OPPOSITION No B 2 499 369

Biba GmbH, Daimlerstr. 3, 47167 Duisburg, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Vincenzo Fuzio, Via Onani, 14, 00152 Roma, Italy (applicant).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 499 369 is upheld for all the contested goods.

2. Community trade mark application No 13 592 605 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 592 605. The opposition is based on, inter alia, international trade mark registration No 768 399 designating the Czech Republic, Lithuania, Latvia, Hungary and the Benelux countries. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration No 768 399 and only in relation to some of the designated countries, namely the Czech Republic, Lithuania and Latvia.

1. The goods

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 goods on which the opposition is based are the following:

Class 25: Clothing, also clothing of leather and imitation leather or of fur, outerwear for women, sportswear, lingerie for women, corsetry articles (clothing), headgear, belts.

The contested goods are the following:

Class 25: Children's footwear; Clothing for children; Clothing; Headgear; Rainsuits; Roll necks [clothing].

Contested goods in Class 25

Clothing and headgear are identically contained in the lists of goods of both the earlier mark and the contested mark.

Children's footwear and the opponent’s clothing target the same public and serve the same purpose since they are used to cover and protect various parts of the human body against the elements. They are all articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar.

The contested clothing for children; rainsuits and roll necks [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

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 found to be identical or similar are directed at the public at large. The level of attention on the whole will be average.

3. The signs

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 their distinctive and dominant components (judgment of 11/11/1997, C-251/95 ‘Sabèl’ paragraph 23).

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, namely the visual, aural and conceptual aspects (see judgments of 23/10/2002, T‑6/01, ‘Matratzen’, paragraph 30, upheld on appeal by order of 28/04/2004, C‑3/03, of 12/07/2006, T-97/05, ‘Marcorossi’, paragraph 39 and of 22/06/2005, T-34/04, ‘Turkish Power’, paragraph 43, upheld on appeal by order of 01/06/2006, C‑324/05).

The signs to be compared are the following:

BiBA	bibabies
Earlier trade mark	Contested sign

The relevant territories are the Czech Republic, Lithuania and Latvia.

Both conflicting signs are word marks. The earlier consists of the word ‘BiBA’ and the contested sign of the word ‘bibabies’. The fact that the earlier mark is written in a combination of upper and lower case letters and the contested sign in lower case letters is irrelevant for the comparison of the signs, since in the case of word marks it is the word as such that is protected and not its written form.

Visually, both marks are similar to the extent that the earlier mark is entirely reproduced in the contested mark, which in addition contains the letter sequence ‘BIES’ at the end. In that regard, it is important to bear in mind that the consumer generally pays greater attention to the beginning of a mark than to the end (see judgments of 07/09/2006, T‑133/05 ‘Pam-Pim’s Baby-Prop’, paragraph 51 and that of 28/10/2010, T‑131/09, ‘Botumax’, paragraph 35). Therefore, even if the contested application is longer and has a different ending, the fact that the first four letters of the earlier mark appear in an identical position in the contested mark, namely the beginning, renders the mark overall visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the relevant territories the pronunciation of the signs coincides in the sound of the syllables ‘BI-BA’. The pronunciation differs in the sound of the additional syllables ‘BI-ES’ of the contested sign. However, the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity (see judgments of 17/04/ 2008, C‑108/07, ‘FERRERO/FERRO’, paragraph 48 and that of 19/05/2011, T‑580/08, ‘Pepequillo’, paragraph 79). Applying the same general considerations as made with the visual comparison and weighing up the common and different features of the signs, the signs are phonetically similar to an average degree.

Conceptually, the Opposition Division notes that the inclusion of the English word ‘babies’ in the contested sign has no bearing on the conceptual comparison of the signs in the relevant territories. Unlike the word ‘baby’, its unusual plural form ‘babies’ (instead of baby’s) is not such a common and widespread term that the relevant public, without the aid of visual differentiators, will recognize this word in the conjoined term ‘bibabies’. Especially, considering that the equivalent word for ‘baby’ in the languages of the relevant territories is very different, for example ‘vaikelis’ in Lithuanian, ‘mazulis’ in Latvian and ‘děťátko’ or ‘miminko’ in Czech, and that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details marks (see judgment of 11/11/1997, C-251/95, ‘Puma/Sabèl’, paragraph 23), the Opposition Division sees no reason to assume that a substantial part of the relevant public will perceive part of the contested sign as referring to the destined users of the goods in question.

Hence, neither of the signs has a meaning for the public in the relevant territories. Accordingly, no conceptual comparison between the signs, each viewed as a whole, is possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, it is considered that the signs under comparison are similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 in relation to any of the goods at hand 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 (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 18; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 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 (see, to that effect, judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 20; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 24; judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17).

As has been concluded above, the contested goods in Class 25 were found identical or similar to those of the earlier mark and are directed at the public at large whose level of attention is deemed average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the range of goods which have been found identical or similar.

The marks in dispute have been found to be visually and aurally similar to an average degree, while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them. Therefore, the entire reproduction of the earlier mark at the beginning of the contested sign is considered of high relevance in the assessment of the overall impression created by the signs, when bearing in mind that consumers normally attach more importance to the beginnings of words.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, the Opposition Division concludes that the differences between the signs in question, even though they will not go unnoticed by the relevant public, are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could believe, for instance, that the goods designated by the conflicting signs distinguish different product lines coming from the same or related undertakings.

Accordingly, it must be held that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s international trade mark registration No 768 399 designating Czech Republic, Lithuania and Latvia. It follows that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 768 399 designating the Czech Republic, Lithuania and Latvia 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 (see judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’) that is the other designations of the international trade mark registration or the earlier German mark.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Julia SCHRADER

Adriana VAN ROODEN

Gailė SAKALAITĖ-ORLOVSKIENĖ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.