OPPOSITION DIVISION
OPPOSITION No B 2 778 820
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
Sportcitypalladio SRL, Contrà Muscheria 21, 36100 Vicenza, Italy (applicant).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 778 820 is upheld for all the contested goods, namely
Class 25: Clothing.
2. European Union trade mark application No 15 473 093 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 473 093, namely against all the goods in Class 25. The
opposition is based on, inter alia, German trade mark registration No 1 077 422. 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
Decision on Opposition No B 2 778 820 page: 2 of 7
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s German trade mark registration No 1 077 422.
a) The goods
The goods on which the opposition is based are, among others, the following:
Class 25: Clothing, also clothing of leather and imitation leather or
of fur.
The contested goods are the following:
Class 25: Clothing.
The term ‘also’, 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.
Clothing is covered by both specifications. The goods are identical.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at
large. The degree of attention is considered to be average.
c) The signs
BIBA
Earlier trade mark Contested sign
The relevant territory is Germany.
Decision on Opposition No B 2 778 820 page: 3 of 7
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 and the verbal element of the contested sign do not have a meaning
for the public in the relevant territory and are therefore, distinctive. The figurative
element of the contested sign may be perceived as a stylised representation of a
cat’s head or some sort of a mask. The latter element, being placed on top of the
verbal element and also due to its size as compared to the verbal element can be
identified as the dominant element in the composition of the contested sign. It is also
distinctive in relation to the goods in Class 25.
However, the verbal element ‘bubba’ is in no way negligible or to be disregarded
because of any other reasons. On the contrary – it is to be recalled 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).
Visually, the signs coincide in the letters ‘b*b*a’. They differ in their second letters ‘I’
of the earlier vs ‘u’ of the contested sign and the doubled letter ‘b’ and the figurative
element of the contested sign which do not have a counterpart in the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, both signs will be pronounced in two syllables, namely /BI-BA/ and /BUB-
BA/ respectively, where the only difference is in the sound of the vowels /I/ and /U/. It
is to be noted that the latter are close, short vowels which determines the same
rhythm and intonation in the pronunciation of the signs.
Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning
of the figurative element of the contested sign as explained above, the earlier 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.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier trade mark enjoys a high degree of
distinctiveness as result of its long standing and intensive use in Germany in
connection with clothing. This claim must be properly considered given that the
distinctiveness of the earlier trade mark must be taken into account in the
assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark,
the greater will be the likelihood of confusion, and therefore marks with a highly
distinctive character because of the recognition they possess on the market, enjoy
Decision on Opposition No B 2 778 820 page: 4 of 7
broader protection than marks with a less distinctive character (29/09/1998, C-39/97,
Canon, EU:C:1998:442, § 18).
The opponent submitted, in particular, the following evidence:
Annex OP2 An affidavit signed by Mr. Thorsten Luig – authorised representative of
BiBA GmbH since 2004. According to the statements in the affidavit
the trade mark ‘BIBA’ has been used in Germany since 1963 to
designate fashion products. In three attachments to the affidavit there
is information provided regarding sales figures and marketing
expenses amounting to millions of Euros. Mr. Thorsten Luig declares
that there are currently 37 ‘BiBA’ stores/outlets and 113
concessions/consignments in Germany selling ‘BiBA’ branded
products.
Annex OP3 Printout from the webpage www.biba.de providing information about
the history and the success of the BiBA company and the trade marks
‘BiBA’ and ‘CRiSCA’.
Annex OP4 A list of ‘BIBA’ stores in Germany as of 19/08/2016. According to the
list ‘BIBA’ shops can be found in Augsburg, Berlin, Bremen, Darmstadt,
Dortmund, Dresden, Frankfurt am Main, Hamburg, Hannover,
Heidelberg, Ingolstadt, Jena, Kiel, Koblenz, Köln, Leipzig, Lübeck,
Mannheim, Munich, Nürnberg, Potsdam, Rostock, Stuttgart, Trier,
Wiesbaden and Wittenberg among others.
Annex OP5 Printouts from the websites www.thelabelfinder.de and
www.modeopfer110.de containing information about the existence of
‘BiBA’ since 1963.
