, pants, coats, dresses; underclothing, namely, boxer shorts, brassieres, briefs, pants; socks; footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, walking boots, booties, sporting shoes, slippers; shoe parts namely heelpieces, insoles for footwear, footwear uppers; headgear, namely caps, skull caps, sports caps, hats, berets; gloves (clothing), stockings, belts (clothing), camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts; babies’ clothing, babies’ footwear, babies’ underwear, babies’ bibs not of paper; children’s clothing, children’s underwear, children’s headgear, children’s footwear.
Class 35: Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; Providing office functions; Business management; Business administration; Import and export agencies; Business investigations, valuations, expert business appraisals; Auctioneering; The bringing together, for the benefit of others, of woven or non-woven textile fabrics, textile goods for household use, curtains, bed covers, sheets (textile), pillowcases, blankets, quilts, towels, flags, pennants, labels of textile, swaddling blankets, babies’ blankets, diaper changing textile sheets for babies, diaper changing clothes for babies, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, ready-made leather linings (parts of clothing), T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pajamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits, clothing for sports (for exclusive use for sports), clothing for babies, namely, shirts, pants, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of coats, dresses, underclothing, namely, boxer shorts, brassieres, briefs, pants, socks, footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, walking boots, booties, sporting shoes, slippers, shoe parts namely heelpieces, insoles for footwear, footwear uppers, headgear, namely caps, skull caps, sports caps, hats, berets, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of gloves (clothing), stockings, belts (clothing), camisoles, sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts, babies’ clothing, babies’ footwear, babies’ underwear, babies’ bibs not of paper, children’s clothing, children’s underwear, children’s headgear, children’s footwear enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.
An interpretation of the wording of the applicant’s list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 25
The contested clothing for sports (for exclusive use for sports) includes, as a broader category, the opponent’s clothing for bicycle sports. 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 clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pullovers, tracksuits, rainwear; underclothing, namely, boxer shorts, brassieres, briefs, pants; socks; gloves (clothing), stockings, belts (clothing), camisoles, scarves, neck scarves, shawls, collars; children’s clothing, children’s underwear overlap with the opponent’s clothing for bicycle sports. Therefore, they are considered identical.
The contested footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, booties, sporting shoes; children’s footwear overlap with the opponent’s footwear for bicycle sports. Therefore, they are considered identical.
The contested headgear, namely caps, skull caps, sports caps, hats; children’s headgear overlap with the opponent’s headgear for bicycle sports. Therefore, they are considered identical.
The contested clothing, namely pajamas, jeans, beachwear, bathing suits, swimming suits; clothing for babies, namely, shirts, pants, coats, dresses; sarongs; neckties, ties, suspender belts; babies’ clothing; babies’ underwear; babies’ bibs not of paper are similar to the opponent’s clothing for bicycle sports, since they serve basically the same purpose (to cover the human body), have the same method of use, may target the same public, may be manufactured or marketed by the same undertakings and are likely to be found in the same stores or in closely connected sections of department stores.
The contested footwear, namely walking boots, slippers; babies’ footwear are similar to the opponent’s footwear for bicycle sports, since they serve basically the same purpose (to cover the feet), have the same method of use, target the same public, may be manufactured or marketed by the same undertakings and are likely to be found in the same sales departments.
The contested headgear, namely berets are similar to the opponent’s headgear for bicycle sports, since they serve basically the same purpose (to cover the human head), have the same method of use, target the same public, may be manufactured or marketed by the same undertakings and are likely to be found in the same sales departments.
The contested shoe parts namely insoles for footwear are similar to the opponent’s footwear for bicycle sports, as they can have the same producers and distribution channels. Furthermore, they are complementary and target the same public.
The contested clothing, namely, ready-made leather linings (parts of clothing) are similar to a low degree to the opponent’s retailing of protective wear for cyclists, as these linings overlap with and are considered identical to protective wear for cyclists. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
The contested shoe parts namely heelpieces, footwear uppers are dissimilar to the opponent’s goods and services, as they have different producers/providers, purposes and distribution channels, and they are not in competition or complementary to each other. Given that the contested parts for shoes target shoe manufacturers or cobblers, the relevant public for these goods is specialised and different from that for the contested goods.
