of the Fifth Board of Appeal
of 12 January 2017
In Case R 195/2016-5
Calida Holding AG
Opponent / Appellant
represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674, Köln, Germany
5, rue Théodule Villeret
95130 Le Plessis Bouchard
Applicant / Respondent
represented by Cabinet Malemont, 91 avenue Kléber, 75116, Paris, France
APPEAL relating to Opposition Proceedings No B 2 321 845 (European Union trade mark application No 12 223 723)
THE FIFTH BOARD OF APPEAL
composed of G. Humphreys (Chairperson and Rapporteur), A. Szanyi Felkl (Member) and V. Melgar (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- By an application filed on 15 October 2013, Porée Havlik (‘the applicant’) sought to register the figurative mark:
for the following list of goods:
Class 10 – Undersheets for babies’ and children’s beds, feeding bottles;
Class 18 – Baby changing bags, parasols;
Class 20 – Portable beds for children of textiles, in the form of bags and baskets; mattresses for children’s beds; recliners for children;
Class 21 – Tableware for babies (not of precious metal or coated therewith), inflatable baby baths;
Class 24 – Sleeping bags for babies and children, eiderdowns forming bedspreads for children, bed linen for children, namely sheets, pillowcases, blankets, valances of textiles for children's beds, veils for children's beds, bath towels for children;
Class 25 – Clothing for children, bibs (except of paper), bath robes for children.
The applicant claimed the colours green and white.
- The application was published on 2 December 2013.
- On 28 February 2014, Calida Holding AG (‘the opponent’) filed an opposition against the registration of the published trade mark application, for some of the goods, namely those in Class 25.
- The grounds of opposition were those laid down in Article 8(1)(b) EUTMR, the opposition being based on the following earlier right:
- EUTM No 177 956 for the word mark ‘CALIDA’ filed on 1 April 1996 and registered on 9 December 1998 for the Class 25 goods ‘clothing’.
- By decision of 30 November 2015 (‘the contested decision’), the Opposition Division rejected the opposition on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:
- The goods at issue are identical;
- Visually and aurally the marks share similarity in that the ‘CALI’ element appears in both;
- Conceptually, ‘CALIDA’ means ‘hot’ in Spanish and ‘CALIN’ ‘a hug’ in French. ‘Baby’ refers to a new/recently born child’ in English, German and Dutch, and is widely understood throughout the EU;
- The signs are similar;
- ‘Baby’ is weak in the contested sign and it is assumed that the opponent’s claim of enhanced distinctiveness under the ‘CALIDA’ mark has been proven. The relevant public is the public at large with an average level of attentiveness;
- Despite the common ‘CALI’ element, the marks are easily differentiated by the relevant public:
- The later mark has two syllables: ‘CA-LIN’, while the earlier sign has five: ‘BA-BY CA-LI-DA’;
- The contested sign contains the additional word ‘BABY’ which, though weak for the contested goods, still forms an important visual and aural difference which appears at the beginning of the sign, attracting most consumer attention;
- There is a noticeable figurative element in the contested sign;
- There is no conceptual link between the signs.
- Even given the distinctiveness of the earlier mark, the identity of the goods and the imperfect memory of the relevant public, there is no confusion and the opposition must be rejected, with the opponent paying costs.
- On 27 January 2016, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 24 March 2016.
- In its observations in reply received on 26 May 2016, the applicant requested that the appeal be dismissed.
Submissions and arguments of the parties
- The arguments raised in the statement of grounds may be summarised as follows:
- The contested decision underestimates the distinctiveness of the earlier right. The decision deems that the earlier right has enhanced distinctiveness in relation to ‘clothing’ following use in the marketplace, yet there is no explanation of the assertion that the outcome of likelihood of confusion would not be different taking into account this enhanced distinctiveness. The Office has previously found ‘CALIDA’ to be distinctive only after a proper examination of submitted evidence (B 1 905 978, 03/07/2014, CALIDA / CALI; B 2 505 355, 26/02/2016, CALIDA/CARLYNA);
- The goods are identical and the interdependence principle applies (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17);
- Despite the contested decision finding that ‘BABY’ in the application is weak, the decision still went on to state that the latter word created ‘an important visual and aural difference between the signs’. It is a rule of thumb and not a rule of law that consumers pay more attention to the beginnings of signs (16/05/2007, T158/05, Alltrek, EU:T:2007:143, § 70 et seq.) – further, ‘BABY’ indicates only user destination and not product origin – in this regard only the words ‘CALIDA’ and ‘CALIN’ would be relied on by consumers;
- These words are similar because of:
- the identical element ‘CALI’ – the user would become aware of this initially;
- the aural weakness of the letters ‘D’ and ‘N’ – ‘CALINA’ and ‘CALIDA’ would be almost identical in sound.
