OPPOSITION No B 2 721 622

Hisert GmbH, Lindenstraße 7, 16307 Mescherin OT Radekow, Germany (opponent), represented by JWP Rzecznicy Patentowi Dorota Rzążewska Sp. j., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative)

a g a i n s t

Be! Sp. z o.o., ul. J. Kasprowicza 79/1, 81-173 Warszawa, Poland (applicant).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 622 is partially upheld, namely for the following contested goods and services:

Class 25:         Underwear; maternity lingerie; lingerie; men's underwear; babies' undergarments; sweat shirts; tracksuit tops; hooded tops; neck scarfs [mufflers]; kerchiefs [clothing]; head scarves; maternity sleepwear; knitted caps; sports caps and hats; chemise tops; baby tops; tee-shirts; tank tops; baby doll pyjamas; sunsuits; maternity smocks; babies' pants [clothing]; children's headwear; maternity clothing; infant wear; children's wear; baby clothes; maternity bands; pajamas (am.); coats; trousers; pajama bottoms; tracksuit bottoms; trousers for children; baby bunting [clothing]; short-sleeved t-shirts; tops [clothing]; coverups; layettes [clothing].

Class 35:         Retail services connected with the sale of clothing and clothing accessories; mail order retail services connected with clothing accessories; retail services in relation to clothing; online retail store services relating to clothing; retail store services in the field of clothing.

2.        European Union trade mark application No 15 459 258 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 15 459 258 for the word mark ‘Be Mama – Maternity & Baby wear’. The opposition is based on European Union trade mark registration No 12 628 194 for the figurative 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 goods and services

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

Class 10:         Accessories for nursing mothers, teat accessories, aspirators, bottles for infants, bottle teats for infants, bottle valves for infants, nasal syringes, breast-pump flanges, teething rings, mesh teethers, feeding bottles, nipple shields; dummy chains, anti-colic pillows, containers for baby food, holders for dummies, dummies, feeding bottle teats, dummies for babies, tapes for dummies, thermometers, bottle holders, breast pumps, feeding bottle valves, teething rings.

Class 12:         Baby carriages, fold-up pushchairs, baby carriages, pushchairs, perambulators incorporating carry cots, covers for baby carriages; children's safety seats for vehicles; coverage for baby carriages; baskets for perambulators; covers for baby carriages.

Class 20:         Infant walkers; high chairs for babies; playpens; mats for infant playpens; children's cradles; cots for use by infants; cots for use by children; bed fittings, not of metal; mattresses; furniture; air mattresses, not for medical purposes; cushions; bedding (except linen); sleeping bags.

Class 24:         Linens, bath linen, bed linen, oilcloth, gauze, blankets, blankets, bed covers, continental quilts, coverlets, pillowcases, cushion and duvet covers, furniture coverings, mattress covers, pillowcases, bed clothes and blankets, towels, bed sheets.

Class 25: Clothing, footwear, headgear.

The contested goods and services are the following:

Class 25:         Underwear; maternity lingerie; lingerie; men's underwear; babies' undergarments; sweat shirts; tracksuit tops; hooded tops; neck scarfs [mufflers]; kerchiefs [clothing]; head scarves; maternity sleepwear; knitted caps; sports caps and hats; chemise tops; baby tops; tee-shirts; tank tops; baby doll pyjamas; sunsuits; maternity smocks; babies' pants [clothing]; children's headwear; maternity clothing; infant wear; children's wear; baby clothes; maternity bands; pajamas (am.); coats; trousers; pajama bottoms; tracksuit bottoms; trousers for children; baby bunting [clothing]; short-sleeved t-shirts; tops [clothing]; coverups; layettes [clothing].

Class 35:         Sales promotion; retail services connected with the sale of clothing and clothing accessories; mail order retail services connected with clothing accessories; retail services in relation to clothing; online retail store services relating to clothing; retail store services in the field of clothing.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

Contested goods in Class 25

The contested underwear; maternity lingerie; lingerie; men's underwear; babies' undergarments; sweat shirts; tracksuit tops; hooded tops; neck scarfs [mufflers]; kerchiefs [clothing]; maternity sleepwear; chemise tops; baby tops; Tee-shirts; tank tops; baby doll pyjamas; sunsuits; maternity smocks; babies' pants [clothing]; maternity clothing; infant wear; children's wear; baby clothes; maternity bands; pajamas (am.); coats; trousers; pajama bottoms; tracksuit bottoms; trousers for children; baby bunting [clothing]; short-sleeved T-shirts; tops [clothing]; coverups; layettes [clothing] are included in the broad category of the opponent’s clothing in Class 25. Therefore, they are identical.

The contested head scarves; knitted caps; sports caps and hats; children's headwear are included in the broad category of the opponent’s headgear in Class 25. Therefore, they are identical.

Contested services in Class 35

As correctly pointed out by the opponent, retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, in line with the opponent´s assertions, it considered that the contested retail services connected with the sale of clothing and clothing accessories; mail order retail services connected with clothing accessories; retail services in relation to clothing; online retail store services relating to clothing; retail store services in the field of clothing are similar to a low degree to the opponent’s clothing in Class 25. This is because the opponent’s goods are considered identical to the clothing and its accessories which are at retail. The same is not affected by different means of which these services are rendered (i.e. irrespective of whether they are rendered online, by mail or by any other means).

