OPPOSITION Nо B 3 094 842

 

Original Buff S.A., c/ França 16, 08700 Igualada, Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Ulrich Pohlmann, An Der Umflut 4, 48683 Ahaus, Germany (applicant), represented by Johannes Theodor Wiekowski, Kiefernweg 2, 32457 Porta Westfalica, Germany (professional representative).

On 09/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 842 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 033 920 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 033 920 BUFFA (word mark), namely against some of the goods in Classes 3 and 21. The opposition is based on, inter alia, on the following earlier trade marks:

1) European Union trade mark registration No. 17 137 019 .

2) European Union trade mark registration No. 15 955 751 .

The opponent invoked Article 8(1)(b) and 8(5) EUTMR with regard to the first trade mark and only Article 8(1)(b) as to the second one.

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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier marks indicated above No. 17 137 019 ‘Buff’ (figurative mark) and No. 15 955 751 ‘Buff’ (figurative mark).

a) The goods

 

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

European Union trade mark registration No. 17 137 019:

Class 3: Bleaching preparations and other substances for laundry use; perfumery, essential oils, non-medical cosmetics, non-medicated hair lotions; non-medicated dentifrices

Class 18: Leather and imitation leather; animal skins.

Class 25: Clothing, footwear, headgear; visors.

European Union trade mark registration No. 15 955 751:

Class 24: Textiles and substitutes for textiles; bed covers; bath linen, except clothing; laminated textile piece goods having insulating properties; fleece made from copolymers; fleece made from polyester; fleece made from polypropylene; fabric linings for clothing; linings [textile]; foulard [fabric]; textile fabric piece goods for use in the manufacture of clothing; textile piece goods for making-up into towels; textile fabrics in the piece; materials for soft furnishings; materials for use in making clothes; heat formable non-woven textile materials; textile material; textile piece goods for use in the manufacture of protective clothing; textiles for making up into articles of clothing; woven cloth with breathable polyurethane coating for water proof garments; fibre fabrics for use in the manufacture of articles of clothing; coated fabrics; waterproof textile fabrics; breathable waterproof fabrics; fabric for footwear; linings [textile]; textile fabrics for use in the manufacture of sportswear; cloth; fibre fabrics for use in the manufacture of linings of shoes; fabrics of man-made fibres being textile goods in piece form; textile linings in the piece; coated fabrics for use in the manufacture of rainwear; woven fabrics for making up into articles of clothing; textile fabrics for use in the manufacture of towels; textile fabrics for the manufacture of clothing; textile used as lining for clothing; bed blankets; quilts; quilts; quilt covers; quilts; cot covers; quilts; duvets; sleeping bag liners; bed blankets; travelling rugs [lap robes]; blankets for household pets; blankets for outdoor use; children's blankets; textile goods for use as bedding; bath linen, except clothing; towelling [textile]; towelling [textile]; towels of textile.

The contested goods, after the restrictions made by the applicant on 17/09/2019 and 22/10/2019 for the relevant goods in Class 3, are the following:

Class 3: Fragrance preparations; cloths impregnated with a detergent for cleaning camera lenses; abrasive sanding sponges; cosmetics; abrasive paste; cloths impregnated with polishing preparations for cleaning; perfumery; abrasive boards for use on fingernails; impregnated cloths for polishing; scouring substances; wipes impregnated with a skin cleanser; essential oils and aromatic extracts; abrasive paper for use on the fingernails; cloths impregnated with a detergent for cleaning; spray cleaners for household use; perfumed tissues; impregnated cloths for cosmetic use; abrasive paper; none of the aforesaid goods in class 3 in the field of leather and shoe care and cleaning.

Class 21: Dusting cloths; cloths for wiping optical lenses; cloths for cleaning made from cellulose; cleaning rags; cleaning rags; cleaning articles; polishing leather; cleaning instruments, hand-operated; lintless cleaning cloths; skins of chamois for cleaning; skins of chamois for cleaning; cloth for washing floors none of the aforesaid goods in class 21 in the field of leather and shoe care and cleaning.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 applicant argues that the public is familiar with associating headgear and neckwear with the opponent’s brand ‘BUFF’ but not with the opposing goods in Class 3. It also adds that sufficient proof of use of the opponent’s mark can be assumed for goods in Class 25.

As the opposition is based on the goods reproduced above, the comparison required by Article 8(1)(b) EUTMR must be made in view of all the goods of the earlier marks and on which the opposition is based (22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 85; 07/09/2006, T-133/05, Pam -Pim’s Baby -Prop, EU:T:2006:247, § 30).

