OPPOSITION No B 3 054 721

Original Buff, S.A., França 16, 08700 Igualada (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Dalufons AB, Framtidsvägen 12A, 35196 Växjö, Sweden (applicant).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 721 is upheld for all the contested goods.

2. European Union trade mark application No 17 870 113 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 17 870 113 for the word mark ‘Gigabuff’. The opposition is based on, inter alia, European Union trade mark registration No 17 137 019 for the figurative mark . 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 17 137 019 for the figurative mark as this mark has the broadest scope of goods and services.

a) The goods

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; spectacles [optics]; spectacle cases; pince-nez chains; spectacle cords; spectacle frames.

Class 25: Clothing, footwear, headgear; visors.

The contested goods are the following:

Class 9: Computer e-commerce software; mobile software; games software; computer mouses; mouse pads; wrist rests for computer mouse users; computer components and parts; headphones; wireless headphones; headsets; screens.

Class 25: Tee-shirts; muffs [clothing]; arm warmers [clothing]; tops [clothing]; polo sweaters; short-sleeve shirts; sleeveless jerseys; long-sleeved shirts; printed t-shirts; jackets [clothing]; peaked caps; caps [headwear]; gloves [clothing].

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 9

The contested computer e-commerce software; mobile software; games software are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested headphones; wireless headphones; headsets; screens are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested computer mouses; mouse pads; wrist rests for computer mouse users; computer components and parts are at least similar to a low degree to the opponent’s computers as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 25

The contested tee-shirts; muffs [clothing]; arm warmers [clothing]; tops [clothing]; polo sweaters; short-sleeve shirts; sleeveless jerseys; long-sleeved shirts; printed t-shirts; jackets [clothing]; gloves [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested peaked caps; caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 or similar to at least a low degree are directed at the public at large and at a professional public with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	Gigabuff
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 contested sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper- or lower- case letters, or in a combination thereof. Although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, at least part of the public will split the contested sign and perceive the elements ‘Giga’ and ‘buff’, as explained below.

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 common element ‘buff’ is not meaningful (and is therefore distinctive) in certain territories for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public such as the Dutch- and Polish-speaking public.

The element ‘Giga’ of the contested sign will be understood as ‘giant’ by the majority of the relevant public. As this element indicates the size of the relevant goods, it is weak and less distinctive than the element ‘buff’.

As regards the earlier mark, which is a figurative mark, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, namely the black circular background. Therefore, the verbal element is more distinctive than the figurative element.

The signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘buff’, which is the sole verbal element in the earlier mark and the most distinctive element in the contested sign. However, they differ in the additional verbal element ‘Giga’ in the contested sign that will have less impact as it is weak. Furthermore, the signs differ in the figurative element of the earlier mark, which is less distinctive than the verbal element, as explained above. Moreover, it can be noted 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).

Therefore, taking into account that the coincidences reside in the most distinctive elements of the signs, the signs are at least similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘buff’, present identically in both signs. The pronunciation differs in the sound of the less distinctive element ‘Giga’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Giga’ in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the impact of this difference is limited since it originates from a weak element.

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 for some of the goods. 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, despite the presence of a less distinctive figurative element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large and a professional public. The level of attention varies from average to high.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The conflicting goods are partly identical and partly at least similar to a low degree.

The signs are visually at least similar to an average degree and aurally highly similar. Conceptually, although the signs are not similar, this conceptual difference has a limited impact as it is created by a weak element.

Therefore, there is a likelihood of confusion because the differences between the signs are confined to weak elements.

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. 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).

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

Specifically, there is a likelihood of confusion on the part of the Dutch-, Polish- and Spanish-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 17 137 019. 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 17 137 019 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

Carlos MATEO PÉREZ

Saida CRABBE

Marzena MACIAK

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.