OPPOSITION Nо B 3 097 810

 

Barts Beheer B.V., Archangelkade 30, 1013BE Amsterdam, The Netherlands (opponent), represented by Rise, Jan Huijgenstraat 3, 2012 VC Haarlem, The Netherlands (professional representative) 

 

a g a i n s t

 

Meth S.R.L., Via Don Minzoni, 8, 20873 Cavenago di Brianza (MB), Italy (applicant), represented by Praxi Intellectual Property S.P.A., Via G. Carducci, 6, 62012 Civitanova Marche (MC), Italy (professional representative).

On 08/02/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.

Opposition No B 3 097 810 is partially upheld, namely for the following contested goods: Class 18: Trunks [luggage]; traveling trunks; casual bags; cross-body bags; purses; handbags; travelling sets [leatherware]; briefbags; satchels; straps (leather -); collars for animals; trimmings of leather for furniture; leather leashes; pouch baby carriers; fur; animal skins, hides; curried skins; skins of chamois, other than for cleaning purposes; business card cases; credit card cases [wallets]; wallets; haversacks; boxes of leather or leatherboard; suitcases; wheeled suitcases; attaché cases; garment bags for travel; backpacks; all the aforesaid goods not relating to cycling and motorcycling. Class 25: Hosiery; sweaters; polo shirts; polo sweaters; polo knit tops; sweat shirts; hooded sweatshirts; short-sleeved T-shirts; long-sleeved shirts; jumpers; Tee-shirts; gowns; clothing; shirts; coats; belts (money -) [clothing]; tights; layettes [clothing]; masquerade costumes; beachwear; neckties; pocket squares; scarves; garters; skirts; aprons [clothing]; paper clothing; knitwear [clothing]; pelerines; sleep masks; wetsuits for water-skiing; trousers; ear muffs [clothing]; pelisses; pyjamas; ponchos; shawls; fur stoles; uniforms; robes; insoles; footwear soles; studs for football boots; galoshes; footwear; training shoes; shoes; gymnastic shoes; beach shoes; football boots; training shoes; ski boots; all the aforesaid goods not relating to cycling and motorcycling.

 

2.	European Union trade mark application No 18 084 424 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 084 424 (figurative mark). The opposition is based on, inter alia, Benelux trade mark registration No 897 169 (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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 897 169.

 

a) The goods

 

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

 

Class 18: Leather and imitations of leather and products made therefrom, namely sports bags, school bags, camping bags, backpacks, toilet bags, wallets, purses, briefcases, credit card holders, cases, handbags, shoulder bags, hip bags, wrist bags, key cases, boxes, and cases for driving licenses, cosmetics, credit cards and business cards; animal skins; suitcases and travel bags; umbrellas, umbrellas and walking sticks; whips and saddlery; leather and imitation leather belts (not included in other classes).

Class 25: Garments; footwear; headwear including hats and caps; ear muffs (clothing); scarves, gloves, mittens and other similar clothing accessories, not included in other classes; snow boots.

The contested goods, after a limitation, are the following:

 

Class 18: Trunks [luggage]; traveling trunks; casual bags; cross-body bags; purses; handbags; travelling sets [leatherware]; briefbags; satchels; straps (leather -); collars for animals; trimmings of leather for furniture; leather leashes; pouch baby carriers; fur; animal skins, hides; curried skins; skins of chamois, other than for cleaning purposes; business card cases; credit card cases [wallets]; wallets; haversacks; boxes of leather or leatherboard; suitcases; wheeled suitcases; attaché cases; garment bags for travel; backpacks; all the aforesaid goods not relating to cycling and motorcycling.

Class 25: Hosiery; sweaters; polo shirts; polo sweaters; polo knit tops; sweat shirts; hooded sweatshirts; short-sleeved T-shirts; long-sleeved shirts; jumpers; Tee-shirts; gowns; clothing; shirts; coats; belts (money -) [clothing]; tights; layettes [clothing]; masquerade costumes; beachwear; neckties; pocket squares; linings (ready-made -) [parts of clothing]; scarves; garters; skirts; aprons [clothing]; paper clothing; knitwear [clothing]; pelerines; sleep masks; wetsuits for water-skiing; trousers; ear muffs [clothing]; pelisses; pyjamas; ponchos; shawls; fur stoles; uniforms; robes; tips for footwear; insoles; footwear soles; studs for football boots; heels; footwear uppers; goloshes; footwear; training shoes; shoes; gymnastic shoes; beach shoes; football boots; training shoes; ski boots; all the aforesaid goods not relating to cycling and motorcycling.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

 

The Opposition Division notes that the specification included at the end of each class in the list of the contested goods, namely all the aforesaid goods not relating to cycling and motorcycling, although taken into account, has no impact on the present comparison.

