BENCH WORKSHOP | Decision 2406224 - Bench Limited v. BALCAN FINANCIAL SERVICES INC

Date Published: Sep 24, 2017

OPPOSITION No B 2 406 224

Bench Limited, Tanzaro House, Ardwick Green North, Manchester, Lancashire M12 6FZ, United Kingdom (opponent), represented by Wilson Gunn, 5th Floor, Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)

a g a i n s t

Balcan Financial Services Inc., 2711 Centerville Road, Suite 400, Wilmington, New Castle, Delaware 19808, United States of America (applicant), represented by Petros Vrachas, 41 Themistokli Dervis Street, Hawaii Nicosia Tower, Suites 806-807, 1066 Nicosia, Cyprus (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 406 224 is upheld for all the contested goods.

2.        European Union trade mark application No 12 847 571 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 847 571 .

The opposition is based on:

1. European Union trade mark registration No 7 144 223  for goods in Class 16;
2. European Union trade mark registration No 3 855 038 ‘BENCH’ for goods in Class 18;
3. European Union trade mark registration No 8 624 661 ‘BENCH’ for goods in Class 25;
4. United Kingdom trade mark registration No 2 394 838 ‘BENCH’ for goods in Classes 18 and 25.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in its notice of opposition. Later, on 01/02/2017, the opponent withdrew its opposition based on Article 8(5) 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 marks, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 7 144 223 and No 3 855 038.

1. The goods

The goods on which the opposition is based are the following:

European Union trade mark registration No 7 144 223

Class 16:        Binders, computer instruction manuals, diaries, dissertation cases, files, folders, journals, notebooks, organisers, organiser tins, pencil cases/tins, year planners, portfolio cases, scrapbooks, stationery, writing paper, envelopes, greetings cards, cards, stickers, storage for stationery and writing implements, writing instruments, pens, pencils, crayons, magazines, calendars, desk items namely paperclips, trays for papers, holders for writing implements, staplers, hole punches for paper.

European Union trade mark registration No 3 855 038

Class 18:        Bags; purses, wallets, handbags, rucksacks, holdalls.

The contested goods are the following:

