OPPOSITION No B 3 052 136

Bobo Choses, S.L., Jaume Balmes, 14, 08301 Mataro (Barcelona), Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (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 26/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 136 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 . The opposition is based on European Union trade mark registration No 5 871 348 for the word mark ‘BOBO choses’. 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 5 871 348 for the word mark ‘BOBO choses’.

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 mark for the goods on which the opposition is based, namely the following:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

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 09/10/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 14/12/2019 to submit evidence of use of the earlier trade mark. This time limit was extended on request of the opponent till 14/02/2020. On 14/02/2020, 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 (Document 4), the Opposition Division will describe that evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 DOCUMENT 1: printouts from the opponent’s website, www.bobochoses.com, dated 2012-2017 (web archive), offering mainly clothing items, but also some headgear, stuffed animals, rugs, cushion covers, bags, fragrances, homeware and stationery items. This evidence demonstrates that there is a shop in Barcelona (Spain).

 DOCUMENT 2: screen captures of different posts, dated 2014-2017, from the opponent’s official Instagram profile at www.instagram.com/_bobochoses/, showing the earlier mark mainly in relation to clothing articles. Some reference is made to the shop in Barcelona (Spain).

 DOCUMENT 3: press articles and blogs referring to the earlier mark ‘Bobo Choses’, such as ‘BOBO choses presenta su colección más deportiva’, www.europapress.es, dated 17/03/2017, in Spanish with partial translation into English; ‘BOBO choses by Roman Yñán’ (blogs.good2b.es/new-kids/2015/07/07/bobo-choses-by-roman-ynan/), dated 06/05/2017; ‘My Barrio’, www.mybarrio.es, dated 23/07/2017, in which ‘BOBO choses’ attend the popup; ‘Behind the brand BOBO choses’, lifeandstyle.alexandalexa.com/behind-the-brand-bobo-choses/, dated 16/06/2014; www.kidswear-magazine.com/brand/bobo-choses/season-aw-201415/, in which appear published the ‘look books’ of the different seasons (from 2014 to 2020); rodamon-marcamoda.com/bobo-choses-etiquetado-del-mes-de-mayo/?lang=en, dated 7/07/2015; blog.petit-bazaar.com/fashion/introducing-the-gorgeous-2015-springsummer-collection-from-bobo-choses/, in which was posted the new collection of BOBO CHOSES SS2015.

 DOCUMENT 4: invoices for the purchase of goods sold under the ‘Bobo choses’ mark, and invoices and their summaries for the sale of goods under the ‘BOBO choses’ mark from clients in Austria, Denmark, Finland, France, Italy, Spain, Sweden, the Netherlands and the UK (2014-2016), issued for various clothing items, rugs, pencil cases, notebooks, pins, patches, tattoos, bags, beach towels, cushion covers, melamine cups, plates and trays.

 DOCUMENT 5: catalogues of the autumn and spring-summer season from 2012 to 2017 for goods offered under the earlier mark, such as various clothing articles, baby blankets, knitted blankets, quilts, rugs, cushion covers, bags, patches, hats, footwear, mugs, notebooks, calendars, pins, beach towels.

Assessment of the evidence

Place of use

The invoices and invoice summaries show that the place of use covers various countries within the European Union, such as Austria, Denmark, Finland, France, Italy, Spain, Sweden, the Netherlands and the UK. This can be inferred from the addresses in those countries. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Therefore, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Although it is clear from the evidence (Document 4) that the mark has been extensively used in relation to clothing, sales were less for footwear, headgear, stuffed animals, notebooks and calendars. However, the fact that the opponent focused on one product more than on others does not mean that the use of those secondary goods is not genuine. Use of the mark need not be quantitatively significant for it to be deemed genuine. In an overall assessment of the evidence, and in particular taking into account the invoices and the catalogues, those goods were offered and sold to some extent during the relevant period, and the opponent had genuinely tried to create a share in the market for those goods.

The documents filed, namely the invoices and invoice summaries, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use for the aforementioned goods. Therefore, for those goods and for the purposes of this decision, the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Regarding the use of the mark for pins, there is only one reference to pins in the invoices submitted, for an amount of EUR 3,51; for tattoos, there are only three references with a total amount of EUR 24,56. Therefore, no sufficient indications of the extent of use are given for pins and tattoos. The use for the remaining goods appearing in the evidence is not relevant, as will be explained below in the section ‘nature of use’.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is a word mark. The mark was mainly used in a slightly stylised font, which does not affect the distinctive character of the mark as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The evidence of use shows that the mark has been used, to some extent, for fragrances, patches, cushion covers, baby blankets, bags, pencil cases, beach towels and homeware such as mugs, plates and trays. However, these goods do not fall within any of the categories for which the earlier mark is registered. Therefore, as mentioned above, these goods are not relevant in the assessment of the genuine use of the earlier mark for the registered goods.

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 reaches 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.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use for various items of clothing, footwear and headgear. Therefore, use has been proven in relation to clothing, footwear, headgear in Class 25. Use has also been proven in relation to rugs in Class 27. Furthermore, the opponent has shown use for stuffed animals, notebooks, calendars. The stuffed animals can be considered to form an objective subcategory of playthings in Class 28. Therefore, the evidence shows genuine use of the trade mark only for stuffed animals in Class 28. Notebooks and calendars belong to the following categories in the specification of Class 16: stationery (notebooks) and printed matter (calendars). As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered, and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the evidence shows genuine use of the trade mark for stationary and printed matter in Class 16.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 16: Printed matter; stationery.

Class 25: Clothing, footwear, headgear.

Class 27: Rugs.

Class 28: Stuffed animals.

The contested goods are, after a limitation of the EUTMA 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.

As a preliminary remark, according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 (i.e. blankets, quilts, sheets, linen, towels, washcloths, labels). 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 (fig.) / GO GLORIA ORTIZ, § 16; 26/07/2012, R 1367/2011-1, PROMO TEXTILE (fig.) / Promodoro, § 17; 01/08/2012, R 2353/2010-2, REFRIGUE FOR COLD (fig.) / REFRIGIWEAR (fig.) 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 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 and headgear in Class 25.

The contested goods in Class 24 are also dissimilar to the remaining opponent’s goods in Classes 16, 27 and 28. These goods have a different nature (textile goods such as blankets, quilts, sheets, linen, towels, washcloths, fabrics, labels v printed matter, stationery, rugs and stuffed animals), a different purpose and different method of use. They are not complementary, nor in competition with each other. Furthermore, they are usually not produced by the same undertakings and not distributed through the same distribution channels.

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.

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.