OPPOSITION No B 2 326 836

BIBA GmbH, Pommernstraße 19, 45889 Gelsenkirchen, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Jorge Alarcón Serrano, Major del Rabal, 7 – 1º Izda., 03203 Elche (Alicante), Spain (applicant), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 326 836 is partially upheld, namely for the following contested goods and services:

Class 18: Hand bags; goods made of these materials [leather and imitations of leather] and not included in other classes; trunks and travelling bags; baggage; trunks [luggage]; baggage; pouches; bags for campers; tool bags of leather, empty; gym bags; bags for climbers; beach bags; net bags for shopping; wheeled; baggage; shopping bags;  cases, of leather or leatherboard; boxes of vulcanised fibre; satchels; cases, of leather or leatherboard; travelling sets [leatherware]; vanity cases, not fitted; key bags; haversacks; baggage; baggage; briefcases; rucksacks; coin purses; bags (game -) [hunting accessories]; briefcases; music cases; garment bags for travel; hat boxes of leather; card cases [notecases], envelopes, of leather, for packaging; leather shoulder belts; straps (leather -); sling bags for carrying infants; chain mesh purses.

Class 25: Clothing, footwear, headgear; jackets; layettes [clothing]; bath robes; espadrilles; sleep masks; motorists' clothing; bibs, not of paper; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; bath slippers; bath sandals; overalls; dressing gowns; boas [necklets]; tights; berets; footmuffs, not electrically heated; lace boots; boots; ski boots; football boots; booties; knickers; babies' pants [clothing]; socks; leg warmers; footwear; sports shoes; beach shoes; pants (am.); shirts; short-sleeve shirts; singlets; tee-shirts; bodices [lingerie]; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets [clothing]; fishing vests; heavy jackets; rainsuits; cyclists' clothing; belts (money -) [clothing]; belts [clothing]; bonnets; slips [undergarments]; ready-made clothing; combinations [clothing]; ties; corsets; corsets; camisoles; collars; detachable collars; aprons [clothing]; sports shoes; masquerade costumes; petticoats; fur stoles; girdles; skirts; skorts; scarves; topcoats; gabardines [clothing]; gymnastic shoes; swimming caps; shower caps; ski gloves; gloves; jumpers; leggings [trousers]; lingerie; liveries; sock suspenders; garters; garters; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [hats]; ear muffs [clothing]; pants (am.); tights; pocket squares; neckerchiefs; parkas; slippers; pelerines; pelisses; pinafores; furs [clothing]; pyjamas; beachwear; gaiters; ponchos; knitwear [clothing]; collar protectors; pullovers; cuffs; clothing of leather; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; sandals; saris; sarongs; bathing drawers; pants (am.); skull caps; headgear; top hats; hats (paper -) [clothing]; brassieres; pullovers; studs for football boots; garters; headgear; wimples; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; clothing; visors [headwear]; footwear; wooden shoes.

Class 35: Retailing in shops and via global computer networks of clothing, footwear, headgear, fashion accessories, jewellery and horological instruments, perfumery, cosmetics, media players and electronic consumer devices and parts therefor, games and playthings, personal grooming and sanitary preparations, decorations, spectacles, sunglasses, leather and imitations of leather, and goods made of these materials, harness and saddlery, pocket wallets, handbags, bags, backpacks, bumbags, document carriers, key rings, card holders, bumbags, and clothing and footwear for sports.

2.        European Union trade mark application No 12 277 679 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 277 679 for the figurative mark . The opposition is based on International trade mark registration No 768 399 designating the Benelux countries, the Czech Republic, Finland, Hungary, Latvia and Lithuania, International trade mark registration No 887 691 designating the Benelux countries, Hungary, Latvia and Lithuania, and German trade mark registrations Nos 1 077 422, 936 083 and 30 570 189 for the word marks BiBA/BIBA. The opponent invoked Article 8(1)(b) EUTMR.

On 05/11/2015, the Opposition Division rendered a decision which resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion because the signs were not sufficiently similar for a finding of likelihood of confusion pursuant to Article 8(1)(b) EUTMR.

