OPPOSITION No B 2 721 655

Schibsted Classified Media Spain, S.L., Parque de Oficinas Sant Cugat Nord, Pl. Xavier Cugat, S/N, 08174 Sant Cugat Del Valles, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Loden-Steiner GmbH, Mandling 90, 8974 Mandling, Austria (applicant).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 721 655 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 211 501 (figurative mark: ), namely against all the services in Class 35. The opposition is based on the European Union trade mark registration No 14 307 185 (word mark: VIBBO). The opponent invoked Article 8(1)(b) EUTMR.

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 services

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

Class 35: Advertising, Online advertising on a computer network, Dissemination of advertising matter and publicity material, Rental of advertising time on communications media of all kinds; Business management; Business administration; Sales promotion for others; Employment placement of professionals, employment outplacement, information relating to employment and career opportunities, information relating to the retailing and sale via global computer networks, including the internet, of goods, distribution of samples; Compilation of information from a central computer, Transcription of communications, Data search in computer files for others, Computerised file management; Compilation of information into computer databases, arranging newspaper subscriptions, organisation of exhibitions for commercial or advertising purposes; Arranging subscriptions to a global telecommunications network (the internet) or to private-access networks (intranets) in the field of classified, job and real estate advertisements; Arranging subscriptions to data transmission services and to the dissemination of classified advertisements; Arranging subscriptions to a centre providing access to a computer telecommunications or data transmission network, dissemination of business information by electronic means, in particular via global communication networks (the internet) or private-access networks (intranets) in the field of dissemination of classified advertisements, including relating to jobs, motor vehicles and real estate; Auctioning of real estate, advertising in the field of real estate; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.

The contested services are the following:

Class 35: Advertising.

Contested services in Class 35

Advertising is identically contained in both lists of services.

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 services found to be identical are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, because undertakings may be particularly careful when choosing a provider for advertising, since the quality of these services can potentially have a serious impact on their business.

3. The signs

VIBBO
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).

Taking into account the different pronunciation rules within the relevant territory, the Opposition Division finds that the element ‘VIBBO’ of the earlier sign and the element ‘Bibo’ of the contested sign will be pronounced identically by the Spanish-speaking part of the public; however, the pronunciation will differ for the part of the relevant public that does not speak Spanish. Consequently, as the aural similarity between the signs will be higher for the Spanish-speaking part of the public, the Opposition Division will first examine the opposition in relation to this part of the public.

The earlier mark is a word mark, ‘VIBBO’. In the case of word marks, it is the word as such that is protected and not its written form.

The contested mark is a figurative mark, comprising the verbal elements ‘Bibo’ and ‘Bär’ and two figurative elements: the head of a black and white bear wearing a green hat, and a dark red and light blue triangle framing both the verbal elements and the bear head, which appear towards the top of the triangular frame.

The element ‘VIBBO’ of the earlier mark has no meaning for the relevant public and is therefore distinctive.

The verbal elements ‘Bibo’ and ‘Bär’ of the contested mark have no meaning for the relevant public and are therefore distinctive.

The figurative element depicting the head of a bear of the contested mark will be associated with a certain meaning by the relevant public; however, it is distinctive as it is not descriptive, allusive or otherwise weak for the relevant services.

The triangular element of the contested mark is a frame typical for trade marks, and despite the stylisation, its purely decorative nature renders it non-distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the letters ‘i’, ‘b’ and ‘o’ of the distinctive verbal elements ‘VIBBO’ and ‘Bibo’. The coinciding letters occupy similar positions within these two verbal elements. However, the signs differ in the first letters of these elements and in the additional letter ‘B’ of the earlier mark. Furthermore, they also differ in the distinctive verbal element ‘Bär’, the distinctive figurative element depicting the bear head and the non-distinctive frame element of the contested sign. As the coinciding letters are not perceived independently within the overall impression of the marks, the differences are clearly more relevant and influential than the similarities.

Therefore, the signs are visually dissimilar.

Aurally, the pronunciation of the signs coincides in the syllables ‘VI-BBO’ and ‘Bi-bo’. Despite the different spelling, these two words will be pronounced identically by the relevant public. The pronunciation differs in the syllable ‘Bär’ of the contested mark, which has no counterpart in the earlier sign. The identical syllables form the only, distinctive, element of the earlier mark and the distinctive verbal element of the contested mark, which is at the beginning of the sign.

Therefore, the signs are similar to a slightly above average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the bear head element of the contested sign as explained above, the other sign has no 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 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. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (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 are identical and the signs are visually dissimilar and aurally similar to a degree slightly above average. Furthermore, they are not conceptually similar.

Despite the identity of the goods in question and the fact that the signs are aurally similar to a degree slightly above average, the differences between the signs are significant and counterbalance the similarities. The differences mean that the signs are visually and conceptually dissimilar. Furthermore, two of the additional elements of the contested mark are distinctive and its additional elements are all clearly perceptible, leading to substantially different overall impressions.

Consequently, the dissimilarities are sufficient to exclude any likelihood of confusion between the marks for the Spanish-speaking part of the public that exercises an average degree of attentiveness, particularly in the case of highly attentive business consumers.

This absence of a likelihood of confusion applies equally to the part of the public for which the pronunciation of the elements ‘VIBBO’ and ‘Bibo’ differs (i.e. the part of the public that does not speak Spanish) because they will perceive the signs as being aurally less similar.

A part of the relevant public will associate the verbal element ‘Bär’ of the contested sign with a certain meaning; in German ‘Bär’ means the animal ‘bear’ and in Swedish ‘bär’ means ‘berry’ or ‘berries’. The specific semantic content perceived by the German- or Swedish-speaking part of the public, however, do not alter the distinctiveness of the verbal element ‘Bär’. This is because it is also considered distinctive for these parts of the public, as it is not descriptive, allusive or otherwise weak for the relevant services.

Furthermore, in the case of the German-speaking part of the public, the findings of the conceptual comparison apply equally despite the perceived meaning of the verbal element ‘Bär’, as it only reinforces the concept already conveyed by the figurative element depicting the head of a bear. In the case of the Swedish-speaking part of the public, although the perceived meaning of the verbal element ‘Bär’ alters the semantic content of the contested mark, the signs remain conceptually not similar, as the earlier mark is meaningless in all the official languages of the European Union.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Claudia MARTINI

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.