OPPOSITION No B 2 698 689

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

SC Liloo Baby SRL, Str. Intrarea Vaslei nr. 1, bl. PM63, sc. A, ap. 17, sector 2, Bucurest, Romania (applicant), represented by SC Rompatent Design SRL, Radu Borlan, Strada Matei Voievos 115-223 Bloc O2, cara C, etaj 5, Ap. 112, 021453 Bucurest, Sector 2, Romania (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 698 689 is partially upheld, namely for the following contested goods and services:

Class 5:        Napkins for babies and infants.

Class 25:        Clothes for infants and children.

Class 35:        Bringing together, for the benefit of others, of clothing for babies and children (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

2.        European Union trade mark application No 15 019 656 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 019 656. The opposition is based on international trade mark registrations No 1 173 884 and No 1 175 316, both designating the European Union. 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 1 173 884.

1. The goods and services

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

Class 3: Washing, cleaning and bleaching preparations; cleaning, polishing, scouring and abrasive preparations; stain removers; rinsing preparations, rinsing preparations for dish washing machines; soaps; perfumery, cosmetics, also for babies and small children; decorative cosmetics; nail care preparations, nail varnish; cosmetic bath preparations; toiletries, included in this class; sunscreen agents and sun-tanning preparations; after-sun skin care preparations; deodorants and anti-per spirants for personal use; impregnated cloths for cosmetic use; moist wipes for sanitary purposes (toiletries); tissues impregnated with cosmetic lotions; cloths impregnated with a detergent for cleaning; cotton wool and cotton wool products included in this class, in particular cotton wool, swabs, cotton wool pads; hair lotions; dentifrices; essential oils, potpourris (fragrances).

Class 5: Air deodorizer sprays; pharmaceutical and sanitary preparations; sanitary preparations for medical purposes; hygiene preparations for medical purposes; skin care and cleaning tissues, shampoos, sunscreen agents, bath additives, aforementioned goods for medical and/or pharmaceutical purposes; cotton wool and cotton wool products for medical purposes included in this class; dietetic preparations for medical purposes, dietetic foodstuffs and food stuff preparations for medical purposes; nutritional additives for medical purposes; food for babies; chewing gum for medical purposes; plasters; materials for dressing; disinfectants; preparations for destroying vermin; fungicides, herbicides; air deodorizing preparations and air purifying preparations; deodorants for clothing and textiles; napkins for babies; food supplements based on proteins for non-medical purposes included in this class.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; products, made of paper or plastics included in this class; paper products for household and hygiene purposes included in this class, in particular toilet paper, kitchen towels, handkerchiefs, table napkins, cosmetic tissues; bags (envelopes, pouches) of paper or plastics, for packaging; Confirmation number: garbage bags of paper or of plastics; household film of plastic for wrapping; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; moist toilet paper.

Class 21: Household or kitchen utensils and containers, in particular containers, holders and stands for swabs, cleansing tissues, soap boxes, soap holders, soap dispensers; toothbrush beakers, toothbrushes; hairbrushes; combs and sponges; glassware, porcelain ware and earthenware included in this class.

Class 24: Textiles and textile goods, included in this class; bed and table covers; bed linen; household linen; towels of textile; towels of textile for cosmetic purposes; products of textile or plastic ,included in this class

Class 25: Clothing, footwear, headgear.

Class 29: Meat, fish, poultry and game, shellfish (not live), aforementioned goods also prepared; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; fruit spreads, jams, marmalades, fruit jellies, compotes; eggs, milk and milk products; milk substitutes; soya products included in this class; milk mix beverages with milk predominating; non-alcoholic beverages based on proteins included in this class; desserts, ready-to-eat or semi-prepared, included in this class; ready-to-eat foodstuffs mainly consisting of meat, fish, poultry, game, shellfish (not live),vegetables, fruit; edible oils and fats; salted and unsalted processed nuts included in this class; snacks included in this class; dietetic foodstuffs and foodstuff preparations based on vegetable proteins and milk proteins with nutritional additives included in this class; all aforementioned goods of this class as far as possible also in powdered, preserved, cooled or frozen form and/or in instant form and/or as dietetic foodstuff not for medical purposes; dietetic foodstuffs and food preparations based on vegetable proteins and milk proteins.

