Butterfly Bird | Decision 2683210 - Tamasu Butterfly Europa GmbH v. Lihong He
Date Published: Sep 28, 2017
OPPOSITION No B 2 683 210
Tamasu Butterfly Europa GmbH, Kommunikationsstr. 8, 47807 Krefeld, Germany (opponent), represented by Röhl - Dehm & Partner, Moritzplatz 6, 86150 Augsburg, Germany (professional representative)
a g a i n s t
Lihong He, No. 152, Mixi Village, Suxi Town, Yiwu City, Zhejiang, People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 683 210 is partially upheld, namely for the following contested goods:
Class 18: Pocket wallets; school bags; handbags; shopping bags; bags [envelopes, pouches] of leather, for packaging; bags; business card cases.
2. European Union trade mark application No 14 828 362 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 some of the goods of European Union trade mark application No 14 828 362, namely against some of the goods in Class 18. The opposition is based on, inter alia, European Union trade mark registration No 12 624 607. 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 European Union trade mark registration No 12 624 607.
- The goods
The goods on which the opposition is based are the following:
Class 18: Casual bags, in particular travelling bags, handbags and sports bags.
The contested goods are the following:
Class 18: Imitation leather; pocket wallets; school bags; handbags; shopping bags; bags [envelopes, pouches] of leather, for packaging; bags; business card cases.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
The contested bags include, as a broader category, the opponent’s casual bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
School bags; handbags; shopping bags overlap with the opponent’s casual bags. Therefore, they are identical.
Pocket wallets; business card cases are considered highly similar to the opponent’s casual bags. These goods have similar purposes and methods of use, as they serve to carry things. They have the same distribution channels, target the same public and are likely to be produced by the same undertakings.
Bags [envelopes, pouches] of leather, for packaging are similar to a low degree to the opponent’s casual bags. As all these goods can be made of leather, they have the same commercial origin. They also have similar natures and purposes.
Imitation leather refers to imitations of the skins of various kinds of animals. These are raw materials. The fact that one product is used for manufacturing another (for example, leather for handbags) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. These goods are therefore dissimilar.
- 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 varying degrees are directed at the public at large.
The degree of attention is average.
- 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.
The verbal elements are meaningless in certain parts of the relevant territory, for example in those Member States where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.
The earlier sign is figurative and it is composed of the word ‘BUTTERFLY’ depicted in standard black upper case characters.
The contested sign is also figurative and it is composed of a depiction of a butterfly on the left, and a series of Chinese characters on the right under which the words ‘BUTTERFLY BIRD’ are placed. All the elements are black and the words ‘BUTTERFLY BIRD’ are depicted in standard title case characters.
The verbal elements of the signs have no meaning for the relevant public and are, therefore, distinctive.
The depiction of a butterfly in the contested sign will be perceived as such by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The marks have no elements that could be considered clearly more distinctive or more dominant than other elements.
Visually, the signs have the element ‘BUTTERFLY’ in common, which is the sole element of the earlier sign, albeit depicted in a different specific, yet standard, typeface in each sign. However, they differ in all the additional, distinctive, elements of the contested sign, none of which has a counterpart in the earlier mark.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BUTTERFLY’, present identically in both signs. The pronunciation differs in the sound of the word ‛BIRD’ of the contested mark, which has no counterpart in the earlier sign.
Therefore, the signs are aurally highly similar.
Conceptually, the verbal elements of the signs are meaningless for the non-English-speaking part of the public. The figurative element of the contested sign depicts a butterfly and will be perceived as such. The Chinese script in the contested sign will not be understood by the public under consideration.
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
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 contested goods are partly identical, partly similar to varying degrees and partly dissimilar, and they target the public at large.
The signs show similarities in the distinctive element ‘BUTTERFLY’, which is the only element of the earlier sign. They differ in the word ‘BIRD’ and the Chinese characters of the contested sign, as well as in its graphic depiction. Despite the stylisation of the verbal elements of the contested sign, the words are easily legible and, therefore, consumers will refer to the sign as ‘BUTTERFLY BIRD’.
The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the goods that are identical or similar to a high degree come from the same undertaking or at least economically-linked undertakings. The Opposition Division considers that the differences between the earlier mark and the contested sign are not sufficient to exclude a likelihood of confusion, as a significant part of the public may believe that the goods found to be identical or similar to varying degrees come from the same undertaking or at least economically-linked undertakings. Since the distinctive element of the earlier mark is an independent element of the contested sign, the public is likely to perceive the contested sign as a variation of the earlier mark.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 found to be identical or similar to varying degrees 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.
The opponent has also based its opposition on the following earlier trade mark:
- European Union trade mark registration No 21 899 for the word mark ‘BUTTERFLY’, registered for sports bags in Class 18.
Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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
Justyna GBYL | Katarzyna ZANIECKA | Martina GALLE |
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.