The decision was appealed and the Board of Appeal decided in case R 2355/2015-1 on 09/01/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that there was a strong visual similarity between the signs since their main elements coincided in three out of four letters. Furthermore, the additional elements contained in the contested sign did not assist in distinguishing them. The Board also considered the signs to be aurally similar and found that ‘BIBA’ and ‘BOBA’ conveyed no meaning. Since the signs were found similar overall, the Board held that one of the criteria required for a likelihood of confusion in the sense of Article 8(1)(b) EUTMR was met. Therefore, the Board annulled the opposition decision and remitted the case back to the Opposition Division for further prosecution in order for it to assess the proof of use and carry out a fully comprehensive and in-depth assessment of the likelihood of confusion in this case.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. The Opposition Division will first examine the evidence in respect of International trade mark registration No 768 399 designating the Benelux countries, the Czech Republic, Finland  (partially refused for goods in Class 18), Hungary, Latvia and Lithuania, International trade mark registration No 887 691 designating the Benelux countries, Hungary, Latvia and Lithuania and German trade mark registration No 936 083.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 19/12/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Benelux countries, the Czech Republic, Finland, Hungary, Latvia, Lithuania and Germany from 19/12/11/2008 to 18/12/2013 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

International trade mark registration No 768 399

Class 18:         Goods of leather and imitations of leather included in this class, including bags, handbags, traveling and shopping bags, trunks and suitcases and other containers for traveling and for hand luggage, small leather goods, traveling sets, shoulder straps, bags worn slung across the shoulder.

Class 25:         Clothing, also clothing of leather and imitation leather or of fur, outerwear for women, sportswear, lingerie for women, corsetry articles (clothing), headgear, belts.

International trade mark registration No 887 691

Class 35:         Retail services with respect to clothing, footwear, headgear, eyeglasses and sunglasses, appliances for recordal, transmission or reproduction of sound or images, photographic, film and optical apparatus and instruments, jewellery, fashion jewellery, precious stones, watches, goods made of leather and imitations of leather, as far as contained in class 18, namely bags and other cases not adapted to the products they are intended to contain as well as small articles of leather, in particular purses, pocket wallets, key cases, trunks and travelling bags, umbrellas, parasols, perfumeries, cosmetics and body care products, paper, cardboard and goods made from these materials (as far as contained in class 16), printed matter, bookbinding material, photographs, stationery, furniture, mirrors, picture frames, goods made of wood, reed, cork, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, as far as contained in class 20, household or kitchen utensils and containers (not of precious metal or coated therewith), yarns and threads for textile use, textiles and textile goods, as far as contained in class 24, bed and table covers, laces and embroideries, ribbons and braids, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, wall hangings (non-textile), games, playthings, gymnastic and sporting articles, as far as contained in class 28, decorations for Christmas trees.

German trade mark registrations No 936 083

Class 25:         Footwear.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 20/10/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/12/2014 to submit evidence of use of the earlier trade marks. On 19/12/2014, within the time limit, the opponent submitted evidence of use. The opponent had already filed some evidence together with its observations of 25/07/2014. Reference is also made to this evidence.

The evidence to be taken into account is the following:

Filed on 25/07//2014:

• Affidavit of 10 October 2013, by Mr Oliver Kessel and the annexes thereto, including a list of BIBA net sales (1970-2013) and a table of ‘Faktura sales and retail sales’ for the time period 2003-2013.
• List of BIBA advertising costs 1987-2013.
• Article from the homepage www.biba.de.
• ‘BIBA’ store index in Germany, of July 2013.
• Information from www.thelabelfinder.com of 363 stores for ‘BIBA’ internationally (among which 295 stores for BIBA in Germany).
• Pictures of stores in Germany and information and picture on the opening of a new store.
• Pictures of BIBA products such as belts, clothing, bags, shoes, fashion jewellery etc.
• Copies of advertising brochures and newsletters from the years 2008-2013 showing BIBA products.
• Copies of press reports from 1969-2010 regarding the success of BIBA fashion and shops in Germany.
• Copies of articles informing about the expansion and success of BIBA fashion and shops in Germany.

Filed on 19/12/2014:

• Item 1: Affidavit of Mr Oliver Kessel, managing director of BiBA GmbH, of 22 April 2014, with annexes. Mr Kessel declares that ‘BiBA’ and ‘BIBA’ was a fashion label founded in 1963 in Germany and the trade marks have been used in, inter alia, Germany for fashion products between 2008 and 2013.

• Item 2, attached as Annex 1: a chart of net sales for Germany for the years 2008, 2009, 2010, 2011, 2012 and 2013 with net turnover figures in Euro for clothing.

