OPPOSITION No B 3 076 704

Schuhhaus Siemes Einkaufs & Beteiligungs GmbH, Krefelder Straße 310, 41066 Mönchengladbach, Germany (opponent), represented by Leifert & Steffan Patentanwälte PartG mbB, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Firma Odzieżowa ‘Barbaras’ Marcin Skowron, ul. Szkolna 11, 28-200, Staszów, Poland (applicant), represented by Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195, Warszawa, Poland (professional representative).

On 23/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 704 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 17 976 208 for the figurative mark . The opposition is based on German trade mark registration No 1 121 505 for the word mark ‘Barbarella’. The opponent invoked Article 8(1)(a) and (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 25: Shoes and boots.

The contested goods are the following:

Class 25: Hats; caps [headwear]; baseball caps; knitted caps; sports caps and hats; woolly hats; peaked caps; bobble hats; fake fur hats; flat caps; children's headwear; headbands [clothing]; scarves; gloves [clothing]; neck warmers; neckwear; arm warmers [clothing]; the aforementioned goods do not concern the underwear.

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 foods or services include, inter alia, the nature and purpose of the foods 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.

The contested goods are headgear or clothing articles. They are similar to the opponent’s shoes and boots. Indeed, these goods are used for covering and protecting parts of the human body and/or for fashion. They target the same public. The distribution channels for these goods may coincide and consumers looking for clothes or headgear might expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce clothing or headgear and footwear.

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 found to be similar are directed at the public at large. The degree of attention is average.

3. The signs

Barbarella
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 trade mark is a word mark, ‘Barbarella’. In the case of word marks, it is the words as such that is protected and not its written form. Therefore, it is irrelevant that the earlier mark is depicted in lower case letters whereas the contested sign is depicted upper letters.

The contested trade mark is figurative and consists of the verbal element ‘BARBARAS’ depicted as a capitalised word in slightly stylised grey letters. Above and below this verbal element there are curved lines, which are banal and purely decorative figurative elements and therefore non distinctive.

In any event, it should 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.

Since both ‘Barbarella’ and ‘BARBARAS’ will be perceived as fanciful words without any meaning for most of the public under analysis, these elements of the earlier mark and the contested sign respectively are distinctive to a normal degree. It cannot be excluded that part of the relevant public associate the earlier mark with the name of a fictional heroine of a rather popular science fiction film based on the comic series of the same name.

Visually, the signs coincide in the sequence of first six letters ‘Barbar*’, present in the same order in both marks. The signs differ in their ends, namely ‘-ella’ in the earlier mark and “-as” in the contested sign. They also differ in their respective length and, as regards the contested sign, in its stylisation and in the non-distinctive figurative elements. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of the letters, but they cannot, for that reason alone, be regarded as visually similar.

Therefore, in view of all above, it is considered that the marks under comparison are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘Bar-ba’ present identically in both signs. The pronunciation differs in the syllables ‘re-lla’ of the earlier sign, versus ‘RAS’ of the contested sign. The partition of the syllables in the marks will be ‘Bar-ba-re-lla’ vs ‘BAR-BA-RAS’, resulting in a clearly perceptible difference in their respective numbers of syllables and vocalic sequences, leading therefore, to different rhythms and intonations. Therefore, the signs are similar to a below average degree.

Conceptually, for part of the public, neither of the signs has a meaning. In such a case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. The remaining part of the public will perceive a meaning but only in the earlier mark. In this other scenario, since the contested sign will not be associated with any meaning, the signs are not conceptually similar for these consumers.

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.

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

5. 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.

Likelihood of confusion covers situations where 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.

In the present case the conflicting goods are similar. The goods are directed at the public at large whose degree of attention is average. The earlier mark enjoys a normal degree of distinctiveness. The signs are visually and aurally similar to a below average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark it must be stressed that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. The differences in the endings of the signs, having a clearly noticeable impact on the visual and aural perception, and the absence of a common meaning that might bring the marks closer are sufficient to outweigh the coincidences in some letters.

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

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs and the goods are obviously not identical.

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

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

Martina GALLE

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.