R.B. | Decision 2580903 - BAROCCO ROMA S.r.l. Unipersonale v. Rudolf Böckenholt GmbH & Co. KG

Date Published: Sep 28, 2017

OPPOSITION No B 2 580 903

Barocco Roma S.R.L., Unipersonale, Via Santo Spirito n. 10, 20121 Milano (MI),  Italy (opponent), represented by Bugnion S.P.A., Via Sallustiana, 15, 00187 Roma,

Italy (professional representative)

a g a i n s t

Rudolf Böckenholt Gmbh & Co. KG, Raiffeisentr. 5, 48346 Ostbevern, Germany (applicant), represented by Ostriga Sonnet Wirths & Vorwerk, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 580 903 is upheld for all the contested goods and services, namely:

Class 9:         Bags, suitcases, cases, for communications and data processing equipment, in particular for mobile telephones, radio equipment; Bags, Cases, Suitcases, Belts for optical apparatus and Instruments, In particular binoculars, Telescopes, Optical sights, Night vision devices; Cases, Bags, Suitcases, Belts for scanners and Cameras.

Class 18:         Casual bags, Luggage boxes, cases, lashes and Luggage belts; All the aforesaid goods included in this class.

Class 25:         Waist belts, Waist belts, Stocking suspenders.

Class 40:         Development and manufacture of cases, suitcases, bags, straps and carrying straps of leather, imitations of leather, substitute leather, artificial and natural fibres, in particular for electric and hand-operated tools, electric and electronic equipment and instruments, medical equipment and instruments, optical equipment and instruments.

2.        European Union trade mark application No 14 253 587 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 253 587, namely against some goods in Class 9 and all goods and services in Classes 18, 25, 40. The opposition is based on, inter alia, Italian trade mark registration No 1 605 228. 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 Italian trade mark registration No 1 605 228.

1. The goods and services

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

Class 9:         Spectacles, spectacle frames and accessories therefor, including cases and chains.

Class 18:         Goods made of leather, skins and imitations of leather and skins, including bags, handbags, travelling bags, card cases (wallets) and purses, umbrellas and leatherware in general.

Class 25:         Clothing for men, women and children, including dresses, skirts, jackets, trousers, shirts, sports jerseys, overcoats, underwear, swimsuits, suits, sportswear and leisurewear, headscarves, neckties, gloves, hats, belts, clothing of leather, furs, shoes and boots.

Class 35:        Advertising, business management assistance, commercial or industrial management assistance, television advertising and advertising via data transmission and computer networks, preparation and dissemination via the press, radio, video and data transmission networks of communications and notices to the public of an advertising or promotional nature relating to goods or services, bringing together, display and presentation, including via data transmission networks, of goods (excluding the transport thereof) enabling customers to view and purchase these goods, organisation of trade fairs, exhibitions and events for commercial or advertising purposes.

The contested goods and services are the following:

Class 9:         Bags, suitcases, cases, for communications and data processing equipment, in particular for mobile telephones, radio equipment; Bags, Cases, Suitcases, Belts for optical apparatus and Instruments, In particular binoculars, Telescopes, Optical sights, Night vision devices; Cases, Bags, Suitcases, Belts for scanners and Cameras.

Class 18:         Casual bags, Luggage boxes, cases, lashes and Luggage belts; All the aforesaid goods included in this class.

Class 25:         Waist belts, Waist belts, Stocking suspenders.

Class 40:         Development and manufacture of cases, suitcases, bags, straps and carrying straps of leather, imitations of leather, substitute leather, artificial and natural fibres, in particular for electric and hand-operated tools, electric and electronic equipment and instruments, medical equipment and instruments, optical equipment and instruments.

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’, ‘including’, used in the lists of goods and services, indicate that the specific goods and services 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).

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 9

The contested bags, suitcases, cases, for communications and data processing equipment, in particular for mobile telephones, radio equipment; bags, cases, suitcases, belts for optical apparatus and instruments, in particular binoculars, telescopes, optical sights, night vision devices; cases, bags, suitcases, belts for scanners and cameras are protective covers, containers and cases for a variety of goods in a similar manner as the opponent’s accessories therefor [of Spectacles, spectacle frames], including cases and chains. The goods have therefore similar nature, purpose and methods of use, may coincide in manufacturers and consumers. The goods are similar.

Contested goods in Class 18

The opponent’s goods made of leather, skins and imitations of leather and skins, including bags, handbags, travelling bags, card cases (wallets) and purses, umbrellas and leatherware in general and the contested casual bags, luggage boxes, cases, lashes and luggage belts; All the aforesaid goods included in this class coincide in their nature. Their purpose is also the same in the sense that they various types of leather goods for carrying and keeping things. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested goods in Class 25

The contested waist belts, waist belts, stocking suspenders are included in the broad categories of, or overlap with, the opponent’s clothing for men, women and children, including belts. Therefore, they are identical.

Contested services in Class 40

The contested development and manufacture of cases, suitcases, bags, straps and carrying straps of leather, imitations of leather, substitute leather, artificial and natural fibres, in particular for electric and hand-operated tools, electric and electronic equipment and instruments, medical equipment and instruments, optical equipment and instruments are similar to a low degree to spectacles, spectacle frames and accessories therefor, including cases and chains in class 9 as they can coincide in end user and distribution channels. Furthermore they are complementary.

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 and services found to be identical or similar are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention is average.  

3. The signs

	R.B.
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 element ‘RB’ of the earlier figurative mark will be understood as an acronym depicting the initials for the following term ‘roccobarroco’, constituting a name (Rocco Barocco). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, RB is distinctive. The letters RB overshadow the other verbal element of the mark (‘roccobarroco’) by virtue of their central position and size and are the visually dominant element of the earlier trade mark.

The contested word mark contains letters R and B followed by full stop marks. The mark has no meaning for the relevant public and is, therefore, distinctive. It is noted, that in the case of word marks, it is the word that is protected and not its written form.

Visually and aurally, the signs coincide in the letters RB forming the first and more dominant element of the earlier mark and constituting the contested mark. However, they differ in the less dominant element ‘roccobarroco’ and stylisation of the earlier mark and in the punctuation marks of the contested mark.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In the earlier mark the letters RB will be perceived as initials because of the name below these letters, and in the contested mark they are perceived the same way, because it is typical when the letters are followed by the dots (especially in this market sector) they are considered as initials of the designer or manufacturer, and therefore the marks are conceptually similar to an average degree as far as they reproduce the same initials.

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The marks have been found to be similar in respect of letters RB, being also the dominant element in the earlier mark. Although the earlier sign further contains an element ‘roccobarroco’ which have no counterpart in the other mark and which will not go unnoticed by consumers, the impact of the letters RB, seen as initials of the name later referred to, in both signs, is remarkable. These circumstances contribute to the overall similarity between the marks.

Account is taken of the fact that 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). It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Bearing in mind the foregoing, it is considered that the dissimilarities between the signs are not enough to counteract the similarities.

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods and services which are identical and similar to various degrees come from the same or economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 605 228. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Italian trade mark registration No 1 605 228 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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

José Antonio GARRIDO OTAOLA

Erkki MÜNTER

Irina SOTIROVA

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.