OPPOSITION No B 2 975 608

bruno banani underwear GmbH, Mauersberger Str. 5, 09117 Chemnitz, Germany (opponent), represented by Dreiss Patentanwälte PartG mbB, Friedrichstraße 6, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Manuel Lozano Suárez, Calle El Tucán Nº10, 35539 Nazaret, Las Palmas, Spain (applicant), represented by Vargas Vilardosa Abogados, Plaza de España, 6, 2° A, 50001 Zaragoza, Spain (professional representative).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 975 608 is upheld for all the contested goods.

2. European Union trade mark application No 16 951 311 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 (in Class 25) of European Union trade mark application No 16 951 311 (for the word mark ‘BANANITY’). The opposition is based on, inter alia, European Union trade mark registration No 882 571 (for the word mark ‘bruno banani’). The opponent invoked Article 8(1)(b) and Article 8(5) 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 882 571.

a) The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Headgear; footwear; clothing.

Headgear; footwear; clothing are identically contained in both lists of goods.

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 are directed at the public at large.

The degree of attention considered to be average.

c) The signs

bruno banani	BANANITY
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 second element of the earlier mark ‘banani’ means ‘banana trees’ (plural form) in Italian. Italian-speaking consumers will recognise a reference to bananas also in the contested sign ‘BANANITY’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public such as Italy.

Both marks are word marks. In this case it is the word as such that is protected and not its written form (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, contrary to the applicant’s argument, it is irrelevant whether a word mark is written in upper- or lower-case letters.

The earlier mark consists of two elements. The first element ‘bruno’ will be clearly perceived as a common male first name. The second element ‘banani’ is uncommon as a family name. However, in combination with the preceding first name ‘bruno’, the public will perceive the second element as an unusual family name.

While both elements of the signs are distinctive, family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link). In determining whether, in a particular country, the relevant public generally attributes greater distinctiveness to the surname than the forename, the case-law of that country, although not binding on the Office or the EU courts, may provide useful guidelines (01/03/2005, T-185/03, Enzo Fusco, EU:T:2005:73, § 52). In the case at hand, the unusual family name ‘banani’ has a higher intrinsic value in Italy than the common first name ‘bruno’.

The contested sign consists of the word ‘BANANITY’ which does not exist in the Italian language as such. However, its initial part ‘BANANI’ means ‘banana trees’ so it is safe to say that the fanciful term at least evokes associations with a banana (in Italian ‘banana’), if not with banana trees. This element is distinctive for the relevant goods.

In this context, the Opposition Division points out that the applicant admits that ‘the consumer public will, without difficulty, relate the trademark BANANITY to the semantic field of a the word ‘banana’ […]’.

Conceptually, although the contested sign as a whole does not have any meaning, while the earlier mark will be understood as a first and last name of a male person, both signs will be associated with the meaning of ‘banana (trees)’ by the public in the relevant territory. To that extent, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the sequence ‘banani’. This sequence represents the more distinctive element of the earlier mark and the initial part of the contested sign. However, the signs differ in the first element ‘bruno’ of the earlier mark and in the two additional letters/sounds ‘TY’ at the end of the contested sign.

Therefore, the signs are visually and aurally 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

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.

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).

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).

The earlier mark enjoys a normal degree of distinctiveness per se.

The goods are identical. They are directed at the general public who pays a normal degree of attention.

The signs are visually and aurally similar to an average degree. Conceptually, the more distinctive element of the earlier mark ‘banani’ and the contested sign ‘BANANITY’ evoke similar distinctive associations with ‘banana trees’ or at least ‘bananas’.

Therefore, there is a likelihood of association, i.e. the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. In this regard it should be noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (15/10/2015, T-642/13, cushe, EU:T:2015:781, §71).

The applicant refers to the fact that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). As pointed out above, visually, the signs are similar to an average degree. This fact is particularly relevant when assessing the likelihood of confusion between them.

Moreover, the applicant refers to the principle that consumers generally focus on the initial part of a sign and the fact that the two signs under comparison differ in their first part.

While, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45).

In the case at hand, the first element of the earlier mark consists of the common first name ‘bruno’. Therefore, the consumer’s attention will shift to the more distinctive last name ‘banani’ of the earlier mark, which is reproduced at the beginning of the contested sign ‘BANANITY’. In fact, in the case of the contested sign, the principle referred to by the applicant fully applies and therefore, the consumer’s attention will focus more on the initial sequence ‘BANANI’ rather than on the differing sequence ‘TY’ at the end of the contested sign.

Finally, the applicant argues that the opponent uses its mark for underwear and perfumery and is ‘not engaged in the manufacture and marketing of other clothing items such as trousers, t-shirts or dresses’. Furthermore, the applicant claims that the opponent uses different distribution channels. The applicant also filed evidence to support its claims.

However, it must be noted that the way the parties would actually use the goods and services bears no relevance for the comparison of the goods and services, as the goods and services as protected by the marks in conflict must be taken into account, and not those actually marketed under those marks (16/06/2010, T-487/08, KREMEZIN, EU:T:2010:237, § 71; 18/11/2014, T-308/13, Electrolinera, EU:T:2014:965, § 50). It is of importance that the protection granted is sufficiently broad not to undermine the opponent’s legitimate interest in being able, in the future, to extend its range of goods or services while enjoying the protection which the registration of that trade mark confers on it. Therefore, the Opposition Division is bound to the respective list of goods when comparing the goods at issue.

Considering all the above, there is a likelihood of confusion on the part of a significant part of the Italian-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 882 571. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 882 571 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, 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

Gonzalo BILBAO TEJADA

Beatrix STELTER

Karin KLÜPFEL

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.