Contested services in Class 35
The contested business management; business administration include, as broader categories, or overlap with, the opponent’s negotiating and concluding of franchise agreements. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested the bringing together, for the benefit of others, of textile goods for household use, towels, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes is included in the broad category of, or overlaps with, the opponent’s retailing of towels. Therefore, they are identical.
The contested the bringing together, for the benefit of others, of clothing for sports (for exclusive use for sports), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlaps with the opponent’s retailing of clothing for cycling sports. Therefore, they are identical.
The contested the bringing together, for the benefit of others, of clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, T-shirts, sweatshirts, dresses, bermuda shorts, shorts, pullovers, tracksuits, rainwear, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of coats, dresses, underclothing, namely, boxer shorts, brassieres, briefs, pants, socks, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of gloves (clothing), stockings, belts (clothing), camisoles, scarves, neck scarves, shawls, collars, children’s clothing, children’s underwear, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlap with the opponent’s retailing of clothing for cycling sports. Therefore, they are considered identical.
The contested the bringing together, for the benefit of others, of footwear, namely shoes excluding orthopedic shoes, sandals, waterproof boots, booties, sporting shoes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of children’s footwear, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlap with the opponent’s retailing of footwear for bicycle sports. Therefore, they are considered identical.
The contested the bringing together, for the benefit of others, of footwear, namely walking boots, slippers, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of babies’ footwear, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlap with the opponent’s retailing of leisure shoes. Therefore, they are identical.
The contested the bringing together, for the benefit of others, of headgear, namely caps, skull caps, sports caps, hats, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of children’s headgear, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlap with the opponent’s retailing of headgear for bicycle sports. Therefore, they are identical.
The contested the bringing together, for the benefit of others, of clothing, namely, beachwear, bathing suits, swimming suits, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes overlaps with the opponent’s retailing of swim suits. Therefore, they are identical.
The contested the bringing together, for the benefit of others, of clothing, namely, ready-made leather linings (parts of clothing), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes is similar to the opponent’s retailing of protective wear for cyclists, as these services have the same nature and purpose, target the same public and can have the same providers.
The contested providing office functions is similar to the opponent’s negotiating and concluding of franchise agreements, since both are services offering help in operating and running a business. They target the same public and can be provided by the same undertakings.
The contested business investigations, valuations, expert business appraisals consist of gathering information and providing tools and expertise to enable customers to carry out their business or to provide businesses with the necessary support to acquire develop and expand market share. The opponent’s negotiating and concluding of franchise agreements also target business customers in order to improve and grow their businesses. These services are provided by the same undertakings and are complementary. Therefore, they are similar.
The contested the bringing together, for the benefit of others, of woven or non-woven textile fabrics, curtains, bed covers, sheets (textile), pillowcases, blankets, quilts, flags, pennants, labels of textile, swaddling blankets, babies’ blankets, diaper changing textile sheets for babies, diaper changing clothes for babies, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes is similar to the opponent’s retailing of towels, since they have the same nature, purpose and providers, and they target the same public.
The contested the bringing together, for the benefit of others, of clothing, namely, pajamas, jeans, clothing for babies, namely, shirts, pants, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of headgear, namely berets, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of sarongs, neckties, ties, suspender belts, babies’ clothing, babies’ underwear, babies’ bibs not of paper, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are similar to the opponent’s retailing of clothing for cycling sports, since they have the same nature and purpose, target the same public and can have the same providers.
The contested auctioneering is similar to the opponent’s retailing of bicycles, as both services have the purpose of making goods available to buyers, they target the same public and they have the same points of sale. Furthermore, these services are in competition.
The contested the bringing together, for the benefit of others, of shoe parts namely heelpieces, insoles for footwear, footwear uppers, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes is similar to the opponent’s retailing of footwear for bicycle sports, as they have the same nature and purpose, and they can be provided by the same undertakings.
