OPPOSITION No B 2 604 927

Nivea Polska Sp. z o.o., Gnieźnieńska 32, Poznań, Poland (opponent), represented by Biuro Ochrony Własności Intelektualnej Patent-Service Paweł Górnicki, ul. Rybojadzka 16, Poznań, Poland (professional representative)

a g a i n s t

Станимир Шанов, ул. Найден Геров № 26, вх.В, ет.1, ап.3, Габрово, Bulgaria (applicant), represented by Aleksi Atanasov Chilikov, Consulting house "Patent Assist", 61 "Svishtovska" Str., vh.2, et.5, ap. 10, Gabrovo, Bulgaria (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 927 is partially upheld for all the contested goods in Class 3 and the following contested goods in Class 5:  

Class 5: Pharmaceutical, veterinary and sanitary preparations; balms for medical purposes; petroleum jelly for medical purposes; milk of almonds for pharmaceutical purposes;  plasters, materials for dressings; cotton for medical use; antiseptic cotton; aseptic cotton; wadding for medical purposes; absorbent cotton; adhesive plasters;; tissues impregnated with pharmaceutical lotions; hygienic bandages, sanitary pads, medical dressings and surgical dressings; gauze for dressings; tampons (for sanitary and medical purposes); sanitary tampons; sanitary pants, female; sanitary towels; napkins for incontinents; babies' diapers; paper diapers; sanitizing wipes; sanitary towels; wipes for medical use; impregnated antiseptic wipes; moist wipes impregnated with a pharmaceutical lotion; babies' creams [medicated]; medicated baby oils; medicated powder, including for babies; disinfectants; disinfectants for hygiene purposes; preparations for destroying vermin; fungicides, herbicides; insecticides; bactericides; biocides; mothproofing preparations; chemical preparations to treat mildew; air purifying preparations; air deodorising preparations; deodorants, other than for human beings or for animals.

2.        European Union trade mark application No 14 471 221 is rejected for the above goods. It may proceed for the remaining contested goods as well as the non-contested goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of goods of European Union trade mark application No 14 471 221, namely against all the goods in Classes 3 and 5. The opposition was withdrawn by the opponent during the proceedings as far as the goods in Class 21 were concerned. The opposition is based on, inter alia, Polish trade mark registration No 260 497. 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 Polish trade mark registration No 260 497.

1. The goods

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

Class 3: Cosmetics for babies and infants; shampoos; cosmetic powders; baby oils; baby powders; talcum powder; body care preparations; conditioners; bath formulas and preparations; wipes impregnated with cosmetic lotions; soaps; liquid soaps; lotions; milks; tonics; creams; oils; toilet waters; sunscreens; cotton swabs; cotton buds.

Class 5: Wipes impregnated with pharmaceutical lotions; disinfectants for hygiene purposes; plasters and medical dressings; breast-nursing pads.

After the limitations of the goods by the applicant in the course of the opposition proceedings, the contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; Laundry liquids; Washing liquids; Detergents; Laundry soaking preparations; Fabric softeners (for laundry use); Starch for laundry purposes; Laundry blue; Household colour-freshening preparations (for laundry); Bleaching preparations; Laundry bleach; Javelle water; Bleaching salts; Bleaching soda; Cleaning preparations; Scouring solutions; Washing soda, for cleaning; Volcanic ash for cleaning; Cleaning chalk; Wallpaper cleaning preparations; Floor wax removers [scouring preparations]; Stain removers; Furniture cleaner; Dishwashing detergents; Washing-up detergent; Cleaning preparations for use on tiles; Chrome cleaners; Detergents for drains; Preparations for cleaning waste pipes; Rust removing preparations; Compressed air bottles for cleaning purposes; Towels, impregnated with cleaning preparation; Automobile cleaners; Shampoos for vehicles; Glass cleaning preparations; Windscreen cleaning liquids; Cleansing gels; Oils for cleaning purposes; Polishing, scouring and abrasive preparations; Polishing powders; Polishing wax; Polishing creams; Automobile wax; Shining preparations (polish); Polish for furniture and flooring; Automobile polishes; Degreasers other than for use in manufacturing processes; Antistatic preparations for household purposes; Drying agents for dishwashing machines; Polishing stones; Polishing paper; Pumice stone; Perfumery; Perfume; Deodorants for human beings or for animals; Aromatics (essential oils); Flavourings (other than essential oils); Air fragrancing preparations; Sachets for perfuming linen; Joss sticks; Scented wood; Cake flavorings [essential oils]; Flavourings for beverages [essential oils]; Essential oils; Beauty care; Hair lotion; Baby care products (non-medicated-); Shampoo, including for babies; Toilet water; Perfume water; Creams (cosmetic -); Babies' creams [nonmedicated]; Non-medicated diaper rash cream; Oils for cosmetic purposes; Cosmetic masks; Balms other than for medical purposes; Almond oil; Baby oils; Almond milk for cosmetic purposes; Petroleum jelly for cosmetic purposes; Baby body milks; Baby powder; Tints for the hair; Hair waving preparations; Hair spray; Shaving preparations; Depilatories; Make-up preparations; Cosmetic kits; Toiletries; Tissues impregnated with cosmetic lotions; Baby wipes; Cotton sticks for cosmetic purposes, including those impregnated with cosmetic lotions; Cotton wool for cosmetic purposes; Ear buds; Sunscreen preparations; Articles for the cleaning and polishing of teeth and dentures; Dentifrices, toothpastes, Tooth powder; dental beaching gels; Breath freshening sprays. 

