OPPOSITION No B 3 052 180

The Bulldog Trademark B.V., Kabelweg 86, 1014 BC Amsterdam, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595 DA Den Haag, Netherlands (professional representative)

a g a i n s t

Jordi Nogues, S.L., Bruch 114 - pral. 2ª, 08009 Barcelona, Spain (applicant), represented by RMA Legal S.L.P., Gran Vía del Marqués del Turia 49, 6, 3, 46005 Valencia, Spain (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 180 is upheld for all the contested goods, namely

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 17 762 923 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 762 923 (figurative mark), namely against all the goods in Class 25. The opposition is based on, inter alia, Benelux trade mark registration No 425 680, ‘THE BULLDOG’ (word mark). 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 Benelux trade mark registration No 425 680.

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: Clothing, footwear, headgear.

Clothing, footwear, headgear 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 is considered average.

c) The signs

THE BULLDOG
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The verbal elements ‘THE’, ‘BULLDOG’ and ‘BAD’ are English words. At least part of the public in the relevant territory is familiar with English. A likelihood of confusion for only part of the relevant public is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in relevant territory who will understand the meanings of the verbal elements ‘THE’, ‘BAD’ and ‘BULLDOG’.

The earlier mark is a word mark. The verbal element ‘BULLDOG’ is an English term for ‘a dog of a sturdy smooth-haired breed with a large head and powerful protruding lower jaw, a flat wrinkled face, and a broad chest’ (information extracted from Oxford Dictionaries on 03/05/2019 at https://en.oxforddictionaries.com/definition/bulldog). The verbal element ‘THE’ at the beginning of the earlier mark will be perceived as a definite article which is used, inter alia, ‘to indicate that it represents a whole species or class’ (information extracted from Oxford Dictionaries on 03/05/2019 at https://en.oxforddictionaries.com/definition/the). Therefore, the relevant public will perceive the earlier mark as referring to a specific breed of dog.

The meanings of the verbal elements ‘THE’ and ‘BULLDOG’ or their combination ‘THE BULLDOG’ have no connection to the relevant goods and are considered distinctive.

The contested sign contains a figurative element resembling a bulldog, with the verbal element ‘BADBULLDOG’ below it.

In its observations the applicant argues that the verbal element of the contested sign ‘BADBULLDOG’ is a fantasy word in which the adjective ‘bad’ has been joined to the word ‘bulldog’ to create an invented and unique word and that it is an indivisible unit. However, according to settled case-law an average consumer perceiving a word sign will break it down into elements that suggest a concrete meaning or resemble known words (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51; 01/12/2005, C‑512/04 P, Vitakraft, EU:C:2005:736). These provisions can be applied by analogy to verbal elements of figurative marks and therefore to the verbal element ‘BADBULLDOG’ of the contested sign. Both ‘bad’ and ‘bulldog’ are meaningful words which will be known to the relevant public. Therefore, the relevant public will easily recognise these words in the verbal element ‘BADBULLDOG’ and, consequently, contrary to the applicant’s argument, will break it down into the components ‘BAD’ and ‘BULLDOG’.

The word ‘bad’ as an adjective means, inter alia, ‘failing to conform to standards of moral virtue or acceptable conduct’ (information extracted from Oxford Dictionaries on 03/05/2019 at https://en.oxforddictionaries.com/definition/bad). In combination with the word ‘bulldog’, it will be perceived as a qualifier of the characteristics of the bulldog, referring to a bulldog which is behaving badly or has a bad temper. The word ‘bad’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and has an average degree of distinctiveness.

The considerations as regards the perception and the distinctiveness of the word ‘BULLDOG’ in the earlier mark on the part of the relevant public apply equally for the contested sign.

The figurative element is reinforced by the verbal element ‘BULLDOG’ below it. It has no connection to the relevant goods and has an average degree of distinctiveness.

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

The symbol ‘®’ in the contested sign is not considered part of the mark and consequently it will not be taken into account in the comparison of the signs.

Visually, the signs coincide in the word ‘BULLDOG’. The signs differ in the words ‘THE’ and ‘BAD’ present in the earlier mark and in the contested sign respectively. They also differ in the figurative element of the contested sign, which is its dominant element.

According to settled practice 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). Therefore, the verbal element ‘BADBULLDOG’ is the one by which consumers will refer to the contested sign.

In its observations the applicant argues that the verbal elements of the signs have different beginnings. However, these different beginnings are either the determiner, namely the article ‘THE’ in the earlier mark, or the qualifier, namely the adjective ‘BAD’ in the contested sign, whilst the distinctive word ‘BULLDOG’ is in both signs. Furthermore, independently of whether the figurative element is perceived as a naughty or bad looking bulldog, as the parties argue, it still reinforces the coinciding word ‘BULLDOG’. Therefore, taking into account that (i) the signs coincide in the distinctive word ‘BULLDOG’, (ii)  the figurative element reinforces the distinctive word, and (iii)  the differing verbal elements ‘THE’ and ‘BAD’ are a definite article and a qualifier respectively, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‛BULL-DOG’, present identically in both signs. The pronunciation differs in the syllables ‘THE’ and ‘BAD’ present in the earlier mark and in the contested sign respectively. The figurative element in the contested sign will not be pronounced and therefore it is not subject to a phonetic assessment.

According to the applicant, the beginning of each verbal element is completely different. The Opposition Division agrees that the relevant public will not disregard the adjective ‘BAD’ in the contested sign. The same applies to the definite article ‘THE’ in the earlier mark. However, the relevant public will also recognise and pronounce the word ‘BULLDOG’ in both signs. Moreover, the pronunciation of the signs coincides in two out of three syllables which belong to the coinciding word ‘BULLDOG’, whilst the differing syllable corresponds to the verbal elements ‘THE’ and ‘BAD’ which are either a determiner or a qualifier as explained above. Therefore, although the beginnings of the verbal elements will be pronounced differently, they cannot outweigh the similarity between the signs given that the word ‘BULLDOG’ will be pronounced and perceived when referring to both signs.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of ‘bulldog’, and the figurative element in the contested sign merely reinforces this meaning while the differing verbal elements refer to the characteristics of the bulldog, the signs are conceptually highly similar.

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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). 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).

The goods are identical. They target the public at large which displays an average degree of attentiveness. The signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually highly similar. The earlier mark has a normal degree of distinctiveness.

As described above in section c) of this decision, both signs will be perceived as referring to the same kind of dog (bulldog). The relevant public will perceive the verbal element ‘BULLDOG’ in both signs conceptually, visually and aurally. Furthermore, the figurative element in the contested sign is reinforced by the meaning of the verbal element ‘BULLDOG’. As regards the differing verbal elements, the verbal element ‘THE’ will be perceived only as a definite article and the verbal element ‘BAD’ as an adjective merely describing the dog’s characteristics. Therefore, both the earlier mark and the contested sign will be perceived as referring to a ‘bulldog’.

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. It is a market reality that manufacturers develop several lines of the same brand to market their products targeting different consumers or having different styles. Being used to such practices, consumers may think that the owner of the earlier mark in the present case has expanded its product line with a different mark, the contested mark. Indeed, 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).

Furthermore, the goods are identical and applying the abovementioned principle of interdependence, a lesser degree of similarity between the signs is offset by the identity between the goods.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the public in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 425 680. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Benelux trade mark No 425 680 ‘THE BULLDOG’ 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).

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

Irina SOTIROVA

Birute SATAITE-GONZALEZ

Rosario GURRIERI

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.