Class 16:        Stationery and educational supplies; Adhesives for stationary or household purposes; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Disposable paper products; Paper and cardboard; Colouring books; Sticker activity books; Stamps; Timetables; Prints; Paper emblems; Wall calendars; Address books; Calendars; Tear-off calendars; Daily planners; Advent calendars; Passport holders; Cards; Announcement cards [stationery]; Invitation cards; Educational equipment; Photo albums and collectors’ albums; Printing and bookbinding equipment; Writing and stamping implements; Correcting and erasing implements; Staple removers; Pigeon holes; Personal organisers; Scented stationery; Adhesive-backed letters and numbers; Adhesive pads [stationery]; Adhesive foils stationery; Adhesive labels; Adhesive note paper; Automatic adhesive dispensers for office use; Self-adhesive plastic sheets for lining shelves; Removable self-stick notes; Paperweights; Stands for writing implements; Holders for notepads; Paper clip holders; Finger-stalls [office requisites]; Rubber finger tips; Finger moisteners; Index cards [stationery]; Mimeograph stencils; Lettering stencils; Stencils [stationery]; Dispensers (Adhesive tape -) [office requisites]; Adhesive tape dispensers for household or stationery use; Decorative pencil-top ornaments; Tracing patterns; Elastic bands for offices; Reinforced stationery tabs; Document covers; Desk calendars; Desk diaries; Desk pads; Desk organisers; Desk top planners; Year planners; Address labels; Map cases; Document holders [stationery]; Correspondence cards; Note cards; Name cards; Pen wipers; Jackets of paper for books; Exercise-book covers; Folders for papers; Mapping pins; Drawing board pins; Cases for stationery; Chalk; Tailors’ chalk; Chalk holders; Binders; Loose-leaf binders; Ring binders; Display binders; Lever arch files; Sticky tape; Stamps [seals] (Cases for -); Pencil cases; Stationery boxes; Glitter glue for stationery purposes; Blank cards; Whiteboards; Whiteboards having magnetic properties; Document markers; Highlighters; Ink; Duplicating inks; Ledgers [books]; Marking inks; Jotters; Notelets; Protractors [for stationery and office use]; Letter-openers; Drawing instruments for blackboards; Cash receipt books; Account slip pads; Loose-leaf pads; Notepads; Trays for sorting and counting money; Legal pads; Correspondence folders; File covers; Document files; Sharpeners for cosmetic pencils; Pencil sharpeners; Angle guides [drawing instruments]; Marking templates; Wall planners; Red ink paste used for seals; Chart pointers, non-electronic; Noteboards; Flipcharts; Poster board; Paper clasps; Clipboards; Drawing pins; Thumbtacks [stationery]; Plastic transparencies; Pouches for writing instruments; Plastic envelopes; Protective covers for books; Diaries; Correspondence racks; Desk trays; Marking chalk; Crepe paper streamers; Notebooks; Pads [stationery]; Adhesive note pads; Stenographers’ note books; Pocket notebooks; Spiral-bound notebooks; Steatite [tailor’s chalk]; Glitter pens for stationery purposes; Pen clips; Film pens; Tags for index cards; Staples for offices; Paper fasteners; Paper-clips; Writing utensils made of fibres; Clips for paper [stationery]; Moisteners [office requisites]; Sealing wafers; Sealing compounds for stationery purposes; Sealing stamps; Seals for the office; Seals [stationery]; Angle plotters [drawing instruments]; School writing books; Paper name badges; Postcards; Copybooks; Writing books; Writing or drawing books; Stamp stands; Envelopes; Register files; Folders; File guides; Envelopes for stationery use; Index files; Inking sheets for duplicators; Blackboard rulers; Radiograms (Paper for -); Notebook paper; Notepaper; Paper party decorations; Paper badges; Labels of paper; Paper identification tags; Paper picture mounts; Paper folders; Writing paper; Envelope paper; Plotting papers [graph paper as finished products]; Paper for wrapping books; Headed notepaper; Laminated paper; Office paper stationery; Knives (Paper -) [office requisites]; Letter openers of precious metal; Stationery (Cabinets for -) [office requisites]; Document portfolios; Starch paste [adhesive] for stationery or household purposes; Self-adhesive tapes for stationery use; Spirit gum for stationery purposes; Adhesive corners for photographs; Adhesive tapes for stationery or household purposes; Double sided adhesive tapes for household use; Double sided adhesive tapes for stationery use; Adhesive packaging tapes; Red algae gelatine glue, for stationery or household purposes (funori); Glue pens for stationery purposes; Adhesives for stationery; Adhesives for art use; Paste for handicraft, for stationery or household purposes (banjaku-nori); Glues for office use; Paper carton sealing tape; Gummed tape [stationery]; Paper tapes; Airtight packaging of paper; Airtight packaging of cardboard; Packaging material made of starches; Collapsible boxes of paper; Collapsible cardboard boxes; Absorbent sheets of paper or plastic for foodstuff packaging; Viscose sheets for wrapping; Cushioning or padding made of paper for packing purposes; Paperboard trays for packaging food; Bows for decorating packaging; Decorative paper bows for wrapping; Decorative wrapping paper; String dispensers for use in packaging; Cardboard containers; Blister cards; Wrappers [stationery]; Brown paper for wrapping; Containers of paper for packaging purposes; Cardboard gift boxes; Paper bags; Wrapping foils for books; Gift wrap; Food wrappers; Plastic wrap; Plastic gift wrap; Plastic materials for packaging; Plastic film for packaging; Bags [envelopes, pouches] of paper or plastics, for packaging; Packaging materials made of cardboard; Cardboard packaging; Gift wrap paper; Bags made of paper for packaging; Paper bags and sacks; Paper gift bags; Paper shopping bags; Children’s paint-boxes; Sketch boards; Sketch pads; Drawing pencils; Pencils; Stipple applicators for use by painters; Graining combs; Oil pastels; Lithographic stones; Chalks for drawing; Chalks for artists’ use; Chalk for lithography; Modelling wax, not for dental purposes; Paint boxes and brushes; Artists’ charcoals; Colour sample cards; Drawing instruments; Plastics for modelling; Modelling materials; House painters’ rollers; Paint rollers; Rice paper; Painting sets for artists; Painting sets for children; Drawing sets; Chinese ink sticks; Hand-rests for painters; Colouring pens; India ink pens; Mounting photographs (Apparatus for -); Drawing materials; Tracing cloth; Tee squares [drawing]; Canvas panels for artists; Drawing boards; Drafting squares; Artists’ modelling materials; Artists’ materials; Animation cels; Fluorescent paper; Photograph stands; Rulers; Drafting rulers; Decorative paper centerpieces; Paper drop cloths; Paper chains; Xuan paper for Chinese painting and calligraphy; Art paper; Calligraphy paper; Craft paper; Crepe paper; Transfer paper; Drawing paper; Papers for use in the graphic arts industry; Colored craft and art sand; Coloured pens.