Class 5: Pharmaceutical, veterinary and sanitary preparations; Chewing gum for medical purposes; Medicinal herbs; Herbal teas for medicinal purposes; Decoctions for pharmaceutical purposes; Smoking herbs for medical purposes; Balms for medical purposes; Petroleum jelly for medical purposes; albuminous milk; Milk of almonds for pharmaceutical purposes; Dietetic substances and foods adapted for medical and veterinary use; Food for babies; Powdered milk foods for infants; Lacteal flour for babies; Beverages for infants; Dietary supplements for humans and animals; Dietetic substances for babies; Dietetic beverages adapted for medical purposes; Plasters, materials for dressings; Cotton for medical use; Antiseptic cotton; Aseptic cotton; Wadding for medical purposes; Absorbent cotton; Adhesive plasters;; Tissues impregnated with pharmaceutical lotions; Hygienic bandages, sanitary pads, medical dressings and surgical dressings; Gauze for dressings; Tampons (for sanitary and medical purposes); Sanitary tampons; Sanitary pants, female; Sanitary towels; Napkins for incontinents; Babies' diapers; Paper diapers; Sanitizing wipes; Sanitary towels; Wipes for medical use; Impregnated antiseptic wipes; Moist wipes impregnated with a pharmaceutical lotion; Babies' creams [medicated]; Medicated baby oils; Medicated powder, Including for babies; Material for stopping teeth, dental wax; Disinfectants; Disinfectants for hygiene purposes; Preparations for destroying vermin; Fungicides, herbicides; Insecticides; Bactericides; Biocides; Mothproofing preparations; Chemical preparations to treat mildew; Air purifying preparations; Air deodorising preparations; Deodorants, other than for human beings or for animals.

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 3

The contested perfumery; perfume; deodorants for human beings or for animals; perfume water; toilet water are include or overlap with the opponent’s toilet waters. Therefore, these goods are identical.

The contested baby care products (non-medicated-); creams (cosmetic -); babies' creams [nonmedicated]; non-medicated diaper rash cream; baby body milks; baby powder; cosmetic kits; toiletries; baby wipes; balms other than for medical purposes; petroleum jelly for cosmetic purposes; almond milk for cosmetic purposes and sunscreen preparations are all products aimed to improve personal beautification and hygiene, and used for baby skin care. As such, they include or overlap with opponent’s broad category of cosmetics for babies and infants which cannot be dissected ex officio from the broad categories of the goods applied for. These goods are, therefore, identical.

The contested beauty care; cosmetic masks belong to the opponent’s broad category of body care preparations and these goods are, therefore, identical.

Tissues impregnated with cosmetic lotions, shampoo are identically included in both lists of goods (including synonyms). The use of including in the applicant’s specification (‘shampoo, including for babies’) indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them.

The contested oils for cosmetic purposes; almond oil; baby oils; aromatics (essential oils); essential oils; cake flavorings [essential oils]; flavourings for beverages [essential oils] all belong to the opponent’s broad category of oils and they are, therefore, identical.

