OPPOSITION No B 2 981 374

Augusta Benelux B.V., Rooseveltstraat 46, 2321 BM Leiden, Netherlands (opponent), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)

a g a i n s t

Francesco Daddato, Via Firenze, 11, 76121 Barletta, Italy (applicant), represented by Abogados Daudén, S.L.P., Avenida Maisonnave, 11, 2º, 03003 Alicante, Spain (professional representative).

On 10/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 981 374 is partially upheld, namely for the following contested goods:

Class 18: Shoulder belts; bags; bags for sports; beach bags; gym bags; travel baggage; canvas bags; school book bags; banknote holders; bumbags; haversacks; pocket wallets; rucksacks; sports packs.

Class 25: Roll necks [clothing]; loungewear; dresses; sportswear; underwear; Bermuda shorts; bikinis; boy shorts [underwear]; bomber jackets; stockings; socks; shirts; tank tops; sports singlets; coats; cardigans; cravats; beach clothes; bathing suits; sundresses; sweat shirts; neckerchiefs; jackets [clothing]; skirts; blousons; overcoats; leggings [leg warmers]; denims [clothing]; V-neck sweaters; hosiery; undershirts; sweaters; trousers shorts; pants; underpants; trousers; polo shirts; pyjamas; salopettes; brassieres; tee-shirts; bathwraps; printed T-shirts; ladies’ dresses; dressing gowns.

2. European Union trade mark application No 16 946 212 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 946 212 , namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 3 387 578 for the word mark ‘BBB’. 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 3 387 578.

1. The goods

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

Class 9: Bicycle helmets; cycling goggles and other such cycling accessories not included in other classes; sunglasses; data processing equipment and computers for bicycles, including bicycle computers, speedometers.

Class 12: Bicycles; bicycle tyres, bicycle bells, bicycle pumps, bicycle pedals, bicycle handlebars, bicycle handlebar tape, bicycle handlebar grips, bicycle handlebar posts, bicycle saddles, bicycle saddle posts, bicycle brakes, bicycle brake blocks, bicycle bar ends, bicycle stands, bicycle headsets, bicycle saddlebags, bicycle drinks container holders, bicycle spokes, bicycle chain sprockets, bicycle mudguards; bicycle chains, bicycle baskets, bicycle saddlebags, bicycle child seats, luggage carriers for land vehicles.

Class 25: Cycling clothing.

The contested goods are the following:

Class 18: Moleskin [imitation of leather]; curried skins; leather and imitations of leather; shoulder belts; bags; trunks and suitcases; bags for sports; beach bags; gym bags; travel baggage; canvas bags; school book bags; banknote holders; bumbags; haversacks; pocket wallets; suitcases; rucksacks; sports packs.

Class 25: Roll necks [clothing]; loungewear; dresses; sportswear; underwear; Bermuda shorts; bikinis; boy shorts [underwear]; bomber jackets; stockings; socks; shirts; tank tops; sports singlets; coats; cardigans; cravats; beach clothes; bathing suits; sundresses; sweat shirts; neckerchiefs; jackets [clothing]; skirts; blousons; overcoats; leggings [leg warmers]; denims [clothing]; V-neck sweaters; hosiery; undershirts; sweaters; trousers shorts; pants; underpants; trousers; polo shirts; pyjamas; salopettes; brassieres; tee-shirts; bathwraps; printed T-shirts; ladies’ dresses; dressing gowns.

As a preliminary remark, it is to be noted that 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.

Contested goods in Class 18

The contested shoulder belts; bags; bags for sports; travel baggage; bumbags; haversacks; rucksacks; sports packs are considered similar to the opponent’s cycling clothing. This is because the conflicting goods usually have the same relevant publics and distribution channels, as well as the same producers. In particular, manufacturers of special sports clothing often have a co-existing line of goods offering various types of sports bags under the same mark.

The contested beach bags; gym bags; canvas bags; school book bags; banknote holders; pocket wallets are similar to a low degree to the opponent’s cycling clothing, as these goods may have the same distribution channels and producers.

