OPPOSITION No B 3 060 349

Subafilms Limited, 27 Ovington Square, SW3 1LJ London, United Kingdom (opponent), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom and Dehns, Theresienstr. 6-8, 80333 Munich, Germany (professional representatives)

a g a i n s t

Etolero Limited, Strati Myrivili 5, 2046 Strovolos, Nicosia, Cyprus (applicant), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106-80 Athens, Greece (professional representative).

On 17/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 349 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 869 122 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 and services of European Union trade mark application No 17 869 122 , namely against all the goods and services in Classes 25 and 35. The opposition is based on, inter alia, European Union trade mark registration No 773 051 ‘YELLOW SUBMARINE’. The opponent invoked Article 8(1)(b), Article 8(4) 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 773 051 ‘YELLOW SUBMARINE’

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear and headgear; articles of outer clothing; shirts; polo shirts; T-shirts; button neck shirts; long-sleeved shirts and long-sleeved T-shirts; sweatshirts; jackets; coats; pullovers; vests; articles of underclothing; shorts; boxer shorts; scarves; silk squares; neck-ties; hats; caps; braces; suspenders; belts; socks; pants; fleece tops; thermal tops; jerseys; sweaters; tank tops; waistcoats; trousers; golf clothing; swimwear; beachwear; nightwear; dressing gowns; bath robes; bathing caps; headbands; slippers; beach shoes; sandals; babies bibs (not of paper).

The contested goods and services are the following:

Class 25: Children’s wear; children’s headwear; children’s footwear; children’s outerclothing; underwear for children; swim wear for children; baby clothes; layettes [clothing]; infants’ footwear; babies’ undergarments; babies’ outerclothing; baby bibs [not of paper].

Class 35: Retailing and online sale of children’s clothing, children’s headgear, children’s footwear, children’s outer clothing, children’s underwear, children’s swimwear, layettes (clothing), babies’ clothing, babies’ footwear, babies’ underclothing, babies’ outer clothing and babies’ bibs (not of paper).

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

Baby bibs [not of paper] are identically contained in both lists of goods (indicated as babies bibs (not of paper) in the opponent’s list).

The contested children’s wear; children’s outerclothing; underwear for children; swim wear for children; baby clothes; layettes [clothing]; babies’ undergarments; babies’ outerclothing are included in the broad category of the opponent’s clothing. The contested children’s footwear; infants’ footwear are included in the broad category of the opponent’s footwear. The contested children’s headwear is included in the broad category of the opponent’s headgear. Therefore, all these goods are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and online sale of children’s clothing, children’s headgear, children’s footwear, children’s outer clothing, children’s underwear, children’s swimwear, layettes (clothing), babies’ clothing, babies’ footwear, babies’ underclothing, babies’ outer clothing and babies’ bibs (not of paper) are similar to a low degree to the opponent’s clothing, footwear and headgear; babies bibs (not of paper).

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 and services found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

YELLOW SUBMARINE
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 earlier mark is a word mark, ‘YELLOW SUBMARINE’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant that the word mark is depicted in upper-case letters when compared with the verbal elements of the contested sign.

The contested sign is a figurative mark composed of verbal elements and a figurative element. The verbal elements ‘Yellowsub’, ‘by’ and ‘Newbaby’ are depicted over three lines in a fairly common typeface with the element ‘by’ being much smaller and the word ‘Newbaby’ depicted in bold. The figurative element is above the verbal elements, depicting a stylised cartoon image of a submarine with portholes and prominent periscopes.

Given the syntax of the earlier mark ‘YELLOW SUBMARINE’, where the noun ‘SUBMARINE’ is a defining word and the adjective ‘YELLOW’ merely serves as a modifier, the English-speaking part of the public will perceive the earlier mark as referring to ‘a type of ship that can travel both above and below the surface of the sea’ (information extracted on 30/08/2019 from Collins Dictionary at https://www.collinsdictionary.com) which is ‘of the colour yellow’. This part of the public will be able to instantly identify the same expression in the verbal element ‘Yellowsub’ of the contested sign, as it is composed of words known to them and the word ‘sub’ is a recognised abbreviation of ‘submarine’ (information extracted on 30/08/2019 from Collins Dictionary at https://www.collinsdictionary.com). In relation to the goods and services in question, this expression, whether written as ‘YELLOW SUBMARINE’ in the earlier mark or as ‘Yellowsub’ in the contested sign, does not convey any allusive or descriptive meaning and is, therefore, distinctive to an average degree. The same applies to the figurative element of the contested sign, which reinforces the meaning of ‘submarine’ and has an average degree of distinctiveness.

Since the common meaning conveyed by ‘YELLOW SUBMARINE’ in the earlier mark and ‘Yellowsub’ in the contested sign has a direct impact on the assessment of similarity between the marks, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as Ireland, Malta and the United Kingdom. Taking into account that, at the very least, a basic understanding of English on the part of the general public in Finland, the Netherlands and the Scandinavian countries must be regarded as a well-known fact (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23), the relevant public also includes consumers in Denmark, the Netherlands, Finland and Sweden.

