OPPOSITION No B 2 526 922

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Teidem B.V., Touwbaan 38, 2352 CZ Leiderdorp, The Netherlands, (applicant), represented by Arnold & Siedsma, A.J. Ernststraat 595F, 1082 LD Amsterdam, The Netherlands (professional representative).

On 23/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 526 922 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 794 921. The opposition is based on Spanish registrations No 2 057 068 and No 2 643 080, both for the figurative mark , and on European Union trade mark registration No 8 619 331 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade marks No 2 057 068 and No 2 643 080 and European Union trade mark No 8 619 331 on which the opposition is based.

In the present case the contested trade mark was published on 10/03/2015.

Earlier European Union trade mark registration No 8 619 331 was registered on 29/03/2010. Therefore, as already notified by the Office to the parties on 29/01/2016, the request for proof of use is inadmissible with regard to this earlier mark.

As regards earlier Spanish trade marks No 2 057 068 and No 2 643 080, the request was filed in due time and is admissible as these rights were registered more than five years prior to the relevant date mentioned above.

On 29/01/2016, the opponent was given two months to file the requested proof of use, namely on or before 03/04/2016. As requested by the opponent, this time limit was extended until 03/06/2016

The opponent did not furnish any evidence concerning the use of the earlier Spanish trade marks No 2 057 068 and No 2 643 080. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as so far these earlier Spanish trade marks No 2 057 068 and No 2 643 080 are concerned.

In view of the foregoing, the examination of the opposition will continue only on the basis of European trade mark No 8 619 331.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR - European Union trade mark registration No 8 619 331

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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing; headgear.

Clothing; headgear are identically contained in both lists of goods.

2. 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. The degree of attention is considered average.

3. The signs

	BXS
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 earlier mark is a figurative mark consisting of a naïve drawing of two children of different sexes placed on a sailing boat on which are written on two lines the verbal elements ‘Mini’ and ‘Bts’ in a fancy white title case lettering. On each side of the boat, are depicted undulating lines symbolising a stream of water. At the bottom of the sign appear in a small lower case lettering the verbal elements ‘life is beautiful if its coloured’ written in two lines.

The contested sign is a word mark consisting of the letters ‘BXS’.

The contested mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching).

The element ‘Mini’ of the earlier mark denotes a miniature version of something. The figurative elements depicting faces will be associated with children of different sexes. Bearing in mind that the relevant goods are clothing and headgear, these elements are weak for these goods, because they suggest their small size and that they are designed for children.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) although the words ‘life is beautiful if its coloured’ are depicted in a smaller typeface and are placed at the bottom of the sign. Indeed, this phrase is made up of six words placed on two lines and, even if they are not so easily legible, they occupy a significant space in the sign. On the other hand, they will be understood by part of the relevant public, mainly the English-speaking consumers and those with a sufficient knowledge of English. For these consumers, this phrase has a low degree of distinctiveness, because it is laudatory to the extent that it evokes that the goods are coloured and that consuming these goods makes life beautiful.

Visually, the signs coincide in the letters ‘B*S’. However, they differ in the second letter ‘X’ of the contested sign and in all the other elements of the earlier mark, namely the verbal elements ‘Mini’ and ‘life is beautiful if its coloured’, the second letter ‘t’ of the element ‘Bts’, as well as the figurative elements already described above.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The contested sign has only three letters and only two, namely the first and the last ones, coincide with the element ‘Bts’ of the earlier mark.

Moreover, the first verbal elements of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Although some of the additional elements in the earlier mark have a limited impact because they are weak, the visual differences between the signs are so many that their respective weight in the comparison is much higher than the coincidences. As regards the earlier mark, the coinciding letters are drowned in sign.

Therefore, it is concluded that the signs are visually lowly similar.

Aurally, the earlier mark will be pronounced ‘MINI-B-T-S’ as it is unlikely that the other verbal elements ‘life is beautiful if its coloured’ will be uttered by the relevant public, because they are hardly legible and have a low distinctive character. Therefore, 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 /B*S/, present identically in both signs. The pronunciation differs in the sound of the second letter /X/ of the contested sign and /T/ of the verbal element ‘BTS’ in the earlier mark. The pronunciation of the signs also differs in the sound of the initial letters /MINI/ of the earlier mark. The figurative elements of the earlier mark are not subject to a phonetic assessment.

Therefore, the signs are aurally lowly similar.

Conceptually, while the public in the relevant territory will perceive different concepts in the earlier mark as already indicated above, the other sign lacks any 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.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The goods are identical. They target the public at large and the degree of attention is average. The signs are conceptually not similar. From the visual and aural points of view, a similarity has been found, but only to a low degree. The contested sign consists of three letters and only two of them coincide with one of the several words of the earlier mark. Although some of the additional verbal and figurative elements in the earlier mark have a limited impact, the differences between the signs are so important and numerous that the coinciding letters are drowned in the earlier sign and it is not likely that consumers confuse the contested sign with the earlier mark when confronted with the former.

Finally, it must be pointed out that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional/different verbal/figurative elements are particularly relevant when assessing the likelihood of confusion between them.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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

Chantal VAN RIEL

Benoit VLEMINCQ

Martina GALLE

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.