WBO | Decision 2787326
Date Published: Sep 22, 2017
OPPOSITION No B 2 787 326
Organizacion Mundial de Boxeo, Inc., Plaza El Amal, Suite 214, Jesús T. Piñero, 282, Rio Piedras, San Juan 00917, Puerto Rico (opponent), represented by Tavira y Botella, Velázquez, 80 - 4º Izda., 28001 Madrid, Spain (professional representative).
a g a i n s t
World Beauty Organization (Global) Brand Management Co. Limited, Unit 04, 7/f, Bright Way Tower, No. 33 Mong Kok Rd., Kl, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Teodoru I.P. Srl, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).
On 19/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 787 326 is partially upheld, namely for the following contested goods:
Class 18: Pocket wallets; Travelling bags; Bags for sports; Bags.
Class 25: Girdles; Clothing; Layettes [clothing]; Bathing suits; Swimsuits; Footwear; Headgear for wear; Hosiery; Gloves [clothing]; Turbans; Dresses.
2. European Union trade mark application No 15 677 487 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 677 487, WBO. The opposition is based on European Union trade mark registration No 995 118, . 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 and services
The goods and services on which the opposition is based are the following:
Class 16: Printed publications.
Class 25: Clothing, footwear, headgear.
Class 41: Education; providing of training; entertainment; sporting and cultural activities related to boxing.
The contested goods and services are the following:
Class 3: Make-up; Dentifrices; Potpourris [fragrances]; Ethereal oils; Essential oils; Sandcloth; Abrasive cloth; Shoe cream; Oils for cleaning purposes; Cakes of toilet soap; Cakes of soap; Cleaning preparations; Cosmetic kits.
Class 5: Drugs for medical purposes; Dietetic beverages adapted for medical purposes; Dietetic substances adapted for medical use; Depuratives; Medicines for veterinary purposes; Vaginal washes; Menstruation bandages; Sanitary pads; Antiseptics; Preparations for reducing sexual activity; Lotions for pharmaceutical purposes.
Class 18: Animal skins; Pelts; Pocket wallets; Travelling bags; Trunks [luggage]; Bags for sports; Umbrellas; Canes; Walking sticks; Horse blankets; Gut for making sausages; Bags.
Class 25: Girdles; Clothing; Layettes [clothing]; Bathing suits; Swimsuits; Footwear; Headgear for wear; Hosiery; Gloves [clothing]; Turbans; Dresses.
Class 30: Chocolate-based beverages; Tea; Glucose for culinary purposes; Honey; Propolis; Bee glue; Royal jelly; Sugar; Pastries; Rice cakes; Sago.
Class 44: Health spa services; Visagists' services; Rental of sanitation facilities; Flower arranging; Chiropractic; Nursing, medical; Aromatherapy services; Therapy services; Plastic surgery; Pharmacy advice.
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 and services in Classes 3, 5, 30 and 44
The contested goods and services in these classes are, in essence, cosmetic, cloths or cleaning preparations (Class 3), medical and dietetic preparations and sanitary pads (Class 5), beverages, pastries and sweeteners (Class 30) and spa and various medical services (Class 44). These goods and services do not show any similarity in terms of their nature, usual origin or method of use with the goods and services of earlier mark which belong to the following areas: printed publications (Class 16), clothing, footwear and headgear (Class 25) and educational and entertainment services (Class 41). Furthermore, the goods and services compared are neither in competition nor complementary to one another. Therefore, they are dissimilar.
Contested goods in Class 18
The contested pocket wallets; travelling bags; bags for sports; bags are similar to the opponent’s clothing in Class 25. These goods can have the same producer and share the same distribution channels. They also target the same public and are aesthetically complementary as they can be co-ordinated.
The rest of the contested goods in Class 18, animal skins; pelts; umbrellas; canes; walking sticks; horse blankets; gut for making sausages; trunks [luggage] are dissimilar to all the opponent’s goods and services in Class 16, 25 and 41. These goods and services do not show any similarity in terms of their nature, usual origin or method of use. Furthermore, they are neither in competition nor complementary to one another.