Class 18:        School bags, school knapsacks, bags for sports, backpacks, trolley bags, sports packs, rucksacks, travelling bags, sports packs, school book bags, school satchels, school backpacks, belt bags, shoulder bags, luggage, trunks, briefcases, randsels.

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.

The applicant claims that the goods at issue cannot be similar because the parties in this case are active in completely different trade sectors. In this regard, it must be clarified however that the goods must be compared as they appear on both lists, of the earlier marks and of the contested application.

The comparison of the goods will be carried out for groups of goods with similar characteristics (18/03/2010, C-282/09 P, P@yweb card/Payweb card, EU:C:2010:153, § 37-38; 12/04/2011, T-28/10, Euro automatic payment, EU:T:2011:158, § 54; 17/10/2013, C-597/12 P, Zebexir, EU:C:2013:672, § 26-27).

Contested goods in Class 16

All the contested goods in this class belong in the categories paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; stationery; adhesives for stationery or household purposes; artists’ materials; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus), except passport holders, which do not fall within the natural and usual meaning of any of the general indications contained in the heading.

The opponent’s mark is registered for the general category of stationery and for the goods that fall into this and the other general categories seen above. Consequently, all of the contested goods are either identical or similar to the goods protected by the earlier marks; they are identical either because they are identically contained in both lists (including synonyms) or because the goods overlap or because the goods of the earlier marks include or are included in the goods of the contested mark, and the goods are similar because they have in common several of the criteria used for the finding of similarity, such as the same origin and channels of trade, and the fact that the goods are complementary, or are in competition with each other, and have the same purpose.

For example:

• Stationery is identical because it appears in both lists.
• The contested letter-openers are included in the general category of the opponent’s stationery; therefore, they are identical.
• The contested paper includes the opponent’s writing paper; therefore, they are identical.
• The contested bags and articles for packaging, wrapping and storage of paper are similar to the opponent’s writing paper, as the goods have the same nature, can have the same origin and can be distributed through the same channels, and they are used by the same end consumers.
• Both the contested dispensers (adhesive tape -) and the opponent’s hole punches for paper are included in the general category of office requisites. These goods are similar because they have the same commercial origin, they are distributed through the same channels and they might be used together with the same purpose by the same consumers.

The contested passport holders are used to store and hold passports and are usually made of metal and/or leather. These goods are similar even if to a low degree to the opponent’s binders and folders, as they can have the same purpose and commercial origins and can be distributed through the same channels.

Contested goods in Class 18

Rucksacks appear identically on both lists and are, therefore, identical.

The contested school bags, bags for sports, trolley bags, travelling bags, school book bags, belt bags, shoulder bags are included in the general category of bags protected by the earlier marks and the goods are, therefore, identical.

The contested school knapsacks, backpacks, sports packs (included twice in the list) school satchels, school backpacks, briefcases, randsels are similar to the opponent’s bags and rucksacks in as much as the goods have the same purpose and they can coincide in end user and distribution channels.

The contested luggage and trunks are similar to handbags of the earlier marks, as the goods have the same purpose and they can coincide in end user and distribution channels.

2. 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 or similar to various degrees are directed at the public at large. The degree of attention is, on the whole, average.

3. The signs

BENCH
Earlier trade marks	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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

None of the elements contained in the marks are meaningful for the non-English-speaking public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that does not speak English.

The marks have no elements that could be considered more dominant than others and, being meaningless, none of the words that they contain are descriptive or weak for the goods at issue.

Visually and aurally, the signs coincide in the presence of the word ‘BENCH’ and differ in the presence in the contested sign of the word ‘WORKSHOP’. They are similar to an average degree on both levels of comparison.

Conceptually, none of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

As seen above, the opposition was originally based not only on Article 8(1)(b) EUTMR but also on Article 8(5) EUTMR; however, as the opponent withdrew its opposition based on Article 8(5) EUTMR and did not claim enhanced distinctiveness of the mark through use, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.

In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

As stated above, the public is composed of average consumers. The signs have in common the word ‘BENCH’, which is distinctive for the goods at issue and plays an independent role in the contested sign. The signs are visually and aurally similar to an average degree and they lack concepts that can help consumers differentiate between them. Consequently, in relation to identical or similar goods (even if some of the goods are similar to only a low degree), the general public with an average degree of attention might think that the goods originate from the same undertaking or economically linked undertakings. Therefore, there is a likelihood of confusion on the part of the non-English-speaking part of the public. 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 declare the contested trade mark invalid.

As earlier European Union trade mark registrations No 7 144 223 and No 3 855 038 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Michele M. BENEDETTI-ALOISI

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.