2008	83 484 241 €
2009	91 340 009 €
2010	90 463 850 €
2011	85 469 336 €
2012	88 593 936 €
2013	80 154 589 €

• Item 3: Pictures of some of the clothing products listed in the sales chart referred to above. Photographs of the goods appear with their articles number and the trade mark ‘BiBA’ can be seen on sew-in labels and tags. There are photographs of goods such as jackets, shoes, blazers, leggings, bags, belts and purses, to name but a few.
• Item 4: net account value figures in euro for Germany for the years 2009, 2010, 2011, 2012 and 2013 for various types of clothing and bags.
• Item 5: pictures of goods and article numbers. Products include blazers, leggings, belts, bags. The trade mark ‘BiBA’ can be seen on sew-in labels and tags.
• Item 6: Copies of samples of invoices for 2010, for Germany.
• Item 7: Chart entitled ‘Overview of BiBA trading partners in Germany, Finland, Hungary, the Netherlands and Latvia’.
• Item 8: Net sales regarding Belgium for 2008-2012, for goods such as clothing, shoes and bags:

2008	1 537 253 €
2009	1 909 330 €
2010	1 963 014 €
2011	1 638 430 €
2012	98 660 €

• Item 9: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 10: Advertisement displayed in Belgium showing BiBA trade mark in August/November 2010.
• Item 11: Net sales regarding the Netherlands for 2008-2013, for goods such as clothing, shoes and bags:

2008	953 889 €
2009	355 210 €
2010	342 558 €
2011	278 852 €
2012	916 054 €

• Item 12: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 13: Net account value figures for the Netherlands, for 2009-2013.
• Item 14: More pictures of products with article numbers.
• Item 15: Copies of invoices from 2008-2013 as regards Dutch trading partners.
• Item 16: Net sales regarding Hungary for 2009-2013, for goods such as clothing, shoes and bags:

2009	67 135 €
2010	68 831 €
2011	61 987 €
2012	61 910 €
2013	83 489 €

• Item 17: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 18: Copies of invoices from 2008 to 2013 regarding Hungarian trading partners.
• Item 19: Net turnover figures regarding Latvia for 2009-2013, for goods such as clothing, shoes and bags:

2009	192 916 €
2010	329 122 €
2011	239 887 €
2012	206 847 €
2013	174 715 €

• Item 20: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 21: Copies of invoices of 2008 regarding Latvian trading partners.
• Item 22: Net sales regarding Lithuania for 2009-2013, for goods such as clothing, shoes and bags:

2009	58 498 €
2010	162 284 €
2011	168 967 €
2012	184 605 €
2013	162 742 €

• Item 23: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 24: Net account value regarding Finland for 2011-2013, for goods such as clothing, shoes and bags:

2011	179 318 €
2012	258 154 €
2013	147 335 €

• Item 25: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 26: Copies of invoices from 2011-2013 for Finnish trading partners.
• Item 27: Net sales regarding the Czech Republic for 2008-2013, for goods such as clothing, shoes and bags:

2008	1 369 349 €
2009	1 835 285 €
2010	2 038 536 €
2011	1 595 349 €
2012	1 489 965 €
2013	1 296 872 €

• Item 28: Pictures of products with article numbers. The goods shown are items such as jackets, blazers, belts and bags. The trade mark ‘BiBA’ is shown on sew-in labels and tags.
• Item 29: Pictures of the interior of ‘BiBA’ stores/boutiques showing use of the trade mark inside.
• Item 30: Pictures of a concept for the presentation of ‘BiBA’ shops before opening, showing the trade mark in white letters on a yellow background and the information ‘BiBA coming soon!’.
• Item 31: Copy of an article from the Internet entitled ‘Development of the number of shops of the fashion company “Biba” in the years 2007-2012’. The extract reads: ‘Biba belongs to the textile retailers with the highest turnovers in Germany. According to the ranking list of German magazine “TextilWirtschaft”, Biba generated in the year 2007 with 238 stores and concessions in a Germany a turnover for textiles and clothing of 111 million euro’.
• Item 32: Copy of homepage of www.biba.de displaying shop vouchers (Boutique-Gutscheine) with the trade mark BiBA.
• Item 33: An article on www.fabeau.de dated 09/12/2013 ‘BiBA expands with a new store concept’. The article reads ‘On 6 December a 89m2 sized BiBA-fashion boutique opened at the Bocholter Markt… BiBA also wants to realize the new store design with the new store openings in Stuttgart and Luzem. All in all, the company, that was founded in 1963…is present with about 360 own stores and shop floor designs in the whole European Union’.
• Item 34: Copy of an article dated 03/12/2010 taken from the website www.rp-online.de mentioning a fashion show BiBA participated in.
• Item 35: Extract from the Internet mentioning a Fashion Show by BiBA on 11/04/2014.
• Item 36: Copy of an article taken from www.shops-muenchen.de mentioning ‘The fashion boutique BIBA in the Riem Arcaden presents feminine fashion clothing for the working woman… With BIBA the customer gets a fashionable and at the same time lively clothing style’.
• Item 37: Copy of an article taken from www.stern-center-potsdam.de stating ‘The trademark Biba represents a modern, global concept of fashion boutiques that convinces through fashion competence, time spirit and shopping atmosphere and enthrals customers since 1963 and seduces them time and time again’.
• Item 38: Copy of an article taken from www.kaufda.de ‘BiBA fashion for women aged 30 upwards’ reading: ‘You can recognise BiBA subsidiaries already from afar because of their characteristic appearance in sunny yellow tones. The chain offers women’s clothing for women at the age of 30 and above… Year after year 24 ever changing collections form the multi-faceted assortment… Owners of the free “Trend Card” enjoy numerous advantages such as discounts and invitations to events… The company, that was founded in 1963, is a chain operator with more than 500 subsidiaries and concessions in […] Germany….’.
• Items 39-46: Printouts from the homepage www.biba.de which shows that the opponent carries out online retailing of clothing via its website.
• Item 47: information taken from www.debrecen-portal.hu informing about a ‘BIBA’ store in in Hungary.

