OPPOSITION No B 3 092 446

Lightningbolt Europe, S.A., Rua do Comendador Manuel Gonçalves, n.º 25, 4770-588 São Cosme Vale, Portugal (opponent), represented by Pedro Gil and Paulo Rui Da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 -6°.Dt°., 4000-432, Porto Portugal (professional representative)

a g a i n s t

Ana Cortina Pons, Alcoi, 32, 08022 Barcelona, Spain (applicant), represented by Torner Juncosa I Associats, S.L., Calle Gran Via de les Corts Catalanes, 669 bis 1º 2ª, 08013 Barcelona, Spain (professional representative).

On 02/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 446 is upheld for all the contested goods.

2. European Union trade mark application No 18 049 616 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 18 049 616 for the word mark ‘BOLT BAG’, namely against all the goods in Class 18. The opposition is based on, inter alia, Portuguese trade mark registration No 343 970 for the word mark ‘LIGHTNING BOLT’. 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 343 970.

a) The goods

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

Class 18: Handbags; Beach bags; Rucksacks; Travelling bags; Garment bags for travel; Attaché cases, Change purses; Purses; Wallets; Briefcases (leatherware); School bags; Trunks; Haversacks and leather and imitation leather articles not included in other classes.

The contested goods are the following:

Class 18: Casual bags; Handbags; Travelling handbags; Handbags; Suitcases; Backpacks; Purses; Wallets; Travel cases.

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.

The contested handbags (included twice); backpacks; purses; wallets; travel cases are identically contained in both lists of goods (including synonyms). The contested casual bags and travelling handbags are included in the broad category of, and respectively overlap with, the opponent’s travelling bags. Therefore, these goods are identical.

The contested suitcases are highly similar to the opponent´s travelling bags as these goods have the same purpose and nature. They usually coincide in producer, relevant public, distribution channels and method of use.

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 are directed at the public at large, whose degree of attention is average.

c) The signs

LIGHTNING BOLT	BOLT BAG
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Even if it is an existing English word, the word ‘BOLT’, forming an independent element in both signs, is meaningless for the relevant public, and therefore it is distinctive to a normal degree. The word ‘LIGHTNING’, also being an English word, will also not be understood by the relevant public, and is therefore also distinctive to a normal degree. The contested sign´s second word, ‘BAG’, is however a fairly basic English word that will be understood by at least part of the relevant public as a clear and immediate reference to the contested goods, and is therefore non-distinctive for this part of the public. As a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, the Opposition Division will for reasons of procedural economy focus the comparison of the signs on this part of the public.

Visually and aurally, the signs coincide in the presence and sound of the word ‘BOLT’, being an independent element in both signs, namely the second word of the earlier mark and the first word of the contested sign. The signs differ in (the sound of) the first word of the earlier mark, ‘LIGHTNING’, and in (the sound of) the second, non-distinctive, word ‘BAG’.

Therefore, and weighing up the earlier mark´s different beginning, the signs are visually and aurally similar to a below-average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the contested sign´s word ‘BAG’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

e) Global assessment, other arguments and conclusion

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.

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 interdependence principle is of crucial importance for the assessment of likelihood of confusion. In the present case, the signs are visually and aurally only similar to a below-average degree, whereas they are conceptually neutral. However, the contested goods are identical and highly similar to the opponent’s goods, and they target the general public whose degree of attention in relation to these purchases will be average. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection.

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). Account is also taken of the fact that, in general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The different beginning of the earlier mark is outweighed by the fact that the only distinctive element of the contested sign is entirely contained within the earlier mark as an independent, observable and distinctive element. Moreover, it is also taken into account that it is common practice on the relevant market of consumer products for undertakings to make variations of their trade marks, for example by adding verbal elements to them, in order to denote new product lines, or to endow their trade mark with a new fashionable image. Therefore, when encountering the conflicting signs, the relevant public is likely to mentally register the fact that they coincide in the element ‘BOLT’ and perceive the contested sign as a sub-brand of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), or vice versa. Consequently, the similarities between the signs are sufficient to cause at least the part of the public that understands the English word ‘BAG’ to believe that the contested goods found to be identical and highly similar come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the relevant public that understands the English word ‘BAG’. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 343 970. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned 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 rights 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, she 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

Zuzanna STOJKOWICZ

Christophe DU JARDIN

Ferenc GAZDA

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.