OPPOSITION No B 3 062 941

Serga Kiesser, Wasserstraße 471 a, 44795 Bochum, Germany and Boris Trzin, Hasleystraße 20, 58511 Lüdenscheid, Germany (opponents), represented by Schneiders & Behrendt PartmbB, Rechts- Und Patentanwälte, Huestr. 23, 44787 Bochum, Germany (professional representative)

a g a i n s t

Bambusa, Kvitsøygata 30, 4014 Stavanger, Norway (applicant), represented by Alina Tungland, Kvitsøygata 30, 4014 Stavanger, Norway (employee representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 941 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 894 211 for the word mark ‘Bambusa’. The opposition is based on German trade mark registration No 302 013 006 880 for the 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.

1. The goods

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

Class 25: Clothing, footwear, headgear; outer clothing; underwear; socks and stockings; sneakers and leisure shoes of leather or fabric; caps [headwear]; jackets [clothing]; coats; belts [clothing]; leggings [trousers].

The contested goods are the following:

Class 25: Socks; ankle socks; men's dress socks.

Socks are identically contained in both lists of goods.

The contested ankle socks; men's dress socks are included in the broad category of the opponent’s socks. Therefore, they are identical.

2. Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large whose degree of attention is considered to be average.

3. The signs

	Bambusa
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element of the earlier mark, although slightly stylised and with the cross line of the letters ‘A’ missing, will be read as ‘BARBOZA’. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign has a meaning, a large genus of clumping bamboos. The Opposition Division, however, is of the opinion that this meaning is not known to a significant part of the relevant public. Nevertheless, part of the public may associate it with bamboo, ‘Bambus’ in German. Bearing in mind that the relevant goods are socks, it might allude to the material from which they are made. However, the Opposition Division considers that such concept in this context is not descriptive as it would require several mental steps from the consumers before establishing a link between the relevant goods and bamboo. Consequently, the contested sign is distinctive in relation to the goods in question.

However, the Opposition Division will first assess the signs in relation to the part of the public for which the verbal elements of the signs are perceived as meaningless invented terms. This is the most favourable hypothesis for the opponent since a clear concept in one of the signs may assist the public in distinguishing them.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly because the public reads from left to right and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a

whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52).

In the present case the coincidence in the beginning of the signs must have a lowered consideration on account of the overall impression produced by those signs.

Visually, the signs coincide in the letters ‘BA*B**A’ and their positions within the signs.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Furthermore, the signs differ in the letters ‘**R*OZ*’ of the earlier mark replaced by ‘**M*US*’ in the contested sign as well as the stylisation of the earlier mark.

Therefore, the signs are visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BA*B**A’, present identically in both signs. The pronunciation differs in the sound of the letters ‛R’, /r/, and ‘Z’, /ts/, of the earlier mark, while in the contested sign there are ‘M’, /m/, and ‘S’, /z/. The presence of these specific phonemes significantly increases the differences between the signs so that the overall impression is different. The identical beginning and ending of the signs cannot change this overall impression as it would require an artificial dissection of the signs.

Therefore, the signs are aurally similar to a low 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 two aspects of the comparison, the examination of likelihood of confusion will proceed.

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

According to the case-law of the Court of Justice, 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.

In the present case, the goods are identical and are directed at the public at large whose degree of attention is average.

The earlier mark is distinctive to a normal degree.

The marks were found to be visually similar to a lower than average degree and aurally similar to a low degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

The global appreciation of the likelihood of confusion must be based on the overall impression given by the marks. The perception of the marks by the average consumer of the goods in question plays a decisive role. As mentioned above, the differences in the pronunciation of the signs are significant. Therefore, even though there is a low degree of similarity between the two signs, these differences create a different overall impression.

Considering all the above, there is no likelihood of confusion on the part of the public examined above (i.e. consumers perceiving ‘BARBOZA’ and ‘BAMBUSA’ as meaningless verbal elements) which was considered to be the best-case-scenario for likelihood of confusion to arise.

Indeed, the differences between the marks will have a much more significant impact for the part of the relevant public for which ‘BAMBUSA’ alludes to ‘Bambus’ (bamboo). From their perspective, the conceptual differences between the signs will increase, and therefore likelihood of confusion is even less likely to occur in that scenario.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

María Clara IBÁÑEZ FIORILLO

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.