Bambiola | Decision 2709403
Date Published: Sep 24, 2017
OPPOSITION No B 2 709 403
Schneider Versand GmbH, Strandbaddamm 2-4, 22880 Wedel, Germany (opponent), represented by Olaf E. Wirth, Vollhöfner Weiden 17, 21129 Hamburg, Germany (professional representative)
a g a i n s t
Bambiola UK Ltd, 73 Galaxy Building, 5 Crews Street, Canary Wharf, London E14 3SP, the United Kingdom (applicant), represented by Deepa Sugathan, 33 Bedford Row, London WC1R 4JH, the United Kingdom (professional representative).
On 21/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 709 403 is partially upheld, namely for the following contested goods:
Class 25: Clothing.
2. European Union trade mark application No 15 364 946 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 364 946. The opposition is based on European Union trade mark registration No 1 839 604 and on German trade mark registration No 30 053 407. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards earlier German trade mark registration No 30 053 407.
On 05/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/01/2017.
The opponent did not submit any evidence concerning the substantiation of the abovementioned earlier trade mark.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.
Therefore, the examination will proceed on the basis of European Union trade mark registration No 1 839 604.
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
The goods on which the opposition is based are the following:
Class 25: Underwear.
The contested goods are the following:
Class 24: Textile goods, and substitutes for textile goods.
Class 25: Clothing; headgear; hats.
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 24
The main characteristic that the various contested textile goods, and substitutes for textile goods in Class 24 and the opponent’s underwear in Class 25 have in common is that they are made of textile materials or their substitutes. However, this is not enough to justify a finding of similarity. They serve completely different purposes: the opponent’s goods are worn by people for protection and/or fashion, whereas the contested goods in Class 24 are for filtering or household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, the contested textile goods, and substitutes for textile goods are considered dissimilar to the opponent’s underwear.
Contested goods in Class 25
The contested clothing includes, as a broader category, the opponent’s underwear. 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 headgear; hats are dissimilar to the opponent’s underwear. They have different natures, purposes and methods of use. Furthermore, they are not likely to be sold through the same outlets or channels, and they are not complementary or in competition.
- 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 found to be identical are directed at the public at large. The degree of attention is average.
- The signs
bambola | |
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 earlier mark is a word mark, ‘bambola’. In word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is depicted in upper or lower case characters or a combination thereof.
The contested sign is a composite mark that comprises a relatively standard handwritten depiction of the word ‘Bambiola’ in pink, title case letters and figurative elements of pink arabesque swirly decorations in the upper and lower parts of the mark. None of these elements can be considered clearly more dominant (visually eye-catching) than other elements.
While the earlier mark will be understood by the Italian-speaking public as referring to a doll, for the rest of the relevant public it is meaningless. The verbal element of the contested sign does not convey any meaning for the relevant public. Both elements are considered distinctive in relation to the relevant goods. The figurative elements of the contested sign have a purely decorative nature and as such are therefore weak for the goods at issue.
Visually, the marks are similar to the extent that they coincide in the letters ‘BAMB*OLA’, which form the entire earlier mark. Conversely, they differ in the additional letter ‘I’, placed in the middle of the contested sign where it is likely to be overlooked by consumers, in the slight stylisation of the contested sign, which is not sufficient to counteract the number of letters the marks have in common since its impact is minor, and in the additional figurative elements of the contested sign, which are, however, weak for the goods in question.
Therefore, the signs are visually similar to a higher than average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘BAMB*OLA’. However, the pronunciation differs in the sound of the additional letter ‘I’ in the middle of the contested sign, where it does not result in a significant difference between the marks.
Therefore, the signs are aurally similar to a high degree.
Conceptually, although the Italian-speaking part of the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
However, for the majority of the public for which neither of the signs has a meaning as a whole, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.
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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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.
In the present case, the contested goods are partly identical and partly dissimilar to the opponent’s goods. The identical goods target the public at large and the degree of attention of the relevant public is average. The signs under comparison are visually similar to a higher than average degree and aurally similar to a high degree. Furthermore, for the majority of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.
The differences between the signs are very limited, as they are confined to the additional single letter in the middle of the contested sign, the stylisation and the additional weak figurative elements of the contested sign, which have, however, less impact on the overall assessment of the marks. Therefore, it is highly conceivable that the relevant consumer will perceive that identical goods marked with the signs in question come from the same undertaking or from economically linked undertakings.
Moreover, although the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Therefore, the slight differences between the marks are clearly insufficient to outweigh the similarity between them and they will most probably go unnoticed by the relevant public.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Steve HAUSER | Begoña | Boyana NAYDENOVA |
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.