OPPOSITION No B 3 037 895

BUTI S.R.L., Via Spagna 3, Località La Tura, 56032 Cascine di Buti (Pisa), Italy (opponent), represented by Buzzi, Notaro & Antonielli d’Oulx, Corso Vittorio Emanuele II, 6, 10123 Torino, Italy (professional representative)

a g a i n s t

Shen Zhen Shi KangHengKai KuaJingDianShang ChanYe KeJi YouXianGongSi, 301 cheng shi shan hai center C building 3 floor, no 11 zhongxing rd, ban tian st, long gang dist, Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 24/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 895 is partially upheld, namely for the following contested goods:

Class 18: Travelling bags; net bags for shopping; mountaineering sticks; collars for animals; sling bags for carrying infants; backpacks; bags for climbers; vanity cases, not fitted; muzzles; pouch baby carriers.

2. European Union trade mark application No 17 322 901 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 some of the goods of European Union trade mark application No 17 322 901, XBUTY (word mark), namely against all the goods in Class 18. The opposition is based on European Union trade mark registration No 5 752 803, BUTI (word 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.

1. The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; wheeled shopping bags; shopping bags; purses; briefcases; card cases [notecases]; handbags; rucksacks; backpacks.

The contested goods are the following:

Class 18: Travelling bags; net bags for shopping; mountaineering sticks; collars for animals; covers for animals; sling bags for carrying infants; backpacks; bags for climbers; vanity cases, not fitted; muzzles; pouch baby carriers; frames for umbrellas or parasols.

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.

Travelling bags; backpacks are identically contained in both lists of goods.

The contested net bags for shopping overlap with the opponent’s shopping bags. Therefore, they are identical.

The contested sling bags for carrying infants; bags for climbers; pouch baby carriers are included in the broad categories of the opponent’s rucksacks; backpacks. Therefore, they are identical.

The contested mountaineering sticks are included in the broad category of the opponent’s walking sticks. Therefore, they are identical.

The contested collars for animals; muzzles are included in the broad categories of the opponent’s harness and saddlery. Therefore, they are identical.

The contested vanity cases, not fitted are similar to the opponent’s handbags. They have the same nature and purpose and are provided by the same firms. Moreover, they are sold through the same distribution channels, target the same public and are products in competition.

The contested covers for animals; frames for umbrellas or parasols are dissimilar to all the opponent’s goods. They have nothing relevant in common with the opponent’s goods. They are provided by different undertakings and sold through different distribution channels, and they do not target the same public. They are not in competition or complementary.

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 degree of attention will be average.

3. The signs

BUTI	XBUTY
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).

Both signs are word marks. The earlier mark, BUTI, has no meaning for the public in the relevant territory in relation to the relevant goods, and is distinctive.

The contested sign, XBUTY, is also meaningless for the relevant public. The sign has no meaning in relation to the relevant goods and has an average degree of distinctiveness.

Visually, the signs coincide in the letters ‘BUT’, which are the earlier sign’s first three letters and the contested sign’s second, third and fourth letters. However, they differ in the contested sign’s first letter, ‘X’, and in its last letter, ‘Y’, whose counterpart in the earlier sign is the letter ‘I’.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BUT’, present identically in both signs. The pronunciation differs in the sound of the contested mark’s first letter, ‘X’. Though the last letters of the two signs are different, ‘I’ versus ‘Y’, their pronunciation in these words is identical in several languages in the relevant territory (e.g. Italian, Spanish).

Therefore, the signs are aurally highly similar.

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.

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.

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.

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, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods are partly identical, partly similar and partly dissimilar.

The signs are visually and aurally highly similar. Both signs are word marks composed of four or five letters and the entire earlier mark is included in the contested sign, except for its last letter. Account must be 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).

Bearing in mind the average degree of distinctiveness of the earlier mark and the high visual and aural similarity between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public for the identical and similar goods, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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.

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.

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

Volker MENSING

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.