The comparison of the goods must be objectively made taking into account the wording of the specifications in the sign applied for and not in view of the goods for which the earlier trade mark has been genuinely and actually used on the market (16/06/2010, T-487/08, Kremzin, EU:T:2010:237, § 71; 17/01/2012, T-249/10, Kico, EU:T:2012:7, § 23; 15/03/2012, T-379/08, Wavy line, EU:T:2012:125, § 26). Actual use of the earlier mark would only play a role if it is subject to the use requirement and if a proof of use request is made, which is not the case in the present proceedings as regard to the above earlier trade marks.

Here the above earlier European Union trade mark registrations had not been registered for more than five years at the filing date of the contested trade mark, and in fact has still not been registered for five years, and for that reason the provisions contained in Article 47(2) EUTMR are, in any event, not applicable to the case at hand.

Contested goods in Class 3

The contested perfumery, essential oils none of them in the field of leather and shoe care and cleaning are included in the broad category of the opponent’s categories perfumery and essential oils. Therefore, they are identical.

The contested fragrance preparations and perfumed tissues none of them in the field of leather and shoe care and cleaning overlap with the opponent’s perfumery. These goods covers all perfumes collectively, which are fragrances used for enhancing the odour or aroma of the body or of other items by giving them a pleasant smell. As a consequence thereof, they are also identical.

The contested cosmetics none of them in the field of leather and shoe care and cleaning includes, as a broader category, the opponent’s non-medical cosmetics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Non-medical cosmetics of the earlier mark can be defined as any non-medical substance or preparation intended to be placed in contact with the various external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance and/or correcting body odours and/or protecting them or keeping them in good condition. These goods overlap with the contested goods wipes impregnated with a skin cleanser; impregnated cloths for cosmetic use none of them in the field of leather and shoe care and cleaning, and therefore, they are found to be identical.

The opponent’s goods non-medical cosmetics are similar to the contested aromatic extracts none of them in the field of leather and shoe care and cleaning. On the one hand cosmetics products include preparations for enhancing or protecting the odour or fragrance of the body, while on the other hand aromatic extracts are fragrant liquid aroma compounds (synthetic or organic) that are used (among others) primarily for scenting cosmetic products. Aromatic extracts are usually one of the main ingredients in many cosmetic products. Additionally, they usually coincide in relevant public, distribution channels, and producer.

The contested cloths impregnated with a detergent for cleaning; spray cleaners for household use none of them in the field of leather and shoe care and cleaning and the opponent’s bleaching preparations and other substances for laundry use, have the same purpose which is to clean different kind of items. They also use the same distribution channels, are addressed to the same average consumer and are often produced by the same kind of undertakings. Therefore, they are similar.

The contested cloths impregnated with a detergent for cleaning camera lenses are very specific cloths for cameras and not normal household goods. These goods could also have the same purpose than the opponent’s goods cloth, i.e. to clean, and they can also be produced by the same kind of producers. As a consequence thereof, these goods are similar to a low degree.

The contested cloths impregnated with polishing preparations for cleaning; impregnated cloths for polishing none of them in the field of leather and shoe care and cleaning are pieces of fabrics used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested scouring substances none of them in the field of leather and shoe care and cleaning are used to clean or polish a surface by washing and rubbing.

The opponent’s goods perfumery covers all perfumes collectively including fragrances used for enhancing the odour or aroma of the body or of other items by giving them a pleasant smell. They comprise air fragrancing preparations such as room scenting sprays, potpourri and incense sticks. Since household fragrances are pleasant-smelling liquids and other articles used to make homes or other indoor spaces like cars smell nice, they satisfy the needs of the same consumers looking for household cleaning and maintenance goods, such as cleaners and polishes for floors, wooden or leather furniture, windows and other surfaces, scouring solutions and abrasive pastes for the kitchen and bathroom etc. These goods are commonly sold in the same specialised shops and sections of supermarkets or department stores, and the public can expect that they are produced under the control of the same undertaking. Therefore, perfumery, as a broad category, and the above-mentioned polishing and scouring preparations are found similar.

The contested goods abrasive boards for use on fingernails; abrasive paper for use on the fingernails none of them in the field of leather and shoe care and cleaning are to be used for personal care. The opponent’s goods non-medical cosmetics have and identical purpose, grooming parts of the human body, the ones contested by smoothing or shaping fingernails and the opponent’s cosmetics by keeping this same part of the human body in good condition. They are also addressed to the same public and use the same distribution channels. Although their method of use and nature is different, at least a low degree of similarity between these goods can be established.

To end up, the contested abrasive sanding sponges; abrasive paste, abrasive paper none of them in the field of leather and shoe care and cleaning are substances or material used for cleaning, grinding, smoothing, or polishing different surfaces. The opponent’s goods bleaching preparations are also used to clean. Moreover, these goods are commonly sold in the same specialized shops and sections of supermarkets or department stores, and the public can expect that they are produced under the control of the same undertaking. Therefore, these goods are to be found similar.