Contested goods in Class 18

Animal skins; backpacks; purses; handbags; briefbags; business card cases; credit card cases [wallets]; wallets; suitcases are identically contained in both lists of goods (including synonyms).

The contested trunks [luggage]; traveling trunks overlap with the opponent’s suitcases. Therefore, they are identical.

The contested boxes of leather or leatherboard overlap with the opponent’s boxes. Therefore, they are identical.

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

The contested hides are included in the broad category of, or overlap with, the opponent’s leather. Therefore, they are identical.

The contested fur; curried skins are included in the broad category of the opponent’s animal skins. Therefore, they are identical.

The contested skins of chamois, other than for cleaning purposes is included in the broad category of the opponent’s leather. Therefore, they are identical.

The contested garment bags for travel are included in the broad category of the opponent’s travel bags. Therefore, they are identical.

The contested travelling sets [leatherware] overlap with the opponent’s travel bags. Therefore, they are identical.

The contested casual bags; cross-body bags; satchels; straps (leather -); haversacks are at least similar to the opponent’s handbags. They have the same purpose and are usually manufactured by the same entities and are directed at the same relevant public via the same distribution channels. The same reasoning applies to the contested attaché cases found similar to the opponent’s briefcases.

The contested collars for animals; leather leashes are similar to the opponent’s whips and saddlery as they usually coincide in producer, relevant public and distribution channels.

The contested pouch baby carriers are lowly similar to the opponent’s garments in Class 25. These goods usually coincide in their manufacturer, relevant public and distribution channels.

The contested trimmings of leather for furniture are lowly similar to the opponent’s leather and imitations of leather as they have the same nature and can be used for the same purpose, upholster and/or decoration of furniture.

Contested goods in Class 25

Scarves; ear muffs [clothing]; footwear are identically contained in both lists of goods.

The contested hosiery; sweaters; polo shirts; polo sweaters; polo knit tops; sweat shirts; hooded sweatshirts; short-sleeved T-shirts; long-sleeved shirts; jumpers; Tee-shirts; gowns; shirts; coats; belts (money -) [clothing]; tights; layettes [clothing]; masquerade costumes; beachwear; neckties; pocket squares; scarves; garters; skirts; paper clothing; knitwear [clothing]; pelerines; wetsuits for water-skiing; trousers; pelisses; pyjamas; ponchos; shawls; fur stoles; uniforms; robes are included in the broad category of the opponent’s garments. Therefore, they are identical.

The contested galoshes; training shoes; shoes; gymnastic shoes; beach shoes; football boots; training shoes; ski boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested aprons [clothing] are similar to the opponent’s garments as they usually coincide in producer, relevant public, distribution channels and method of use.

The contested insoles; footwear soles; studs for football boots are similar to the opponent’s footwear. These goods are usually manufactured by the same producer and target the same relevant public via the same distribution channels. Furthermore, they are complementary.

The contested sleep masks are lowly similar to the opponent’s garments as they usually coincide in producer and distribution channels.

The remaining contested goods, linings (ready-made -) [parts of clothing]; tips for footwear; heels; footwear uppers, are dissimilar to the opponent’s goods in Classes 18 and 25 as they have different natures, purposes and methods of use. The contested goods are aimed at different public, usually manufacturers of clothing and footwear, and not at end users, and, therefore, they use different distribution channels. Furthermore, they have different origin and are neither in competition nor complementary.

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 (for example clothing and footwear) and at business customers with specific professional knowledge or expertise (for example animal skins).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux.

 

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T 33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T 355/02, ZIRH, EU:T:2004:62, § 36).

The verbal element ‘Bart’ is a Dutch male given name, very common in particular in the Flemish part of Belgium. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

The element ‘BARTS’ of the earlier mark has no meaning as such for the relevant public. However, it may be perceived as a misspelled form of the male name Bart, Bart’s, ‘of Bart, from Bart’. In any event, it is distinctive.

The figurative device, a white cross on a black round background, has no particular meaning in relation to the relevant goods, clothing, footwear, headgear, bags, and is, therefore, distinctive. However, 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 (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37)..

The contested sign consists of the elements ‘LEOPARD’, where the ‘O’ is replaced by the stylised head of a leopard, and ‘by bart’. The relevant public will perceive the first verbal element as the animal ‘leopard’ because it is very close to the equivalent word in Dutch (‘luipaard’, information extracted from Cambridge Dictionary on 03/02/2021 at https://dictionary.cambridge.org/dictionary/dutch-english/luipaard). Since this word and the figurative element of the leopard are not descriptive, weak or otherwise allusive in relation to part of the relevant goods, namely items of clothing, footwear, headgear, bags, they are distinctive. For another part of the relevant goods, for example leather, animal hides and skins, this element is weak.

