BOHMANN | Decision 2008269 – S.C. ROMAROSE INVEST S.R.L. v. Magra&Barton Gesellschaft M.B.H.

OPPOSITION No B 2 008 269

S.C. Romarose Invest S.R.L., Bd. Unirii, Nr.71, Bloc G2C, Etaj 7, Ap. 60, Sector 3, 030829 Bucuresti, Romania (opponent), represented by S.C. Romarose Invest S.R.L., Mohamad Aamdan, B-dul Unirii, Nr. 71, Bloc G2C, Scara 2, Etaj 7, Ap.60, 030829 Bucuresti, Romania (employee representative)

a g a i n s t

Magra & Barton Gesellschaft m.b.H., Kamther Ring 11 – 13/7/6/ Top 1, 1010 Wien, Austria (applicant), represented by Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011 Bucharest, Romania (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 008 269 is partially upheld, namely for the following contested goods:

Class 8: Side arms; razors.

Class 11: Acetylene generators; atomic piles; chromatography apparatus for industrial purposes; flare stacks for use in the oil industry; friction lighters for igniting gas; fuel economisers; gas condensers, other than parts of machines; gas generators [installations]; gas lighters; gas scrubbing apparatus; level controlling valves in tanks; lighters; oil-scrubbing apparatus; polymerisation installations; processing installations for fuel and nuclear moderating material; refining towers for distillation; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; scrubbers [parts of gas installations]; tanning apparatus [sun beds]; ultraviolet ray lamps, not for medical purposes.

Class 21: Combs and sponges; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); nest eggs, artificial; poultry rings; rings for birds.

2. European Union trade mark application No 10 514 503 is rejected for all the above goods. It may proceed for the remaining services, namely the following:

Class 35: Advertising; business management; business administration; office functions.

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 10 514 503. The opposition is based on European Union trade mark registration No 10 512 861 and on Romanian trade mark registration No 112 758. The opponent invoked Article 8(1)(a) and (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 and services

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.

As regards the earlier European Union trade mark registration No 10 512 861, the goods on which the opposition is based are the following:

Class 21: Combs and sponges; Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); nest eggs, artificial; poultry rings; rings for birds.

Following the Decision No 247 of the Romanian State Office for Invention and Trade Marks of 24/11/2014, which has become final, the goods on which the opposition is based, in relation to the earlier Romanian trade mark registration are the following:

Class 8: Hand tools and implements (hand-operated); side arms; razors.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 21: Combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

The earlier Romanian TM registration No 112 758 is registered for the entire class heading of Class 11 of the Nice Classification. It was filed on 06/09/2010. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the class concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

Consequently, in order to take account of the entire alphabetical list in Class 11 of the earlier Romanian trade mark, the Opposition Division will compare the contested goods and services with both (i) the general indications specified and (ii) any items in the alphabetical list that do not fall within the natural and usual meaning of these general indications.

In the case of Class 11, the Opposition Division has identified the following items in the alphabetical list covered by the earlier mark that do not fall within the natural and usual meaning of these general indications:

Following the decision of the Opposition Division in the parallel opposition case No 2 001 975, which has become final, the contested goods and services are the following:

Class 8: Side arms; razors.

Class 35: Advertising; business management; business administration; office functions.

Contested goods in Class 8

The contested side arms; razors are identically covered by the opponent’s Romanian TM registration No 112 758.

Contested goods in Class 11

The contested acetylene generators; atomic piles; chromatography apparatus for industrial purposes; flare stacks for use in the oil industry; friction lighters for igniting gas; fuel economisers; gas condensers, other than parts of machines; gas generators [installations]; gas lighters; gas scrubbing apparatus; level controlling valves in tanks; lighters; oil-scrubbing apparatus; polymerisation installations; processing installations for fuel and nuclear moderating material; refining towers for distillation; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; scrubbers [parts of gas installations]; tanning apparatus [sun beds]; ultraviolet ray lamps, not for medical purposes are identically covered by the opponent’s Romanian TM registration No 112 758 in Class 11, as explained above.

Contested goods in Class 21

The contested combs and sponges; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building) are identically covered by the opponent’s Romanian TM registration No 112 758.

The contested nest eggs, artificial; poultry rings and rings for birds are identically covered by the opponent’s European Union trade mark registration No 10 512 861.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

Therefore, it is clear that the contested advertising; business management; business administration; office functions have no relevant connection to any of the opponent’s earlier goods in Classes 8, 11 and 21.

The opponent’s goods are different by nature and purpose from the abovementioned contested services. They have a different commercial origin and are directed at a different public. The distribution channels are different and, finally, they are neither complementary nor in competition.

The mere fact that some of the opponent’s goods may be the subject matter of the applicant’s advertising and business activities is not sufficient in itself to lead to a finding of similarity. In addition, although business management and administration services may be required by any given industrial or commercial enterprise to run its daily business operations, this does not mean that the contested services have anything in common with the manufacture of the opponent’s goods.

Therefore, the contested advertising; business management; business administration; office functions are considered dissimilar to the opponent’s goods in Classes 8, 11 and 21.

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 and at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods.

The signs

Earlier Romanian TM No 112 758:

BOHMANN (word mark)

Earlier EUTM No 10 512 861:

BOHMANN

Earlier trade mark

Contested sign

The relevant territory is Romania in relation to the earlier Romanian mark and the European Union in relation to the earlier EUTM.

The earlier Romanian TM No 112 758 and the contested sign are identical. Therefore, the comparison of the signs will continue only as regards the earlier EUTM and the contested sign.

The contested sign is a word mark, composed of the verbal element ‘BOHMANN’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters.