Contested goods in Class 21

The contested goods dusting cloths; cloths for wiping optical lenses; cloths for cleaning made from cellulose; cleaning rags (twice at the applicant’s list of goods); lintless cleaning cloths; cloth for washing floors none of the aforesaid goods in class 21 in the field of leather and shoe care and cleaning and the opponent’s goods cloth in Class 24 have an identical nature since all of them are pieces of pliable woven or felted stuff. Moreover, the degree of transformation of a ‘cloth’ in general and those contested is in many occasions rather limited.

The opponent’s goods cloths are raw/semi-processed material used for further manufacturing. As the contested goods they are made of textile and can be manufactured in fabrics which are suitable for cleaning purposes, such as microfibre or pure cotton, which can be washed at a high temperature. In addition, the relevant goods usually coincide in producers, as it is customary in this market sector to produce a wide range of goods comprising cloths for household purposes.

As a consequence thereof, and in spite these goods are administratively classified at the Nice Classification in a different Classes, they are similar to a low degree.

The contested cleaning articles; cleaning instruments hand-operated; none of the aforesaid goods in class 21 in the field of leather and shoe care and cleaning and the opponent’s goods other substances for laundry use in Class 3 have an identical purpose which is to clean. Although their nature and method of use is different, these goods commonly take the same distribution channels, are addressed to the same kind of consumers and could also be manufactured/sold by the same kind of companies. As a consequence thereof, they are similar.

To end up, the contested goods polishing leather and skins of chamois for cleaning none of the aforesaid goods in class 21 in the field of leather and shoe care and cleaning have an identical nature to the opponent’s goods in Class 18 leather and imitation of leather; animal hides. These goods are made of the same raw materials (leather), and have therefore an identical nature but they could also be manufactured by the same kind of companies. Therefore, these goods are found to be similar to a low degree.

b) 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 to various degrees are directed at the public at large. The degree of attention is considered to be average.

c) The signs

 

	BUFFA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘BUFF’ is a meaningful word to the English-speaking part of the public. ‘BUFF’ is a polysemic term identifying, among other concepts, as a verb, to rub an object made of metal, wood, or leather in order to make it shine, using a soft, dry cloth; or as a noun, a pale brown colour and someone knowing a lot about a particular subject or in good physical shape (extracted from www.dictionary.cambridge.org on 27/11/2020 https://dictionary.cambridge.org/es-LA/dictionary/english/buff).

BUFFA, and more concretely ‘opera buffa’ is identified by part of the English and Danish speaking public with a happy ending opera in which some of the text is spoken (https://dictionary.cambridge.org/dictionary/italian-english/buffo?q=buffa).

Nevertheless, ‘BUFF’ and ‘BUFFA’ respectively would not be clearly associated with any relevant meaning for the goods in question in other territories of the European Union. An eventual conceptual difference between the signs could help consumers to more easily distinguish between them, thus, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of relevant public who would neither associate ‘BUFF’ nor ‘BUFFA’ with any meaning for the goods in question, for example the Spanish, French and Portuguese speaking part in the relevant territory.

In this context, in spite the word ‘bufar’ exists in Spanish language, considering that its meaning is absolute unrelated with the goods at hand, it means to snort, it is concluded that considering the differences between ‘bufar’ and ‘buff’/ ‘buffa’, and the fact that in Spanish language the existence of two ‘FF’ in a term is very uncommon and rare, the Spanish-speaking public would not associate neither ‘BUFF’ nor ‘BUFFA’ with any particular concept.

As a consequence thereof, both terms would be seen as average distinctive for the goods at hand.

As to the circular element framing the earlier marks, in dark and light backgrounds respectively, it is a commonly used basic figure in trade on distinctive signs as to emphasise the verbal element. Therefore, it would not be seen by the public as endowed with distinctive character. With regard to the particular typeface of the term ‘Buff’ in the earlier marks, this font slightly going upward does not detract consumers from the importance of the word ‘Buff’ in the sign which remains clearly legible in its overall impression.

Neither of the signs have any element that is clearly more dominant (visually eye-catching) than other elements.

The applicant claims that ‘BUFF’ would be associated by the public of the European Union with a descriptive content, namely, in the sense indicate above of ‘to polish’. Nevertheless, this is not a basic English term which would be widely recognized by the Spanish, French and Portuguese public on which this decision focuses.

It is noted that in case of word marks as the contested sign it is irrelevant whether they are written in lower or upper case letters since it is the word as such that is protected and not its written form. Furthermore, the verbal elements of the earlier mark are depicted in bold standard title case letters and the stylization, slightly going upwards, is not of such a nature as to detract the consumers’ attention away from the verbal elements as such.