The verbal elements are depicted in a slightly stylised typeface in black. The stylised head of a leopard will be perceived by the relevant public as a representation of one of the verbal elements. In relation to the figurative element, as already mentioned above, 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 because the public will more easily refer to the signs in question by their verbal element than by their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). This is particularly important in the present case, where the figurative element of the contested sign is likely to simply reinforce the concept introduced by the verbal element.

The verbal element ‘bart’ of the contested sign, as mentioned above, will be perceived by the relevant public as a common male name. Furthermore, the English expression at the end of the contested sign, ‘by bart’, is commonly and frequently used on a worldwide basis in the most disparate trade sectors to indicate the manufacturer or designer of many articles. The relevant consumers are used to seeing such indications on many products (04/02/2015, T‑372/12, APRO, EU:T:2015:70, § 38). In the present case, the relevant consumers will perceive the expression ‘by bart’ as a business name or a designer’s name, that is to say, indicating a specific trade origin. The distinctiveness of this element is average.

The earlier mark has no element that could be considered clearly more dominant than other elements.

 

Contrary to the assertions of the opponent the element ‘LEOPARD’ in the contested sign is the dominant element as it is the most eye-catching.

Visually and aurally, the signs coincide in the letters ‘BART(*)’. They differ in the elements ‘LE(*)PARD’, ‘by’ and the stylised head of a leopard of the contested sign and the final letter ‘S’ of the verbal element, the figurative element and aspects of the earlier mark which have no counterparts in the earlier mark/contested sign respectively.

 

Therefore, taking into account the distinctiveness of the signs’ elements and their impact on the consumers as explained above, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The elements ‘Barts’ and ‘by bart’ will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an 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.

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

According to case-law, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and customers with specific professional knowledge or expertise whose degree of attentiveness may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually, aurally and conceptually similar to an average degree. In particular, the marks coincide in the distinctive verbal element ‘BART’, which is reproduced in its entirety in the earlier mark and has a very similar, almost identical meaning.

In a situation where the signs consist of a business name and an element typically indicating the mark designating the line of product, either element may become more relevant in the overall impression of the sign, even if it has a lower degree of distinctiveness or is visually less prominent. This is because in such a situation, both elements of the sign (i.e. the business name and the mark designating the product line) will in principle play an independent distinctive role even where the distinctiveness per se of one of them is lower. On account of this particular configuration of the sign the consumer will perceive the elements independently, as each indicating an aspect of the commercial origin of the goods or services designated by it (e.g. a business name and a mark designating the product line).

Consequently, if the earlier mark is identical (or highly similar) to either element (the business name or the mark designating the product line), even if it is the one that otherwise would be less relevant (e.g. due to its size or due to its lower distinctiveness), there will, in principle, be a likelihood of confusion.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

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). In this case, it is considered that the similarities between the signs, together with the identity or similarity (to varying degrees) of some of the goods herein involved, are clearly enough to counteract their dissimilarities, and to lead consumers to confusion as regards the commercial origin of those identical or similar goods.

 

As claimed by the applicant, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). As explained above, the signs are visually (and aurally) similar to an average degree due to the specific perception of the expression ‘by bart’ by the consumers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 897 169. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark, even as regards the contested goods found similar to a low degree to the opponent’s goods.

 

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

 

The opponent has also based its opposition on the following earlier trade marks:

 

(1) Benelux trade mark registrations No 691 591 for the word mark ‘BARTS’ , registered for the following goods in Class 18: Leather and imitations of leather, and goods made of these materials, not included in other classes, namely bags, sport bags, school bags, camping bags, rucksacks, toilet cases and bags, wallets, purses, suitcases, leather diary covers, leather briefcases, key cases, credit card holders, cases of leather, handbags, shoulder bags, wrist bags, key chains of leather, covers for passports, leather covers, boxes of leather; trunks and travelling bags; umbrellas; parasols and in Class 25: Clothing, footwear, headgear.

(2) international trade mark registration designating the European Union No 807 718 for the word mark ‘BARTS’, registered for the following goods in Class 18: Leather and imitations of leather, and goods made of these materials, not included in other classes, namely bags, sport bags, school bags, camping bags, rucksacks, toilet cases and bags, wallets, purses, suitcases, leather diary covers, leather briefcases, key cases, credit card holders, cases of leather, handbags, shoulder bags, wrist bags, key chains of leather, covers for passports, leather covers, boxes of leather; trunks and travelling bags; umbrellas; parasols and in Class 25: Clothing, footwear, headgear.

 

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

 

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

Valeria ANCHINI

 

 

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.