- The following judgments, where likelihood of confusion was found are relevant:
- 06/06/2013, T580/11, Nicorono / Nicorette, EU:T:2013:301, § 67, 77;
- 27/02/2015, T227/13, INTERFACE / INTERFOG, EU:T:2015:120, § 50 et seq.;
- 30/04/2015, T100/14, TECALAN / TECADUR et al., EU:T:2015:251, § 51- 54;
- 01/03/2016, T-557/14, SPEZOOMIX / SPEZI, EU:T:2016:116, § 45, 51, 65;
- 19/02/2016, T-30/15, INFINI / INFINITY, EU:T:2016:87.
- The figurative element (a green bubble/balloon) is banal and commonplace – the words in the respective signs will carry more significance (15/12/2009, T412/08, Trubion, EU:T:2009:507, § 45);
- The fact of conceptual dissimilarity in France and Spain is irrelevant to a finding of confusion given that consumer perception in a part (i.e. one Member State) of the EU is sufficient for such a finding (14/12/2006, T81/03, T82/03 & T103/03, Venado, EU:T:2006:397, § 36). Where there is no conceptual linkage, this does not affect the assessment of the similarity of the signs;
- The very similar nature of the signs, the effects of enhanced distinctiveness and the identity of the goods are not offset by the slight differences between the signs. Confusion is likely.
- The arguments raised in reply to the appeal may be summarised as follows:
- Deemed recognition of the enhanced distinctiveness of the earlier right does not mean the latter has been ignored – enhanced distinctiveness cannot create confusion between marks where there are sufficient differences between them – it only increases the probability of confusion based on similarity established between signs – outside of this, existence of the same is irrelevant. A similar comment may be made in relation to the interdependence principle;
- The differences are as follows:
- ‘BABY’ is not a mere accessory – it appears first and above ‘CALIN’ and is of equal size – consequently, it is highly unlikely that only the latter word will be noticed and the former ignored;
- The sign will be viewed as a whole and not divided up in this way (12/06/2007, C334/05 P, Limoncello, EU:C:2007:333) – whether a descriptive element plays a role in finding similarity (or not) depends on its size and position – such elements can participate in the overall impression a sign projects to consumers;
- The public at large demonstrates only an average level of attention in relation to these goods and will not be particularly focused on the marks, that is, remembering specific details;
- There are demonstrative differences between the signs: (structure – two words as opposed to one), length, rhythm and sonorities;
- There are sufficient differences between the words ‘CALIN’ and CALIDA’ to exclude confusing similarity: their length (six as opposed to five letters), different finishing letters (‘N’ and ‘DA’), different syllabic structure (two versus three) and while they share one syllable (‘CAL’), the final sequences are different (‘LI-DA’ and ‘LIN’).
- The conceptual difference established in the contested decision applies to a large portion of the EU consumers;
- The decision at first instance should stand with all costs borne by the opponent.
- The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
Comparison of the goods and services
- There is no disagreement between the parties as to the identity of the goods – the contested goods (‘clothing for children, bibs (except of paper), bath robes for children’) are absorbed within the general appellation ‘clothing’ of the opponent’s Class 25 goods.
The relevant consumer
- The contested decision found that the goods in this case were of interest to consumers in general. Such consumers would exercise an average level of attention in relation to these goods. The Board agrees.
- The applicant states in submissions on appeal that this public would not be particularly attentive to the marks and, as a consequence, would not remember specific details in relation to the signs. The Board agrees that, whilst baby care products are purchased by adult consumers who would want their children to be safe, the contested items are not particularly expensive. ‘Pitching’ the consumer’s level of attention at average is about right. This does not mean such consumers are careless or careful: they are reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25 to 26).
