OPPOSITION No B 2 321 845

Calida Holding AG, Bahnstr., 6208 Oberkirch, Switzerland (opponent), represented by Jonas Rechtsanwaltsgesellschaft MBH, Hohenstaufenring 62, 50674 Cologne, Germany (professional representative)

a g a i n s t

Poree Havlik, 5 rue Théodule Villeret, 95130 Le Plessis Bouchard, France (applicant), represented by Cabinet Malemont, 91 avenue Kléber, 75116 Paris, France (professional representative)

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 321 845 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 12 223 723, namely against all the goods in Class 25. The opposition is based on Community trade mark registration No 177 956. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 25: Clothing

The contested goods are the following:

Class 25: Clothing for children, bibs (except of paper), bath robes for children.

The contested Clothing for children, bibs (except of paper), bath robes for children are included in the broad category of the opponent’s goods clothing. The goods are identical.

2. The signs

CALIDA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

In word marks, in principle, the word as such is protected, not its written form. Therefore, it is irrelevant whether the earlier mark is depicted in lower or upper case letters.

Visually, the signs are similar to the extent that they coincide in the letters ‘CALI-’. The marks differ in their endings ‘-DA’ and ‘-N’, and in the additional word ‘BABY’ included in the contested mark. The marks also differ in the figurative element, namely a green bubble.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‛CALI-’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛-DA’ of the earlier sign and ‘-N’ of the contested mark and in the pronunciation of the word ‘BABY’ of the contested mark.

Conceptually, the word ‘CALIDA’ of the earlier mark means ‘hot’ in Spanish and the word ‘CALIN’ of the contested mark means ‘a hug’ in French. For the remaining part none of the mentioned words has a meaning.

The public in the relevant territory will understand the word ‘BABY’ of the contested sign as ‘a new-born or recently born child’ either because it belongs as such to the vocabulary in its official language (in English, German or Dutch, for example) or because it is very close to the equivalent word in its official language (‘bébé’ in French, ‘bebé’ in Spanish and Portuguese, for example). Also the public that does not understand English will know the basic word ‘baby’ due to its widespread use throughout the EU.

The signs are conceptually dissimilar for the Spanish speaking part of the public. For the remaining part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The element ‘BABY’ of the contested mark will be understood as ‘a new-born or recently born child’. Bearing in mind that the relevant goods are clothing for children, bibs (except of paper), bath robes for children, it is considered that this element is weak for these goods, as it implies that these goods are intended for babies. The public understands the meaning of this element and will not pay as much attention to this weak element as to the other more distinctive element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. 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 with an average degree of attentiveness.

6. Global assessment, other arguments and conclusion

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness.

It is a basic principle of trade mark law that signs which are more distinctive, either inherently or as a consequence of extensive use and exposure to the public, enjoy a greater scope of protection.

In the present case, the goods under comparison are identical.

The similarities between the signs lie in the sequence of the letters ‘CALI-’. However, the marks will be easily differentiated by the relevant public. This is because the additional elements in the contested mark carry significant weight for different reasons, as will be seen below.

First of all, the signs differ in their last letters ‘-DA’ of the contested mark and ‘-N’ of the earlier mark. The earlier mark is pronounced in two syllables ‘CA-LIN’ while the contested mark is pronounced in five syllables ‘BA-BY CA-LI-DA’. The contested sign contains the additional word ‘baby’ which is placed at the beginning of the contested sign and despite its weak nature in relation to the relevant goods, it still creates an important visual and aural difference between the signs, bearing in mind that the beginning of signs is usually the part of the trade mark that attracts the consumer’s attention first.

Furthermore, the contested sign contains a noticeable figurative element which will further add to a different overall impression of the signs.

Finally, as set out in the conceptual comparison of the signs, account should also be taken of the fact that the signs are either conceptually dissimilar or conceptually not similar for all the relevant public in the European Union.

Even considering that consumers only rarely have the chance to make a direct comparison between the different marks, the differing elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, including the likelihood of association. Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1)(b) CTMR it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of reputation.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rhys MORGAN

Janja FELC

Justyna GBYL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.