OPPOSITION No B 3 051 162

Sterntaler GmbH, Werkstr. 6-8, 65599 Dornburg-Dorndorf, Germany (opponent), represented by WSL Patentanwälte Partnerschaft mbB, Kaiser-Friedrich-Ring 98, 65185 Wiesbaden, Germany (professional representative)

a g a i n s t

Bobobaby Sp. z o.o., Niemodlińska 107, 46073 Chróścina, Poland (applicant), represented by Dorota Katarzyna Grzyb, ul. Piękna 24/26 A lok. 1, 00-549 Warszawa, Poland (professional representative).

On 26/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 162 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 16 615 411 for the figurative mark . After a limitation of the EUTM application on 24/02/2019, the contested goods are those in Class 24. The opposition is based on European Union trade mark registration No 8 767 956 for the figurative mark and German trade mark registration No 1 149 084 for the word mark ‘BOBO’. 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 marks on which the opposition is based, namely European Union trade mark registration No 8 767 956 for the figurative mark and German trade mark registration No 1 149 084 for the word mark ‘BOBO’. For reasons of procedural economy, the proof of use will be first examined in relation to the earlier European Union trade mark registration No 8 767 956, as it has the broadest scope of protection.

The date of filing of the contested application is 14/04/2017. 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 14/04/2012 to 13/04/2017 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 marks for the goods on which the opposition is based, namely the following:

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; bath linen (except clothing), bath capes, bed covers of paper, bed linen, bedding (bed linen), pillow covers, towels (textile), sleeping bags (sheeting), quilted blankets, cuddle blankets, comfort blankets, children’s blankets, footwarmers, bedspreads, oilcloths (tablecloths), wash mitts.

Class 25: Clothing, footwear, headgear; layettes (clothing); layettes; clothing for children; babies’ pants, babies diapers of textile, bath robes, bath slippers, bath sandals, bodysuits (teddies, bodies), mitts, footmuffs (not electrically heated), clothing for gymnastics, gymnastic shoes, halfboots (booties), scarves, gloves, slippers, shirts, trousers, hats, jackets (clothing), jerseys (clothing), heavy jackets (stuff jackets), skull caps (headgear), hoods (clothing), bibs (not of paper), underwear, underwear (anti-sweat), coats, dressing gowns, caps (headgear), peaked caps, outerclothing, ear muffs (clothing), mules, pullovers, pyjamas, raincoats, skirts, sandals, shawls, sleepsuits, lace boots, briefs, socks, crawling socks, boots for sports, boots, babies’ boots, headbands (clothing), esparto shoes (espadrilles), stockings, panty hose, sweaters, knitwear (clothing), sports jerseys, T-shirts, overcoats (garments), underwear, underwear (anti-sweat), underpants, linen (clothing), ‘first steps’ shoes.

Class 28: Games and playthings; gymnastic and sporting articles, not included in other classes; decorations for Christmas trees; baby ‘s multiple activity toys, rattles (playthings), dolls’ clothes, dolls’ shoes, roller-skates, ice skates, snow shoes, knee pads, soft toys.

According to Article 10(3) EUTMDR, 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 22/10/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 27/12/2019 to submit evidence of use of the earlier trade marks. This time limit was extended till 27/02/2020. On 27/02/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 ITEM 1: a sworn affidavit dated 06/01/2020 from the opponent’s Chief Executive Officer, containing turnover and sales figures for the period 2012-2017. A turnover of at least EUR 1 850 000 was reached in 2013, EUR 1 650 000 in 2014, EUR 1 750 000 in 2015 and EUR 3 250 000 in 2016. The items sold during the entire relevant period are specified as: socks (at least 1 504 000 items sold), caps (at least 6 155 000 items sold), gloves, mittens, music boxes (at least 5 000 items sold), tights, hats, facecloths (at least 1 400 items sold), headbands, headscarves, bandanas, shoes, babies’ shoes, rubber boots, beanies, scarves and accessories.

 ITEM 2: invoices to German customers (2009-2017). The earlier mark is not mentioned in the invoices. Instead, only article numbers and a description of the article (e.g. ‘cap’, ‘stopper socks’) are mentioned. The opponent provides some photographs of articles containing tags bearing the earlier mark and the article number to link the article numbers mentioned in the invoices to the goods sold under the earlier marks (headgear and socks).

 ITEM 3: layouts of product tags and product labels bearing the earlier mark.

 ITEM 4: photographs of the products (socks, tights, footwear, caps, scarves, headbands, gloves, toys), as well as product tags and labels bearing the earlier mark (undated).

 ITEM 5: photographs showing the display of the opponent’s goods in hypermarkets in Germany (2014, 2016, 2017). The goods on display are hats, scarves, socks and toys.

 ITEM 6: an example of the department store stocking plan for the Autumn/Winter 14/15 range in hypermarkets ‘REAL’ in Germany. The range of goods shown are headgear, scarves, gloves and socks.

As the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR).

The invoices show that the place of use is Germany. This can be inferred from the language of the documents (German) and addresses in Germany. Therefore, the evidence relates to the relevant territory, the European Union.

A sufficient amount of the evidence is dated within the relevant period.