Contested goods in Class 25
Clothing; footwear are identically contained in both lists of goods.
The contested headgear for wear is included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested girdles; layettes [clothing]; bathing suits; swimsuits; hosiery; gloves [clothing]; turbans; dresses are included in the broad category of the opponent’s clothing. Therefore, they are identical.
- 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 identical or similar are directed at the public at large.
The degree of attention is considered to be average.
- The signs
WBO | |
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 verbal elements in the earlier mark have a clear meaning except for the common element ‘WBO’ 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 a figurative mark with the verbal elements, ‘DIGNITY’,‘DEMOCRACY’,‘HONESTY’,‘WBO’, ‘WORLD’, ‘BOXING’ and ‘ORGANIZATION’. The three letter word ‘WBO’ is in brown capital bold letters located in the centre of the mark with a blue circle with white lines as a background. Under the word ‘WBO’, in smaller capital letters, are the words ‘WORLD’, ‘BOXING’ and ‘ORGANIZATION’. On top of the circle, in small capital letters are the words ‘DIGNITY’, ‘DEMOCRACY’ and ‘HONESTY’, each word separated with a red dot. Underneath the blue circle are two red boxing gloves crossed over each other. The top three words will be understood in their English lexical meaning however they are considered to be distinctive as they have no meaning in relation to the relevant goods. Considering its placement, the three letter word ‘WBO’, will be perceived as an acronym of the three words located underneath, ‘WORLD’, ‘BOXING’ and ‘ORGANIZATION’. These three words will be understood as a world boxing organization and has no meaning in regards to the relevant goods and is therefore distinctive. The word ‘WBO’ might be perceived as an acronym for a world boxing organisation however as with as stated above, it has no meaning and is therefore distinctive. Furthermore, ‘WBO’, is not considered to be an established acronym. In any event, the verbal element ‘WBO’, due to its size and position, is clearly dominant (visually eye-catching) and will be the element that first catches and retains the consumers’ attention.
The contested sign is a word mark, ‘WBO’. The three letter combination will not be associated with any meaning and is therefore distinctive.
Visually, the signs coincide in the three letter word ‘WBO’ which is the dominant element of the earlier mark and the sole element of the contested sign. They differ in the additional verbal and figurative elements of the earlier mark. However, 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). Therefore, the figurative aspects of the earlier mark have less impact. Moreover, the additional verbal elements of the sign are smaller and less eye-catching than the word ‘WBO’. In addition, the dominant element of the earlier mark and the whole contested sign is identical.
Therefore, the signs are visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WBO’, which is the dominant element of the earlier mark and the sole element of the contested sign. The pronunciation differs in the sound of the additional verbal elements, if pronounced at all, due to their minor size, position and the dominant character of the element ‛WBO’ in the earlier mark. As a result it is likely that the mark will be referred to aurally as just ‛WBO’.
Therefore, the signs are aurally similar to at least an average degree.
Conceptually, although the public in the relevant territory will perceive the meanings of the verbal and figurative element of the earlier mark, as explained above, the other sign has no meaning in that territory. Notwithstanding this, the contested sign could be referring to the same meaning as the earlier sign as they both contain the acronym ‛WBO’ and therefore the signs are conceptually similar to a low 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 trade mark as a whole has no meaning for any of the goods in question from the perspective of the English-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some less distinctive elements as mentioned above in section c).
- 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 of art. 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar. The goods are directed at the public at large with a degree of attention that is considered to be average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to at least an average degree and conceptually similar to a low degree.
The contested sign is included entirely as the dominant element in the earlier mark. The differences between the signs are confined to figurative elements that have less impact and verbal elements that are smaller and therefore less eye-catching.
Account must be 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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the 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 those of the earlier trade mark.
The rest of the contested goods and services 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 and services cannot be successful.
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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Begoña URIARTE VALIENTE | Benjamin Erik WINSNER | Adriana VAN ROODEN |
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.