OPPOSITION No B 3 076 773

Gruner + Jahr GmbH, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Bird & Bird LLP, Am Sandtorkai 50, 20457 Hamburg, 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 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 773 is upheld for all the contested goods.

2. European Union trade mark application No 17 976 208 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 17 976 208 for the figurative mark . The opposition is based on German trade mark registrations No 30 2016 027 064 for the word mark ‘BARBARA’ and No 30 2015 044 013 for the figurative mark . 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.

The opposition is based on two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 2015 044 013, since the other earlier right is subject to opposition proceedings.

1. The goods and services

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

Class 35: Retail and mail order retail services, including via media such as television, radio, the Internet and other data networks, relating to clothing and headgear.

Following a restriction requested by the applicant, 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 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.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because 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 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, which are all items of clothing and headgear, are similar to the opponent’s retail and mail order retail services, including via media such as television, radio, the Internet and other data networks, relating to clothing and headgear.

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 and services found to be similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

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 element ‘BARBARA’ of the earlier mark will be perceived as a female name by the relevant public. Since it has no meaning in relation to the services in question, it is, therefore, distinctive.

The element ‘BARBARAS’ of the contested sign can be understood either as the plural form of the female name Barbara or as denoting possession (according to the grammatical rules of the genitive case in German), in other words, as meaning that the goods in question belong to Barbara. In any case, this element is distinctive.

The rather standard stylisation of the verbal elements in both signs will be merely perceived as graphical means of bringing the verbal elements to the attention of the public and, therefore, its impact on the comparison of the signs will be limited. The label perceived in the contested sign is ornamentally rather commonplace in trade and merely serves to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to it (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

Contrary to the opponent’s opinion, the contested sign has no element that could be considered clearly more dominant than other elements. The verbal and the figurative element are both perceived at the same level.

Visually and aurally, the signs coincide in the element ‘BARBARA*’ and its pronunciation, depicted in upper-case letters, although in black letters in the earlier mark and grey letters in the contested sign. The signs differ in the letter/sound ‘S’, placed at the end of the contested sign, and in their figurative aspects, as described above, which have a limited impact.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a very similar meaning, the signs are conceptually highly similar.

As the signs have been found similar in all the aspects 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 has no meaning for the 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.

5. 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 which can be made with the registered mark, 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).

In the present case, the contested goods are similar to the opponent’s services and target the public at large with an average degree of attention.

The distinctiveness of the earlier mark is normal.

The signs are visually, aurally and conceptually similar to a high degree on account that the only verbal element of the earlier mark is entirely included in the contested sign, which basically differs in the additional letter ‘S’ placed at the end, where the consumer usually focuses last its attention. The figurative aspects of the conflicting signs have a lower impact, for the reasons explained in section c) of the present decision.

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, in the present case, 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/services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the differences between the signs are not sufficient to counteract the similarities. Having regard the high degree of similarity between the signs, the Opposition Division considers that a likelihood of confusion between the marks in conflict cannot be safely excluded in the context of the goods and services that are similar.

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

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2015 044 013. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Eva Inés PÉREZ SANTONJA

Marta GARCÍA COLLADO

Chantal VAN RIEL

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.