OPPOSITION No B 2 783 002

Fabrimode NV, Theo Nuyttenslaan 5, 8540 Deerlijk, Belgium (opponent), represented by Bap IP Bvba – Brantsandpatents, Pauline Van Pottelsberghelaan 24, 9051 Sint-Denijs-Westrem (Gent), Belgium (professional representative)

a g a i n s t

Robert Bosch GmbH, Robert-Bosch-Platz 1, 70839 Gerlingen, Germany (applicant), represented by Gleiss Lutz, Lautenschlagerstraße 21, 70173 Stuttgart, Germany (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 783 002 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 221 393 for the figurative mark , namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 10 780 567 for the colour per se 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 signs

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 earlier sign is a colour per se mark. This means that trade mark protection is sought for one or several colours, regardless of any specific shape or configuration. What is protected is the shade of colour(s) and, in the case of more than one colour, the ratio and position of the various colours, which must be systematically arranged by associating them in a predetermined and uniform way. In this case, the earlier mark consists of vertical straight lines in different shades of green, blue, red, pink and orange. The thickness of these lines or bands varies, although none of the lines is particularly broad. The colour scheme ranges (from left to right) from green through blue to red, pink and orange. The green and blue lines each take up one quarter of the left side of the sign, while the lines coloured red, pink and orange make up the right side of the sign.

The contested sign is a figurative mark. It consists of a rectangle containing vertical geometrical forms, such as a triangle, rectangle or rhombus, and curved and wavy lines in the right side of the sign; some of these forms overlap. Moreover, the colour shades change vertically. The basic colours are red, blue and green (from left to right, in that order). Blue is the dominant colour in the contested sign. On the left side, the colours change from dark red to bright red and continue to various purple and blue shades and, finally, on the right side, to various shades of green.

The opponent argues that the consumer is unlikely to recollect all the differences between the signs, in particular the exact sequence of colours that form the marks, the way in which the colour bands are ordered, the form and width of the bands, the width of the respective signs, the number of colours and the number of bands, the proportions of the colours or the dominant colour group. According to the opponent, both signs will be recollected as ‘the image of vertically ordered shapes of colours, ordered in overlapping colour groups (red-blue-green) each consisting of different shades’.

The Opposition Division agrees with the opponent that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). However, in this particular case, there are a remarkable number of differences that, taken together, result in different overall impressions of the signs. The appearance in the earlier mark is of verticality and thin lines, whereas, from a graphical point of view, the verticality in the contested sign is partially offset by the curved or angular design of the bands. Contrary to the applicant’s argument, the public will probably not perceive a barcode in the earlier mark, mainly because of the colours. However, the thin vertical lines of varying thickness have some graphical aspects in common with a barcode. This is not the case for the contested sign, in which the bands widen or narrow and change shade vertically, giving an impression of much more dynamism. Moreover, it is considered that the large number of colours in the earlier mark and the differences in the shades of the colours, with the greater proportion of red and pink in the earlier mark and purple and blue in the contested sign, are also very relevant factors.

Visually, as the signs coincide only in irrelevant aspects, namely the fact that the stripes of the signs are displayed vertically and have some colours in common, it is concluded that the signs are not visually similar.

Aurally, it is not possible to compare the signs because purely figurative and/or colour signs are not subject to a phonetic assessment.

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 coincide merely in irrelevant visual aspects, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Boyana NAYDENOVA

Benoit VLEMINCQ

Frédérique SULPICE

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.