OPPOSITION No B 3 108 326

Bimbo, S.A., C/ Josep Pla, 2-B2 (Torres Diagonal Litoral), 08019 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Beemoov, 57 boulevard Gaston Serpette, 44000 Nantes, France (applicant).

On 24/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 326 is upheld for all the contested goods.

2. European Union trade mark application No 18 051 402 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 18 051 402 for the word mark ‘Ma Bimbo’. The opposition is based on, inter alia, Spanish trade mark registration No 3 533 208 for the word mark ‘B BIMBO’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Spanish trade mark registration No 3 533 208 for the word mark ‘B BIMBO’, as this mark covers the broadest scope of goods.

a) The goods

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

Class 25: Shirts, t-shirts, sweaters, jerseys, socks, trousers, parkas, jackets, coats, caps, hats, cooking hats, shoes.

Class 28: Games, toys, Christmas articles.

The contested goods are the following:

Class 9: Video game programs.

Class 16: Decorations for pencils.

Class 25: Clothing.

Class 28: Electronic games.

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 9

The contested video game programs are similar to the opponent’s games in Class 28 as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 16

The contested decorations for pencils are at least similar to a low degree to the opponent’s toys as they are often distributed through the same channels (e.g. toy stores) and target the same relevant public. Furthermore, they are often produced by the same undertakings.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s shirts. 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 goods in Class 28

The contested electronic games are included in the broad category of the opponent’s games. Therefore, they are identical.

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 or similar (to varying degrees) are directed at the public at large. The degree of attention is average.

c) The signs

B BIMBO	Ma Bimbo
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal elements, ‘B BIMBO’ in the earlier mark and ‘Ma Bimbo’ in the contested sign will be perceived as meaningless by the relevant public and are distinctive.

Both signs are word marks. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if they are written in lower-case or upper-case letters, or in a combination thereof.

Visually and aurally, the signs coincide in their second and longest elements ‘BIMBO’. However, they differ in their first elements, ‘B’ in the earlier mark and ‘Ma’ in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 in relation to the goods in Classes 25 and 28, which are the relevant goods in the comparison with the contested goods above.

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

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large and the level of attention is average.

The conflicting goods are partly identical and partly similar (to varying degrees).

The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the visual and aural average degree of similarity between the signs, the identity and similarity (to varying degrees) between the goods, and the average degree of attention of the relevant public, it is considered that the relevant public might be led to believe that the conflicting goods come from the same or economically-linked undertakings. The low similarity between some of the goods is counterbalanced by the higher similarity between the signs, according to the interdependence principle mentioned above.

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

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 Spanish trade mark registration No 3 533 208 for the word mark ‘B BIMBO’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 533 208 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).

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

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

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.