OPPOSITION No B 2 816 349

Calçados Bibi Ltda., Rodovia RS 239 Km 28, 4 nº 3.600, Parobé - RS 95630-000, Brazil (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Bibi Bag, via Argentieri 6, 98122 Messina, Italy (applicant).

On 03/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 816 349 is upheld for all the contested goods.

2. European Union trade mark application No 15 794 911 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 794 911. The opposition is based on, inter alia, European Union trade mark registration No 14 894 299. 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.

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 European Union trade mark registration No 14 894 299.

1. The goods

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

Class 25: Children’s footwear.

The contested goods are the following:

Class 18: Bags; Wallets; Wallets including card holders; Card wallets [leatherware]; Evening handbags.

Class 25: Money belts [clothing]; Shoes; Waist belts; Clothing; Ladies’ clothing.

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 Class 18

The earlier mark is protected for children’s footwear in Class 25. These goods are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested goods are bags; wallets; wallets including card holders; card wallets [leatherware]; evening handbags. These goods are related to children’s footwear in Class 25. This is because consumers are likely to consider the goods in Class 18 as accessories that complement articles of outer clothing and footwear, even children’s footwear, as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of children’s footwear to directly produce and market bags; wallets; wallets including card holders; card wallets [leatherware]; evening handbags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

Contested goods in Class 25

The contested shoes overlap with the opponent’s children’s footwear. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods and the opponent’s goods, these goods are considered identical.

The opponent’s children’s footwear and the contested money belts [clothing]; waist belts; clothing; ladies’ clothing are identical or very similar in nature. They serve the same purpose, since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, including belts, will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the abovementioned items. Therefore, these 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

BIBI	BIBI BAG
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 earlier and contested signs are word marks consisting of the verbal elements ‘BIBI’ and ‘BIBI BAG’, respectively.

The earlier mark has no elements that could be considered more distinctive than other elements.

The common element ‘BIBI’ might be associated with a first name, a nickname or a surname by at least a part of the English-speaking public. Nevertheless, this element has no meaning in relation to the goods in question and therefore has a normal degree of distinctiveness.

The element ‘BAG’ in the contested sign will be associated by the English-speaking public with ‘a flexible container with an opening at the top, used for carrying things; a woman’s handbag or purse’ (information extracted from Oxford Dictionaries on 03/08/2017 at https://en.oxforddictionaries.com/definition/bag). Bearing in mind that some of the relevant goods are types of bags or at least containers of personal items, this element is non-distinctive in respect of these goods for the English-speaking part of the public. Therefore, this element is non-distinctive for all the goods in Class 18 and for money belts [clothing] in Class 25, as, due to their shape and functionality, these goods can be perceived as containers for carrying things rather than pieces of clothing. However, the element ‘BAG’ has a normal degree of distinctiveness for the remaining goods in Class 25.

Taking into account the abovementioned meaning of the element ‘BAG’ for the English-speaking part of the public, the comparison of the signs will focus on this part of the relevant public.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘BIBI’, which is the sole verbal element in the earlier mark and the first verbal element in the contested sign. 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. The signs differ in the additional word ‘BAG’ in the contested sign. However, since ‘BAG’ lacks distinctiveness in connection with the goods in Class 18 and money belts [clothing] in Class 25, it is likely to be disregarded, leading to a high degree of visual similarity between the signs deriving from the coinciding distinctive word ‘BIBI’. As regards the remaining goods in Class 25, for which ‘BAG’ has a normal degree of distinctiveness, the degree of visual similarity between the signs is average.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛BIBI’, present identically in both signs. The pronunciation differs in the sound of the word ‛BAG’ of the contested sign, which has no counterpart in the earlier mark. Therefore, following the same line of reasoning as in the visual comparison, the signs are aurally similar to a high degree for all the goods in Class 18 and money belts [clothing] in Class 25, while the degree of aural similarity is average for the remaining goods in Class 25.

Conceptually, taking into account the meaning of the elements ‘BIBI’ and ‘BAG’ for the English-speaking public, as explained above, the signs are conceptually similar to a high degree.

As the signs have been found similar from the visual, aural and conceptual points of view, 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 contested goods in Classes 18 and 25 are partly identical and partly similar to the goods covered by the earlier European Union trade mark registration No 14 894 299.

The inherent distinctiveness of the earlier mark is average.

Taking into account the identity or similarity of the goods and the degrees of visual, aural and conceptual similarity between the signs, the Opposition Division concludes that the marks under comparison convey a similar overall impression. As this may lead the relevant public to believe that the goods under comparison come from the same undertaking or from economically linked undertakings, there is therefore a likelihood of confusion, including a likelihood of association, on the part of the relevant English-speaking public.

Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the opposition from the perspective of the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 894 299. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 14 894 299 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 (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Gueorgui IVANOV

Ieva SMILGAINE

Catherine MEDINA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.