OPPOSITION DIVISION
OPPOSITION No B 2 811 969
Bild GmbH & Co. KG, Axel-Springer-Str. 65, 10888 Berlin, Germany (opponent),
represented by Hertin und Partner Rechts- und Patentanwälte Parttg MBB,
Kurfürstendamm 54/55, 10707 Berlin, Germany (professional representative)
a g a i n s t
SBS Bilimsel Bio Çözümler Sanayi Ve Ticaret Anonim Sirketi, Itü Ayazaga
Kampüsü Kosgeb B Blok No:9/B, Maslak Sisli- Istanbul, Turkey, (applicant),
represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid,
Spain (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 811 969 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 690 175 , namely
against all the services in Class 35. The opposition is based on, inter alia, German
trade mark registration No 30 2015 105 476, for the word mark ’BYOU‘. The
opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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
Decision on Opposition No B 2 811 969 page: 2 of 7
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 German trade mark registration No 30 2015 105 476, for the word mark
BYOU.
a) The services
The services on which the opposition is based, are the following:
Class 35: Advertising agencies; Advertising by any means of communication, in
particular radio, television, cinema, print, videotext, online and teletext advertising;
Organising and arranging of advertising events, exhibitions and trade fairs for
commercial or advertising purposes; Arranging advertising contracts for others;
Rental of advertising space; Direct mail advertising; Demonstration of goods;
Presentation of goods and services for advertising purposes; Dissemination of
advertising matter; Updating of advertising material; Planning and layout design of
advertising strategies; Planning and design of advertising activities; Planning and
conducting of cross-media concepts (marketing concepts), namely for the distribution
of goods and services via various distribution channels, and marketing activities
associated therewith; Providing marketing consulting in the field of social media;
Merchandising (sales promotion); Merchandising [Sales promotion for others];
Business information in the field of social media; cross promotion with and for others
Devising advertising concepts; Sales planning; Compilation of statistics; Cost price
analysis; Delivery system research, namely investigating various offers for the
delivery of a requested product, and for spare parts therefor, in particular information
and inquiries into delivery terms, delivery conditions and availability; Price calculation
for goods and services; Price comparison services; Market research; Marketing for
others, on digital networks; Market research and opinion polling; public relations;
Market analysis; consumer advice shop; Advertisement for others on the Internet;
Presentation of companies on the Internet and other media; Sponsoring in the form
of advertising; Tendering, auctioneering, including reverse auctioneering, including
on the Internet; Comparison services (Price -); Auctioneering, in particular on the
Internet; Auctioneering, including on the Internet; Conducting of competitions and
prize games for advertising purposes; Development of reward schemes and discount
schemes being customer loyalty initiatives for marketing purposes; publication of mail
order catalogues; Attracting customers and customer care by means of mail
advertising (mailings); Design and organisation of customer loyalty schemes from an
organisational perspective; Publication of printed matter, including in electronic form,
for advertising purposes; Arranging of subscriptions to newspapers and periodicals,
for others; Production of lottery, television, radio and Internet commercials;
Procurement services, for others; Commercial administration of the licensing of the
goods and services of others; Arranging of subscription agreements, for others, for
the broadcasting and dissemination of television programmes, in particular in the
form of pay-TV and video-on-demand; Online e-commerce provider services, namely
the presentation of goods and services for advertising purposes, Order placement,
Delivery services and Invoice management, Within the framework of e-commerce;
Presentation of goods on communication media, for retail purposes; retail and
wholesale services, including by mail order, via the Internet and by teleshopping
programs, in relation to chemicals used in industry, paints, beauty products, toiletries,
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cosmetics and household goods, fuels, healthcare sector, machines, hand tools and
metal goods, construction, do-it-yourself and garden articles, hobby and craft
supplies, electrical and electronic articles, consumer electronics, TV and HiFi articles
as well as components thereof, goods in the field of telecommunication, computer
and multimedia, photography and optics, music, audio, sound and data carriers,
sanitary facilities, vehicles and accessories, fireworks, clocks and jewelry, musical
instruments, print articles, paper and stationary, office supplies, bags and saddlery,
furniture and decoration, tents, canvases, clothing, footwear, textiles, sport and
sportswear, gaming, food and beverages, agricultural, horticultural and forestry
products; tobacco, smokers articles, luxury goods; Invoice management for
electronic ordering systems; Arranging commercial transactions, for others, via online
shops; Sales promotion by means of customer loyalty services; Receiving and
administrative processing of purchase orders; Providing of business and commercial
contacts, including via the Internet; Arranging contracts for the buying and selling of
goods and/or the providing of services, for others; Procurement services for others
[purchasing goods and services for other businesses]; Computerised data
processing; data maintenance in computer data banks; Research into offers for
goods and services; Presentation of goods on communication media for retail
services; collecting and interpretation of information of various suppliers of goods
and services for third parties; Management, consultancy and advisory services
relating to management; Business management and organization consultancy; ;
Office functions; Professional business and organisational consultancy; Employment
recruiting services; Advertising research; Advertising management; Economic
information.