Annex OP6 Pictures of BiBA shops in several German cities – Berlin, Münster,
Franfurt, Darmstadt, Wiesbaden, Munich, Hamburg, Hannover and
Stuttgart just to name a few.
Annex OP9 Examples for use of the trade mark ‘BIBA’ in relation to different kinds
of clothing such as shirts, skirts and scarves.
Annex OP10 Copies of the online-shop on the opponent’s website www.biba.de
showing the current collections distributed under the trade mark ‘BiBA’.
Annex OP11 Advertising brochures and newsletters of the years 2008 – 2016
showing that the trade mark ‘BiBA’ was used and extensively
advertised in relation to clothing articles.
Annex OP12 A table published on www.textilwirtschaft.de (professional website for
the textile and clothing industry in Germany) showing that the
opponent has been ranked among the hundred biggest textile retailers
in Germany in 2011 due to a worldwide turnover of 100 million EUR.
Annex OP13 Article of the newspaper ‘Textilwirtschaft’ of 05/04/2012 containing
information about the turnover generated by BiBA GmbH in 2010/11,
namely 105 million Euro and information about the distribution network
run by the company consisting of 129 shops in Germany only plus a
significant number of concessions.
Decision on Opposition No B 2 778 820 page: 5 of 7
Annex OP14 Numerous press reports published in the period 1969 – 2007 related to
the use of the trade mark ‘BiBA’ in the field of fashion, in particular
clothing. The articles mention the number of ‘BiBA’ stores and also
turnover figures comparable to those stated in the affidavit (Annex
OP2).
Having examined the material listed above, the Opposition Division concludes that
the earlier trade mark has acquired a high degree of distinctiveness through its use
on the German market.
Even though the opponent did not submit a survey on the recognition of the trade
mark among the relevant public, it can be inferred from the long presence of the
trade mark on the market, its extensive use throughout Germany in a highly
developed distribution network and the significant turnover figures supported by
independent sources that the trade mark is known to the relevant circles in the field
of fashion and in particular clothing. The wide media coverage and the significant
investments in advertising speak in favour of some level of recognition of the trade
mark ‘BIBA’ which the Opposition Division considers sufficient for reaching the
threshold necessary for enhanced distinctiveness to be acknowledged.
e) Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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. Such likelihood is increased by the enhanced
distinctiveness of the earlier mark.
The goods are identical, the signs are similar and the earlier mark has acquired a
high degree of distinctiveness through use on the market. The relevant public is the
public at large showing an average level of attention.
Bearing in mind the above principles and the findings of the Opposition Division in
relation to the identity of goods, similarity of signs and the enhanced distinctiveness
of the earlier mark, it is concluded that there is a likelihood of confusion on the part of
the public.
The applicant argues that there are hundreds of similar brands with the same product
categories in the register of EUIPO, and gives a particular example with the trade
mark ‘Bubba – Essential bags’ which was not disputed by BiBA GmbH. Based on the
above the applicant comes to the conclusion that the contested trade mark
application should be allowed to proceed to registration ‘in order to avoid
unnecessary, disproportionate disputes.’
The Opposition Division notes first of all that it is not bound by the applicant’s
perception of what ‘similar brands’ in the register of EUIPO are. Moreover, it is up to
the owners of earlier trade marks to decide whether to oppose the registration of later
trade marks. In case they decide not to oppose a later trade mark and it proceeds to
Decision on Opposition No B 2 778 820 page: 6 of 7
registration that does not prevent the trade mark owner to oppose other later trade
mark applications. The mere fact that similar trade marks exist in the register of
EUIPO cannot serve as a justification for registering any other similar trade mark
subject to opposition. The applicant’s argument is to be set aside.
Therefore, the opposition is well founded on the basis of the opponent’s German
trade mark registration No 1 077 422. It follows that the contested trade mark must
be rejected for all the contested goods. It may proceed for the remaining non-
contested goods.
As the earlier right German trade mark registration No 1 077 422 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
André Gerd Günther
BOSSE
Plamen IVANOV Julia SCHRADER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
Decision on Opposition No B 2 778 820 page: 7 of 7
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.