OPPOSITION No B 2 916 313

Dino Baumberger, Auweg 74, 4820 Bad Ischl, Austria (opponent)

a g a i n s t

Bon Lio AS, Damstredet 20, 0177 Oslo, Norway (applicant), represented by Advokatfirma DLA Piper Sweden KB, Kungsgatan 9, 103 90 Stockholm, Sweden (professional representative).

On 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 313 is upheld for all the contested goods, namely:

Class 25: Chefs’ hats; knitted caps; headgear; sweatpants; neck scarfs [mufflers]; camisoles; pants; shawls; sweaters; socks; clothes; aprons [clothing]; jackets; head bands; bandanas; t-shirts; aprons.

2. European Union trade mark application No 16 754 905 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 754 905 for the word mark ‘Bon Lío’, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 14 194 872 for the figurative mark . The opponent invoked Article 8(1)(a) EUTMR.

The opponent invoked Article 8(1)(a) EUTMR, which covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services. However, Article 8(1)(b) EUTMR covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors.

The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(a) EUTMR that meets the requirements of Article 8(1)(b) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(a) 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 goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Tee-shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts; polo knit tops; polo shirts; baseball caps.

The contested goods are the following:

Class 25: Chefs’ hats; knitted caps; headgear; sweatpants; neck scarfs [mufflers]; camisoles; pants; shawls; sweaters; socks; clothes; aprons [clothing]; jackets; head bands; bandanas; T-shirts; aprons.

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.

T-shirts are identically contained in both lists of goods.

The contested sweaters; clothes include, as broader categories, the opponent’s polo shirts. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear includes, as a broader category, the opponent’s baseball caps. Therefore, they are identical.

The contested chefs’ hats; knitted caps are similar to the opponent’s baseball caps, as they have the same purpose (to protect the head against the elements) and method of use. Furthermore, they may have the same commercial origin, distribution channels and points of sale, and they target the same consumers.

The contested head bands; bandanas are similar to the opponent’s baseball caps. They have a similar purpose and target the same consumers. Furthermore, they can have the same distribution channels and commercial origin.

The contested sweatpants; pants; neck scarfs [mufflers]; camisoles; shawls; socks; jackets are similar to the opponent’s tee-shirts, as they have a similar nature (all being clothing) and purpose (to cover different parts of the body), are usually produced by the same undertakings, are sold in the same shops and target the same relevant public (the general public).

The contested aprons [clothing]; aprons are similar to the opponent’s tee-shirts, as they may have the same producers, consumers and distribution channels.

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 will be average.

3. The signs

	Bon Lío
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 element ‘Lío’, present in both marks, means ‘a set of things that are wrapped or tied together’ or ‘a trouble; a clutter; an affair, a mess’ in Spanish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public. Since the relevant goods are clothing and headgear, this element is distinctive for these goods.

The earlier mark consists of the word ‘Lío’ depicted in highly stylised yellow lettering against a rectangular black background. The letter ‘L’ is upper case. The stylised depiction of the letters will not alter the perception of the vast majority of the public of the verbal element. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case. Furthermore, the black rectangle is of a purely decorative nature, and therefore has a low degree of distinctiveness.

The contested sign is a word mark consisting of the verbal elements ‘Bon Lío’. The first word, ‘Bon’, will be associated by part of the relevant public with the Spanish word ‘Buen(o)’, which means ‘good’; although it is distinctive, it merely qualifies the word ‘Lío’, which is therefore the more distinctive element of the mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive word ‘Lío’, which is the second word of the contested mark and the sole verbal element of the earlier sign. However, they differ in the additional word ‘Bon’ of the contested sign, which merely qualifies the word ‘Lío’, as explained above. They also differ in the graphic elements of the earlier mark, which will have a limited impact on consumers.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Lío’.The pronunciation differs in the sound of the remaining letters, ‛Bon’, at the beginning of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are considered aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Therefore, for the public under consideration, the marks are conceptually similar to a high degree, as they coincide in the distinctive word ‘Lío’, whereas the additional word ‘Bon’ in the contested sign merely qualifies this term.

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 his 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 and 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

In the present case, the goods are identical or similar. The degree of attention of the relevant public is average, and the earlier mark has a normal degree of distinctiveness. The signs are visually, aurally and conceptually similar overall.

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).

The similarities between the signs result from their identical, distinctive verbal component, ‘Lío’.The differences are confined to the graphic depiction of the earlier mark and the additional verbal element ‛Bon’ of the contested sign, which merely qualifies the coinciding element. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the similarities, in particular taking into account the principle of interdependence mentioned above.

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. In the present case, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part 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 registration No 14 194 872. 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Alexandra APOSTOLAKIS	Begoña URIARTE VALIENTE	Sandra IBAÑEZ

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.