By way of a preliminary remark, the evidence relating to Finland will in principle not be taken into account because it is apparent from the certificates filed by the opponent that International trade mark registration No 768 399 was refused protection in respect of Finland, at least partially, on 27/09/2012. This issue will only be tackled further in the decision if it proves necessary.

As far as the affidavits are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Place

The invoices, tables of turnover and sales, and press/internet articles show that the place of use of the earlier international marks is Belgium, the Netherlands, the Czech Republic, Hungary, Lithuania, Latvia and for the earlier German mark, Germany. This can be inferred from the addresses in the invoices and general references made to these countries in all the documents. Therefore, the evidence relates to the relevant territories.

Time

Most of the evidence is dated within the relevant period.

Extent

The documents filed, namely the turnover and sales figures, the press articles which make reference to the financial success of the opponent, and the sample invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Nature

The evidence shows that the mark has been used as registered for the goods and services for which the mark is registered, as clarified below.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (judgment of 11/03/2003, C-40/01, ‘Ansul’ and judgment of 12/03/2003, T-174/01, ‘Silk Cocoon’).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade marks for the following goods and services:

International trade mark registration No 768 399

Class 18:        Bags, handbags.

Class 25:        Clothing for women, belts.

International trade mark registration No 887 691

Class 35:        Retail services with respect to clothing, footwear and goods made of leather and imitations of leather, as far as contained in class 18, namely bags, fashion jewellery.

As regards earlier German trade mark registration No 936 083, use has been proved for all the goods, namely, footwear in Class 25.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition. For the sake of completeness, even if the territory of Finland had been considered in the decision, the outcome would remain the same.

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 International trade mark registration No 768 399 designating the Benelux countries, the Czech Republic, Hungary, Latvia and Lithuania, International trade mark registration No 887 691 designating the Benelux countries, Hungary, Latvia and Lithuania and German trade mark registration No 936 083

1. The goods and services

The goods and services on which the opposition is based and for which genuine use has been established are the following:

International trade mark registration No 768 399

Class 18:        Bags, handbags.

Class 25:        Clothing for women, belts.

International trade mark registration No 887 691

Class 35:        Retail services with respect to clothing, footwear and goods made of leather and imitations of leather, as far as contained in class 18, namely bags, fashion jewellery.

German trade mark registration No 936 083

Class 25        Footwear.

The contested goods and services are the following:

Class 18:         Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; trimmings of leather for furniture; umbrella rings; blinders [harness]; handbag frames; frames for umbrellas or parasols; harness; saddle trees; suitcase handles; leather shoulder belts; chin straps, of leather; walking sticks; walking stick seats; alpenstocks; umbrella sticks; baggage; trunks [luggage]; baggage; pouches; bags for campers; tool bags of leather, empty; gym bags; bags for climbers; beach bags; net bags for shopping; wheeled shopping bags; baggage; shopping bags; envelopes, of leather, for packaging; hand bags; muzzles; bridles [harness]; bridoons; kid; cases, of leather or leatherboard; boxes of vulcanised fibre; sling bags for carrying infants; satchels; leatherboard; straps (leather -); fastenings for saddles; coverings of skins [furs]; collars for animals; horse collars; laces (leather -); straps for soldiers' equipment; harness traces; straps of leather [saddlery]; leather leashes; stirrup leathers; straps for skates; imitation leather; leather, unworked or semi-worked; butts [parts of hides]; walking stick handles; stirrups; rubber parts for stirrups; cases, of leather or leatherboard; travelling sets [leatherware]; vanity cases, not fitted; key bags; bits for animals [harness]; sling bags for carrying infants; casings, of leather, for springs; umbrella covers; saddle cloths for horses; whips; skins of chamois, other than for cleaning purposes; saddlery; harness fittings; horseshoes; leather thread; cat o' nine tails; haversacks; baggage; baggage; briefcases; horse blankets; rucksacks; sling bags for carrying infants; moleskin [imitation of leather]; coin purses; chain mesh purses; bags (nose -) [feed bags]; bags (game -) [hunting accessories]; umbrellas; parasols; curried skins; animal skins, hides; cattle skins; hides; briefcases; music cases; garment bags for travel; umbrella handles; furniture coverings of leather; muzzles; knee-pads for horses; head-stalls; covers for animals; riding saddles; hat boxes of leather; saddle cloths for horses; card cases [notecases]; leather thongs; harness traces; skin (goldbeaters' -); gut for making sausages; valves of leather; umbrella or parasol ribs.