The contested services are the following:
Class 35: Advertising agencies services, marketing and publicity bureaus services
including commercial or advertisement exhibition and trade fair organization services;
Providing office functions; Business management; Business administration; Import
and export agencies; Business investigations, evaluations, expert business
appraisals; Auctioneering; The bringing together, for the benefit of others, of
bleaching and cleaning preparations, detergents other than for use in manufacturing
operations and for medical purposes, laundry bleach, fabric softeners for laundry
use, stain removers, dishwasher detergents, perfumery, cosmetics, fragrances,
deodorants for personal use and animals, soaps, bath herbs, not for medical
purposes, enabling customers to conveniently view and purchase those goods; The
bringing together, for the benefit of others, dental care preparations, dentifrices,
denture polishes, tooth whitening preparations, mouth washes, not for medical
purposes, abrasive preparations, emery doth, sandpaper, pumice stone, abrasive
pastes, polishing preparations for leather, vinyl, metal and wood, polishes and
creams for leather, vinyl, metal and wood, wax for polishing, enabling customers to
conveniently view and purchase those goods; The bringing together, for the benefit
of others, pharmaceutical and veterinary preparations for medical purposes,
chemical preparations for medical and veterinary purposes, chemical reagents for
pharmaceutical and veterinary purposes, dietary supplements for pharmaceutical
and veterinary purposes dietary supplements, nutritional supplements, medical
preparations for slimming purposes, enabling customers to conveniently view and
purchase those goods; The bringing together, for the benefit of others, food for
babies, herbs and herbal beverages adapted for medicinal purposes, herbal
supplements, herbal creams for medical purposes, herbal creams for medical use,
herbal teas for medicinal purposes, liquid herbal supplements, teeth filling material,
dental impression material, dental adhesives and material for repairing teeth,
sanitary preparations for medical use, hygienic pads, enabling customers to
conveniently view and purchase those goods; The bringing together, for the benefit
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of others, hygienic tampons, plasters, materials for dressings, diapers, including
those made of paper and textiles, preparations for destroying vermin, fungicides,
herbicides, deodorants, other than for human beings or for animals, air deodorizing
preparations, disinfectants, antiseptics, detergents for medical purposes, enabling
customers to conveniently view and purchase those goods; The bringing together, for
the benefit of others, meat, fish, poultry and game, processed meat products, dried
pulses, soups, bouillon, processed olives, olive paste, milk and milk products, butter,
edible oils, dried, preserved, frozen, cooked, smoked or salted fruits and vegetables,
tomato paste, prepared nuts and dried fruits as snacks, hazelnut spreads and peanut
butter, tahini (sesame seed paste), eggs and powdered eggs, enabling customers to
conveniently view and purchase those goods; The bringing together, for the benefit
of others, potato chips, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago,
flour and preparations made from cereals, bread, pastry and confectionery, edible
ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces
(condiments), spices, ice, honey, bee glue for human consumption, herbal honey,
propolis, propolis for human consumption, enabling customers to conveniently view
and purchase those goods; all of the aforementioned retail services are provided by
retail stores, wholesale outlets, through mail order catalogues or by means of
electronic media, including, through web sites or television shopping programmes.