The contested advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services are similar to a low degree to the opponent’s negotiating and concluding of franchise agreements. The purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of franchise agreements is to help a business in ‘acquiring, developing and expanding market share’. There is no clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice on how to efficiently expand a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, franchising consultants may offer advertising (and marketing) consultancy as a part of their services and therefore the relevant public may believe that these two services have the same professional origin. These services also target the same public.
The contested import and export agencies are dissimilar to all of the opponent’s services and goods, as they have different producers/providers, natures, purposes and distribution channels, and they are not in competition or complementary to each other. Import and export services are not considered sales services and thus the arguments set out in the comparison of goods with retail services cannot apply. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are considered dissimilar to import and export services for those goods.
- 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 are directed at both the public at large (for everyday consumer items such as clothes) and specialists (for specialised services such as negotiating of franchise agreements).
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature or terms and conditions of the purchased goods and services.
- The signs
Rose | |
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The earlier trade mark is a word mark, ‘Rose’. In the case of word marks, it is the word as such that is protected and not its written form.
The contested sign is a figurative mark containing a figurative element depicting a purple flower inside a blue vessel resembling a vase or a flask, and, to the right of this, two moderately stylised verbal elements, ‘BABY’ and ‘ROSE’, depicted in blue upper case letters. As the figurative element is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. However, when a sign consists 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 English word ‘BABY’ is very basic and will be understood throughout the relevant territory. This element is non-distinctive for those goods and services that are directly or potentially intended for babies, or that concern such goods. It is distinctive in relation to the rest of the relevant goods and services, for which it is fanciful.
The verbal element ‘ROSE’, however, would not be perceived as meaningful in at least part of the European Union, for example in Lithuania, Latvia, Poland, Slovakia and the Czech Republic. In these countries, the English word ‘rose’ is translated as ‘rožė’, ‘roze’, ‘róża’, ‘ruža’ and ‘růže’, respectively. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on these territories, where this verbal element is not meaningful and is therefore distinctive.
None of the elements in the contested sign is dominant.
Visually, the signs coincide in the distinctive verbal element ‘ROSE’, present in both marks. However, they differ in the stylisation of the contested sign and in the fact that the contested sign also contains a figurative element and the verbal element ‘BABY’, which is non-distinctive for some of the relevant goods and services. Therefore, depending on the impact of the differing element ‘BABY’, the degree of visual similarity between the signs varies from average to high.
Aurally, the pronunciation of the signs coincides in the distinctive verbal element ‘ROSE’, present in both marks, irrespective of the different pronunciation rules in the different parts of the relevant language areas. The pronunciation differs in the additional verbal element ‘BABY’, present in the contested sign, which is non-distinctive for some of the relevant goods and services. The figurative element of the contested sign will not be articulated. Therefore, depending on the impact of the differing element ‘BABY’, the degree of aural similarity between the signs varies from average to high.
Conceptually, although the public in the relevant territory will perceive the meanings of some of the elements of the contested sign, as explained above, the earlier mark has no meaning in that territory. Since one of the marks will not be associated with any meaning, the signs are not conceptually similar.
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.
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 has no meaning for any of the goods and services in question from the perspective of the public in the relevant language areas. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The sole element of the earlier mark is included as an independent and distinctive element in the contested sign. The degree of visual and aural similarity between the signs varies from average to high, while there is no conceptual similarity from the perspective of the public in the relevant language areas. The distinctiveness of the earlier mark is normal.
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.
Since the goods and services that are relevant for the assessment of likelihood of confusion are partly identical and partly similar to various degrees, it is highly conceivable that the relevant consumer will perceive the contested sign 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 constitutes a frequent practice nowadays for companies to make small variations in their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Lithuanian-, Latvian-, Polish-, Slovakian- and Czech-speaking parts of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 3 452 018. 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 or similar to those of the earlier trade mark. Furthermore, the contested mark should also be rejected for the goods and services found to be similar to a low degree to those of the earlier trade mark because, taking into consideration the interdependence principle, the strong commonalities between the signs outweigh the low degree of similarity between the goods and services, which in itself is incapable of ruling out a likelihood of confusion.
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.
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
Solveiga BIEZA | Milda CERNIAUSKAITE | Vita VORONECKAITE |
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.