The documents filed, namely the invoices and the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The mark was used continuously throughout Germany and turnover figures were considerable.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Germany. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

The evidence shows that the mark has been used in accordance with its function and as 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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Clothing, footwear, headgear; clothing for children; mitts, scarves, gloves, caps (headgear), boots, socks, headbands (clothing).

For reasons of completeness, it can be noted that there is no evidence of use for goods that are not included in one of the three broad categories of clothing, footwear, headgear, such as for example bath robes.

Furthermore, the evidence shows that the earlier mark has been used to some extent for toys. For reasons of procedural economy, the Opposition Division will not undertake a full examination of the extent of such use and will assume that the use has been proven for all goods in Class 28.

However, the evidence does not show use of the earlier mark in relation to the goods in Class 24, these being textiles and textile goods. Although the opponent refers to ‘facecloth’ or ‘children textiles’ in its affidavit, of which 1 400 items would have been sold during the relevant period, this is not backed up by any of the other more objective evidence. The opponent does not indicate where this can be found in the invoices, nor has it submitted a picture which shows the article number that could be linked to the invoices (as done in relation to other goods, such as headgear and clothing articles).

Taking into account the above, in relation to the goods in Class 24, the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time. Therefore, as far as the opponent’s goods in Class 24 are concerned, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR.

The examination will now proceed based on the opponent’s goods in Class 25, for which use has been proven, and Class 28, for which genuine use is assumed.

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, footwear, headgear; clothing for children; mitts, scarves, gloves, caps (headgear), boots, socks, headbands (clothing).

Class 28: Games and playthings; gymnastic and sporting articles, not included in other classes; decorations for Christmas trees; baby’s multiple activity toys, rattles (playthings), dolls’ clothes, dolls’ shoes, roller-skates, ice skates, snow shoes, knee pads, soft toys.

The contested goods are, after a limitation of the EUTM application on 24/02/2019, the following:

Class 24: Blankets for children; quilts for children; bed sheets; sheets for children; bath linen for children; towels for infants and babies; bed linen for babies; overlays in the form of sheets and underlays for babies’ mattresses; textile goods, and substitutes for textile goods; woven fabrics; clothing fabrics, bedding fabrics, knitted fabrics, cotton fabrics, linen cloth, polyester fabrics, printed fabrics, fabrics of synthetic fibres, fabrics of fibre blends, fabrics of textile, synthetic fabrics, semi-synthetic fibre fabrics, lingerie fabrics, fabrics for the manufacture of sheets, clothing, towels, underclothing, blankets, dressing gowns, bibs, bath wraps, napkins (nappies); towels and small towels for children; bath sheets; moquette fabrics; fabric blends; labels of textile; appliqués of textile for fabrics, namely labels of textile, self-adhesive cloth labels, iron-on cloth labels, labels of textile for attachment to underclothing, tags in the form of labels of fabric for textile materials; washcloths for babies and children, including of textile materials and cotton.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Many of the contested goods are textile goods, and substitutes for textile goods (e.g. blankets, quilts, sheets, linen, towels, washcloths). The main commonality between these textile goods in Class 24 and the opponent’s clothing in Class 25 is that they are made of textile. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, or serves as a fashion article, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, the distribution channels and sales outlets of textile goods and clothing are different and the relevant public will not think that they originate from the same undertaking. Therefore, textile goods are considered to be dissimilar to clothing (31/05/2012, R 1699/2011-4, GO / GO GLORIA ORTIZ, § 16; 26/07/2012, R 1367/2011-1, PROMO TEXTILE (FIG. MARK) / Promodoro, § 17; 01/08/2012, R 2353/2010-2, REFRIGUE FOR COLD ( FIG MARK) / REFRIGIWEAR ( FIG MARK) et al., § 26).

Furthermore, the remaining contested goods are mainly fabrics and labels that are used in the manufacture of the opponent’s goods, such as clothing in Class 25. However, the mere fact that the contested fabrics and labels are used for the manufacture of the opponent’s goods is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer. Therefore, the contested fabrics and labels are dissimilar to the opponent’s clothing in Class 25.

For the same reasons, the contested goods are also dissimilar to the opponent’s footwear; headgear; clothing for children; mitts, scarves, gloves, caps (headgear), boots, socks, headbands (clothing) in Class 25.

The contested goods in Class 24 are also dissimilar to the opponent’s remaining goods in Class 28 in relation to which use has been assumed above. These goods have a different nature (textile goods such as blankets, quilts, sheets, linen, towels, washcloths, fabrics and labels versus games, playthings and toys), a different purpose and different method of use. They are not complementary, nor in competition with each other. Furthermore, they are not usually produced by the same undertakings. Even if these goods may be found sometimes in the same stores (e.g. children’s stores where different kinds of goods are sold), this is not enough per se to find any degree of similarity between them.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on German trade mark registration No 1 149 084 for the word mark ‘BOBO’ which covers children’s and babys clothing, in particular hosiery, hats, scarves and shoes in Class 25. Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent in relation to the German earlier mark and the evidence in relation to Class 28 of the European Union trade mark registration.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) 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

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

Chantal VAN RIEL

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.