OPPOSITION No B 2 684 341

Il Ponte S.p.A., Via Landolfo, 1, 20121 Milano, Italy, and Il Ponte Pelletteria S.p.A., Via Landolfo, 1, 20121 Milano, Italy (opponents), represented by Società Italiana Brevetti S.p.A., Corso dei Tintori, 25, 50122 Firenze, Italy (professional representative)

a g a i n s t

Bin Wang, No. 102, 1 Unit, 23 Building, 9 District, Taoyuanju, Qianjin 2 Road, Baoan District., Shenzheng, Guangdong Province, the People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 – Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 684 341 is upheld for all the contested goods, namely: 

Class 18:        Purses; travelling trunks; school bags; sling bags for carrying infants; pocket wallets; bags for climbers; bags for campers; travelling bags; garment bags for travel; bags for sports; backpacks; umbrellas.

        

2.        European Union trade mark application No 14 994 156 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 14 994 156, namely against all the goods in Class 18. The opposition is based on, inter alia, European Union trade mark registration No 108 274. 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.

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 European Union trade mark registration No 108 274.

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.

The contested goods are the following:

Class 18:        Purses; travelling trunks; school bags; sling bags for carrying infants; pocket wallets; bags for climbers; bags for campers; travelling bags; garment bags for travel; bags for sports; backpacks; umbrellas.

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; umbrellas are identically contained in both lists of goods.

The contested travelling trunks are included in the broader category of the opponent’s trunks. Therefore, they are identical.

The contested garment bags for travel are included in the broader category of the opponent’s travelling bags. Therefore, they are identical.

The contested purses; school bags; sling bags for carrying infants; pocket wallets; bags for climbers; bags for campers; bags for sports; backpacks overlap with the opponent’s goods made of leather and imitations of leather. Therefore, they are 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 degree of attention is considered to be average.

3. The signs

THE BRIDGE
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 elements in the signs are meaningful in certain territories, for example, in those countries where English is understood and for these territories there will be a certain conceptual similarity between the signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.

The earlier mark is composed of the words ‘THE BRIDGE’. The element ‘BRIDGE’ conveys the concept of, inter alia, a structure that is built over a railway, river, or road so that people or vehicles can cross from one side to the other and it is juxtaposed with the definite article, ‘THE’. The expression ‘THE BRIDGE’ will be perceived as referring to a particular bridge whilst in relation to the goods in question it has no meaning and has an average degree of distinctiveness. The element ‘THE’, being a mere determiner that is used to identify the other word, has a much lower, close to none, distinguishing capacity, when assessed individually. Consequently, consumers will pay more attention to the element ‘BRIDGE’ when encountering the earlier mark.

As regards the contested sign which is composed of one verbal element, ‘WinBridge’, written in a common, bold font, it is noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

The contested sign has no meaning as a whole, however the words ‘Win’ and ‘Bridge’ will have individual meanings, and the relevant public will therefore dissect the verbal element into these two words, which is also supported by the fact that both elements are presented in title case. The word ‘Win’ will be understood as meaning, inter alia, being successful or victorious in a contest or conflict and ‘Bridge’ will be perceived as conveying the meaning explained above. Both words are fanciful and have an average degree of distinctiveness in relation to the goods in question.

None of the signs have any elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the element ‘BRIDGE’ which constitutes the most distinctive element of the earlier mark and the longest letter sequence of the contested sign. They differ in the letters ‘Win’ of the contested sign which merely makes up three out of the sign’s nine letters. They also differ in the elements ‘THE’ of the earlier mark and the almost imperceptible stylisation of the contested sign which however has a very limited impact on the overall impression of the mark.

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

Conceptually, the relevant public will perceive the earlier mark as referring to a particular bridge. The contested sign will be associated with the sum of the two concepts conveyed by the conjoined words, as described above. As the signs will be associated with the concept of ‘BRIDGE’ which has an independent and distinctive role in both marks, they are conceptually similar to an 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.

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, despite the presence of an element, the distinctiveness of which is low, or close to none, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods are identical, and the distinctiveness of the earlier mark is normal. The relevant public’s degree of attention is average.

Although the signs show some differences, they are insufficient to dispel an average degree of similarity between them on all relevant levels of comparison, as shown in detail in section c) of this decision. Taking into account the consumer’s imperfect recollection, the differences between the signs are insufficient to outweigh the similarities between them.

In addition, the Opposition Division notes that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, consumers may easily conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier mark and that they are all being offered under the ‘BRIDGE’ brand. For example, the public may think that the earlier mark, ‘THE BRIDGE’, represents the main brand, while the contested sign, ‘WinBridge’, denotes a sub-brand. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-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 registration No 108 274. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 108 274 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 (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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, 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) and (6) and Rule 94(7)(d)(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

Solveiga BIEZA

Cecilie Leth BOCKHOFF

Francesca CANGERI SERRANO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.