OPPOSITION No B 2 770 330

BA & SH, Société par action simplifiée, 67 Avenue Raymond Poincare (Lots 28 Et 29), 75116 Paris, France (opponent), represented by Cabinet Bouchara Avocats, 17, rue du Colisée, 75008 Paris, France (professional representative)

a g a i n s t

Casa Florida Artigos Decoração – Sociedade Unipessoal Lda, Rua Felizardo Lima, Nº 185, 4100-238 Porto, Portugal (applicant), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 330 is partially upheld, namely for the following contested goods:

Class 18:        Transport containers for animals; suitcases; valises; travelling cases of leather; haversacks; backpacks; coin holders in the nature of wallets; handbags.

Class 25:        Clothing for babies and newborns; footwear; trousers; shirts; bodices [lingerie]; jackets [clothing]; waistcoats; pyjamas; ponchos; knitwear [clothing]; outerclothing; tee-shirts; gowns; footwear; infants’ footwear; belts [clothing]; robes; bathrobes; sandals; footwear.

2.        European Union trade mark application No 15 193 329 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 193 329, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 5 679 758. 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

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

Class 18:        Trunks and travelling bags; wallets; handbags.

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 18:        Transport containers for animals; collars for animals; suitcases; valises; travelling cases of leather; haversacks; backpacks; coin holders in the nature of wallets; handbags; leather leashes; costumes for animals.

Class 25:        Clothing for babies and newborns; footwear; trousers; shirts; bodices [lingerie]; jackets [clothing]; waistcoats; pyjamas; ponchos; knitwear [clothing]; outerclothing; tee-shirts; gowns; footwear; infants’ footwear; belts [clothing]; robes; bathrobes; sandals; footwear.

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 18

Handbags are identically contained in both lists of goods.

The contested suitcases; valises; travelling cases of leather; haversacks; backpacks are included in the broad category of the opponent’s trunks and travelling bags. Therefore, they are identical.

The contested coin holders in the nature of wallets are small money bags or pouches for carrying coins. They are included in or overlap with the broader category of the opponent’s wallets. Therefore, they are considered identical.

The contested transport containers for animals are special containers or bags used to transport small animals. They have some points in common with the opponent’s travelling bags, namely in their nature and purpose, since they are both various types of (leather) goods for carrying and keeping things. Although they are usually distributed through different channels, they may also coincide in their manufacturers and end users. Therefore, they are considered similar to a low degree.

The contested collars for animals; leather leashes; costumes for animals are pieces of material put around the neck of an animal or a lead line attached to the neck of an animal, for restraint or control, and clothing for animals. They have a different nature and purpose from the natures and purposes of the opponent’s goods in Classes 18 and 25; they are also distributed through different channels (the contested goods being sold in specialised pet shops) and they target different consumers from the opponent’s goods. Furthermore, they are neither in competition nor complementary. The mere fact that these contested goods can be made of the same raw material as the opponent’s goods (i.e. leather) or may have the same manufacturers as the opponent’s goods is not sufficient in itself to find a similarity between them. These goods are, therefore, dissimilar.

Contested goods in Class 25

Footwear (mentioned three times in the list of contested goods) is identically contained in both lists of goods.

The contested clothing for babies and newborns; trousers; shirts; bodices [lingerie]; jackets [clothing]; waistcoats; pyjamas; ponchos; knitwear [clothing]; outerclothing; tee-shirts; gowns; belts [clothing]; robes; bathrobes are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested infants’ footwear; sandals are included in the broad category of the opponent’s footwear. 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 (to a low degree) are directed at the public at large. The degree of attention is considered average.

3. The signs

	BABASH DESIGN
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 earlier mark is a figurative mark consisting of the verbal element ‘ba&sh’ written in slightly stylised lower case letters. The ampersand, ‘&’, will be perceived as representing the conjunction word ‘and’ by at least the English-speaking part of the public of the European Union. The element ‘ba&sh’, as a whole, is a meaningless combination of letters and a logogram and, therefore, has an average degree of distinctiveness in relation to the relevant goods.

The contested sign is a word mark, ‘BABASH DESIGN’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters. The word ‘BABASH’ will be perceived as meaningless by the relevant public. The word ‘DESIGN’ is descriptive in relation to the goods in Classes 18 and 25, since it is commonly used in the fashion sector as referring to the application of design and aesthetic beauty to clothing, footwear or leather goods. At least a significant part of the relevant public will understand the meaning of this word and will not pay much attention to it. Therefore, the word ‘BABASH’ is considered the most distinctive element of the contested sign.

Neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-caching) than other elements.

Visually, the signs coincide in the first two letters, ‘BA’, and the final two letters, ‘SH’, of the earlier mark, ‘ba&sh’, and of the first and more distinctive verbal element of the contested sign, ‘BABASH’. The marks differ in the ampersand, ‘&’, in the middle of the earlier mark and in the letters ‘BA’, which are simply a repetition of the first two letters, in the middle of the word ‘BABASH’ of the contested sign. The signs also differ in the second word, ‘DESIGN’, of the contested sign, which, as indicated above, is descriptive for at least part of the relevant public.

Although the differing middle parts, namely ‘&’ in the earlier mark and ‘BA’ in the distinctive element of the contested sign, will create some visual differences between the signs, the fact that the middle of the distinctive element of the contested sign, ‘BA’, is composed of a simple repetition of the first two letters will not go unnoticed by the relevant consumers. Therefore, the earlier mark, ‘ba&sh’, and the distinctive element of the contested sign, ‘BABASH’, will be perceived as composed of the same sequence of letters, namely ‘B’, ‘A’, ‘S’ and ‘H’, albeit depicted in slightly different manners, although this does not create any significant differences between the two marks. The addition of the descriptive element ‘DESIGN’ will not have much influence on consumers’ perception, since their attention will focus on the distinctive element ‘BABASH’ of the contested sign.

