OPPOSITION No B 3 034 041

Antonio Giménez Ramos, Polígono Industrial El Plà Calle Debanadores, 46870 Ontinyent (Valencia), Spain (opponent), represented by Padima, Explanada de España, nº 11, Piso 1º, 03002 Alicante, Spain (professional representative)

a g a i n s t

Baidu Textile Trading Limited, Ingles Manor Castle Hill Avenue, Folkestone CT20 2RD, United Kingdom (applicant).

On 10/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 041 is upheld for all the contested goods, namely

Class 25: Clothing; fashion garments; footwear and headgear; swimwear; sportswear and leisurewear.

2. European Union trade mark application No 14 502 801 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 502 801 for the word mark ‘BAIDU’, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 3 363 645 for the word mark ‘BABIDU’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must 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 will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 3 363 645 for the word mark ‘BABIDU’.

The date of filing of the contested application is 19/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/10/2010 to 18/10/2015 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Clothing.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 26/09/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until Saturday 01/12/2018 to submit evidence of use of the earlier trade mark. On 03/12/2018, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annexes 1-2-3: 52 invoices issued between 08/02/2011 and 24/09/2015 to clients located in different European Union countries such as Spain, Portugal, The Netherlands, the United Kingdom, Italy and Germany regarding items of clothing, listed in Spanish, for significant sums. All the invoices display on their upper part signs such as , and .

• Annex 4: Copy of a press article dated 02/07/2014, mentioning ‘BABIDU’ as one of the trade marks which will participate in the International Trade Fair held in Madrid of clothing for children and young people.

• Annexes 5-6-7-8-9-10-11: Copy of catalogues showing clothing identified with the sign BABIDU for the years comprised between 2011 and 2015.

• Annex 12: Four printouts taken from the webpage ‘Way back machine’ in which it is shown as the opponent’s webpage looked like on 13/12/2012, 18/03/2013, 26/06/2014 and 01/09/2015. All the extracts display items of clothing on which the sign ‘BABIDU’ is shown. In particular, a label of an item of clothing for babies displays the sign .

In its observations of 05/02/2019 the applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely the invoices and the catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Place

The invoices show that the place of use is the European Union, since they are addressed to clients located in several different Member States such as Spain Portugal, The Netherlands, the United Kingdom, Italy and Germany. Also, the currency mentioned is Euro. Therefore, the evidence relates to the relevant territory.

Date

All of the evidence is dated within the relevant period.

Extent

The documents filed, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Nature

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence shows that the mark has been used in accordance with its function and as registered for several items, such as ‘camisetas’ (t-shirts) or ‘pijamas’ (pyjamas), which fall within the broad category of goods for which it is registered, namely clothing in Class 25.

Also, the sign ‘BABIDU’ appears in some documents in variations that are deemed to be acceptable since they do not alter the distinctive character of the mark. It must be reminded that the trade mark’s proprietor is generally allowed to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, EU:T:2006:65, § 50).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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; fashion garments; footwear and headgear; swimwear; sportswear and leisurewear.

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.

The contested swimwear; fashion garments; sportswear; leisurewear are included in the broad category of the earlier clothing. Therefore, they are identical.

Clothing is identically contained in both lists of goods.

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements and target the same public. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Taking all these factors into account, headgear and clothing are considered similar.

The contested footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

BABIDU	BAIDU
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The words ‘BABIDU’ and ‘BAIDU’ are not meaningful in certain territories and they are, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs are meaningless, such as the Italian or the Spanish-speaking part of the public.

Visually and aurally, the signs coincide in the five letters ‘B-A-(x)-I-D-U’. However, they differ in the third letter ‘B’ of the earlier mark ‘BABIDU’.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory taken into account. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods have been found to be partly identical and partly similar. They are directed at the public at large. The degree of attention is considered to be average.

For what concerns the signs, they have been found visually and aurally similar to a high degree. In fact, the five letters that make the contested sign, namely ‘BAIDU’, are all included within the earlier mark ‘BABIDU’, which only displays an additional letter in its middle part.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Also, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on, at least but not necessarily only, the Italian and Spanish-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 363 645. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows that the contested sign must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Valeria ANCHINI

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.