OPPOSITION Nо B 3 068 236

 

Hugo Boss Trade Mark Management Gmbh & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative) 

 

a g a i n s t

 

We Host You Fabiana & Tatiana LDA, Av Clotilde, Ed. Centro de Congressos do Estoril Andar 4, Sala 5, 2765-211 Lisbon, Portugal (applicant), represented by Clemente Cardoso Pinto, Rua Castilho, N.º 20, 6.º, 1250-069 Lisbon, Portugal (professional representative).

On 21/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 1. Opposition No B 3 068 236 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 937 301 is rejected in its entirety.

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

 

REASONS

 

On 09/11/2018, the opponent filed an opposition against all the goods and services in Classes 25, 35 and 41 of European Union trade mark application No 17 937 301 (figurative mark). The opposition is based on EUTM registrations No 1 798 099 and No 49 221, both registered for ‘BOSS’ (word marks). The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and Article 8(5) EUTMR in relation to the earlier No 49 221.

 

 
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 and services on which the opposition is based are the following:

EUTM registration No 1 798 099

Class 35: Sales services, in particular in the field of clothing, watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, home furnishing fabrics, luggage, sporting articles and tobacco goods; marketing; market research and market analysis; advertising; rental of advertising space; distribution of goods and advertising material for advertising purposes, including via electronic media and via the Internet; presentation of goods, in particular business and shop window dressing; arranging of sales events; promotion of business relations; business consultancy and management, organisation consultancy, professional business consultancy; sales consultancy; business management; all the aforesaid services for others.

Class 41: Planning and conducting of entertainment shows, conferences, congresses, discussion fora and events and competitions in the artistic, cultural and sporting field; information on events in the field of sports, art and culture and fashion; publication and presentation of pictures, printed matter and reports; all the aforesaid services also using electronic telecommunications media.

EUTM registration No 49 221

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

Class 35: Advertising, business management, business administration, sales consultancy.

The contested goods and services are the following:

 Class 25: Headgear; clothing.

Class 35: Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes.

Class 41: Presentation of musical performances; presentation of live entertainment performances; cultural activities.

 

An interpretation of the wording of the opponent’s 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 services in Class 35 covered by the earlier EUTM registration No 1 798 099, indicates that the specific services 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 in Class 25 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 headgear is identically included in the opponent’s list of goods of the earlier EUTM registration No 49 221.

The contested clothing includes, as a broader category the opponent’s clothing for men, women and children covered by the earlier EUTM registration No 49 221. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes at least similar to the opponent’s presentation of goods, in particular business and shop window dressing; arranging of sales events; all the aforesaid services for others, covered by the earlier EUTM registration No 1 798 099. These services may coincide at least at the same purpose, producer and relevant public.

Contested services in Class 41

The contested presentation of musical performances; presentation of live entertainment performances overlap with the opponent’s conducting of entertainment shows; all the aforesaid services also using electronic telecommunications media, covered by the earlier EUTM registration No 1 798 099 as they all refer to entertainment events. Therefore, these services are identical.

The remaining contested cultural activities as a broader category includes the opponent’s conducting of events and competitions in the cultural field; all the aforesaid services also using electronic telecommunications media covered by the earlier EUTM registration No 1 798 099. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

 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 and at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average (e.g. in relation to the goods in Class 25 and some of the services in Class 41, such as a general category of cultural activities encompassing e.g. provision of museum facilities) to high (e.g. in relation to the services in Class 35 and some of the services in Class 41, such as Presentation of musical performances; presentation of live entertainment performances), depending on the specialised nature of the services, the frequency of purchase and their price.

 

c) The signs

 

BOSS
Earlier trade marks	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 earlier marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, in principle, it is irrelevant whether the sign is represented in upper or lower case characters.

The contested sign is a figurative mark composed of the verbal element ‘BOSSA’, placed on the top of the sign and depicted in uppercase letters in bold, ‘market’, depicted in lowercase letters in bold and clearly secondary elements ‘BRAZILIAN BRANDS & SOUL’, written in much smaller standard uppercase letters. All these verbal elements are placed inside of a circle with double contours on a cream coloured background. The stylisation of the verbal elements is minimal and non-distinctive.

Indeed, as to the figurative aspects of the contested sign, it should be mentioned 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The font in which the verbal elements are represented in contested sign will be perceived by the relevant public as intended to merely embellish them. The black circle with a double contour and the ‘creamy’ background constitute very common, simple elements, therefore they are at most weak.

The applicant argues that the first verbal element ‘BOSSA’ will be perceived as related to the Brazilian style of music ‘Bossa Nova’. However, in the present case the first verbal elements of the contested sign are not ‘Bossa Nova’ but ‘BOSSA market’ and the latter will be perceived as meaningful terms by at least a part of the public in the relevant territory.

The only verbal elements of the earlier marks ‘BOSS’ will be understood by at least a part of the public in the relevant territory, such as the substantial part of the Polish-speaking public as referring to a chief, head, principal, leader (consulted on 11/07/2021 in Wielki Slownik języka polskiego, online version, at https://wsjp.pl/index.php?id_hasla=27831&ind=0&w_szukaj=Boss). As a consequence, the first verbal element of the contested sign ‘BOSSA’ will be perceived by the same part of the public as a declination form in the genitive (genitive: szef-a, boss-a, etc.). As these elements are in any event not descriptive, allusive or otherwise weak for the relevant goods and services, they are normally distinctive.

