OPPOSITION No B 3 049 629

Birkenstock Sales GmbH, Rheinstraße 10, 53560 Vettelschoss, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)

a g a i n s t

TaiZhou Jiamei Imports and Exports Co.,Ltd, No.061-1, Area D, Qiaolin Village, Guangming Industrial Park, Zeguo Town, 317500 Wenling, Zhejiang, China (applicant), represented by Daniel Smart, Colman and Smart Limited, PO Box 5448, Manchester M61 0JU, United Kingdom (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 629 is partially upheld, namely for the following contested goods:

Class 25: Footwear; Boots; Sandals; Sports shoes; Ankle boots; Slippers; Ski boots; Valenki [felted boots]; Shoes; Half-boots.

2. European Union trade mark application No 17 659 913 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 659 913 for the word mark ‘BI&KI’. The opposition is based on European Union trade mark registration No 9 345 497 for the word mark ‘Birki’. 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.

a) The goods and services

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

Class 25: Footwear, including comfort footwear and footwear for work, leisure, health and sports, including shoes, sandals, boots, gymnastic sandals, flip-flops, slippers, health shoes, health sandals, health slippers and health clogs, clogs, including with footbeds and foot moulds, in particular with anatomically moulded deep footbeds, foot supports and shoe inserts, protective inserts; parts and accessories for the aforesaid footwear, namely footwear uppers, heels, soles, insoles, inner soles, parts for shoe bottoms, heel cups, pads, including footbeds, foot supports, shoe inserts, shoe bottom systems consisting of an outer sole and a footbed, including all with anatomically moulded deep footbeds, in particular of natural cork, thermal cork, plastic, latex or foamed plastic materials, including of elastic compounds of cork-latex or plastic-cork mixtures; shoe inserts; tips, corners and wedges for the aforesaid soles, in particular of suede, full-grain leather, natural fibres, imitation leather, plastic or felt, including with integrated soft padding, soft pads or foam padding, covers for foot moulds, consisting of suede, full-grain leather, natural fibres, imitation leather, felt or foam padding, including the aforesaid covers with integrated soft padding or soft pads; all the aforesaid goods, included in class 25.

The contested goods and services are the following:

Class 25: Footwear; Boots; Sandals; Sports shoes; Ankle boots; Slippers; Ski boots; Valenki [felted boots]; Shoes; Half-boots.

Class 35: Advertising; Publicity; On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Commercial administration of the licensing of the goods and services of others; Providing business information via a web site; Provision of an on-line marketplace for buyers and sellers of goods and services.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate 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 opponent’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, 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 25

The contested Footwear; Boots; Sandals; Sports shoes; Ankle boots; Slippers; Ski boots; Valenki [felted boots]; Shoes; Half-boots are identical to the opponent’s footwear, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

Contested services in Class 35

The contested provision of an on-line marketplace for buyers and sellers of goods and services (the purpose of which is to facilitate selling and buying between users); advertising; publicity; on-line advertising on a computer network; presentation of goods on communication media, for retail purposes (consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity); commercial administration of the licensing of the goods and services of others (is intended to help companies with the performance of business operations); providing business information via a web site (is intended to help companies manage their business by setting out the strategy and/or direction of the company) are all dissimilar to the opponent’s goods in Class 25. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of the opponent’s goods and the contested services is different. They are neither in competition with, nor necessarily complementary to, each other. Also, they are not normally produced/provided by the same companies or sold to the public through the same channels.

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 is considered to be average.

c) The signs

Birki	BI&KI
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).

Both signs are word marks, the earlier mark consisting of ‘Birki’ and the contested sign of ‘BI&KI’. Where both marks are registered as word marks, the typeface actually used is immaterial. Differences in the use of lower or upper case letters are irrelevant since it is the word as such which is protected.

The word, ‘Birki’, of the earlier mark will not be associated with any meaning in relation to the goods at issue and, therefore, its distinctiveness is average.

The word ‘BI&KI’ of the contested sign does not have any meaning as a whole and, therefore, its distinctive character is average. The symbol ‘&’ placed in the middle of the sign and used in writing instead of the word ‘and’ will be perceived as conjunction by the relevant consumers. As the ampersand only serves to connect two constituents, it is considered to have less impact on the comparison of the signs than the components it connects.

Visually, the signs coincide in their first two letters, ‘BI*, and the final two letters, ‘*KI’. However, they differ in the third letter ‘R’ of the earlier sign and the ampersand symbol placed in the same position in the contested sign. It must be pointed out that consumers generally tend to focus on the beginning of a sign when they encounter a trade 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. Consequently, the identical beginning of the signs is of particular importance. Also, the same length of the signs and the fact that the different letter ‘R’ and the symbol ‘&’ are positioned in the middle parts of the signs and that ‘&’ is included in between the components ‘BI’ and ‘KI’ without any separation or other distinction, mean that these differences may not be clearly identified. As such they lose weight in the perception of the signs.

In conclusion, even if the letter ‘R’ in the earlier sign and the ampersand symbol in the contested mark are not negligible, considering that the signs coincide in their beginnings and endings, these differentiating elements cannot counterbalance the visual similarity in the common letters ‘BI*KI’. Therefore, overall the signs must be considered visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘BI*KI’ and differ in the pronunciation of the letter ‘R’ in the middle of the earlier mark and in the pronunciation of ampersand in between the letters ‘BI’ and ‘KI’. Although the pronunciation of the symbol ‘&’ in the contested sign may not go unnoticed, as it creates different structure of the contested sign, the common letters ‘BI*KI’ are clearly audible. Therefore, the signs are similar to below than average degree as aurally the contested sign will be longer.

Conceptually, neither of the signs has a meaning as a whole in relation to the goods at issue for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

e) Global assessment, other arguments and conclusion

The goods have been found identical and the services dissimilar. The degree of attention of the relevant public is average. The assessment of the distinctiveness of the earlier mark rests on its distinctiveness per se which is considered average. The signs are visually similar to an average degree, aurally similar to below than average degree, while a conceptual comparison is not possible, and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Therefore, in an overall assessment, taking into account that the signs coincide in their beginnings and endings and the only difference is confined to the middle single letter ‘R’ in the earlier mark and the symbol ‘&’ in the contested sign, it is reasonable to assume that when confronted with the contested sign in relation to identical goods, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings. It should be noted that average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them they have kept in their mind. In consequence, the differences between the signs are not sufficient to safely distinguish between the identical goods as to their trade origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 345 497. It follows that the contested trade mark must be rejected for the contested goods found to be identical to the goods of the earlier mark.

The rest of the contested services 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 services cannot be successful.

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

Jakub MROZOWSKI

Marzena MACIAK

Anna BAKALARZ

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.