Class 25:         Clothing, footwear, headgear; jackets; layettes [clothing]; bath robes; espadrilles; non-slipping devices for footwear; sleep masks; frames (hat -) [skeletons]; motorists' clothing; bibs, not of paper; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; bath slippers; bath sandals; overalls; dressing gowns; boas [necklets]; tights; berets; footmuffs, not electrically heated; pockets for clothing; lace boots; boots; ski boots; football boots; booties; knickers; babies' pants [clothing]; socks; leg warmers; footwear; sports shoes; beach shoes; pants (am.); shirts; short-sleeve shirts; singlets; tee-shirts; bodices [lingerie]; footwear uppers; shirt yokes; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets [clothing]; fishing vests; heavy jackets; rainsuits; cyclists' clothing; belts (money -) [clothing]; belts [clothing]; bonnets; slips [undergarments]; ready-made clothing; combinations [clothing]; heelpieces for footwear; ties; corsets; corsets; camisoles; collars; detachable collars; aprons [clothing]; sports shoes; masquerade costumes; petticoats; fur stoles; girdles; skirts; skorts; linings (ready-made -) [parts of clothing]; scarves; topcoats; gabardines [clothing]; gymnastic shoes; swimming caps; shower caps; ski gloves; gloves; fittings of metal for footwear; jumpers; leggings [trousers]; lingerie; liveries; sock suspenders; garters; garters; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [hats]; ear muffs [clothing]; footwear uppers; pants (am.); tights; pocket squares; neckerchiefs; parkas; slippers; shirt fronts; pelerines; pelisses; pinafores; furs [clothing]; pyjamas; soles for footwear; beachwear; gaiters; ponchos; knitwear [clothing]; collar protectors; pullovers; cuffs; tips for footwear; heelpieces for stockings; clothing of leather; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; sandals; saris; sarongs; bathing drawers; pants (am.); dress shields; skull caps; headgear; top hats; hats (paper -) [clothing]; brassieres; soles for footwear; pullovers; heelpieces for footwear; studs for football boots; garters; headgear; wimples; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; clothing; welts for footwear; visors [headwear]; cap peaks; footwear; wooden shoes.

Class 35:         Retailing in shops and via global computer networks of clothing, footwear, headgear, fashion accessories, jewellery and horological instruments, perfumery, cosmetics, media players and electronic consumer devices and parts therefor, games and playthings, personal grooming and sanitary preparations, decorations, spectacles, sunglasses, leather and imitations of leather, and goods made of these materials, harness and saddlery, pocket wallets, handbags, bags, backpacks, bumbags, document carriers, key rings, card holders, bumbags, and clothing and footwear for sports, advertising; business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; updating of advertising material; import-export agency services; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machines and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; assistance in management of business activities; business auditing; data search in computer files for others; market research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consulting; personnel management consultancy; consultancy relating to business organisation; business management and organization consultancy; business consulting services; business auditing; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertisements; distribution of samples; relocation services for businesses; drawing up of statements of accounts; market research; outsourcing services [business assistance]; invoicing; organisation of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerised file management; business management of performing artists; business inquiries; business information; consumers (commercial information and advice for -) [consumer advice shop]; business investigation; marketing services; typing services; modelling for advertising or sales promotion; payroll preparation; employment agencies; fashion shows for promotional purposes (organization of -); exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio commercials; television commercials; compilation of statistics; writing of publicity texts; public relations services; document reproduction; secretarial services; personnel recruitment; efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription of communications [office functions]; word processing; business appraisals; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; auctioneering services.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, ‘Nu-Tride’).

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 18

The contested hand bags are contained identically in the earlier goods.

