BEMAMY | Decision 2674995
Date Published: Sep 28, 2017
OPPOSITION No B 2 674 995
Hisert GmbH, Lindenstraße 7, 16307 Mescherin OT Radekow, Germany (opponent), represented by JWP Rzecznicy Patentowi Dorota Rzążewska sp.j., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative)
a g a i n s t
Unipro s.r.l., Via Rizzoli 4, 40125 Bologna, Italy (applicant), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative).
On 16/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 674 995 is upheld for all the contested goods, namely:
Class 25: Clothing.
2. European Union trade mark application No 14 652 101 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against part of the goods and services of European Union trade mark application No 14 652 101, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 628 194. 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
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing.
Clothing is identically included in both lists of 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 found to be identical are directed at the public at large displaying an average degree of attention (08/02/2007, T-88/05, NARS, EU:T:2007:45, § 53).
- The signs
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.
Both marks are figurative marks. The earlier trade mark consists of the words ‘BE’, written within a heart device, and ‘MAMMY’, both depicted in a black italic handwriting-style lower case typeface. The contested sign consists of a blue hashtag followed by the words ‘BE’, written in blue upper case letters, and ‘MAMY’, written in pink upper case letters. Although ‘BEMAMY’ is written as a single word, the fact that the two elements are depicted in different colours will lead the relevant public to split it into two different words. Except the letter ‘A’ of the element ‘MAMY’, which is fairly fanciful, the verbal elements of the contested sign are written in a fairly standard typeface.
The marks as a whole and/or their elements are meaningful in certain territories and not in others. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
For the French-speaking part of the public, the element ‘BE’, included in both marks, has no meaning and, therefore, is distinctive. By contrast, the elements ‘MAMY’ and ‘MAMMY’ correspond, in informal French, to the word used by children to name their grandmothers. Indeed, that word can be written in three different ways, namely ‘mamie’, ‘mamy’ or ‘mammy’ (information extracted from http://www.larousse.fr). These elements might be perceived as allusive of the target public for the goods in question, that is, grandmothers. However, bearing in mind that the element ‘BE’ will not be understood, it is unlikely to be perceived as descriptive of this target public. Therefore, taken as a whole, the verbal elements of the marks are distinctive in the perception of the French-speaking part of the public. However, the element ‘BE’, which has no meaning at all in the perception of the French-speaking part of the public, is more distinctive than the elements ‘MAMMY’ and ‘MAMY’.
As regards the figurative elements of the marks, the Opposition Division notes that both the heart device and the hashtag will be perceived as decorative, so they are not particularly distinctive.
In addition, in accordance with settled case-law, when signs consist 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Therefore, it cannot be considered, as claimed by the applicant, that the figurative elements of the marks are more distinctive than their word elements. On the contrary, in the light of the above, the Opposition Division considers that the verbal elements of both marks are more distinctive than their figurative elements, including their typefaces.
Likewise, the applicant’s contention that the figurative elements dominate the visual impressions produced by the marks – which is, moreover, not supported by any argument except their distinctive character – cannot be accepted. The figurative elements are not sufficiently eye-catching or striking to qualify as dominant. In the Opposition Division’s view, the marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘BEMAM*Y’. However, they differ in the additional letter ‘M’ of the earlier mark, which is not reproduced in the contested sign. Since this additional letter ‘M’ is placed in the middle of the earlier mark, it is considered that the fact that it is not reproduced in the contested sign is likely to be overlooked.
The marks further differ in their respective figurative elements, including their typefaces, colours and graphic depictions of the elements within both marks.
Therefore, the signs are visually similar to a low degree.
Aurally, according to French pronunciation rules, the pronunciation of the signs entirely coincides, since the fact that the earlier mark includes a double ‘M’ while the contested sign has a single letter ‘M’ has no noticeable aural impact.
Therefore, the signs are aurally identical.
Conceptually, although the signs as a whole do not have any meaning for the French-speaking public, the elements ‘MAMY’ and ‘MAMMY’ will be associated with the meaning explained above. Moreover, although they differ in the concept of the heart and the hashtag in the earlier mark and the contested sign respectively, which have no counterparts in the other sign, the fact remains that they will both be perceived as decorative, and therefore they have a limited influence on the conceptual comparison.
Bearing in mind their allusive character, the signs are conceptually similar to an average degree on account of the common concept conveyed by the elements ‘MAMY’ and ‘MAMMY’.
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 French-speaking public in the relevant territory. Therefore, contrary to the applicant’s claim, 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 signs coincide in their two word elements, one of which (‘BE’) bears no relation at all to the relevant goods while the other (‘MAMMY’/‘MAMY’) is merely allusive. Therefore, it cannot be said that the signs coincide in descriptive elements. It also follows that the case-law cited by the applicant and the screenshot of the opponent’s website submitted by it in support of its argument have no relevance in the present case.
The applicant also claims that, because the marks have numerous visual differences, the relevant public cannot confuse them. In this regard, although, in relation to the goods in question, the visual perception of the marks will generally take place prior to purchase and is, therefore, more important, the other factors cannot be disregarded and all the relevant factors have to be weighed up.
In the present case, the marks are indeed visually similar to a low degree. However, since the marks’ verbal elements are almost identical, they are aurally identical and conceptually similar to an average degree. In addition, the goods are identical. Finally, the earlier mark enjoys an average degree of distinctiveness in the perception of the French-speaking part of the public.
Therefore, bearing in mind that the absence of a double ‘M’ in the contested sign might go overlooked, it is likely that the contested sign would lead the average consumer to perceive it as a variation of the earlier mark, configured in a different way according to the line of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public, within the meaning of Article 8(1)(b) EUTMR. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 628 194. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Carmen SÁNCHEZ PALOMARES | Marine DARTEYRE | Zuzanna STOJKOWICZ |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.