In the present case, for reasons of procedural economy and to take into account the semantic aspect in the comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the substantial part of the Polish-speaking public for which the terms ‘BOSS’ and ‘BOSSA’ will be perceived as having the same meaning as analysed above.

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 second verbal element of the contested sign ‘market’ is an English word that entered the Polish language will and, therefore, it will be understood by the public under examination as referring to a large self-service store (consulted on 11/07/2021 in Wielki Slownik języka polskiego, online version, at https://wsjp.pl/index.php?id_hasla=76188&id_znaczenia=5192347&l=16&ind=0). Bearing in mind the type of the contested goods and services this term will be, at most, weak for them. The Opposition Division notes that nowadays big self-service stores offer a broad variety of services, including tickets’ booking services for entertainment performances, themes parks, etc. Furthermore, it cannot be excluded that the public under examination might perceive the conjunction of the verbal elements ‘BOSSA market’ as referring to the market of the chief although in the Polish language the grammatically correct and more frequent version of this expression would be ‘market BOSSA’.

The remaining, clearly secondary verbal elements, ‘BRAZILIAN BRANDS’, are English term, which will be understood by the public under examination as referring to product marks originating from or otherwise linked with Brazil. The English word ‘Brazilian’ is highly similar to its Polish equivalent, ‘brazylijski’ and the English word ‘brand’ is commonly used and recognized in Polish dictionaries (consulted on 11/07/2021 in Słownik Języka Polskiego PWN at https://sjp.pwn.pl/szukaj/brazylijski.html and https://sjp.pwn.pl/szukaj/brand.html). Therefore, these elements are non-distinctive in relation to the goods and services in question. The ampersand is a widely recognized symbol for the English conjunction ‘and’ and the public under examination will perceive it as such, but will not attribute any trade mark significance to this element. Whereas the last verbal element ‘soul’ of the contested sign may be understood by a part of the relevant public as referring to part of one’s mind, character, thoughts, and feelings or will be seen as meaningless. In any event, this element possesses a normal degree of distinctiveness.

Furthermore, as regards the visual impact of the verbal elements in the contested sign, the terms ‘BOSSA’ and ‘market’ together with the figurative background are co-dominant elements of the sign due to their size and position.

Visually and aurally, the signs are similar to the extent that they coincide in their initial and distinctive term ‘BOSS’ (and its sound) although in the contested sign it appears in the genitive ‘BOSSA’ which introduces a minor visual and aural difference. Furthermore, the latter constitutes a co-dominant element within the contested sign. 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. The signs differ in the remaining verbal elements of the contested sign, however their impact on the relevant public will be limited either because they are (at most) weak or non-distinctive and/or they occupy further position in the mark or are secondary. Taking into account the size and position of the expression ‘BRAZILIAN BRANDS & SOUL’ within the contested sign and the fact that they have less impact and the tendency of the consumers to abbreviate a mark comprising a number of words to make it easier to pronounce, this expression may even be omitted by consumers when they refer to the contested sign (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43, 44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34). Moreover, the contested sign differs in its figurative aspects (only visually), which will have a lesser impact on consumer’s perception of the signs, as explained above.

Consequently, the signs are considered visually and 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 public under examination will instantly perceive the distinctive terms ‘BOSS’ and ‘BOSSA’ in the initial part of the signs. Furthermore, at least a part of the public under examination will perceive the meaning in the remaining verbal elements of the contested sign: ‘market’ and ‘Brazilian brands & soul’, however the impact of these elements will be limited, as discussed above. It cannot be excluded that the public under examination might perceive the co-dominant verbal elements ‘BOSSA market’ as referring to the market of the chief. In any case, understood in this way or not, the signs share the same concept, placed at their beginning and this coincidence generates at least an average degree of conceptual similarity between them.

 

d) Distinctiveness of the earlier marks

 

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 marks have been extensively used and enjoy 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 under this ground (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 signs are visually, aurally and conceptually similar to at least an average degree to the extent they coincide in the term ‘BOSS’/’BOSSA’. The differences between them lie in the additional terms and figurative aspects of the contested mark, which have been found either (at most) weak or non-distinctive or simply less relevant due to their more distant position and smaller size. As a result, they are not sufficient to exclude a likelihood of confusion between the marks under the present dispute.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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).

Therefore, taking into account the aforementioned, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are enough to outweigh the visual, aural and conceptual (where understood) differences between the signs and they are likely to lead the relevant public to associate the signs in question and believe that the conflicting identical and at least similar goods and services come from the same undertaking or economically linked undertakings, despite a possible higher level of attention of the public for some of the relevant services.

Indeed, in the present case, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent figurative development of the earlier marks because it is a common market practice for brands to identify a new version or a new sub-brand through the use of additional verbal and figurative elements in combination with the main (‘house’) brand. In other words, consumers may think that the contested sign constitutes a new product/service line of the earlier marks and, consequently, confuse the origins of the goods and services at issue by assuming that they come from the same or economically-linked undertakings.

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association, on the substantial part of the Polish-speaking 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 registrations No 1 798 099 and No 49 221. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registrations No 1 798 099 and No 49 221, there is no need to assess the enhanced degree of distinctiveness of the earlier marks due to their extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

 

 

Jakub MROZOWSKI

Monika CISZEWSKA

Claudia MARTINI

 

 

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.