The opponent’s goods bags, handbags in earlier International registration No 768 399 and the contested goods made of these materials [leather and imitations of leather] and not included in other classes coincide in their nature. Their purpose, in the broadest sense, may also be the same. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

The contested trunks and travelling bags; baggage; trunks [luggage]; baggage; pouches; bags for campers; tool bags of leather, empty; gym bags; bags for climbers; beach bags; net bags for shopping; wheeled; baggage; shopping bags;  cases, of leather or leatherboard; boxes of vulcanised fibre; satchels; cases, of leather or leatherboard; travelling sets [leatherware]; vanity cases, not fitted; key bags; haversacks; baggage; baggage; briefcases; rucksacks; coin purses; bags (game -) [hunting accessories]; briefcases; music cases; garment bags for travel; hat boxes of leather; card cases [notecases], envelopes, of leather, for packaging are all items which have the same purpose in common, namely, that they are goods designed to carry other objects. The contested goods are at least similar to bags, handbags in earlier International registration No 768 399. All of these goods share the same purpose, may be produced by the same companies and distributed through the same channels. They may also be aimed at the same consumers.

The contested leather shoulder belts; straps (leather -) are lowly similar to bags, handbags in earlier International registration No 768 399. They may be used in conjunction with the earlier goods, may derive from the same companies and be aimed at the same consumers.

The contested sling bags for carrying infants (present three times in the contested list) are similar to a low degree to clothing of earlier International registration No 768 399 as they can have the same distribution channels, the same end users and the same producers.

The contested chain mesh purses are similar to clothing for women of earlier International registration No 768 399 as they can coincide in producers, end users and distribution channels.

The contested whips, harness and saddlery; blinders [harness]; harness; saddle trees; muzzles; bridles [harness]; bridoons; fastenings for saddles; horse collars; harness traces; straps of leather [saddlery]; stirrup leathers; whips; saddlery; harness fittings; cat o' nine tails; muzzles; knee-pads for horses; head-stalls; riding saddles; harness traces are either instruments used for driving animals; the gear or tackle with which a draft animal pulls a vehicle or implement; and equipment for horses, such as saddles and harnesses or accessories to these goods. The contested trimmings of leather for furniture; chin straps, of leather; collars for animals; laces (leather -); straps for soldiers' equipment;  leather leashes; straps for skates; casings, of leather, for springs; leather thread; furniture coverings of leather; leather thongs; valves of leather are all specific types of leather accessories. These goods are clearly dissimilar to the earlier goods in Class 18 which are bags and handbags used for carrying objects and possibly as fashion accessories. They are also dissimilar to all the earlier goods in Class 25. The contested goods will be produced by different companies to the earlier goods, distributed through different channels and aimed at different consumers. Nor are these goods complementary or in competition with one another.

The contested leather and imitations of leather; animal skins, hides; kid; leatherboard; coverings of skins [furs]; imitation leather; leather, unworked or semi-worked; butts [parts of hides]; skins of chamois, other than for cleaning purposes; moleskin [imitation of leather]; curried skins; animal skins, hides; cattle skins; hides; skin (goldbeaters' -); gut for making sausages are various kinds of animals’ skins (or imitations thereof). These are raw materials. It should be noted that the mere fact that one good is used for the manufacture of another (for example, all of the goods in Class 18 of all the earlier marks or footwear made of leather of earlier German mark No 936 083) is not sufficient in itself to conclude that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. These goods are clearly dissimilar to the earlier goods in Class 18 which are bags and handbags used for carrying objects and possibly as fashion accessories. They are also dissimilar to all the earlier goods in Class 25. The contested goods will be produced by different companies to the earlier goods, distributed through different channels and aimed at different consumers. Nor are these goods complementary or in competition with one another.

The contested umbrellas and parasols; walking sticks; umbrella rings; handbag frames; frames for umbrellas or parasols; suitcase handles; walking sticks; walking stick seats; alpenstocks; umbrella sticks; walking stick handles; stirrups; rubber parts for stirrups; bits for animals [harness]; umbrella covers; horseshoes; horse blankets; bags (nose -) [feed bags]; umbrella handles; covers for animals; saddle cloths for horses; umbrella or parasol ribs; saddle cloths for horses are very specific goods used to provide protection from the weather (umbrellas and parasols) or parts for such goods, walking aids and specific goods connected with horse-riding. These goods are clearly dissimilar to the earlier goods in Class 18 which are bags and handbags used for carrying objects and possibly as fashion accessories. They are also dissimilar to all the earlier goods in Class 25. The contested goods will be produced by different companies to the earlier goods, distributed through different channels and aimed at different consumers. Nor are these goods complementary or in competition with one another. As regards handbag frames, although the earlier goods may include handbags, the mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, ‘Mobilix’, §61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producers, public and/or complementarity, be fulfilled. In the case in question, these goods are usually produced by different manufacturers and target different publics. Furthermore, they differ in their natures, purposes and methods of use. A fortiori, these goods are dissimilar to the goods covered by the earlier right.