The contested other substances for laundry use; laundry liquids; washing liquids; detergents; laundry soaking preparations; fabric softeners (for laundry use); starch for laundry purposes; laundry blue; household colour-freshening preparations (for laundry); cleaning preparations; washing soda, for cleaning; volcanic ash for cleaning; cleaning chalk; wallpaper cleaning preparations; stain removers; furniture cleaner; degreasers other than for use in manufacturing processes; dishwashing detergents; washing-up detergent; cleaning preparations for use on tiles; chrome cleaners; detergents for drains; preparations for cleaning waste pipes; rust removing preparations; compressed air bottles for cleaning purposes; towels impregnated with cleaning preparation; automobile cleaners; shampoos for vehicles; glass cleaning preparations; windscreen cleaning liquids; cleansing gels; oils for cleaning purposes are all products used for laundry and other cleaning purposes. The opponent’s soaps are cleaning or emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Based on this, soaps are essentially used for cleaning purposes. This means that some of these contested goods overlap with and are therefore identical to soaps such as, for example, laundry liquids; washing liquids; detergents; laundry soaking preparations; cleaning preparations while the rest of these contested goods are similar to the opponent’s soaps since they can coincide in their manufacturers and they are sold to the same target public, via the same distribution channels and, depending on the actual method of use, they can also be complementary to or in competition with one another.

The contested bleaching preparations (listed twice); laundry bleach; javelle water; bleaching salts; bleaching soda are products that are used as part of cleaning process albeit with a specific purpose, namely, to make something whiter or lighter in colour by a chemical agent. This means that these goods are similar to the opponent’s soaps since they target the same consumers and have the same producers and distribution channels.

The contested floor wax removers [scouring preparations]; polishing, scouring and abrasive preparations; scouring solutions; polishing powders; polishing wax; polishing creams; automobile wax; shining preparations (polish); polish for furniture and flooring; automobile polishes; antistatic preparations for household purposes; polishing stones; polishing paper; pumice stone are all products that are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive or a special cloth. In essence, all of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of the opponent’s soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Therefore, these goods are considered similar.

The contested hair lotion; tints for the hair; hair waving preparations; hair spray are all products used for hair care purposes. These goods are usually produced by the same undertakings, distributed via the same channels and target the same public as the opponent’s shampoo. As a result, these goods compared are similar. 

The contested shaving preparations; depilatories; make-up preparations all products used for hygienic or beautification purposes. These goods are usually produced by the same undertakings, distributed via the same channels and target the same public as the opponent’s body care preparations. As a result, these goods compared are similar.

The contested cotton sticks for cosmetic purposes, including those impregnated with cosmetic lotions; cotton wool for cosmetic purposes; ear buds may have the same manufacturers than the opponent’s cosmetics for babies and infants. Furthermore, these goods are distributed at the same outlets or same sections of large department stores and they target the same public. These goods compared are, therefore, similar.

The contested flavourings (other than essential oils) show some overlap with the opponent’s oils which also includes essential oil. While their basic ingredient is different, they can still originate from the same undertakings, distributed via the same channels and target the same public. In addition, their method of use can coincide and they may also be complementary or in competition exactly because of the use of different ingredients for a similar purpose. Overall, these goods are similar.

The contested air fragrancing preparations; sachets for perfuming linen; joss sticks; scented wood are all aimed to provide pleasant fragrance for the air and they contain a certain amount of perfumed material. In that sense, the opponent’s most relevant products are oils which include essential oils that are, in fact, used in the above products of the applicant. Consequently, they can come from the same undertakings, sold at the same sections of stores and target the same public. Based on the foregoing, these goods must be considered similar to the opponent’s oils. 

With regard to the comparison of the contested articles for the cleaning and polishing of teeth and dentures; dentifrices, toothpastes, tooth powder; dental bleaching gels; breath freshening sprays and the opponent’s cosmetics for children and infants, it must be noted that the these goods are often produced by the same manufacturers are also largely offered side by side in the same sales outlets, such as department stores or chemists. Hence, these goods compared are similar to a low degree.

The contested drying agents for dishwashing machines have the fundamental purpose of drying which is different to that of the opponent’s soaps (and the rest of the opponent’s goods too). However, they are used in the same principal process of washing the dishes albeit they make their effect at different phases of this process. Also, these goods are usually manufactured by the same undertakings, target the same public and are available at the same outlets or parts of large stores. Overall, these goods are similar to a low degree. 

