BILLIONBE | Decision 2750647
Date Published: Sep 22, 2017
OPPOSITION No B 2 750 647
Billionaire Trademarks B.V., Silodam 187, 1013 AS Amsterdam, The Netherlands (opponent), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative)
a g a i n s t
Magdolna Soos, Budapest, Károly krt. 25., 1075, Hungary (applicant), represented by BWSP Gobert & Partners Attorneys at law, Budapest, Róbert Károly krt. 70-74., “B” Bldg. 8th floor, 1134, Hungary (professional representative).
On 18/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 750 647 is upheld for all the contested goods.
2. European Union trade mark application No 15 370 471 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods in Class 25 of European Union trade mark application No 15 370 471 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 9 087 20A ‘BILLIONAIRE’ designating the European Union. 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 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 international trade mark registration No 9 087 20A designating the European Union.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing for gymnastics; leather and imitation leather clothing; coats; bath robes; footwear; short-sleeved shirts, shirts; headgear; overcoats; bathing suits; ties, scarves; jackets; skirts; raincoats; ready-made clothing; knitwear (clothing); hosiery; jerseys, trousers, pullovers; sandals, gym shoes, beach shoes; outerwear, dresses; clogs (footwear).
The contested goods are the following:
Class 25: Clothing.
The applicant argues that the goods on which the opposition is based are luxury products that are part of a male clothing line and typically sold in stores, which has an impact on the purpose of those goods and renders them quite distinct from the contested goods. In contrast, the applicant’s goods are female clothes that are available to consumers only through online shop platforms.
The Office points out that the applicant’s assertions regarding the method of sale and the target market are irrelevant to the present assessment. The comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant to the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s arguments in that regard must be set aside.
Taking the above into account, the contested clothing includes, as a broader category, the opponent’s clothing for gymnastics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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. The degree of attention is considered to be average.
- The signs
BILLIONAIRE | |
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). 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.
All the elements/components of the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is the word mark ‘BILLIONAIRE’. The contested sign is a figurative mark composed of the verbal element ‘BILLIONBE’ written in black upper case letters placed in the middle of a powder-pink rectangle. Above the verbal element ‘BILLIONBE’ is depicted a reversed capital letter ‘B’ next to a lower case letter ‘b’, both in black.
The earlier mark is the English word ‘BILLIONAIRE’, which will be understood by the relevant public as referring to, inter alia, ‘a person whose assets are worth over a billion of the monetary units of his or her country’ (information extracted from Collins English Dictionary on 18/09/2017 at https://www.collinsdictionary.com/dictionary/english/billionaire). The applicant argues that the word ‘BILLIONAIRE’ is not distinctive, as the clothing goods at issue mainly target male customers who can be inspired by the brand to be a ‘BILLIONAIRE’. The Opposition Division does not concur with the applicant’s position, as the meaning of ‘BILLIONAIRE’ does not have any close relation to clothing; the word is not descriptive, allusive or otherwise weak for the relevant goods. To that extent, it is distinctive.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In this sense, although the contested sign ‘BILLIONBE’ as a whole has no clear meaning for the relevant public in the relevant territory, the elements ‘BILLION’ and ‘BE’ will be distinguishable as separate elements by the relevant public.
The element ‘BILLION’ will be understood by the relevant public as, inter alia, ‘a number’ (information extracted from Collins English Dictionary on 18/09/2017 at https://www.collinsdictionary.com/dictionary/english/billion) and the element ‘BE’ will be perceived by the relevant public as, inter alia, ‘an auxiliary verb’ (information extracted from Collins English Dictionary on 18/09/2017 https://www.collinsdictionary.com/dictionary/english/be_1). The combination of the elements ‘BILLIONBE’, taken as a whole, lacks any clear or evident meaning. With respect to the goods at issue, this verbal element is not descriptive, allusive or otherwise weak, so it is distinctive.
The figurative component of the contested sign, namely the depiction of the second letter of the alphabet in upper (reversed ‘B’) and lower (‘b’) case letters, constitutes a stylised depiction of the initial letters of the words ‘BILLION’ and ‘BE’, and the public will perceive it as a mere embellishment. Furthermore, the powder-pink background is a basic shape of a rectangle that it is commonly used and performs a purely decorative function within the mark. Consequently, it is considered that these elements have a very limited impact, if any.
Moreover, 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. 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). This principle is fully applicable to the present case, in which the relevant public will clearly read and pronounce the verbal element ‘BILLIONBE’ in the contested sign and will readily use it to refer to the mark.
As regards the dominant elements of the signs, the contested sign has no elements that could be considered clearly dominant over other elements. The earlier mark is a word mark and, as such, lacks dominant elements.
Visually, the signs coincide in the readily identifiable sequence of letters ‘BILLION*E’, present identically in both signs. However, they differ in the penultimate letter of the contested sign, that is, the letter ‘B’ versus the letter ‘R’ of the earlier mark, and the additional eighth and ninth letters, ‘A’ and ‘I’, of the earlier mark. In addition, they differ in the coloured background and the figurative element of the contested sign.
The fact that the signs under comparison have their initial seven-letter sequence in common is of particular importance given that consumers generally tend to focus on the first element of a sign when they encounter a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BILLION’, which will be discerned in both signs. The marks are both pronounced in four syllables, as /BI-LLI-ON-BE/ versus /BI-LLI-ON-AIRE/; therefore, their rhythms and intonations are similar. Since it can be reasonably assumed that the figurative element of the earlier mark – the double letter ‘Bb’, with the initial upper case letter reversed – will most probably not be pronounced by the average consumer, the earlier mark differs in the sound of the letters ‘AIR’ of the earlier mark and the letters ‘BE’ of the contested sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. As the relevant public will separate and distinguish the word ‘BILLION’ in the contested sign, it is clear that the English-speaking public will perceive both the marks as related to the word ‘BILLION’ and, in general, to a large amount of money and/or the concept of a billionaire, which is derived from ‘BILLION’.
Therefore, the signs are conceptually similar to an average degree.
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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods are identical. They target the public at large and the degree of attention is average. The signs are visually and conceptually similar to an average degree and aurally similar to a high degree.
In its observation of 16/03/2017, the applicant argues that regarding clothing products the choice of the item of clothing is generally made visually, so the visual perception of the marks in question will generally take place prior to purchase. The Opposition Division points out that in the clothing industry, even if generally the visual aspect plays a greater role in the global assessment of the likelihood of confusion (and the signs in this case are visually similar to an average degree), oral communication in respect of the product and the trade mark is not excluded. In the present case, the similarity of the respective distinctive elements, together with the fact that the remaining figurative elements of the signs are of less significance, is particularly relevant when assessing the likelihood of confusion between them. Admittedly, the signs show some differences, as indicated in detail in section c) of this decision. However, they are insufficient to outweigh the similarities on all relevant levels of comparison and to enable the relevant public to safely distinguish between them.
In addition, account must also be taken of the fact that, as mentioned by the applicant, 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). This is especially relevant in the present case, where the signs are similar on account of the letter sequence ‘BILLION*E*’, with the main difference found in the middle of the words, namely the letters ‘AIR’ in the earlier mark and the consonant ‘B’ in the contested sign, which will not be immediately detected, since consumers are usually less aware of differences between longer signs.
Considering all the above, and also bearing in mind that the earlier mark has a normal degree of distinctiveness, the Opposition Division finds that there is a likelihood of confusion on the part of the 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 reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 9 087 20A designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.
As the abovementioned earlier trade mark leads 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).
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
Andrea VALISA | Birgit FILTENBORG | Janja FELC |
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.