OPPOSITION No B 2 315 888

Canifrance, 119, rue du Grand Chemin, 59100 Roubaix, France (opponent), represented by DS Avocats, 8 rue Anatole France, 59000 Lille, France (professional representative)

a g a i n s t

Billionaire Trademarks B.V., Silodam 187, 1013 AS Amsterdam, The Netherlands (applicant), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo 10, 20121 Milano, Italy (professional representative)

On 25/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 315 888 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 12 188 215, namely against all the goods in Classes 3, 9, 14, 18 and 25. The opposition is based on European Union trade mark registration No 11 082 773. 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.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 mark is a figurative mark consisting of a black circular tag label featuring two white uppercase ‘B’ letters slightly inclined upwards, the second letter being a mirrored image of the first. Whilst the figurative element of the earlier mark is non-distinctive as it will merely be perceived as a common tag label, the verbal element consisting of two ‘B’ letters has no particular meaning and will, therefore, be perceived as distinctive.

The contested sign is a figurative mark consisting of two golden graphical components with a significant upward inclination, the second of which is a mirrored image of the first turned upside down. The top and bottom of the components have straight cut edges which, together with the short, straight lines of the curved shapes in the top-left and bottom-right corners, also produce the impression that they are contained in a square. Taking into account that the first graphical component is highly similar to the number ‘3’ and that the second component is a mirrored image of the same turned upside down, the contested sign is likely to be perceived by most consumers as consisting of the highly stylised number ‘33’. However, it cannot be fully excluded that a part of the relevant public may also perceive the contested sign as consisting of two abstract graphical components not representing any particular number, letter or commonly used symbol. The number ‘33’ is, as such, descriptive of the size in relation to some of the contested goods (e.g. footwear in Class 25), in relation to which it will therefore be non-distinctive. However, in relation to most of the contested goods, the number ‘33’ will not be perceived as having any particular meaning and will, therefore, be considered distinctive. This will also be the case if the contested sign is perceived as consisting of two abstract graphical components.

Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The opponent argues that the contested sign is a figurative mark made up of the letters ‘BB’ written in a stylised font. The applicant also indicated in the application form when applying for the contested sign that the verbal elements of the figurative mark consisted of ‘BB’. However, it is irrelevant that the particulars of the mark indicate a verbal element or that the applicant referred to its mark by a particular verbal element in its application, because the consumer will not be assisted by that information on encountering the sign as applied for or as registered. Moreover, the graphical components of the contested sign as applied for do not resemble the letter ‘B’, in particular as the vertical line present to the left in the letter ‘B’ is not present in the graphical components of the contested sign. Therefore, as already outlined above, the first graphical component of the contested sign is rather reminiscent of the number ‘3’. As a result, the opponent’s argument that the contested sign consists of the letters ‘BB’ and that they, visually and phonetically, constitute the dominant element of the contested sign cannot succeed.

Consequently, the comparison of the signs will proceed on the basis of the perception of the contested sign as applied for (as described above).

Visually, the earlier mark will be perceived as the letters ‘BB’ contained in a black circular tag label whereas the contested sign will be perceived as the number ‘33’, or otherwise as two abstract graphical components, in gold, shaped in a way that produces the impression they are contained in a square. Either way, the signs do not visually coincide in any element and it must therefore be concluded that the signs are visually dissimilar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as the letters ‘BB’. Therefore, for the part of the public that perceives the contested sign as consisting of the number ‘33’, the signs are aurally dissimilar. However, for the remaining part of the public that may perceive the contested sign as consisting of two abstract components, the signs cannot be compared aurally, since purely figurative signs are not subject to a phonetic assessment.

Conceptually, as the letters ‘BB’ will not be associated with any particular concept, for the part of the public that perceives the contested sign as consisting of the number ‘33’, the signs are not conceptually similar. For the remaining part of the public that may perceive the contested sign as consisting of two abstract components, neither of the signs has a meaning. Since a conceptual comparison is not possible for this part of the public, the conceptual aspect will not influence the assessment of the similarity of the signs.

It follows from the above comparison that the signs are dissimilar overall.

The opponent cited a number of previous cases decided by the Office where a likelihood of confusion was found to exist between different two-letter signs. However, in all these cases, the signs consisted of the same two letters and were found to be similar. In the present case, for the reasons outlined above, the signs do not consist of the same two letters and have been found to be dissimilar. Therefore, the previous cases referred to by the opponent are not relevant to the circumstances of the present proceedings.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Milda CERNIAUSKAITE

Sam GYLLING

Oana-Alina STURZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.