Comparison of the marks
- The signs to be compared are:
- The earlier right is a EUTM and thus the relevant territory to be considered consists of the totality of the European Union.
- The marks coincide as to the letters ‘CALI’, but differ in the end letters ‘DA’ and ‘N’. Then there is the presence of the word ‘BABY’ in the contested sign and what can be described as the ‘green bubble’ which contains the word elements of the contested sign, presented in a cartoon-like, lower case font, at a slight angle.
- Aurally, the marks differ in relation to the presence of the word ‘BABY’ in the contested sign. They share the first syllable ‘CAL’, but differ thereafter.
- Turning to the issue of conceptual connection between the signs, the Board notes the discussion in the contested decision about the meanings of the words in the marks (‘calin’ being ‘hug’ in French and ‘calida’ ‘hot’ in Spanish). However, the Board does not consider conceptual issues to be a significant factor in this case. In particular, the applicant’s assertion that about 20% of the population of the EU would perceive a conceptual difference between the signs (the sum of Spanish and French speakers) is not really that important in the prosecution of this case if the other 80% of EU consumers do not. As the opponent points out confusion need only take place in part of the EU (which can be equivalent to one Member State) for an objection under Article 8(1)(b) EUTMR to be triggered and, if such confusion is found, a lesser likelihood of the same in the rest of the EU will be irrelevant. In the view of the Board, for the majority of the relevant public, the marks are conceptually neutral, with the following proviso. It seems to the Board that many such consumers might connect the well-known word ‘BABY’ (see next paragraph) in the contested sign with the word ‘CALIN’ and perceive ‘Baby Calin’ as the name of a child. This conceptual dimension is absent from the earlier right.
- As set out in the contested decision, the public in the relevant territory will understand the word ‘BABY’ of the contested sign as ‘a new-born or recently born child’ either because it is understood as such (in English, German or Dutch, for example), because it is very close to the equivalent word in its official language (‘bébé’ in French, ‘bebé’ in Spanish and Portuguese, for example) or because the word is a ‘basic’ English word and will be known due to its widespread use throughout the EU. In other words, this element will be recognised by consumers.
- The contested decision noted the relative weakness of the word ‘BABY’ in the context of the goods at issue in this case, while the opponent stated that the latter will only indicate user destination and not product origin – consumers will rely on the ‘CALIN’ / CALIDA’ elements to distinguish the signs.
- As stated by the applicant, the weaker elements in the sign cannot be ignored –– similarity between signs is, whilst taking account of distinctive and dominant components, about overall impression (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 23) and the case-law is clear that weaker elements in a mark can play a role in the impact they have on consumer perception. This will apply to the triggering of a perception of similarity (11/02/2015, T-395/12, Solid Floor, EU:T:2015:92, § 32) or not, as the case may be.
- Regarding the identical element ‘CALI’, the opponent notes that the user would become aware of this similarity ‘initially’ in perusing the signs. Even if this were the case, as the opponent has already pointed out, the ‘principle’ of ‘first come, first observed’ is not ‘carved in stone’ as an indicator of similarity – it is a rule of thumb, not a rule of law. Further, it is not clear that the letters ‘D’ and ‘N’ are weak and, even if they were, neither are sounded alone, both aurally occurring in very different components of the marks (‘LIN’ as opposed to ‘DA’) – phonetically and visually very different elements. The assertion that the aural weakness of the letters ‘D’ and ‘N’ would mean that ‘CALINA’ and ‘CALIDA’ would be almost identical in sound is unconvincing. Not least, because the word elements under comparison are ‘CALIN’ (and not ‘CALINA’ as incorrectly asserted in the opponent’s submissions) and ‘CALIDA’ and, as pointed out, ‘D’ and ‘N’ are not similar.
- It may be the case that the words ‘CALIN’ and ‘CALIDA’ share their first four letters but, in the view of the Board, the most likely manner in which the signs will be ‘unpacked’ by the general public tends to obscure this. ‘CAL’ might be the first syllable pronounced in both signs, followed by ‘IN’ and ‘I-DA’ respectively, and this tends to counsel against a visual and/or aural discernment of ‘CALI’ in the contested sign and thus a connection with the later, that is, the former will be read as ‘CAL-IN’). Consumers do not ponder trade marks – they do not approach the words they contain with same analytical precision as might crossword enthusiasts – and it is not probable, in the view of the Board, that ‘CALI-’ will be identified as a common element in both signs during the normal purchasing process of the relevant goods.
