OPPOSITION No B 2 717 398
Bijou Brigitte Modische Accessoires AG, Poppenbüttler Bogen 1, 22399 Hamburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Boillat Les Bois SA, Rue de l'Ouest 7, 2340 Le Noirmont, Switzerland (holder), represented by Gevers, Benjamin Gevers, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).
On 26/06/2017, the Opposition Division takes the following
1. Opposition No B 2 717 398 is upheld for all the contested goods.
2. International registration No 1 273 364 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 273 364. The opposition is based on European Union trade mark registration No 10 610 582. 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 14: Jewellery, costume jewellery, precious stones; horological and chronometric instruments.
The contested goods are the following:
Class 14: Precious metals and their alloys and goods made of these materials or coated therewith included in this class; jewelry, precious stones; timepieces and chronometric instruments.
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.
The contested precious metals and their alloys show some link with the precious stones protected by the earlier right as they share the same purpose, given that all of them are raw materials used for the manufacture of jewellery and horological instruments. Furthermore, these goods coincide in their relevant public and can be complementary. Therefore, these goods are similar.
The contested goods made of precious metals and their alloys or coated therewith included in this class and the opponent’s jewellery coincide in their nature. Their purpose, in the broadest sense, may also be the same since the contested goods might be used as decorative objects worn on clothes or bodies, which is the purpose of the opponent’s jewellery. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the applicant in order to clarify its goods, it cannot be assumed that they coincide in other criteria.
Jewelry, precious stones and chronometric instruments are identically contained in both lists of goods (including synonyms).
The contested timepieces include, as a broader category, or overlap with, the opponent’s horological and chronometric instruments. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 or similar to various degrees are directed at the public at large and also at professionals in the jewellery industry. As regards the degree of attention, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumers may be assumed.
- 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 earlier mark is a figurative mark consisting of the verbal element ‘BB’, which is written in a standard black bold typeface, the first ‘B’ being a mirror image of the second one. There is a space between the letters. The verbal element of the mark is considered distinctive in relation to the goods in question. The mark also includes a figurative element representing a stylised crown placed on top of the letters ‘BB’, which is a common symbol for indicating a superior quality. Therefore, the distinctiveness of this element is limited with regard to all the relevant contested goods. The earlier mark has no elements that could be considered clearly more dominant than other elements.
The contested sign is also a figurative sign, which may be perceived as containing the letters ‘BB’ or ’BLB’ written in a stylised bold typeface, having the first ‘B’ depicted as a mirror image of the second one. However, the sign may be perceived also as a purely figurative sign resembling a butterfly. The Opposition Division will consider only the interpretation which constitutes the best case scenario for the opponent and will analyse the contested sign as containing the upper case letters ‘BB’ displayed as a reflection of each other. This verbal element is considered distinctive in relation to the goods in question.
Visually, the marks are similar to the extent that they coincide in the two ‘B’ letters shaped forms, one being the reflection of the other. On the other hand, they slightly differ in the stylisation of the letters ‘BB’ being separated in the earlier mark with a space and connected in the contested sign, and in the additional figurative element of the earlier mark, which has, however, less impact for the comparison of the signs because of its laudatory character.
Therefore, the signs are overall visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters ‘BB’, present identically in both signs.
Therefore, the signs are aurally identical.
Conceptually, both signs are composed of two letters ‘BB’ with no clear or unambiguous meaning for the public in the relevant territory. The figurative element of the earlier mark will be associated with the concept of a crown. This element is however considered weak and therefore it has only little impact on the comparison of the signs. Since only one of the signs will evoke a concept, the marks 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.
- 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 a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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/services covered are from the same or economically linked undertakings.
In the present case, the contested goods are partly identical to the opponent’s goods and partly similar (to various degrees). The degree of attention of the relevant public is relatively high. The signs in dispute are visually similar to an average degree, aurally identical and conceptually not similar.
The differences between the signs are very limited as they are confined to a different stylisation of the verbal elements (different font and additional space between the letters ‘BB’ in the earlier mark) and the additional figurative element of the earlier mark, which is, however, of less distinctive character.
Moreover, although the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect, 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).
It is noted that the relevant public will still need to rely on its imperfect recollection, notwithstanding its higher than average degree of attention (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Therefore, the slight differences between the marks are clearly insufficient to outweigh the high degree of similarity between them and they will most probably go unnoticed by the relevant public, even by the public with a high degree of attention.
Taking this into account, the relevant public is likely to believe that the goods sold under the contested sign originated from the same undertaking or from economically linked undertakings as the opponent’s goods.
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 10 610 582. 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 holder 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
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.