Visually, the signs are similar to the extent that the verbal elements of all the marks have a similar length, the verbal elements of the earlier marks consisting of four and the contested sign of five letters out of which the first four letters coincide in rank and position. The whole verbal element of the earlier marks is included at the beginning of the contested sign which merely includes an additional letter ‘A’ at the end.

Consumers generally tend to focus at the beginning of a sign when they encounter a trade mark, and here the initial parts of all the signs reproduce the same combination of letters ‘B-U-F-F’. Although this consideration does not prevail in all cases and cannot, in any event, undermine the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them, in the case at hand there is only one single letter of difference while all the signs contain a single term of a very similar number of letters (four vs five).

As to the stylisation of the earlier marks with the verbal part going slightly upwards and framed by a circle, although it has an impact in the overall impression of these signs, it does not detract the consumer’s attention away from the verbal elements of the earlier marks ‘Buff’, which is very similar to the contested sign ‘BUFFA’.

The applicant argues that if an additional letter ‘-A’ were appended to the earlier marks’ verbal element ‘BUFF’, this would alter the distinctive character of the signs. However, this argument must be set aside as it is irrelevant for comparing the signs from the visual perspective. The signs must be compared as filed or registered and here the overall impression of the verbal elements contained in the signs, for the reasons give above, is that they are quite similar.

In view of the above considerations, the signs are held visually similar to a high degree.

Aurally, the earlier mark will be pronounced as a monosyllabic word ‘BUF(F)’ while the contested sign will be phonetically reproduced in two syllables, namely ‘BU-F(F)A’.

Thus, in spite an extra syllable is introduced with the addition of the letter ‘A in the contested sign, the fact remains that the two signs have a common sound at their first two letters but also the beginning of the second syllable ‘F(F)’ coincides (21/01/2016, T‑75/15, ROD, EU:T:2016:26, § 51). The initial part is also the one into which consumers usually focus their attention.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the absence of a semantic content conveyed by the marks to the part of the public under analysis. 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 at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

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 marks have been extensively used and enjoy an enhanced scope of protection/reputation for ‘clothing, footwear, headgear’ in Class 25. It submits various pieces of evidence in order to support this claim.

However, it must be noted that none of the goods for which reputation or enhanced distinctiveness is claimed are those for which an identity or similarity to various degrees with the contested goods was found.

For reasons of procedural economy, the evidence filed by the opponent to prove this claim for the above opposing goods does not have to be assessed in the present case (see below in ‘Global assessment’) as this would have not impact in the final outcome of the case.

Consequently, the assessment of the distinctiveness of the earlier mark with regard to the opposing goods in Classes 3 and 24 for which identity and similarity with the contested goods was established will rest on their distinctiveness per se. In the present case, the earlier trade marks ‘BUFF’ do not have a relevant meaning for the goods for which the earlier marks are registered from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier marks must be seen as average.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

In the present case the contested goods have been found identical and similar to various degrees. They target the public at large and the degree of distinctiveness of the earlier marks is also average.

The signs under comparison have been found visually similar to a high degree, aurally similar to an average degree and conceptually none of the signs would be linked with any concept. In particular, the verbal element of the earlier marks is entirely reproduced within the contested application and the stylisation included in the earlier signs does not detract consumer’s attention from its word part, which is commonly the one to which consumer generally focus. Moreover, the marks compared contain a single verbal element having most of their letters in common with a very similar length. Although the addition of a letter ‘A’ in the contested sign creates some visual and aural differences, they clearly do not outweigh the identical reproduction as initial part of the letter pattern ‘BUFF’.

Account is 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).

Therefore, the differences between the signs are not sufficient to counteract the overwhelming similarities of the signs and exclude likelihood of confusion even in the context of the goods in question. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The low degree of similarity between some of the contested goods in Classes 3 and 21 and the opponent’s goods in Classes 3 and 24 is outweighed by the similar overall impression of the signs from a visual and aural perspective, mostly when, as here, the public’s attention when purchasing the goods in question is not above the one to be expected from a reasonably well informed consumer.

Considering all the above, there is a likelihood of confusion on the part of the French, Spanish and Portuguese-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations registration No. 17 137 019 and No. 15 955 751. 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 trade marks, there is no need to assess the enhanced degree of distinctiveness of the opposing European Union trade mark registration No. 17 1387 019 due to its reputation as claimed by the opponent, mostly when, as in this case, the goods for which reputation was claimed are not the ones for which identity and similarity with the contested goods was found.

As the subject earlier rights lead 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 right at the basis of the opposition (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

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(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.

 

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.

 

 

  

The Opposition Division

 

 

Aldo BLASI

Julia GARCÍA MURILLO

Francesca CANGERI

 

 

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.