The earlier mark is a figurative mark which contains the verbal element ‘BOHMANN’ written in a rather standard typeface in bold upper case letters and with the first and last letters, ‘B’ and ‘N’, being slightly larger than the remaining letters. Below this element, and underlining it, appears a wavy ribbon. To the left of the element ‘BOHMANN’ and the ribbon appears an upper case letter ‘B’, portrayed in a stylised typeface. All the elements of the mark are depicted in black and white.

The verbal element ‘BOHMANN’, comprising the contested sign and contained in the earlier mark, is meaningless for the public in the relevant territory and is of average distinctiveness in relation to all the goods at issue. The initial upper case letter ‘B’ in the earlier mark will be perceived as a stylised reference to the first letter of the aforementioned element, ‘BOHMANN’.

The contested sign has no element that could be considered clearly more distinctive than other elements.

As regards the figurative component of the earlier mark (the underlining wavy ribbon), it is considered that this element is rather banal and has a purely decorative function vis-à-vis the remaining elements of the mark. This figurative element has a rather limited impact when assessing the likelihood of confusion between the marks. Therefore, the remaining elements are the most distinctive elements of the contested sign.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘BOHMANN’, which constitutes the contested sign and is entirely included, as an independent and distinctive element, in the earlier mark. The signs differ in the earlier mark’s initial stylised letter ‘B’ and in its overall stylisation and figurative elements.

However, it must be noted that 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, it is considered that the signs are visually highly similar.

Aurally, the contested sign and the earlier mark’s element ‘BOHMANN’ will be pronounced identically by the relevant public. The pronunciation of the marks differs only in the sound of the additional letter ‘B’, portrayed at the beginning of the earlier mark, which has no counterpart in the contested sign. Nonetheless, the Opposition Division considers that a relevant part of the public will not pronounce this single letter, as it will perceive it as a stylised reference to the first letter of the aforementioned element, ‘BOHMANN’.

Therefore, the signs are aurally highly similar for the part of the public that will pronounce the initial letter ‘B’ of the earlier mark and aurally identical for the remaining part of the public.

Conceptually, as explained above, the verbal element ‘BOHMANN’, comprising the contested sign and contained in the earlier mark, is meaningless for the public in the relevant territory. The initial upper case letter ‘B’ in the earlier mark will be perceived as such and carries this concept; therefore, the signs are not conceptually similar to this extent, as the contested sign will not be associated with any meaning. Nonetheless, it must be noted that the conceptual impact of the initial letter ‘B’ in the earlier mark is minimal, because it will be perceived as a stylised reference to the first letter of the element which it precedes, ‘BOHMANN’.

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.

Global assessment, other arguments and conclusion

The contested sign and the earlier Romanian TM No 112 758 were found to be identical. In addition, part of the contested goods (namely the following: side arms; razors in Class 8; acetylene generators; atomic piles; chromatography apparatus for industrial purposes; flare stacks for use in the oil industry; friction lighters for igniting gas; fuel economisers; gas condensers, other than parts of machines; gas generators [installations]; gas lighters; gas scrubbing apparatus; level controlling valves in tanks; lighters; oil-scrubbing apparatus; polymerisation installations; processing installations for fuel and nuclear moderating material; refining towers for distillation; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; scrubbers [parts of gas installations]; tanning apparatus [sun beds]; ultraviolet ray lamps, not for medical purposes in Class 11 and combs and sponges; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building) in Class 21) are identical to the goods covered by the aforementioned earlier Romanian TM. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR and the contested mark must be rejected for these contested goods. Consequently, the opposition is partly well-founded on the basis of the opponent’s earlier Romanian TM No 112 758.

Furthermore, the contested nest eggs, artificial; poultry rings and rings for birds in Class 21 were found to be identical to the goods covered by the opponent’s European Union trade mark registration No 10 512 861.

The contested sign and the earlier EUTM No 10 512 861 have been found to be visually highly similar, as the verbal element ‘BOHMANN’ is entirely reproduced in the earlier mark, where it performs an independent distinctive role.

Furthermore, the contested sign and the verbal element ‘BOHMANN’ of the earlier mark are aurally identical. In this respect, it must be noted that the initial single letter ‘B’ of the earlier mark will establish an aural difference between the marks only when pronounced by a part of the relevant consumers. The Opposition Division considers that a substantial part of the public will perceive this letter in association with and as a reference to the first letter of the element ‘BOHMANN’. Therefore, it is deemed that this part of the public will read and refer to the earlier mark simply as ‘BOHMANN’. For that part of the public, the signs are aurally identical.

As for the stylisation of the earlier mark, the same is rather standard and will be perceived as an ordinary graphic means of bringing the verbal element in question to the attention of the public. Furthermore, the figurative element (wavy ribbon) of the mark is considered to have a limited impact on the public, as it has a purely decorative function vis-à-vis the verbal element ‘BOHMANN’. In this regard, it should be noted that consumers will retain in their memory, and refer to the goods in question by their name, rather than by describing the stylisation of the lettering and the decorative elements of the mark.

Considering 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, the Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association between the marks in the relevant territory.

Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 512 861. It follows that the contested trade mark must also be rejected for the contested nest eggs, artificial; poultry rings and rings for birds in Class 21, pursuant to Article 8(1)(b) EUTMR.

As follows from the analysis concluded in section a) of this decision, the contested services in Class 35 were found to be dissimilar to all the goods covered by the earlier trade marks invoked by the opponent (European Union trade mark registration No 10 512 861 and on Romanian trade mark registration No 112 758). Consequently, in so far as the opposition is directed against those services, it cannot be successful, since identity or similarity of the goods and services involved is a necessary condition for the application of Article 8(1) EUTMR, on which the opposition is based.

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

Monika CISZEWSKA

Gueorgui IVANOV

Liliya YORDANOVA

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.

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