The contested sales promotion are services that consist mainly of providing others with assistance in the sale of their goods and/or services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity and all kinds of marketing strategies. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies in marketing strategies or advertising campaigns, which study their client’s needs, and providing all the necessary information and advice for marketing the client’s goods/services, and creating a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. When comparing these services with the opponent’s goods in Classes 10, 12, 20, 24 and 25, they are dissimilar, as they differ in nature and purpose. These goods and services are not complementary nor in competition. They have different distribution channels and sales outlets and they are normally provided or manufactured by different kinds of undertakings. Furthermore, the contested services do also differ in nature and purpose from the manufacture of goods, such as those of the opponent. For the sake of good order, the Opposition Division notes that there were no convincing arguments on file to the contrary.

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 and services found to be identical or similar to a low degree are directed at the public at large. The level of attention is considered to be average.

3. The signs

	Be Mama – Maternity & Baby wear
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, since both marks are composed of meaningful terms for these consumers.

The earlier mark is a figurative mark composed of the word ‘bemammy’, written in a slightly fancy italic typeface of which the first two letters are surrounded by a figurative element in the form of a heart.

The contested sign is a word mark composed of the words ‘Be Mama – Maternity & Baby wear’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Therefore, the English-speaking part of the relevant public is likely to split the earlier mark into the following recognisable terms, ‘be’ and ‘mammy’, accordingly. This would even be more the case here owing to the fact that, even though the word of the earlier mark appears as written in one verbal element, the first two letters of the corresponding word are inscribed inside of the figurative element of a heart, and are visually in a certain way separated by a line. Indeed, the elements ‘be mammy’ will be understood by the whole relevant public on which the present comparison is focussed as referring to ‘be or becoming a mother’. Although these words together might be allusive to some extent in relation to the goods at stake, suggesting that they are directed at future mums, the sequence as such is not directly descriptive and, therefore, it is considered to have at least a minimum degree of distinctiveness in relation to the relevant goods. Furthermore, the figurative element in the form of a heart in the earlier mark refers to ‘LOVE’, but it is normally distinctive for the goods at stake.

The same holds true insofar as the first two elements of the contested sign are concerned, namely ‘Be Mama’, which will be understood by the relevant part of the public in relation to the goods and services concerned as a reference to ‘being or becoming a mother’. As regards the remaining elements of the contested sign, namely ‘Maternity & Baby wear’, the sequence of these words will be understood by the relevant part of the public as a reference to the nature of the goods and services, namely that these are to be directed and worn by babies and pregnant women. Thus, this sequence of words is considered descriptive and forms a non-distinctive part for the goods and services at stake.

With respect to the earlier mark there are no elements which are more dominant (visually eye-catching) than others.

Visually, the signs coincide in the sequence of letters ‘B-E-M-A-M-(*)-*-’, with the only difference in the slightly fancy typeface in which these letters of the earlier mark are written. Even though in the contested sign the letters ‘Be Mama’ are separated by a space, this is also the case in the earlier mark, since the first letters ‘be’ are separated by a line (part of the heart device) dividing them from the remaining element ‘mammy’. In the contested sign this sequence of letters also forms the most distinctive verbal elements, for the reasons set forth above. The marks differ in the additional letter ‘m’ in the middle and the final letter ‘y’ of the earlier mark versus the final letter ‘a’ in ‘Be Mama’ of the contested sign. The marks also differ in the hyphen in between and the words ‘Maternity & Baby wear’, which are, as pointed out above, non-distinctive and have less impact on the overall impression. The marks also differ in that the earlier mark contains a figurative element in the form of a heart which is not shared by the contested sign.

When signs consist of both verbal and figurative components (as does the earlier mark in the present case), 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the figurative element in the earlier mark has less impact.

Regarding the slightly fancy typeface in which the earlier mark is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

Furthermore, the first parts of the conflicting marks, ‘BE MA(*)M-‘, coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /B-E-M-A-M-(*)-*-/, present identically in both signs. Furthermore, even though the earlier mark contains two letters ‘M’ in the middle, this has no bearing on its pronunciation as its sound is as a single letter ‘M’. With respect to the words ‘Maternity & Baby wear’, separated by a hyphen from the remaining elements, since these are non-distinctive, it is rather unlikely that, at least a part of, the public would pronounce them. Furthermore, the marks are both pronounced in three syllables, as /BE-MA-MMY/ versus /BE-MA-MA/. The different sounds ‘Y’ of the earlier mark and ‘A’ in the contested sign fall at the end, where the consumer usually focuses less. Thus, the marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The words ‘be mammy’ of the earlier mark versus ‘be mama’ of the contested sign are conceptually very similar, since the words of the earlier mark form a sweeter way of referring to a mother than in the contested sign. The earlier mark has the additional concept of a heart. The relevant public will also grasp the meaning of the words ‘Maternity & Baby wear’, which are considered non-distinctive, and have less impact on the comparison. The marks are conceptually highly similar.

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.

5. Global assessment, other arguments and conclusion

The goods and services at issue have been found to be partly identical or similar to a low degree and partly dissimilar, while the level of attention of the public at large is average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree whereas aurally and conceptually they are even highly similar.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and 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, § 26).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those services that are similar even only to a low degree. The higher similarity between the signs will outweigh the low similarity between the services.

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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 628 194. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

For the sake of completeness, it should be mentioned, that the applicant’s observations of 20/07/2016 could not be taken into account, because they were filed in Polish and no translations into the language of the proceedings, namely, English, had been filed within one month from the date of the submission of the original document (Rule 96(1) EUTMIR).

Insofar as the applicant’s observations dated 29/03/2017 are concerned, which were filed in the language of the proceedings, the applicant argues that its company has reputation in Poland which is linked to the trade mark owing to the common element ‘BE!’. To this extent, the Opposition Division would like to draw the applicant’s attention to the fact that the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Moreover, in its observations, the applicant argues that it owns several applications with the word ‘BE!’ in the Polish Patent Office.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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

Chantal VAN RIEL

Klaudia MISZTAL

Vít MAHELKA

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.