Decision on Opposition No B 2 778 820 page: 3 of 7
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 earlier mark and the verbal element of the contested sign do not have a meaning
for the public in the relevant territory and are therefore, distinctive. The figurative
element of the contested sign may be perceived as a stylised representation of a
cat’s head or some sort of a mask. The latter element, being placed on top of the
verbal element and also due to its size as compared to the verbal element can be
identified as the dominant element in the composition of the contested sign. It is also
distinctive in relation to the goods in Class 25.
However, the verbal element ‘bubba’ is in no way negligible or to be disregarded
because of any other reasons. On the contrary – it is to be recalled that 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).
Visually, the signs coincide in the letters ‘b*b*a’. They differ in their second letters ‘I’
of the earlier vs ‘u’ of the contested sign and the doubled letter ‘b’ and the figurative
element of the contested sign which do not have a counterpart in the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, both signs will be pronounced in two syllables, namely /BI-BA/ and /BUB-
BA/ respectively, where the only difference is in the sound of the vowels /I/ and /U/. It
is to be noted that the latter are close, short vowels which determines the same
rhythm and intonation in the pronunciation of the signs.
Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning
of the figurative element of the contested sign as explained above, the earlier sign
has no meaning in that territory. Since one of the signs will not be associated with
any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 trade mark enjoys a high degree of
distinctiveness as result of its long standing and intensive use in Germany in
connection with clothing. This claim must be properly considered given that the
distinctiveness of the earlier trade mark must be taken into account in the
assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark,
the greater will be the likelihood of confusion, and therefore marks with a highly
distinctive character because of the recognition they possess on the market, enjoy