OPPOSITION No B 3 062 478

IBABY Limited, Suite 207 548-550 Elder House, Elder Gate, MK9 1LR Milton Keynes, United Kingdom (opponent), represented by Christopher Michael Brothers, 1 The Granary, SG15 6SH, Arlesey, United Kingdom (professional representative)

a g a i n s t

José Luis Morales Garcia-Abadillo, Partida Madrigueres Sud 43A, 03700 Denia / Alicante, Spain (applicant), represented by Carmen Blazquez, Estrella Polar 28 8I, 28007 Madrid, Spain (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 478 is upheld for all the contested goods.

2. European Union trade mark application No 17 895 615 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 895 615 . The opposition is based on European Union trade mark registration No 10 152 759 ‘IBABY’. 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 12: Baby carriages, covers for baby carriages; strollers, stroller covers; car seats, bicycles, and tricycles; vehicles; apparatus for locomotion by land, air or water.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sleeping bags; plastic cake decorations; drinking straws; figurines of wood, wax, plaster, or plastic; picture frames; jewellery cases not of precious metal; mobiles (decoration); pillows; decorative wall plaques; statues of wood, wax, plaster, or plastic; trays not of metal; wind chimes; toy chests; beds; infant walkers; seats; bassinets; cradles; play pens; nesting boxes; high chairs for babies; crib bumpers.

The contested goods are the following:

Class 12: Infants’ carriages with removable infant supports; portable children’s seats for vehicles.

Class 20: Babies’ bouncing chairs; bassinets; baby changing mats; cots for babies; baby bolsters; babies’ baskets; playpens for babies; babies’ chairs; wall-mounted baby changing platforms; seats adapted for babies.

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.

Contested goods in Class 12

The contested infants’ carriages with removable infant supports overlap with the opponent’s baby carriages. Therefore, they are identical.

The contested portable children’s seats for vehicles are meant to transport children in vehicles, such as cars. They are designed to ensure the children’s safety and comfort. These goods overlap with the opponent’s car seats. Therefore, they are identical.

Contested goods in Class 20

Bassinets and playpens for babies are identically contained in both lists of goods. Bassinets are small beds for babies that are like baskets. They overlap with the contested babies’ baskets. Therefore, they are identical.

The opponent’s cradles are baby beds with high sides. Cradles often have curved bases so that they rock from side to side. Therefore, they are identical to the contested cots for babies (which are beds for babies, with bars or panels round them so that the babies cannot fall out). The same applies to the opponent’s high chairs for babies and the contested babies’ chairs and seats adapted for babies. Therefore, they are identical.

The opponent’s crib bumpers are meant to protect babies; these goods include the contested baby bolsters. Therefore, they are identical.

The contested babies’ bouncing chairs; baby changing mats; wall-mounted baby changing platforms are at least similar to the opponent’s furniture, as they usually coincide in producer, relevant public and distribution channels.

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. Because the conflicting goods refer to articles that are used for babies and are not purchased on a daily basis, as they can be quite expensive, the level of attention will vary from average to higher than average.

3. The signs

IBABY
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 upper-case letters used in the earlier mark, do not have any impact on the assessment of the signs’ similarity since the sign is a word mark and, thus, its protection relates to the words and not to the specific figurative or stylistic elements that the marks might have (21/09/2012, T‑278/10, WESTERN GOLD / WeserGold et al., EU:T:2012:1257, § 44, 46). Furthermore, word marks have no dominant elements because they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression.

Both the earlier mark and the contested sign, in which there is no element that is more eye-catching, comprise the element ‘ibaby’. It could be broken down by the relevant public into the elements ‘i’ (this element does not bring any clear association but if any, it will be perceived equally in both signs) and ‘baby’, which is an English word meaning ‘[a] very young child’ (information extracted from Oxford Dictionaries on 10/09/2019 at https://www.lexico.com/en/definition/baby). This word is very often internationally used and has similar words in other EU languages: ‘bébé’ in French, ‘Baby’ in German, ‘bebé’ in Spanish, ‘bebê’ in Portuguese, ‘baby’ in Danish, ‘bebis’ in Swedish, etc. This word is a basic English word that will be understood in a significant part of the EU (22/09/2016, R 1396/2015‑1, Babys Life / Baby Line (fig.), § 26; 04/12/2014, R 1374/2014‑4, ECOBABY / BIOBABY, § 19).

The elements ‘baby’ may be rather limited as they may be associated with characteristics of the goods, all relating to babies (i.e. as a reference to their kind).

The sole element of the earlier mark is entirely reproduced in the contested sign. The differences between the signs are limited to the use of colours (the use of black and white for marketing purposes is a standard commercial practice), the additional word ‘Star’ and the figurative element depicting a star, both of which are laudatory, contrary to the applicant’s arguments. In this regard, the word ‘STAR’ is also commonly understood by the non-English-speaking public as a laudatory term highlighting the quality of the products (10/09/2014, T‑199/13, Star, EU:T:2014:761, § 61; 11/05/2010, T‑492/08, Star foods, EU:T:2010:186; § 52). The figurative element depicting a star is not particularly fanciful. It will be perceived as merely decorative or as indicating a higher quality of the goods in question but not as indicating the commercial origin of the goods and services (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 45).

Moreover, 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).

Consequently, visually, the figurative elements and additional word ‘Star’ of the contested sign cannot completely offset the similarities on account of the coinciding verbal element. Therefore, the signs are similar to a low degree.

The figurative element of the contested sign has no impact on the phonetic assessment and, moreover, has a limited impact, the signs are aurally and conceptually similar to a lower than 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

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. According to case-law, the earlier mark as a whole should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether European Union trade marks or national trade marks, enjoy a presumption of validity. The Court has made it clear that ‘in proceedings opposing the registration of a Community trade mark [European Union trade mark], the validity of national trade marks may not be called into question.’ (24/05/2012, C‑196/11 P, FI-Live, EU:C:2012:314, § 40-41).

Therefore, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as weak.

5. Global assessment, other arguments and conclusion

As concluded above, the goods are identical and at least similar. The level of attention of the relevant public may vary from average to high. The distinctiveness of the earlier mark is weak for the goods in question.

The signs are visually similar to a low degree, while they are aurally and conceptually similar to a lower than average degree.

The differences between the signs in the figurative elements of the contested sign, as established above, play a lesser role in the evaluation of the likelihood of confusion as they have less impact than the verbal elements.

Therefore, taking into account that the sole verbal element of the earlier mark is entirely contained in the contested sign, when encountering the contested sign in relation to the identity and similarity of the goods, consumers are likely to confuse the signs and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

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). Consequently, the similarities between the signs are sufficient to lead to a likelihood of confusion, even for the highly attentive consumers.

The Court has emphasised on several occasions that a finding of a low degree of distinctiveness of the earlier trade mark does not prevent a finding of likelihood of confusion. Although the degree of distinctiveness of the earlier mark must be taken into account when assessing likelihood of confusion, it is only one factor amongst others involved in that assessment. Therefore, even in a case involving an earlier mark of a weak degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In his observations, the applicant argues that the earlier trade mark has a low degree of distinctiveness given that many trade marks include the word ‘BABY’. In support of his argument the applicant refers to some trade mark registrations without specifying the territories. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘BABY’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 152 759 ‘IBABY’. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

Martin EBERL

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.