The contested moleskin [imitation of leather]; curried skins; leather and imitations of leather; trunks and suitcases; suitcases are dissimilar to all the goods covered by the opponent’s earlier right in Classes 9, 12 and 25, because they have nothing in common. The contested goods listed above are partly raw materials (e.g. leather and imitations of leather, skins) used in the manufacturing of leather products and partly luggage (trunks and suitcases) used for long- and short-distance travel by various means of transport, such as cars, trains, buses and aeroplanes. The opponent’s goods in Class 9 are data processing apparatus and protective equipment and its goods in Class 12 include vehicles and parts thereof. The opponent’s goods in Class 25 relate only to cycling clothing, and there is some similarity between these goods and the contested goods in Class 12, in particular sport bags, travel bags and some related accessories. However, these goods and the remaining contested goods have completely different natures, purposes and methods of use. They are not complementary or in competition with each other. They do not have the same distribution channels and do not target the same end users. In addition, they are usually produced by different companies.

Contested goods in Class 25

The contested roll necks [clothing]; loungewear; sportswear; underwear; Bermuda shorts; boy shorts [underwear]; bomber jackets; socks; tank tops; sports singlets; coats; sweat shirts; neckerchiefs; jackets [clothing]; blousons; overcoats; leggings [leg warmers]; undershirts; trousers shorts; pants; underpants; trousers; polo shirts; salopettes; brassieres; tee-shirts; printed T-shirts are various items of clothing that may be designed, inter alia, as sports clothing. Since these goods include apparel that is usually used or may be used by cyclists/for cycling, they overlap with the opponent’s cycling clothing. Therefore, they are identical.

However, the contested dresses; bikinis; stockings; shirts; cardigans; cravats; beach clothes; bathing suits; sundresses; skirts; denims [clothing]; V-neck sweaters; hosiery; sweaters; pyjamas; ladies’ dresses; bathwraps; dressing gowns are various items of clothing that cannot be considered usual apparel for sports purposes, in particular cycling. These goods are, nevertheless, considered similar to the contested cycling clothing, because they still have the same nature — clothing — and, furthermore, they may have the same distribution channels, relevant consumers and producers.

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 to various degrees are directed at the public at large, as well as at professional consumers involved in cycling. The degree of attention is average.

3. The signs

BBB
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 earlier sign is the word mark ‘BBB’. In the case of word marks, the verbal element as such is protected and not its written form. Therefore, contrary to the applicant’s argument, it is irrelevant if the opponent uses its earlier mark depicted in a coloured typeface and embellished with other decorative elements (e.g. when featured on the company’s website in the form as referred to by the applicant). Since the earlier mark has been registered as a word mark, its protection encompasses any stylisation and formatting of the verbal element, as long as its distinctive character is not altered. Furthermore, the applicant’s allegations in that respect have to be dismissed in their entirety, since the use of the earlier mark is not the subject of the present proceedings, as already notified to the parties in a previous communication from the Office.

Since the letters ‘BBB’ as a whole do not refer to any particular concept and have no meaning in relation to the goods in question, goods in Class 25, they are considered distinctive.

Contrary to what the applicant states in his observations, the sign applied for is a black and white figurative mark with no colour claim. Consequently, the applicant’s depiction of the sign applied for as has to be disregarded in the present analysis, as it does not reflect the application in its true form.

The contested sign consists of three stylised symbols depicted consecutively and overlapping each other, in which the initial symbol resembles the digit ‘3’ or the letter ‘B’ lacking part of the stem. The remaining two symbols will be clearly perceived as letters ‘B’. The expression ‘BIG BALLER BRAND’ is depicted underneath in upper case letters. Given that the three words of the expression begin with the letter ‘B’, it is very likely that the three symbols above will be perceived by consumers as an obvious abbreviation of the expression below. Bearing in mind that the composition consisting of the three symbols does not have any direct relation to the goods in question, it is considered distinctive.

However, the expression ‘BIG BALLER BRAND’ will be perceived by part of the public in its entirety, in particular by English speakers as, inter alia, ‘the brand of the big ballers’, in which the word ‘baller’ may be interpreted as ‘1. a ball-game player; 2. someone, usually a man, who lives in an extravagant and materialistic manner, tending to be something of a socialite’ (information extracted from Collins Dictionary Online on 28/08/2018 at https://www.collinsdictionary.com/dictionary/english/baller). In both cases, it is clear that the expression is weak, since it may either have a laudatory character as a whole or indicate that the goods in question are meant for a particular category of consumers, namely ball-game players. Regarding the perception of the other parts of the public, while the words ‘brand’ and ‘big’ are basic English words and will be immediately grasped as descriptive terms, the word ‘baller’ is meaningless and therefore distinctive for those parts of the public. Account is taken of the fact that the three symbols in the contested sign form the dominant — that is, the visually more eye-catching — element of the sign.