Class 30: Coffee, coffee extracts, coffee substitutes, tea, tea extracts, cocoa, preparations based on coffee, tea and/or cocoa included in this class; chocolate and chocolate products; confectionery; flour and preparations made from cereals, rice, wheat, oats, barley, rye, millet, corn and buckwheat, aforementioned goods also as mixtures and other preparations, in particular grits, bran, semolina, muesli, muesli bars, cereals, popcorn; pasta; desserts, ready-to-eat or semi prepared, included in this class; ready-to-eat foodstuffs mainly consisting of pasta, rice, wheat, oats, barley, rye, millet, corn, buckwheat; soya products included in this class; bread, pastry and confectionery; crackers, cereal-based snack food and other nibbling articles included in this class; ices; sugar; honey, treacle; yeast, baking-powder; puddings; salt, mustard; vinegar, sauces (condiments); spices; seasoning mixtures; ice; all aforementioned goods of this class as far as possible also in powdered, preserved, cooled or frozen form and/or in instant form and/or as dietetic foodstuff not for medical purposes.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals, in particular live shellfish; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, vegetable juices (beverages); syrups and other preparations for making beverages; whey beverages; preparations for instant beverages

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; advertising for third parties on the Internet; business management; business administration except in the field of human-care; office work; wholesale and retail services in the field of foodstuffs, luxury foods, alcoholic and non-alcoholic beverages, health food shop articles, drugstore products, cosmetics, perfumery, medicines, household articles, kitchen utensils, sanitary products, laundry and cleaning preparations, articles from hardware stores, articles from do-it-yourself stores, garden articles, car accessories, bicycles, motorcycles, furniture, camping articles, computers, computer

software, consumer electronic equipment and apparatus, electrical appliances and household electrical appliances, multimedia equipment, multimedia accessories, telecommunication equipment, machines, toys, stationery and printed matter, office supplies, craft supplies, decoration and school supplies, tobacco products, clothing, footwear and accessories, home textiles and haberdashery, travelling accessories, articles for recreation purposes, sports and fitness equipment, supplies for animals, photographic apparatus, photographic articles, photographic equipment, jewellery and watches; gathering of products for others for presentation, purchase and sales purposes; none of the aforesaid services in the field of biotechnology.

Class 43: Services for providing food and drink.

The contested goods and services are the following:

Class 5:        Napkins for babies and infants.

Class 25:        Clothes for infants and children.

Class 35:        Advertising; Business management, business administration; Office functions; Bringing together, for the benefit of others, of clothing for babies and children (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Contested goods in Class 5

The contested napkins for babies are identically contained in both lists of goods.

The contested napkins for infants are highly similar to the opponent’s napkins for babies, as they have the same nature and relevant public, they can have the same providers, and they have very similar purposes.

Contested goods in Class 25

The contested clothes for infants and children are included in the broader category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 35

The contested advertising, business management, business administration, office functions are identically contained in both lists of services (including synonyms).

The contested bringing together, for the benefit of others, of clothing for babies and children (excluding the transport thereof), enabling customers to conveniently view and purchase those goods overlap with the opponent’s retail services in the field of clothing and they are, therefore, 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 services of advertising; business management, business administration; office functions, found to be identical, are directed at professionals such as business owners and business managers, while the remaining goods and services found to be identical or highly similar are directed at the public at large.

The degree of attention will vary from average for the general public to higher than average for those Class 35 services directed at professionals.

3. The signs

K-Bio
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘bio’, contained in both signs, will be perceived by the English-speaking part of the public as referring to something ‘connected with life and living things’ and will not have a direct and clear meaning for the conflicting goods and services. Therefore, this element is distinctive for these goods and services and for this part of the public.

The letter ‘K’ in the earlier sign has no clear meaning in relation to the goods and services and is, therefore, distinctive.

The word ‘Kid’ in the contested sign will be understood by the relevant public as a synonym for ‘young child’. As the relevant goods are napkins for babies and infants and clothes for infants and children, and some of the services are related to the retail of clothes, this word refers to the kind of goods made or offered for sale (or their end consumers) and is weak for the relevant goods in Classes 5 and 25 and some of the relevant services in Class 35, namely bringing together, for the benefit of others, of clothing for babies and children (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

The figurative elements of the contested sign have a particular stylisation, evoking a child’s handwriting, with little circles replacing the dots of the letters ‘i’, and thus reinforcing the concept of the word ‘kid’. These figurative elements have limited distinctiveness for the relevant goods and some of the services in Class 35, namely those related to the sale of clothing.

Neither of the signs has any element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the element ‘bio’ and in that their first elements, ‘K’ and ‘kid’, have in common the first letter ‘K’, although all these elements are depicted differently. The signs differ in their graphic and figurative elements, including their colours.

