OPPOSITION No B 2 678 772

X-Technology Swiss GmbH, Samstagernstr. 45, 8832 Wollerau, Switzerland (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative)

a g a i n s t

Yanhua Su, No. 602, Building E5, Longwan New City, Yongkang Road, Shiwan Town,  Yu Town, Boluo County, Guangdong Province, People’s Republic of China (applicant), represented by Mittler & C. S.r.l., Viale Lombardia 20, 20131 Milan, Italy (professional representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 678 772 is upheld for all the contested goods, namely 

Class 18:        Backpacks; school bags; handbags; trunks [luggage]; umbrellas; haversacks; bags for sports; pouch baby carriers.

Class 25:        Clothing; underclothing; shoes; headgear for wear; hosiery; scarves; girdles; outerclothing; tee-shirts; skirts.

2.        European Union trade mark application No 14 981 146 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 981 146, namely against some of the goods in Class 18 and all the goods in Class 25. The opposition is based on European Union trade mark registration No 4 514 717. The opponent invoked Article 8(1)(b) EUTMR.

 

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based 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, parasols and walking sticks; whips, harnesses and saddlery, in particular slings and rucksacks, bags and sports bags, packaging bags, garment bags, climbing, skiing, hiking, trekking and walking sticks, packaging pouches, wash bags and cases.

Class 25:        Clothing, footwear, headgear, in particular stockings, sportswear, outdoor clothing, nightwear, swimsuits, babywear and children's clothing, underwear, hats, caps, gloves.

The contested goods are the following:

Class 18:        Backpacks; school bags; handbags; trunks [luggage]; umbrellas; haversacks; bags for sports; pouch baby carriers.

Class 25:        Clothing; underclothing; shoes; headgear for wear; hosiery; scarves; girdles; outerclothing; tee-shirts; skirts.

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

The term ‘in particular’, 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, EU:T:2003:107).

Contested goods in Class 18

The contested backpacks, school bags, handbags, haversacks, bags for sports, pouch baby carriers overlap with the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes in Class 18 because all these contested goods can be made of leather or imitations of leather. Therefore, they are identical.

Trunks [luggage], umbrellas are identically contained in both lists of goods (including synonyms).

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested shoes are synonymous to the opponent’s footwear in Class 25 and are, therefore, identical.

The contested headgear for wear is synonymous to the opponent’s headgear in Class 25 and is, therefore, identical.

The contested underclothing, hosiery, scarves, girdles, outerclothing, tee-shirts, skirts are included in the broad category of the opponent’s clothing in Class 25. Therefore, they are identical.

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 found to be identical are directed at the public at large. The degree of attention will be average.

3. The signs

BUDDY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘BUDDY’ is not meaningful in the countries where English is not understood and the element ‘budi‘ is not meaningful in the countries where for example Croatian or Hungarian are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom both marks are meaningless, such as the public in Spain, Latvia, Romania or Greece.

The marks have no elements that are more dominant (visually outstanding) or more distinctive than other elements. The distinctiveness of the word ‘BUDDY’ of which the earlier trade mark consists is average for the relevant public because it has no meaning for the relevant goods. The same considerations apply to the word ‘budi‘ in the contested sign.

The fact that the earlier trade mark is depicted in upper case and the contested sign in stylized lower case has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

Visually, the signs coincide in ‘BUD**’. They also have the same structure (one word) and a similar length (five letters as opposed to four). However, the marks differ in the additional letter ‘D’ in the earlier trade mark, in the final letter ‘Y’/’i’ of the marks and in the stylisation of the contested sign (which is nevertheless relatively basic).

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 ‛BUD’, present identically in both signs. The double letter ‘D’ in the earlier mark and the single letter ‘D’ in the contested sign will be pronounced very similarly, if not identically. The same considerations apply to the pronunciation of the final letter ‘Y’/’i’ of the marks.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, neither of the signs has a meaning for the relevant public as defined above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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.

5. Global assessment, other arguments and conclusion

The goods are identical. The marks are visually similar to an average degree and aurally highly similar, if not identical. There is nothing to link or differentiate the marks conceptually. Consequently, the overall impressions created by the marks are similar at least to an average degree. The degree of distinctiveness of the earlier trade mark is average and the degree of attention of the relevant public is average as well.

Considering all the above, there is a clear likelihood of confusion on the part of the public at least in Spain, Latvia, Romania or Greece. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 514 717. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.