OPPOSITION No B 2 468 711

Bop LLC, Attn: Trademarks, 1245 East Washington, Suite 300, Madison, Washington 53703, United States of America (opponent), represented by Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

New Media Vertriebsgesellschaft, Neuer Markt 1, 1010 Vienna, Austria and EBC Consulting AG, Schürliweg 4, 6062 Wilen, Switzerland (applicants).

On 28/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 468 711 is upheld for all the contested goods.

2. Community trade mark application No 13 381 009 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 381 009. The opposition is based on Community trade mark registration No 5 796 289. 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 and services

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

Class 25: Clothing, footwear, headgear; clothing, namely shirts, blouses, t-shirts, sweatshirts, pants, jeans, slacks, shorts, dresses, skirts, undergarments, lingerie, socks, shoes, hats, gloves, scarves, sweaters, jackets, coats, bathing suits, bath robes, pyjamas, slippers, belts, neckties.

Class 35: Advertising; business management; business administration; office functions; computerized searching, ordering services featuring general merchandise and general consumer goods; dissemination of advertising for others via an on-line electronic communications network; providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; database aggregation, integration and management services; association services, namely providing opportunities for exchange of information and conversation regarding a wide variety of topics by means of product reviews; providing an interactive computer database featuring automatically updating address book, personal planner, date reminder, travel planner, and alumni and professional group links, via global computer networks; searching and retrieving information, sites, and resources relating to clothing and accessories, including footwear, jewellery and handbags, located on computer networks for others; directory services to help locate people, places, organizations, phone numbers, network home pages, and electronic mail addresses; auction services; auctioneering; providing classified advertising services; retail store services in the field of clothing and accessories, including footwear, jewellery and handbags; retail sales services in the field of clothing and accessories, including footwear, jewellery and handbags provided by means of a global computer network; on-line retail and wholesale distributorship services in the field of clothing and accessories, including footwear, jewellery and handbags featuring general merchandise and general consumer goods; automated and computerized trading services; on-line trading services relating to clothing and accessories, including footwear, jewellery and handbags; computer services, namely services to facilitate the sales of goods and services via the global electronic communications network.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; providing fashion information; providing information about fashion.

The contested goods are the following:

Class 14: Ornaments [jewellery, jewelry (Am.)].

Class 18: Casual bags.

Class 25: Evening wear.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates 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’).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 Classes 14 and 18

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested ornaments [jewellery, jewelry (Am.)] in Class 14 and casual bags in Class 18 are similar to a low degree to the opponent’s retail store services in the field of clothing and accessories, including footwear, jewellery and handbags.

Contested goods in Class 25

The contested evening wear is included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

2. The signs

SHOPBOP	shopbox
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters, or in a combination thereof.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on those parts of the relevant public for which neither of the marks has a meaning, such as the Bulgarian-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘SHOPBO*’, which appear in the same order in both marks. However, they differ in their last letters, ‘P’ in the earlier mark and ‘X’ in the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SHOPBO*’, present in both signs, and to that extent the signs are aurally similar. The marks are composed of the same number of syllables and, therefore, they have the same rhythm. The pronunciation differs in the sound of the signs’ last letters, ‘P’ in the earlier mark versus ‘X’ in the contested sign.

Conceptually, neither of the signs has a meaning for the Bulgarian-speaking public in the relevant territory. 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 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.

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 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. 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 target the public at large. The relevant public’s degree of attention will be average.

6. Global assessment, other arguments and conclusion

The contested goods are identical or similar to a low degree to the goods and services covered by the earlier mark.

The signs are similar to the extent that the earlier mark, ‘SHOPBOP’, and the contested mark, ‘SHOPBOX’, have six out of their seven letters in common, displayed in an identical order and forming the beginning of these marks. Account should be taken of the fact that the relevant public reads from left to right. The letters, ‘SHOPBO*’, which the signs have in common, are located in the first and, therefore, most conspicuous part of the signs and will be the part that first attracts the consumer’s attention. The marks differ in their last letters only, namely ‘P’ in the earlier mark and ‘X’ in the contested sign.

Moreover, as mentioned previously, the words ‘SHOPBOP’ and ‘SHOPBOX’ will not be associated with any meaning and will be perceived as fanciful and fully distinctive terms by the relevant Bulgarian-speaking public.

Taking into account all of the above, the marks under comparison convey similar overall impressions for the Bulgarian-speaking part of the relevant public.

Account must be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the low degree of similarity between some of the goods and services under comparison is offset by the significant visual and aural similarities between the marks and the similar overall impressions they convey.

As average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Opposition Division considers that the similarities between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association, between the marks on the part of the Bulgarian-speaking public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As already explained in section b) of the present decision, likelihood of confusion for only a part of the public in the relevant territory of the European Union is sufficient to reject the contested trade mark.

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 applicants are the losing parties, they 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

Andrea VALISA

Karin KUHL

Michele M. BENEDETTI-ALOISI

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.