As seen above, for the goods in Classes 5 and 25 and some of the services in Class 35, those related to the sale of clothing, the word ‘KID’, present in the contested sign, has little impact on the public’s perception due to its weak distinctiveness. Consequently, and taking into account that the signs under comparison have in common the distinctive element ‘bio’, for all these goods and services the signs are visually similar to a higher than average degree.

However, for the rest of the relevant services in Class 35, which relate to advertising, business management, business administration; office functions, all the elements of both signs have an average degree of distinctiveness and, therefore, the marks are visually similar to an average degree.

Aurally, for the same reasons explained above, for goods in Classes 5 and 25 and for some of the services in Class 35 for which the word ‘Kid’ is weak, the pronunciation of the signs coincides in the sound of the word ‘/BIO/’, which is distinctive for the relevant public. However, it differs in the sound of the additional letter, ‘K’, of the earlier mark, which has no counterpart in the contested sign. Therefore, for these goods and services, the signs are aurally similar to a higher than average degree.

However, for the services in Class 35 for which the verbal element ‘KID’ is distinctive, the signs are aurally similar to a lower than average degree.

Conceptually, taken as a whole, both the signs are meaningless. However, as the coinciding word ‘bio’ alludes to the concept mentioned above, the signs are conceptually similar as far as this coinciding element is concerned.

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

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, the degree of similarity between the marks and between the goods or services identified (recital 8 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).

In the present case, the goods and services are identical or highly similar. The signs are similar, on account of the coinciding word ‘bio’, for all the contested goods and services. The marks display differences as a result of the additional verbal elements of both signs, as well as the figurative elements of the contested sign.

The documents submitted by the applicant to prove the alleged differences between the conflicting signs, resulting from the way in which the contested products are labelled, the names of their producers and the ways in which the products are sold, are irrelevant to the present proceedings. In fact, the examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.

It must be recalled that the Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

In this case, given that the verbal element ‘Bio’ of the earlier mark is reproduced in its entirety in the contested sign, it is likely that the relevant public will at least associate the contested sign with the earlier mark in relation to the goods and services that are identical or highly similar and for which the element ‘Kid’ is weak (the goods in Classes 5 and 25 and some of the services in Class 35). These goods and services will also command only an average degree of attention from the relevant consumers, which is another factor to be considered.

However, for the services for which ‘Kid’ is distinctive, the signs have additional differing elements that have no counterparts in the other mark and that help to create different overall impressions of the marks, that is, where all the elements enjoy an average degree of distinctiveness and the sole coinciding element is ‘bio’. Furthermore, for these services, the degree of attention will be higher than average, which will assist consumers in distinguishing between the signs.

Therefore, the opposition is partly well founded on the basis of the opponent’s earlier mark, for the goods in Classes 5 and 25 and some of the services in Class 35, namely bringing together, for the benefit of others, of clothing for babies and children (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. It should be noted that 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union, in this case the English-speaking public, is sufficient to reject the contested application.

However, considering all the above, the Opposition Division finds that there is no likelihood of confusion for English speakers in relation to the remaining contested services in Class 35, namely advertising, business management, business administration, office functions. Therefore, the opposition must be rejected for those services for that part of the public.

The same conclusion can be reached for the services in Class 35 for the non-English-speaking part of the public. This is because, while ‘BIO’ has a meaning, it will not be weak in relation to the services that fall into fields unrelated to the concept conveyed by the word ‘BIO’, that is, in most European Union languages, such as French, Spanish and Italian, ‘biological’. Furthermore, although the coinciding element ‘BIO’, in some languages, might allude to some features of the relevant services (e.g. to some kind of relationship between the services and the environment), this would not lead to a higher degree of similarity or a greater likelihood of confusion, as the element would be weak.

On the other hand, whether or not it is understood by the non-English-speaking part of the public, the verbal element ‘Kid’ is distinctive for the remaining services in Class 35. In fact, taking into account that these services require a high degree of attention, consumers will be able to safely distinguish between ‘K-Bio’ and ‘Kid Bio’ and, therefore, there is no likelihood of confusion in relation to the services in Class 35, namely advertising, business management, business administration, office functions.

The opponent has also based its opposition on earlier international trade mark registration No 1 175 316 for the figurative mark .

This other earlier right invoked by the opponent is no more similar to the contested mark because it contains figurative elements that are not present in the contested trade mark and which may or may not be seen as a stylised letter ‘K’. Even though it covers a slightly broader scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected, as, as explained above, even for identical services a likelihood of confusion can be safely excluded; therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

Alexandra APOSTOLAKIS

Vita VORONECKAITE

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.