Finally, the remaining contested goods are also dissimilar to the retail services with respect to clothing, footwear and goods made of leather and imitations of leather, as far as contained in class 18, namely bags, fashion jewellery. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Contested goods in Class 25

The contested footwear (listed three times) is included identically in earlier German trade mark registration No 936 083.

The contested clothing (listed twice in the contested list) includes, as a broader category, the opponent’s clothing for women in earlier International registration No 768 399. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear (listed three times in the contested list) is similar to the earlier clothing for women in earlier International registration No 768 399. The contested goods serve a similar purpose to the earlier goods, namely that of covering a part of the human body. They may be produced by the same companies, distributed through the same channels and aimed at the same consumers.

The contested jackets; layettes [clothing]; bath robes; sleep masks; motorists' clothing; bibs, not of paper; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; overalls; dressing gowns; boas [necklets]; tights; berets; booties; knickers; babies' pants [clothing]; socks; leg warmers; pants (am.); shirts; short-sleeve shirts; singlets; tee-shirts; bodices [lingerie]; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets [clothing]; fishing vests; heavy jackets; rainsuits; cyclists' clothing; belts (money -) [clothing]; belts [clothing]; bonnets; slips [undergarments]; ready-made clothing; combinations [clothing]; ties; corsets; corsets; camisoles; collars; detachable collars; aprons [clothing]; masquerade costumes; petticoats; fur stoles; girdles; skirts; skorts; scarves; topcoats; gabardines [clothing]; swimming caps; shower caps; ski gloves; gloves; jumpers; leggings [trousers]; lingerie; liveries; sock suspenders; garters; garters; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [hats]; ear muffs [clothing]; pants (am.); tights; pocket squares; neckerchiefs; parkas; pelerines; pelisses; pinafores; furs [clothing]; pyjamas; beachwear; gaiters; ponchos; knitwear [clothing]; collar protectors; pullovers; cuffs; clothing of leather; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; saris; sarongs; bathing drawers; pants (am.); skull caps; top hats; hats (paper -) [clothing]; brassieres; pullovers; garters; wimples; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; visors [headwear] are all types of clothing or headgear. These goods are at least similar to the earlier clothing for women in earlier International registration No 768 399. The contested goods serve a similar purpose to the earlier goods, namely that of covering a part of the human body. They may be produced by the same companies, distributed through the same channels and aimed at the same consumers.

The contested espadrilles bath slippers; bath sandals; footmuffs, not electrically heated; lace boots; boots; ski boots; football boots; sports shoes; beach shoes; sports shoes; gymnastic shoes; slippers; sandals; wooden shoes fall under the earlier broader term footwear of German trade mark registration No 936 083. Therefore these goods are identical.

The contested studs for football boots are similar to the earlier footwear of German trade mark registration No 936 083. These goods may coincide in producer, target consumer and distribution channels. Furthermore, they are complementary.

The remaining contested goods non-slipping devices for footwear; frames (hat -) [skeletons]; pockets for clothing; footwear uppers; shirt yokes; heelpieces for footwear; linings (ready-made -) [parts of clothing]; fittings of metal for footwear; footwear uppers; shirt fronts; soles for footwear; tips for footwear; heelpieces for stockings; dress shields; heelpieces for footwear;  welts for footwear; cap peaks have nothing in common with the opponent’s goods since they have a different nature and purpose, they target a different consumer, they are distributed through different channels and they are manufactured and provided by different undertakings. It follows that they are dissimilar.

These goods are also dissimilar to the earlier retail services of International trade mark registration No 887 691. Retail services with respect to clothing, footwear and goods made of leather and imitations of leather, as far as contained in class 18, namely bags, fashion jewellery and the remaining contested goods are not similar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Contested services in Class 35

The contested retailing in shops and via global computer networks of clothing, footwear, headgear, fashion accessories, jewellery and horological instruments, perfumery, cosmetics, media players and electronic consumer devices and parts therefor, games and playthings, personal grooming and sanitary preparations, decorations, spectacles, sunglasses, leather and imitations of leather, and goods made of these materials, harness and saddlery, pocket wallets, handbags, bags, backpacks, bumbags, document carriers, key rings, card holders, bumbags, and clothing and footwear for sports are considered similar to the opponent’s retail services with respect to clothing, footwear and goods made of leather and imitations of leather, as far as contained in class 18, namely bags, fashion jewellery of International trade mark registration No 887 691. The services under comparison have the same nature since both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use.