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.

Therefore, for reasons of procedural economy, the examination will proceed with respect to English speakers on the assumption that they will perceive the three symbols of the contested sign as an abbreviation of the expression ‘BIG BALLER BRAND’. Consequently, all of the symbols will be seen as the letter ‘B’, regardless of their stylisation.

Visually, the signs coincide in the three letters ‘B’. They differ in the stylisation of those letters, as well as in the additional expression, ‘BIG BALLER BRAND’, in the contested sign, as stated above. With respect to the stylisation of the contested sign’s letters, it must be emphasised that, 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). Even though the first letter ‘B’ is not fully depicted in the contested sign and a part of its stem is missing, the relevant consumers will still be able to perceive it as the letter ‘B’ (partly for the reasons explained above) and will refer to the entire verbal element designating the origin of the sign as ‘BBB’. Consequently, bearing in mind the less distinctive character of the additional element in the contested sign, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BBB’, present identically in the signs. However, the signs will differ in the pronunciation of the additional expression ‘BIG BALLER BRAND’, if it is pronounced. Therefore, taking into account the considerations outlined above, the signs are aurally similar to at least an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the additional expression in the contested sign, as referred to above, the earlier sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 goods are partly identical or similar to various degrees and partly dissimilar. The degree of attention of the relevant public is considered average and the earlier mark enjoys a normal degree of distinctiveness.

As established above, the conflicting signs have significant visual and aural similarities. This is because the earlier mark’s sole element, namely the three letters ‘BBB’, is reproduced in the contested sign as its dominant verbal element, albeit stylised to a certain extent. Account has been taken of the fact that consumers tend to focus on verbal rather than figurative elements, as they usually indicate the origin of the goods. In addition, it must be borne in mind that the word ‘BBB’ is the dominant verbal element of the contested sign and it will be the verbal element that has the primary impact in the overall perception of the sign. The additional expression ‘BIG BALLER BRAND’ will be seen by consumers as laudatory or alluding to the nature of the goods in question. Its impact in the overall impression created by the sign will therefore be slightly reduced.

Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, the dominant character of the verbal element ‘BBB’ in the contested sign, reinforced by the lesser impact of the remaining expression, as explained above, is decisive in the assessment of likelihood of confusion, including likelihood of association.

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 undertaking or economically linked undertakings. It is highly conceivable that due to the identical distinctive verbal element ‘BBB’ 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), in particular including additional verbal elements of an allusive or laudatory character (as explained above).

In addition, 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). Consequently, the similarities between the signs are sufficient to outweigh the low degree of similarity between some of the goods.

The opponent stated in its final observations that the applicant may have filed the contested trade mark in bad faith, since he gives incorrect information about the nature of the company he represents. This is not, however, a point that can be addressed and examined in the present opposition proceedings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on Benelux trade mark No 612 498 for the word mark ‘BBB’, registered for the following goods:

Class 9: Cycling helmets, cycling goggles, computers for bicycles and other such accessories for bicycles, not included in other classes.

Class 12: Bicycle parts and accessories not included in other classes, such as elastic luggage straps for luggage and bags.

Class 25: Cycling clothing and footwear and other such wearing accessories not included in other classes.

As can be seen, this earlier right covers a narrower scope of goods than the goods covered by the earlier mark in Classes 9 and 12 and is, in addition to cycling clothing, also registered for cycling footwear and other such wearable accessories in Class 25. This, however, does not change the finding of dissimilarity between the goods compared above. The opponent’s cycling footwear and wearing accessories still have different natures, methods of use, relevant purposes, distribution channels, publics and producers and are considered dissimilar to the remaining contested goods in Class 18 (luggage, leather and imitations of leather, etc.). Therefore, 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Manuela RUSEVA

Monika CISZEWSKA

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.