Some of the contested services are identical or similar to services on which the
opposition is based. For reasons of procedural economy, the Opposition Division will
not undertake a full comparison of the services listed above. The examination of the
opposition will proceed as if all the contested services were identical to those of the
earlier mark which, for the opponent, is the best light in which the opposition can be
examined.
b) 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 services assumed to be identical are directed at the public at
large, for example the bringing together, for the benefit of others, of bleaching and
cleaning preparations, detergents other than for use in manufacturing operations and
for medical purposes, laundry bleach, fabric softeners for laundry use, stain
removers, dishwasher detergents, perfumery, cosmetics, fragrances, deodorants for
personal use and animals, soaps, bath herbs, not for medical purposes, enabling
customers to conveniently view and purchase those goods, and at a more
professional public in the field of advertisement and business management, for
example advertising agencies services, marketing and publicity bureaus services
including commercial or advertisement exhibition and trade fair organization services.
The degree of attention varies from average to above average, depending on the
price, (specialised) nature and conditions of the purchased and provided goods and
services.
Decision on Opposition No B 2 811 969 page: 5 of 7
c) The signs
BYOU
Earlier trade mark Contested sign
The relevant territory is Germany.
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 is a word mark consisting of the letters ’BYOU’. The contested sign
is a figurative mark and contains some co-dominant elements which are the figurative
element on top of it, together with the word elements ’BEE & YOU. Below, in a
secondary position due to its smaller characters and being placed at the bottom, the
words `FROM THE FASCINATING ANATOLIA´ can be read. All these elements are in
a yellow/orange colour.
The element ‘BYOU’ of the earlier mark has no meaning for the relevant public and
is, therefore, distinctive. The Opposition Division does not share the opponent’s
argument that the mark is composed of the letter ’B’ and the English pronoun ‘YOU’,
referring to the second person. There are no clear reasons that can make the
Opposition Division believe that the public will dissect the mark in that way. In the
absence of evidence supporting any of these arguments, the Opposition Division
concludes that the mark, as a whole, is meaningless.
The elements ‘BEE & YOU’ of the contested sign will be understood, at least by a
part of the public with certain level of English, as a reference to the insect with a
yellow-and-black striped body that makes a buzzing noise as it flies (BEE) and to the
second person pronoun (YOU) respectively (see Collins English Dictionary online).
The ampersand will be understood as “and”. As none of these elements are
descriptive, allusive or otherwise weak for the relevant services, they are distinctive.
The same goes for the sentence ’FROM THE FASCINATING ANATOLIA’ that again,
for the part of the public with certain level of English, it would refer to something
coming from the part of modern Turkey that is in Asia. It is, however, not likely that
the public would think that the services in question are rendered in that place. As
such, these terms are also distinctive. The figurative element on top does not refer to
any concept in particular and, therefore, it is also normally distinctive. For the rest of
the public, none of these elements have a meaning. They are also distinctive.
Visually and aurally, the signs only coincide in the letters ‘*YOU’. However, they
differ in the rest of the verbal elements, their position and figurative elements of the
contested sign that do not have any correspondence in the earlier mark.
Therefore, the signs are visually and aurally similar to a low degree.
Decision on Opposition No B 2 811 969 page: 6 of 7
Conceptually, neither of the signs has a meaning as a whole for part of the relevant
public (those that do not understand English). Since a conceptual comparison is not
possible, the conceptual aspect does not influence the assessment of the similarity of
the signs. For the part that understands the meaning of the words composing the
marks, reference is made to the above semantic explanations. 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.
d) 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 services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The signs are visually and aurally similar to a low degree. Conceptually, either no
comparison is possible or they are not conceptually similar. The services have been
assumed to be identical.
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).
The similarities between the signs are only concentrated in three letters placed in
different positions and inserted in a more complex mark inasmuch, as the contested
sign is concerned. Therefore, the similarities are not sufficient to lead to a likelihood
of confusion on the part of the public, even though the services were assumed
identical.
Therefore, the opposition must be rejected on the basis of the opponent’s German
trade mark registration No 30 2015 105 476.
The opponent has also based its opposition on the earlier German trade mark
registration No 30 2015 105 477, for the figurative mark .
Since this mark includes some additional figurative elements that render the signs
even more dissimilar to the one compared and covers the same scope of services,
Decision on Opposition No B 2 811 969 page: 7 of 7
and as the evaluation would equally be based on the German-speaking public the
outcome cannot be different.
Considering all the above, even assuming that the services are identical there is no
likelihood of confusion on the part of the public on the basis of this earlier mark as
well. Therefore, the opposition must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Chantal VAN RIEL Inés GARCIA LLEDOÓ Saida CRABBE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.