OPPOSITION No B 2 705 468
Betty Blue España, S.L., Conjunto Marina Banús, Fase II, Pl. Marina Banús, 29600 Puerto Banús (Malaga), Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)
a g a i n s t
Jianlong Yu, Via d. chiesa 13/b, Prato, Italy (applicant)
On 31/03/2017, the Opposition Division takes the following
- Opposition No B 2 705 468 is upheld for all the contested goods.
- European Union trade mark application No 15 092 992 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 092 992. The opposition is based on European Union trade mark registration No 2 962 082. 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 goods
The goods on which the opposition is based are the following:
Class 25: Clothing, headgear.
The contested goods are the following:
Class 25: Clothing.
Contested goods in Class 25
The contested clothing is identically contained in both lists of goods.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
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 verbal elements of the earlier sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a figurative mark containing the words “BETTY” and “BLUE” depicted in a thick, black font. The words are placed against an oval background, the top of which is intersected by a little figurative device. These figurative elements are purely decorative and, therefore, not distinctive. The contested mark is a figurative mark consisting of the verbal element “Betti”, which is depicted in a stylised font and placed over the verbal element “Blu”. The font is merely decorative and not distinctive.
The element “BETTY” of the earlier mark is a common diminutive of the female name “Elizabeth” (or variations such as Beatrice), and will be recognised as such in the relevant territory, notably the United Kingdom, and Ireland. The word element “BLUE” is the English word for a basic colour. The name of a colour is descriptive for clothing. However, “BLUE” is likely to be perceived as a surname (or a second name) in this instance, as it is placed after the name “BETTY”. Those members of the relevant public who are familiar with the iconic film “Betty Blue” will even recognise it as being the second part of the name of the eponymous protagonist. Therefore, these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
The word element “Betti” of the contested sign is a variation of the diminutive “BETTY”. Consequently, the above analysis of the concept and of the distinctiveness of this element in the earlier mark equally applies here. The word element “blu” (Italian for the colour blue) would be seen as a misspelling of the word “blue”, by the relevant public. However, in the contested sign, it is likely to be seen as a surname (or second name) too, as the relevant public will recognise “Betti” to be a first name. Bearing in mind that the relevant goods are ‘clothing’, the word elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
Both signs are composed of distinctive verbal elements and less distinctive figurative elements of a decorative nature, as described above. Neither sign has a dominant element.
Visually, the signs coincide in the letters “BETT” and “BLU”. It is notable that the first four letters of the first word of each sign are identical. They differ in that the first word of the earlier sign ends in “Y”, while its counterpart in the contested sign ends in “i”. Furthermore, the signs differ in that the second word of the earlier mark is one letter longer than its counterpart and ends in “E”. The marks also differ in their respective figurative elements and layout.
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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, visually the signs are similar to at least an average degree.
Aurally, the differences in spelling do not introduce a phonetic difference. The syllables of the signs coincide and the signs will be pronounced in the same way. Therefore, the signs are aurally identical.
Conceptually, both marks represent variations in spelling of the same name, and will be perceived as such by the relevant public. Therefore, they are conceptually almostidentical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
As has been concluded above, the contested goods are identical to goods covered by the earlier trade mark and they target the public at large with an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods.
The signs at issue have been found visually similar to at least an average degree and aurally and conceptually (almost) identical.
Although the marks have different figurative elements they are, as stated above, considered to be non-distinctive. Furthermore, as the marks compared are figurative marks with verbal elements, it should be recalled, as explained above, that the relevant consumers will usually refer to signs made up of word and figurative elements by their verbal elements and not by describing their stylisation. The differences are not sufficient to allow the relevant public to safely differentiate between the signs especially considering that the verbal elements are almost identical in both signs.
Considering all the above, and taking further into account that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 962 982. It follows that the contested trade mark must be rejected for all the contested goods.
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Biruté SATAITE GONZALEZ
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.