Therefore, the earlier mark and the contested sign are considered visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /BA/ and /SH/. The pronunciation differs in the additional sound of the letters /BA/, which will be pronounced twice in the word ‘BABASH’, and in the sound of the verbal element ‘DESIGN’ of the contested sign. As mentioned above, at least part of the relevant public will recognise and, therefore, pronounce the ampersand, ‘&’, in the earlier mark. Consequently, the pronunciation of the signs may also differ in the fact that, for example, for the English-speaking part of the public, the earlier mark will feature the syllable /AND/, for the German-speaking part of the public, the corresponding syllable will be /UND/ and for the Spanish-speaking part of the public, this sound will be /Y/. Nevertheless, it cannot be excluded that part of the relevant public will not recognise the logogram ‘&’ or will simply not pronounce it because the elements it connects are meaningless. In that case, the earlier mark will not have any additional sounds and will be pronounced as /bash/ or may have a short pause between the syllables /ba/ and /sh/.

Considering the weight attributed to the differing element ‘DESIGN’ of the contested sign and the fact that, in both of the abovementioned scenarios, the earlier mark and the distinctive element of the contested sign coincide in the sound of, at least, the first two and the final two letters, the signs are considered aurally similar to an average degree for the part of the relevant public that will pronounce the ampersand in the earlier mark and similar to a high degree for the remaining part of the public.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘DESIGN’ of the contested sign will evoke a concept, this element is non-distinctive and will not be perceived as indicating the commercial origin of the goods. Therefore, the attention of the relevant public will be attracted by the word ‘BABASH’, which has no meaning.

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.

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.

According to the opponent, the earlier trade mark enjoys a high degree of recognition among the relevant public in connection with the relevant goods. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. The opponent requested that certain commercial data in the evidence be kept confidential vis-à-vis third parties. As a rule, the Opposition Division accepts such requests when they relate to financial or other sensitive commercial information. However, this does not apply to evidence that consists of information that is already available to the public, either on the opponent’s website and/or in the mass media (including on the internet). The evidence submitted consists of the following documents: printouts from the ‘Celebrity Style Guide’ and ‘Style Lounge’ websites, from the opponent’s website, from some online stores’ websites and from ‘The Telegraph’ and ‘VOGUE.COM’ websites; and copies of articles in English, French, German and Spanish from magazines In Style, L’OFFICIEL, BAZAR, ELLE, GRAZIA, VANITY FAIR, Journal du Textile, MADONNA, ¡HOLA!, VOGUE, MADAME, Marie Claire, etc.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The evidence consists only of copies of articles and printouts from the opponent’s website and some other websites, which cannot be considered in themselves to provide sufficient information regarding the degree of recognition of the earlier trade mark by the relevant public. Indeed, the evidence submitted provides no indication of, for instance, the market share held by the mark, the amount invested by the undertaking in promoting the mark or the proportion of the relevant section of the public that, because of the mark, identifies the goods as originating from a particular undertaking; no statements from chambers of commerce and industry or other trade and professional associations were submitted.

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

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).

As concluded above, the contested goods are partly identical and partly similar (to a low degree) to the opponent’s goods and they target the public at large with an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs are visually similar to at least an average degree and aurally highly similar or similar to an average degree, depending on the part of the relevant public in question. The conceptual aspect does not influence the assessment of the similarity between the signs, as the earlier mark, ‘ba&sh’, and the distinctive element ‘BABASH’ of the contested sign are meaningless. The differences between the earlier mark and the contested sign arise from the repetition of the letters ‘BA’ in the distinctive element of the contested sign and the ampersand, ‘&’, in the earlier mark. The signs also differ in the word ‘DESIGN’ of the contested sign, although this word does not have much influence on the assessment of likelihood of confusion, since it is descriptive of the characteristics of the goods in question and the relevant consumers are not likely to remember descriptive elements or perceive them as indicators of trade origin.

In spite of the differences between the signs, there is a likelihood of confusion because of significant visual coincidences between the earlier mark and the contested sign, as outlined in section c) of this decision. Having regard to the fact that generally in clothes, shoe or leather goods shops, customers can themselves either choose the item they wish to buy or be assisted by the sales staff, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50), which is very pertinent in the present case, considering the nature of the relevant goods that are identical or similar (to a low degree).

Notwithstanding the above, aurally the signs are also similar, especially for the part of the relevant public that will not pronounce the ampersand in the earlier mark. Since verbal communication in respect of the relevant goods and the signs under comparison cannot not be excluded, it is important to consider that, due to imperfect recollection, the relevant consumer could be confused by the fact that the earlier mark and the distinctive element of the contested sign are composed of the same letters in the same order and may not recall the repetition or even the presence of the ampersand.

All in all, considering 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), the abovementioned visual and aural similarities results in a likelihood of confusion between the signs, even in relation to the goods that are similar to a low degree. Since neither of the marks under comparison conveys any concept that could differentiate them from each other, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested mark as a sub-brand or variation of the earlier mark (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 public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 679 758.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and, due to the similarities existing between the signs, even for the goods that are similar to a low degree to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Ana MUÑIZ RODRÍGUEZ

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.