The remaining contested advertising; business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; updating of advertising material; import-export agency services; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machines and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; assistance in management of business activities; business auditing; data search in computer files for others; market research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consulting; personnel management consultancy; consultancy relating to business organisation; business management and organization consultancy; business consulting services; business auditing; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; dissemination of advertisements; distribution of samples; relocation services for businesses; drawing up of statements of accounts; market research; outsourcing services [business assistance]; invoicing; organisation of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerised file management; business management of performing artists; business inquiries; business information; consumers (commercial information and advice for -) [consumer advice shop]; business investigation; marketing services; typing services; modelling for advertising or sales promotion; payroll preparation; employment agencies; fashion shows for promotional purposes (organization of -); exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio commercials; television commercials; compilation of statistics; writing of publicity texts; public relations services; document reproduction; secretarial services; personnel recruitment; efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription of communications [office functions]; word processing; business appraisals; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; auctioneering services; demonstration of goods; presentation of goods on communication media, for retail purposes are dissimilar to all the earlier goods and services protected under all the earlier trade marks. The earlier goods are different in nature to these services, will not be provided by the same companies nor aimed at the same consumers. The earlier services are not complementary to these contested services either, nor will they be provided through the same channels.

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 and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

BiBA International marks No 768 399 and No 887 691 BIBA German trade mark No 936 083
Earlier trade marks	Contested sign

The relevant territory is Belgium, the Netherlands, the Czech Republic, Germany, Hungary, Latvia and Lithuania.

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 contested sign is a figurative mark consisting of the capital letters ‘BOBA’. ‘BO-A’ are depicted in dark grey. The penultimate letter ‘B’ is in a lighter grey and is placed against a red rectangular background which is about twice as long as the letter placed on it. Below the letter ‘B’, there is a small picture of a turtle in white. To the left of that, in small grey capital letters, is the word ‘AUSTRALIA’. The element ‘AUSTRALIA’ of the contested sign will be associated with the country bearing that name either because the word exists as such or is very similar in the languages of the relevant territories (for example, ‘Australien’ in German). It is considered that this element is non-distinctive for all the goods and services which have been found identical and similar since it simply refers to the likely origin of the goods and services, or the place where the company providing them is located. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue. The Lithuanian speakers will understand the word ‘BOBA’ in the contested sign as referring to an ‘old woman’. ‘BOBA’ is the visually dominant element in the contested sign.

The earlier marks consist of the word ‘BIBA’ which has no meaning in the relevant territories and is distinctive in connection with the goods and services at issue.

Visually, the signs coincide in the letters ‘B-B-A’. However, they differ in their second letters ‘I´ or i’ in the earlier marks and ‘O’ in the contested sign. They also differ in the stylisation of the contested sign, the depiction of a turtle and the red rectangle, and the word ‘AUSTRALIA’, which lacks distinctiveness and is smaller than the word ‘BOBA’.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘B-B-A’ present identically in both signs. The pronunciation differs in the sound of the second letter of each sign, ‘I’ and ‘O’. The pronunciation also differs in the word ‘AUSTRALIA’ in the contested sign. However this word is less likely to be pronounced due to its size and the fact that it lacks distinctiveness.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will possibly perceive the meanings of certain elements in the contested sign, as explained above, 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 marks

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 marks have been extensively used and enjoy 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 (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs have been found visually similar to an average degree and aurally highly similar. The goods and services have been found identical and similar to varying degrees as well as dissimilar.

Essentially, and as pointed out by the Board of Appeal, the signs only differ in one letter, namely their second letter. The other elements contained in the contested sign are not sufficient to distinguish it from the earlier sign, especially in view of the fact that ‘AUSTRALIA’ lacks distinctiveness. The signs begin and end with the same letter and also coincide in their third letter. All of this means that it is highly likely that the relevant consumer will confuse the signs.

Account is also 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).

The applicant claims that ‘BOBA AUSTRALIA’ will be seen as a type of turtle and that this will serve to distinguish it from the earlier mark. It files evidence to support this in Annex 1. However, upon examination of this evidence, the Opposition Division can only find references to turtles known as ‘Caretta Loggerhead’ and ‘Loggerhead’. So the applicant’s claim must be dismissed.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public from Belgium and the Netherlands, the Czech Republic, Germany, Hungary, Latvia and Lithuania and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark trade mark registrations and German trade mark registration. The likelihood of confusion will arise even in relation to the goods which have been found similar to a low degree because the coincidences between the signs are overwhelming, coinciding in three out of four letters, as explained in detail above.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade marks.

The rest of the contested goods and services are dissimilar. 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.

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

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, 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 marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 1 077 422 for the word mark ‘BIBA’.
• German trade mark registration No 305 70 189 for the word mark ‘BIBA’.

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

Eva Inés PÉREZ SANTONJA

Lucinda CARNEY

Vanessa PAGE

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.