OPPOSITION No B 3 072 240

Kiddinx Studios GmbH, Ebereschenallee 7, 14050 Berlin (Westend), Germany (opponent), represented by 24IP Law Group Sonnenberg Fortmann, Charlottenstraße 80, 10117 Berlin, Germany (professional representative)

a g a i n s t

Gujranwala Foods Industries (Pvt.) Ltd., 53/55-A, S. I. E. # 2 Gujranwala, Pakistan (applicant), represented by Ratza & Ratza SRL Bulevardul A.I. Cuza Nr. 52-54, Sector 1, 011056 Bucharest, Romania (professional representative).

On 21/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 240 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 959 511, for the figurative mark . The opposition is based on European Union trade mark registration No 10 368 223, for the word mark ‘Bibi & Tina’. 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.

1. The goods

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

Class 30: Coffee, tea, cocoa, sugar, rice, tapioka, sago, artificial coffee; flour and preparations made from cereals; bread; pastry and confectionery, chocolate and chocolate articles, ices; honey, treacles; yeast, bakingpowder; salt, mustard; vinegar, sauces, condiments; spices; ice; bagels; bases for making milk shakes; biscuits; breakfast cereals; bubble gum; cakes; cake mixes; sweets; cake decorations made of candy; ketchup; cereal-based snack bars; chewing gum; chocolate-based beverages; cocoa-based beverages; ice cream wafers; cookies; corn-based snack foods; crackers; deli sandwiches; flavoured, sweetened gelatin desserts; frozen confections; frozen meals consisting primarily of pasta or rice; frozen yogurt; ice milk; liquorice; marshmallows; mayonnaise; muffins; pastes (farinaceous food -); oatmeal; pancakes; pancake mixes; pasta; pastries; pancake syrup; pies; pizzas; popcorn; pretzels; puddings; rolls; salad dressings; sherbets; tea; tortillas; waffles; cracker and cheese combinations.

The contested goods are the following:

Class 30: Chewing gum; chewing candy; confectionery; non-medicated candy; candy bars; toffee; lollipops; jelly beans; fruit jellies [confectionery]; gum sweets; chocolate; chocolate candies; soft caramels; chewing sweets (non-medicated -); milk chocolate bars; sweetmeats [candy]; chocolate eggs; easter eggs; biscuits; wafers; chewing gum for breath freshening.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. 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 assumed to be identical are directed at the public at large. The degree of attention is average.

3. The signs

Bibi & Tina
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 earlier mark is the word mark ‘Bibi & Tina’. 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 a combination thereof (21/09/2012, T 278/10, WESTERN GOLD, EU:T:2012:1257, § 44, 46).

The verbal combination ‘Bibi & Tina’ will be perceived by the public as the combination of two given names. Since the names ‘Bibi’ and ‘Tina’ do not have any meaning in relation to the relevant goods, they have an average degree of inherent distinctiveness.

The ampersand symbol is commonly used in trade to depict the conjunction ‘and’, and it will be perceived as such by the relevant consumers.

The contested sign is a figurative mark composed of the verbal elements ‘PRINCESS TINA’ depicted in white uppercase slightly stylised letters on a pink background framed by two lines in yellow and light blue.

The assertions concerning the distinctiveness of the element ‘Tina’ in the earlier mark are equally valid for the identical verbal element in the contested sign.

The English word ‘PRINCESS’ referring to ‘a female member of a royal family’ (information extracted from Collins Dictionary on 14/01/2010 at https://www.collinsdictionary.com/dictionary/english/princess), notwithstanding the fact that it does not exist in this form in all of the languages of the EU, will be understood by the average consumer in the relevant territory (6/03/2013 – R 1229/2011-5 – FAIRYTALE PRINCESS / DISNEY PRINCESS, § 40) since it is a basic English word.

Since the element ‘PRINCESS’ has no meaning in relation to the relevant goods, contrary to the opponent’s view, it has an average degree of inherent distinctiveness.