- Added to this, it is trite law that trade marks must be considered, for the purposes of Article 8(1)(b) EUTMR, as a whole. The effect of ‘BABY’ and the graphic elements in the contested sign are not by any means decisive, for the reasons given by the opponent (they are weak and commonplace) but, nevertheless, neither are they negligible and, when the signs are considered as a whole, they do add up to a unity that, when viewed together with the other differences, counsel against the opponent’s assertion that the signs are ‘highly’ similar. Despite the support of case-law that the contention that weak or even descriptive elements in trade marks can have a role in assessing the extent of similarity between them, the latter is self-evident in certain cases, the current case being an example. The descriptive word ‘BABY’ has an adjectival effect on the sign ‘CALIN’ which, as has been pointed out, affects the conceptual meaning of the contested sign when considered as a whole. Simply because ‘CALIN’ and ‘CALIDA’ are the most distinctive components of the respective signs does not mean that a comparison between the marks becomes a reductive consideration of these two elements alone – the opponent’s submission come pretty close to excision of the application, in this respect. In this context, an additional observation that may be made is that the contested sign – again when considered as a whole – has a ‘happy aura’ about it, resulting from the green bubble and childlike font (all ‘weak’ elements), that is absent from the earlier right. These differences (aural, visual and conceptual) add up.
- In summary, the signs share some small similarity due to the observable presence of the element ‘CAL’ which might be picked out by consumers, but that is all. This is the only shared element and equally may well go unnoticed – it is but a modest island of symmetry in an archipelago of difference. Tangible correspondence between the signs is actually rather low.
Overall assessment of the likelihood of confusion
- As pointed out by the applicant, deemed recognition of the enhanced distinctiveness of the earlier right does not mean the latter has been ignored. The contested decision factored the reputation of the earlier mark into its analysis and came to the conclusion, with the applicant, that enhanced distinctiveness cannot create confusion between marks where there are sufficient differences between them. It only increases the probability of confusion based on similarity established between signs, but there must be something for the relevant public, even where educated, to make an association between an earlier right and certain goods, to ‘latch on to’ in any later appearing sign. Where this is insufficient, reputation becomes irrelevant.
- The same comment may be made in relation to the interdependence principle – simple identity between the goods on which marks appear is not enough, of itself, where the signs contain differences sufficient to make confusion unlikely. Otherwise, the ‘stock’ of trade marks labelling identical goods could be very low indeed.
- Finally, the Board notes the various judgments cited by the opponent in relation to is submissions as to confusion and common prefixes in signs (06/06/2013, T580/11, Nicorono / Nicorette, EU:T:2013:301, § 67, 77; 27/02/2015, T227/13, INTERFACE / INTERFOG, EU:T:2015:120, § 50 et seq.; 30/04/2015, T100/14, TECALAN / TECADUR et al., EU:T:2015:251, § 51- 54; 01/03/2016, T-557/14, SPEZOOMIX / SPEZI, EU:T:2016:116, § 45, 51, 65; 19/02/2016, T-30/15, INFINI / INFINITY, EU:T:2016:87). These cases can be distinguished as they are not on ‘all fours’ with the current case. In particular, the common elements in the signs in these judgments are less submerged than in the present case – there is more obvious similarity and a smaller amount of distinguishing matter. The judgments do not disturb the Board’s findings as set out above.
- Given these considerations and the previous analysis, the Board is convinced that the signs in this case are not confusingly similar, and the appeal is dismissed.
Fixing of costs
- In accordance with Article 85(6) EUTMR and Rule 94(7)(d)(v) CTMIR, the Board fixes the amount of costs to be reimbursed by the opponent to the applicant at EUR 550 for the representation costs with respect to the appeal proceedings. The cost order at first instance is confirmed.
On those grounds,
- Confirms the contested decision;
- Orders the opponent to bear the costs of the opposition and appeal proceedings;
- Fixes the amount of costs and fees to be paid by the opponent to the applicant for the opposition and appeal proceedings at EUR 850.
A. Szanyi Felkl
12/01/2017, R 195/2016-5, BABY CALIN (fig.) / CALIDA