The verbal element ‘by’ of the contested sign, due to its small size and position between two much bigger verbal elements, ‘Yellowsub’ and ‘Newbaby’, is hardly legible and may not even be noticed by the relevant consumers, who usually perceive the mark as a whole when making a purchase and do not proceed to analyse its various details. Even if perceived, this element will be seen as a mere preposition linking two words ‘Yellowsub’ and ‘Newbaby’, and will not be attributed any trade mark significance by the relevant consumers. The verbal element ‘Newbaby’ is weak, since it will be perceived by the relevant public as referring to a newborn baby and, thus, strongly alludes to the idea that the goods in question are clothes for newborn babies and the related retail services.

As all three clearly legible elements (‘Yellowsub’, ‘Newbaby’ and the figurative element) of the contested sign are of similar size, neither of them can be considered more dominant than the others. Although the verbal element ‘Yellowsub’ and the figurative element are both equally distinctive, account must be taken of the fact 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).

Visually, the most distinctive verbal element of the contested sign reproduces the entire first verbal element, ‘YELLOW’, and three first letters, ‘SUB’, of the second verbal element of the earlier mark. The signs differ in the remaining letters, ‘MARINE’, of the earlier mark, as well as in the verbal elements ‘Newbaby’ and ‘by’ of the contested sign, the latter, however, may be easily overlooked by the relevant consumers due to its small size. The signs also differ in the figurative element of the contested sign.

Although the abovementioned differing elements create some perceptible visual differences, the verbal element ‘by’ of the contested sign, even if perceived, will not be seen as distinctive and the element ‘Newbaby’, although depicted in bold, is weak. Therefore, the impact of these two verbal elements is minor as the consumers attention will focus on more distinctive elements. Moreover, the figurative element of the contested sign, although inherently distinctive, will have a lesser impact on the relevant consumers than the distinctive verbal element ‘Yellowsub’ (for the reasons explained above).

Taking into account all the above, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘YELLOW’ and ‘SUB’. The pronunciation differs in the sound of the remaining letters ‘MARINE’ of the earlier mark and in the sound of the verbal element ‘Newbaby’ of the contested sign. The pronunciation may also differ in the sound of the verbal element ‘by’ of the contested sign if, considering its clearly subordinate position and non-distinctive nature, it is pronounced by the relevant consumers. The figurative element of the contested sign will not be referred to aurally.

Taking into account the weight attributed to the differing verbal elements of the contested sign (as explained above) and the fact that its most distinctive verbal element is fully included in the earlier mark, the signs are considered aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The most distinctive verbal element of the contested sign conveys the same concept as the earlier mark and, in addition, its figurative element further reinforces the concept of ‘submarine’ conveyed by both marks. The signs differ only in the concepts conveyed by the non-distinctive or weak elements of the contested sign. Therefore, the signs are conceptually similar to a high 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.

The opponent invoked Article 8(5) EUTMR as one of the grounds for opposition, which constitutes an implicit claim of enhanced distinctiveness. 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 and services 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

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).

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.

As concluded above, the contested goods are identical and the contested services are similar to a low degree to the opponent’s goods. The goods and services target the public at large with an average degree of attention. The degree of distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree; aurally similar to at least an average degree, and highly similar conceptually, on account of coincidences in their inherently distinctive verbal elements, ‘YELLOW SUBMARINE’ of the earlier mark and ‘Yellowsub’ of the contested sign. The signs differ in some letters of the earlier mark and in the remaining verbal and figurative elements of the contested sign. However, the differing verbal elements of the contested sign are weak or even non-distinctive and the figurative element has a clear conceptual link with the coinciding elements. Therefore, the differing elements cannot outweigh the abovementioned commonalities and the fact that the most distinctive verbal element of the contested sign fully reproduces the majority of the letters of the earlier mark. This is especially so considering the strong conceptual link between the signs created by their coinciding elements which, despite some differences in writing, convey the same concept, further reinforced by the figurative element of the contested sign.

Taking into account 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), it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the goods and services in question are from the same undertaking or, as the case may be, economically linked undertakings. Therefore, it cannot be safely excluded that the relevant public will confuse the marks or, alternatively, perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods and/or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for example, a new line of products for newborn babies.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, such as Ireland, Malta and the United Kingdom, as well as on the part of the public in Denmark, the Netherlands, Finland and Sweden. 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 773 051 ‘YELLOW SUBMARINE’. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. Taking into account the abovementioned principle of interdependence, the contested sign must also be rejected for the services found to be similar to a low degree to the goods of the earlier mark, as the obvious similarities between the signs offset the low degree of similarity between the goods and services.

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 extensive use or 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 773 051 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 grounds of the opposition, namely Article 8(4) and 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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Ferenc GAZDA

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.