OPPOSITION No B 2 440 983

Fabrimode, naamloze vennootschap, Theo Nuyttenslaan 5, 8540 Deerlijk, Belgium (opponent), represented by Bap IP BVBA – Brandsandpatents, Pauline Van Pottelsberghelaan 24, 9051 Sint-Denijs-Westrem (Gent), Belgium (professional representative)

a g a i n s t

BO & BO -Importação e Exportação, Lda, Rua da Palma, n.º 212, 1100-394 Lisboa, Portugal (applicant), represented by Pedro Oliveira, Avenida Ressano Garcia, n.º 36, 2.º Dto., 1070-237 Lisbon, Portugal (professional representative).

On 22/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 440 983 is upheld for all the contested goods.

2. Community trade mark application No 12 792 107 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 792 107. The opposition is based on, inter alia, Benelux trade mark registration No 877 025. The opponent invoked Article 8(1)(b) and 8(5) 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.

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 Benelux trade mark registration No 877 025.

1. The goods

Before starting with the comparison of the goods covered by the earlier mark Benelux mark and the contested sign, it must be noted that the applicant’s request for proof of use is inadmissible. According to Article 42(2) and (3) CTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark. In the present case the contested trade mark was published on 28/08/2014 and earlier Benelux trade mark registration No 877 025 was registered on 24/02/2010. Therefore, the mark was registered for less than five years at the moment of publication of the contested mark and is under no obligation of use yet.

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing; footwear.

The contested goods are the following:

Class 25: Footwear.

Contested goods in Class 25

Footwear is identically contained in both lists of goods.

2. The signs

BEL & BO
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

Likelihood of confusion must not exist in all Member States and in all linguistic areas of the Benelux. It is a result of the unitary character of the Benelux trade mark that an earlier Benelux trade mark has identical protection in all Member States. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy judgment of 07/09/2006, C-108/05, ‘EUROPOLIS’).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-French-speaking part of the relevant public.

The earlier mark is a word mark consisting of the words ‘BEL & BO’ conjoined by an ampersand. In this regard it is worth noting that in the case of word marks, it is the word as such that is protected, and not its written form. Therefore, it is irrelevant whether the word is presented in upper or lower case.

The contested sign is a figurative mark consisting of the words ‘bo & bo’ conjoined by an ampersand and depicted in white lower case letters of a particular italicised typeface against a yellow rectangular background.

Visually, the signs coincide in the following sequence: ‘B*(*) & BO’ which gives the marks a rather similar overall impression both consisting of two short verbal elements which start with the letter ‘B’, are conjoined by an ampersand and coincide in their last letter ‘O’. They slightly differ in the length of their first word element consisting of three letters in the earlier mark and two in the contested sign, as well as in the endings of these first words, being the letters ‘EL’ in the earlier mark and the letter ‘O’ in the contested sign. Furthermore, they differ in the design of the contested mark.

Aurally, the signs share a similar rhythm and intonation as they are both pronounced in three syllables, namely BEL-&-BO and BO-&-BO, the first of which sound similar, due to the shared letter ‘B’, and the second and third of which sound identical, ‘&-BO’. The pronunciation merely differs in the sound of the final letter(s) of their first syllable, that is the letters ‘EL’ in the earlier mark and the letter ‘O’ in the contested sign.

Conceptually, the non-French speaking part of the relevant public is likely to perceive both signs as invented terms. Even if the elements ‘BEL’ and ‘BO’ as such have a meaning in Dutch, ‘BEL’ meaning ‘bell’ and ‘Bo’ being an uncommon male first name, the conjunction of a bell and a first name does not make any sense and therefore these elements will be perceived as invented terms. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks under comparison have no elements which could be considered clearly more distinctive or 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’).

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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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. Taking into account the nature of the conflicting goods, the level of attention of the relevant consumer is normal.

6. Global assessment, other arguments and conclusion

In the present case it must be recalled that the earlier mark enjoys a normal degree of distinctiveness and is protected for goods which have been found identical to the contested footwear.

The marks have been considered similar from a visual and an aural perspective. The coincidence in the sequence ‘B*(*) & BO’ gives the marks a rather similar overall impression both consisting of two short verbal elements which start with the letter ‘B’, are conjoined by an ampersand and coincide in their last letter ‘O’. Also the fact that the coincidences are located at the beginning and ending of the marks and have the same alliterating beginnings, gives the signs such a similar overall appearance, rhythm and intonation that the small difference in their central letters is likely to go unnoticed.

Although it must be observed that the marks visually further differ in the design of the contested sign and that in the case of footwear the visual aspect plays a greater role in the global assessment of the likelihood of confusion (judgment of 06/10/2004, joined cases T‑117/03, T‑119/03 and T‑171/03, ‘NLSPORT’, paragraph 50), the typeface and orange background of the contested sign is not that special that it will detract the consumers’ attention away from the word they are intended to embellish.

Furthermore, it is established case law that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 30).

Therefore, in the light of the foregoing considerations, and having regard to the principle of interdependence – according to which a higher degree of similarity between the conflicting goods counteracts a lower degree of similarity between the signs and vice versa – , it is reasonable to find that the non-French speaking part of the public is likely to confuse the marks or believe that the goods in question come from the same undertaking or, as the case may be, economically linked undertakings. In the present case, these consumers may think, for instance, that the applicant’s sign refers to a new product line of the opponent’s footwear.

Considering all the above, there is a likelihood of confusion on the non‑French speaking part of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 877 025. It follows that the contested trade mark must be rejected for all the contested goods.

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 extensive use/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 Benelux trade mark registration No 877 025 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR.

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 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), (6) and (7)(d)(i) CTMIR, 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

Saida CRABBE

Adriana VAN ROODEN

Dorothée SCHLIEPHAKE

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.