OPPOSITION No B 2 907 049

Bianca-Moden GmbH & Co. KG, Kreuzweg 70, 48607 Ochtrup, Germany (opponent), represented by Siebeke - Lange - Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative)

a g a i n s t

Maglificio Rossi Idee Moda SRL, Via delle Roggette, 18, 21010 Cardano Al Campo (VA), Italy (applicant), represented by Dott. Franco Cicogna & C.SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative).

On 18/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 907 049 is upheld for all the contested goods.

2. European Union trade mark application No 16 454 911 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 16 454 911 for the figurative mark . The opposition is based on European Union trade mark No 761 700 for the word mark ‘bianca’. 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 No 761 700 for the word mark ‘bianca’.

The date of filing of the contested application is 10/03/2017. 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 10/03/2012 to 09/03/2017 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 02/02/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 02/04/2018 to submit evidence of use of the earlier trade mark. This time limit was extended until 02/06/2018. On 30/05/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Affidavit: in an affidavit from the opponent’s secretary, Ms. Petra Reinders, dated 28/05/2018, it is stated that the opponent has sold clothing under the mark ‘bianca’ since 1973. Sales (units sold) and turnover figures are given for the period 2012-2017, for Germany and the rest of the European Union. For example, the turnover in Germany generated EUR 10 443 900 in 2012 and EUR 11 618 700 in 2017. A media plan prepared by the opponent is provided for the period 2012-2017 giving an overview of the advertising for Belgium, Denmark, Germany, the Netherlands, Austria, Sweden and the United Kingdom.

 Annexes A1, A10 and A11: photographs of the earlier mark ‘bianca’ affixed on clothing labels, for example and .

 Annexes A2-A7: product catalogues (in German and English) dated 2012-2017 showing the earlier mark in relation to various clothing articles, such as shirts, waistcoats, knitwear, etc., with reference to the product reference numbers.

 Annexes A8-A9: screenshots dated 2008-2016 of the websites www.bianca.de and www.bianca-shop.de.

 Annex A12: various press articles (in German) on clothing under the ‘bianca’ mark dated within the relevant period. For example, an extract from TextilWirtschaft dated 2015 showing a picture of a ‘bianca’ shop, stating ‘the clothing under the “bianca” mark is based on an easy-going, casual look, avoiding loud colours’ (translation provided by the examiner).

 Annex A13: advertising for clothing under the ‘bianca’ mark (in German and English), which, according to the witness, was used in Denmark, Germany, Austria and Sweden.

 Annex A14: invoices dated 2012-2017 issued to customers in Germany and other Member States of the European Union (Belgium, Denmark, Ireland, France, Italy, the Netherland and the United Kingdom). All invoices refer to the trade mark ‘bianca’. At the top of the invoices, the earlier mark is referred to as and reference is made to the items in the product catalogues (annexes A2-A7).

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Furthermore, the applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Contrary to the assertions of the applicant, the invoices demonstrate that the place of use is the European Union. This can be inferred from the language of the documents (German), the currency mentioned (EUR) and some addresses in Belgium, Denmark, Germany, Ireland, France, Italy, the Netherlands and the United Kingdom. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents submitted, namely the invoices and the affidavit giving sales and turnover figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used in accordance with its function and as registered for all the goods for which it is registered.

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).

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.

a) 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; shoes; headgear; menswear; ladies’ clothing; boys’ clothing; dresses made from skins; shirts; chemisettes; skirts; skirt suits; jackets [clothing]; trousers; trousers shorts; jumpers; undershirts; union suits; pyjamas; stockings; vest tops; corsets; stocking suspenders; sock suspenders; boxer shorts; brassieres; shifts (clothing); hats; scarves; neckties; mackintoshes; topcoats; coats; swimming costumes; sportswear; jackets being sports clothing; rainproof jackets; warm-up jackets; ski trousers; waist belts; pelisses; sashes for wear; gloves [clothing]; robes; footwear; mules; training shoes; boots; sandals; sweat-absorbent stockings; slippers; socks; leotards; tights; clothing; casualwear; ladies’ clothing; formalwear; woolen clothing; pinafore dresses; woven clothing; shirts; tracksuit tops; sleeveless jerseys; hosiery; undershirts; long-sleeved shirts; short-sleeved t-shirts; hooded tops.

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 25

The contested clothing (mentioned twice) is identically contained in both lists of goods.