Contested goods in Class 5

The contested tissues impregnated with pharmaceutical lotions are identically included in both lists of goods (including the synonymous wipes). Furthermore, these goods either include or overlap with the contested sanitizing wipes; wipes for medical use; impregnated antiseptic wipes; moist wipes impregnated with a pharmaceutical lotion. These goods are, therefore, identical.   

Disinfectants for hygiene purposes are identically included in both lists of goods. Furthermore, these goods of the opponent obviously belong to the broad category of the contested disinfectants and, therefore, they are identical, too. 

The contested plasters, materials for dressings; cotton for medical use; antiseptic cotton; aseptic cotton; wadding for medical purposes; absorbent cotton; adhesive plasters; medical dressings and surgical dressings; gauze for dressings all belong to the opponent’s broad category of plasters and medical dressings. These goods are, therefore, identical. 

The contested preparations for destroying vermin; fungicides, herbicides; insecticides; bactericides; biocides; mothproofing preparations; chemical preparations to treat mildew are all chemical substances to remove harmful infestants such as fungi, insects, bacteria, etc. and to provide a healthier, more hygienic environment. Thus, these goods have point of contact with the opponent’s disinfectants for hygiene purposes since they share the same public, method of use and essential purpose. They may also be sold in the same outlets and manufactured by the same companies. Overall, these goods compared are similar.

The contested pharmaceutical preparations make a very broad category and are, therefore, considered similar to the opponent’s cosmetics for children and infants in Class 3 since the said contested goods comprise products such as skin or haircare preparations, with medical properties and they may, therefore, coincide in purpose with the opponent’s goods. Moreover, they can share the same distribution channels as they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies.

With regard to the comparison of the contested sanitary and veterinary preparations and the opponent’s soaps in Class 3, the latter can also be used in a medical or veterinary environment with the purpose of beautifying, grooming or otherwise providing care for both humans and animals. These goods can have the same origin, may target the same consumers and be sold through the same distribution channels. Therefore, these goods are considered similar.

The contested medicated powder, including for babies and the opponent’s baby powders in Class 3 show some differences regarding their ingredients or purpose but they have the same nature and method of use. Also, they can have the same commercial origin, target the same public and sold via the same channels. Overall, these goods are similar.

Along the same arguments as in the preceding paragraph, there is similarity between the contested balms for medical purposes; petroleum jelly for medical purposes; babies' creams [medicated] and the opponent’s creams in Class 3, between the contested medicated baby oils and the opponent’s oils in Class 3 and between the contested  milk of almonds for pharmaceutical purposes and the opponent’s milks in Class 3. 

The contested air purifying preparations; air deodorising preparations; deodorants, other than for human beings or for animals have the purpose of purifying or deodorising the air by removing or neutralising contaminants or odours. To this extent, there is some link with the purpose and effect of the opponent’s broad category of disinfectants for hygiene purposes and these goods may share the same public and may be sold at the same sections of larger stores. However, the said contested goods are specific preparations usually manufactured by different undertakings that those of the opponent’s goods. In addition, the goods at issue are not complementary nor interchangeable. All these considerations mean that these goods compared are only similar to a low degree. In addition, these contested goods are even farther apart and, thus, dissimilar to the rest of the opponent’s goods given the differences in their purposes, methods of use and distribution channels.

The contested Tampons (for sanitary and medical purposes); Sanitary tampons; Sanitary pants, female; hygienic bandages, sanitary pads, sanitary towels; Napkins for incontinents; Babies' diapers; Paper diapers and the opponent’s soaps; body care preparations may share the similar purpose of providing hygiene. Furthermore, they are all found in pharmacies or other specialized shops and can be manufactured by the same companies. Also, they may have the same target public. Therefore, they are similar to a low degree.

With regard to the remaining contested goods, namely, Chewing gum for medical purposes; Medicinal herbs; Herbal teas for medicinal purposes; Decoctions for pharmaceutical purposes; Smoking herbs for medical purposes; albuminous milk; Dietetic substances and foods adapted for medical and veterinary use; Food for babies; Powdered milk foods for infants; Lacteal flour for babies; Beverages for infants; Dietary supplements for humans and animals; Dietetic substances for babies; Dietetic beverages adapted for medical purposes; Materials for stopping teeth, dental wax, these products are intended for very specific purposes: either for human consumption or are usually prepared, prescribed or recommended by dentists. As such, they are dissimilar to all of the opponent’s goods since they usually come from different undertakings, sold to different target public via different channels. Also, these contested goods are not in competition nor complementary with any of the opponent’s goods.