The framed background in the contested sign will be considered as having a decorative function and serves to highlight the word element and is, at best, only weakly distinctive.

There is no element in the contested sign that is more dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters composing the element ‘Tina’ (and their sound) being the third element in the earlier mark and the second element in the contested sign. The signs differ in the letters composing their additional elements, namely, ‘Bibi’ and ‘&’ in the earlier mark and ‘PRINCESS’ in the contested sign.

These differing elements result in the marks having a different rhythm, length and overall composition.

Furthermore, it is particularly relevant that the coinciding element, namely the four letters composing the word ‘TINA’ are placed at the end of the marks under comparison. Indeed, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.

At a visual level, the signs also differ in the stylisation and in the coloured framed background of the contested sign which, although serving a decorative function, will not be overlooked.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, while the earlier mark conveys the concept of two people called ‘Bibi’ and ‘Tina’, the contested sign conveys the concept of a princess called ‘TINA’.

Despite the coincidence in the concept introduced by the given name ‘TINA’, considering the additional semantic contents introduced by the respective differing elements, the signs are conceptually similar to a below average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 trade mark enjoys a high degree of recognition among the relevant public in part of the relevant territory and in particular in Germany. In particular, the opponent claims that the earlier mark has enhanced distinctiveness in Germany given the popularity of an audio play, a book and several movies released in Germany under the earlier mark.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence:

• Screenshot allegedly extracted from Gesellschaft für Konsumforschung, GfK, Nürnberg, showing a chart of audio plays where ‘Bibi & Tina’ is the second audio play;

• Screenshot allegedly extracted from Kids License Monitor, Icon Kids & Youth, showing that ‘Bibi & Tina’ belonged to the top three themes for girls in 2017.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. Enhanced distinctiveness implies that the earlier mark is known by a relevant part of the public for the goods and services it covers. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public in relation to the relevant goods in Class 30. As a result, the evidence does not show any awareness of the earlier mark on the part of the relevant public.

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.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been assumed to be identical. The degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs have been found visually and aurally similar to a low degree. They are conceptually similar to a below average degree. This limited degree of similarity between the signs relies on the coincidence in the verbal element ‘TINA’ which is placed at the end in both sign.

Furthermore, the examination of the similarity of signs must take into account the overall impression produced by them (07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 23). The additional verbal elements in the signs and the figurative elements in the contested sign contribute to confer the signs a different length structure and overall composition.

The earlier sign is made up of two first names which denotes the idea of a joint venture or connection between two people, while the contested sign only contains one name and then the title ‘PRINCESS’. It would be highly unusual for a trade mark containing two names to be used with only one name and the title princess while altogether omitting the other name.

Therefore, the similarities between the signs are not sufficient to conclude that the marks are likely to lead to a likelihood of confusion or association, even in relation to identical goods. This is because the contested sign is sufficiently removed from the earlier marks and any existing similarity is diluted in the overall impression created by the signs. Indeed, it is well established in case-law that the average consumer, normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In consequence, the differing elements of the contested sign are clearly perceptible and safely counteract the similarities between the signs, resulting in different overall impressions.

The opponent refers to previous decisions, such as cases 29/02/2012, R0492/11-2 PRINCESS POPY/POPI and 18.07.2002, R0410/2001-1, PRINCESS DIANA/DIANA. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

However, the previous decisions referred to by the opponent are not relevant, since they concerns non-comparable cases in which the earlier mark was entirely (or almost entirely) reproduced in the contested sign and both marks were word marks. In those cases the same first name was the only name included in the other sign along with the title ‘PRINCESS’. In the present case the earlier sign is made up of two first names and only one of them is included in the contested sign and then the title ‘PRINCESS’ is added to that name. As mentioned previously it would be unusual for a trade mark containing two names (which denotes the idea of a joint venture or connection between two people) to be used with only one name and the title princess. Therefore, the decisions relied upon by the opponent must be distinguished from the case at hand.

Considering all the above there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Nicole CLARKE

Rosario GURRIERI

Erkki MÜNTER

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.