The contested menswear; ladies’ clothing; boys’ clothing; dresses made from skins; shirts; chemisettes; skirts; skirt suits; jackets [clothing]; trousers; trousers shorts; jumpers; undershirts; union suits; pyjamas; stockings; vest tops; corsets; stocking suspenders; sock suspenders; boxer shorts; brassieres; shifts (clothing); scarves; neckties; mackintoshes; topcoats; coats; swimming costumes; sportswear; jackets being sports clothing; rainproof jackets; warm-up jackets; ski trousers; waist belts; pelisses; sashes for wear; gloves [clothing]; robes; sweat-absorbent stockings; socks; leotards; tights; casualwear; ladies’ clothing; formalwear; woolen clothing; pinafore dresses; woven clothing; shirts; tracksuit tops; sleeveless jerseys; hosiery; undershirts; long-sleeved shirts; short-sleeved t-shirts; hooded tops are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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.

Headgear and 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 it 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 into account the above, the contested shoes; headgear; hats; footwear; mules; training shoes; boots; sandals; slippers are similar to the opponent’s clothing.

b) 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 average.

c) The signs

bianca
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 coinciding element ‘bianca’ will be perceived by a substantial part of the relevant public as a female first name of Italian origin.

Contrary to the arguments of the applicant, ‘bianca’ is not a common first name throughout the European Union. The name is uncommon (e.g. in Spain and Portugal) where it will be perceived as a name of foreign origin (the equivalent name in Spain is ‘Blanca’ and in Portugal it is ‘Branca’).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Portuguese-speaking parts of the public, for whom the name ‘bianca’ is uncommon, as this is the best case scenario for the opponent.

The verbal elements ‘DELLA TORRE’ in the contested sign will be perceived, taking into account the fact that they follow the first name of foreign origin ‘BIANCA’ and that the verbal element ‘DELLA’ does not exist, as a family name of foreign origin.

The element ‘BIANCA’ in both marks and the verbal elements ‘DELLA TORRE’ in the contested sign have a normal degree of distinctiveness in relation to the relevant goods in Class 25. Neither the name ‘BIANCA’ nor the surname ‘DELLA TORRE’ are common in Spain or Portugal, and therefore neither of these elements has a higher degree of distinctiveness than the other.

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

Visually and aurally, the signs coincide in the element/sound ‘BIANCA’, which constitutes the entire earlier mark and the contested sign’s first element. The fact that the entire earlier mark is reproduced at the beginning of the contested sign is particularly relevant, since 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. However, the signs differ in the elements/sounds ‘DELLA TORRE’ in the contested sign. Furthermore, they differ in the stylisation of the contested sign, which, however, is not very elaborate. The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper-or lower-case letters, or in a combination thereof.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the rather uncommon female first name ‘bianca’, while the contested sign adds an uncommon family name that is equally distinctive, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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, contrary to what the applicant argues, the distinctiveness of the earlier mark must be seen as normal.

e) 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large, and the degree of attention is average.

The conflicting goods are partly identical and partly similar.

The signs are visually, aurally and conceptually similar to an average degree on account of the female first name ‘bianca’. It is important that the first name ‘bianca’ is not a common name in Spain and Portugal.

Whenever two signs share the same first name and one of the two also contains a surname, and when the first name is likely to be perceived as a common (let alone very common) name in the relevant territory, the rule of thumb is that there will be no likelihood of confusion, since consumers will be aware that there are many people with that name. However, an exception applies when a given first name is likely to be perceived as uncommon in the relevant territory. In these cases, the presence of this uncommon element is likely to focus the consumers’ attention, and they could be misled into attributing a common origin to the goods concerned.

Therefore, taking into account all relevant factors, and especially the overall average degree of similarity between the signs and the rather uncommon character of the name ‘bianca’ in Spain and Portugal, it is considered that a likelihood of confusion exists.

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 or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the applicant — 10/12/1999, B 65 427; 25/01/2002, R 95/2000‑2, LAURA MERCIER / LAURA — is not relevant to the present proceedings, as the coinciding first name in those marks, ‘Laura’, was considered a common first name in Spain, which is not the case for the first name ‘bianca’.

As far as the previous case dated 13/12/2016, B 2 585 373, is concerned, it was appealed, and the Board of Appeal found that there was a likelihood of confusion between the marks ‘Madeleine’ and ‘MADELEINE VRAMANT’ (fig.) as ‘Madeleine’ was not considered a common first name in Germany (27/06/2017, R 23/2017‑2, MADELEINE VRAMANT (fig.) / Madeleine).

As far as the case dated 17/12/2007, B 906 943, is concerned, it can be noted that while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision dated 17/12/2007, B 906 943, submitted to the Opposition Division, is to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Portuguese-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 761 700. It follows that the contested trade mark 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

Chantal VAN RIEL

Saida CRABBE

Manuela RUSEVA

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.