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 similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Poland.

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 mark contains the word ‘bambino’ in blue lowercase surrounded by a red line. Since this word element lacks any meaning in the relevant territory, it is distinctive in relation to the goods.

The contested sign comprises the words ‘DINO BAMBINO’ in black uppercase, one on top of the other, and the image of a dinosaur. None of these elements are more dominant than the other and they lack any meaning in Polish. However, as regards the word element ‘DINO’, it is noted that even though the relevant word in Polish is ‘dinozaur’, taking into account the presence of the corresponding image in the sign, ‘DINO’ will be understood as referring to dinosaur too. Each of these elements is distinctive in relation to the goods although it must be mentioned that the use of an animal figure is a rather common marketing feature in products intended for children and this applies to a significant part of the relevant goods in the present case.

Visually, the signs coincide in the distinctive word ‘BAMBINO’ being the earlier sign’s sole word element. They differ in the additional verbal and figurative elements in the contested sign as well as in the colours of the earlier mark. They also differ in their typeface. However, it must be recalled that when signs consist of both verbal and figurative components, 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). This means in the present case that the figurative element or the typeface, colour, will have a lesser role in consumer perception, and the impact made by the reproduction in the contested sign of the earlier mark’s sole word, is offset only to a certain extent by the additional elements of the contested sign. Overall, the signs must be considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BAMBINO’, present identically in both signs as a distinctive element and being the only aurally relevant element of the earlier mark. The pronunciation differs in the sound of the contested sign’s additional letters ‘DINO’. Given that the entire verbal element of the earlier mark is reproduced in the contested sign, and this coinciding element is the longer  word of the contested sign, the signs must be considered aurally similar to an average degree. 

Conceptually, although the public in the relevant territory will associate the contested sign with the concept of dinosaur, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case.

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 signs are similar visually and aurally to an average degree and the goods are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark’s only word is reproduced in the contested sign while the signs differ in the additional verbal and figurative elements representing the concept of a dinosaur in the contested sign. However, this conceptual difference is certainly not capable of counteracting the impact of the coinciding word.

Account is taken of 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same undertaking or economically linked undertakings. Although the relevant public will not ignore the existing differences between the marks, the coinciding distinctive element ‘BAMBINO’ could still lead them to believe that the identical and similar goods came from the same undertaking or economically linked undertakings. In fact, the coincidence in the meaningless term ‘BAMBINO’ which is accompanied in the contested mark by a depiction of a dinosaur together with the corresponding word element ‘DINO’, could even lead consumers to believe that the contested sign is a sub-brand of the earlier mark, more specifically, a sub-brand that is used, for example, for child-related goods.

With regard to the applicant’s argument that there are other ‘Bambino’ marks against which the opponent has not started opposition proceedings, it must be recalled that nothing precludes the opponent from filing an opposition against a EUTM application, whether or not it previously opposed other (national) marks. This cannot be considered as contradictory behaviour and interpreted to the opponent’s disadvantage. The applicant also refers to the fact that the same contested mark has been attacked in a separate opposition procedure, on the basis of other earlier rights. It must be noted that each case must be assessed on its own individual merits and outcome of any particular case will depend on specific criteria applicable to the facts of that particular case. These arguments by the applicant must, therefore, be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public, for the identical or similar goods, and even for goods found to be similar to a low degree.

The rest of the contested goods and services are dissimilar to the opponent’s goods and services. 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 and services cannot be successful.

Therefore, the opposition is partially well founded on the basis of the opponent’s Polish trade mark registration No 260 497. It follows that the contested trade mark must be partially rejected for the contested goods found to be identical or similar.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark examined, there is no need to assess the enhanced distinctiveness of the opposing mark as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on earlier Polish trade marks Nos 43 450 ‘BAMBINO’ and 197 141 ‘bambino juniorki’ registered for goods in Classes 3 and 5. Since these marks cover the same or even a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Given that further examination of these earlier trade marks would not change the outcome, it is unnecessary to examine the evidence of use and enhanced distinctiveness filed by the opponent in relation to them. As stated above, in relation to dissimilar goods, the result would be the same even if these remaining earlier marks were used for all the goods and enjoyed an enhanced degree of distinctiveness.

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 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

Marianna KONDÁS

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.