OPPOSITION No B 3 007 021

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441, Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333, München, Germany (professional representative)

a g a i n s t

Empresa, Paseo Pau Casals, 31, 43481, La Pineda, Spain (applicant).

On 30/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 007 021 is upheld for all the contested goods.

2. European Union trade mark application No 17 393 521 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 of European Union trade mark application No 17 393 521 for the mark . The opposition is based on European Union trade mark registration No 7 307 754 for the word mark ‘BARBUDA’. 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.

1. The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, in particular sunscreens, cosmetic tanning preparations; hair lotions, hair care preparations; deodorants for personal use; dentifrices.

Class 5: Pharmaceutical and veterinary preparations, sanitary preparations, in particular sunscreens for pharmaceutical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 16: Paper, cardboard and goods made from these materials, goods of cellulose, included in class 16; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, included in Class 16; printers’ type; printing blocks.

The contested goods are the following:

Class 3: Body oils [for cosmetic use]; Shaving preparations.

Class 8: Beard Shaping Tool.

Class 21: Brushes; Combs.

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

The term ‘in particular’, used in the opponent’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).

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 3

The contested body oils [for cosmetic use]; shaving preparations are included in the opponent’s broader category of cosmetics, in particular sunscreens, cosmetic tanning preparations in Class 3. Therefore, they are identical.

Contested goods in Class 8

The contested beard shaping tools are similar to a low degree to the opponent’s cosmetics, in particular sunscreens, cosmetic tanning preparations in Class 3, since the latter include shaving products and other preparations meant to be used for the care of the beard. These goods can have the same purpose. Furthermore, they usually have the same relevant public and distribution channels, and they can be in competition.

Contested goods in Class 21

The contested brushes; combs are similar to a high degree to the opponent’s cosmetics, in particular sunscreens, cosmetic tanning preparations in Class 3, because they have the same purpose, distribution channels, end users and producers, and they can be complementary.

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. The degree of attention is average.

3. The signs

Barbuda
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 ‘BARBUDO’ of the contested sign and the earlier mark, ‘Barbuda’, have a meaning for some of the consumers in the relevant territory (e.g. for Spanish-speaking consumers). However, the meanings attributed to them could lead to a finding of lower than average distinctiveness in relation to the relevant goods. These words are not meaningful in certain territories, for example in those countries where Dutch is spoken, where they will be perceived as of average distinctiveness. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the public, since the commonalities between the signs will have more impact for this part of the public, and therefore this is considered to constitute the scenario in which confusion is most likely.

For the Dutch-speaking part of the public, ‘Barbuda’ and ‘BARBUDO’ are meaningless and distinctive.

The element ‘MR.’ in the contested sign stands for ‘Mister’, a courtesy title prefixed to the surname or first name of a man without a higher, honorific or professional title. Despite being an English abbreviation, it is commonly used and known throughout the relevant territory, including by Dutch-speaking consumers. This element could be allusive for the goods, because it would be perceived as a reference to the fact that the relevant goods target male consumers. It is therefore of lower than average distinctiveness.

The figurative element of the contested sign could be perceived by at least a part of the relevant public as a stylised beard and moustache. For this part of the public, this element is weak because it will be perceived as a reference to the intended purpose of the relevant goods. For the rest of the public, this element will not be associated with any specific meaning and will be perceived as an abstract element formed of geometrical shapes. For this part of the public, this element is distinctive.

The stylisation of the contested sign is rather standard and merely decorative.

The contested sign has no element that could be considered clearly more dominant than other elements.

However, in complex marks consisting 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).

Consumers generally tend to pay less attention to the final part of the mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference between the final ‘A’ of the earlier mark and the final ‘O’ of the contested sign is likely to go unnoticed by the consumer.

Visually and aurally, the signs coincide in the letters ‘BARBUD*’. However, they differ in the last letter, ‘A’, of the earlier mark and in the element ‘MR.’, in the last letter, ‘O’, and, visually, in the slight stylisation and the figurative element of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are conceptually not similar, although the differing components of the contested sign are weak (i.e. the figurative element of a beard, if it is perceived as such) and/or of a low degree of distinctiveness (i.e. ‘MR.’).

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 and partly similar to various degrees. They are directed at the public at large, which has an average degree of attention.

The distinctiveness of the earlier mark is normal.

The marks are visually and aurally similar to an average degree. In particular, the differences between the signs are confined to secondary elements and aspects, since the element ‘MR.’ of the contested sign is allusive for the relevant goods and the figurative element of the contested sign either is weak or has less impact than the verbal element, for the reasons explained above. Furthermore, the difference in the last letters of the earlier mark, ‘Barbuda’, and the element ‘BARBUDO’ of the contested sign is likely to go unnoticed because consumers tend to pay less attention to the final part of a mark.

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).

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). In the present case, it is considered that the commonalities between the marks are clearly enough to outweigh their dissimilarities, and to lead consumers to believe that the goods in question originate from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-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 7 307 754. 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.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Francesca CANGERI SERRANO

María Clara IBÁÑEZ FIORILLO

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.