OPPOSITION No B 2 447 889

Buffalo Boots GmbH, Rüdesheimer Str. 51, 65239 Hochheim, Germany (opponent), represented by Holler Rechtsanwälte, Rossertstr. 6, 60323 Frankfurt am Main, Germany (professional representative)

a g a i n s t

1724982 Alberta ULC, 400 Sauvé Street West, Montreal, Province of Quebec H3L 1Z8, Canada (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 447 889 is upheld for all the contested goods.

2.        European Union trade mark application No 13 180 203 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 180 203. The opposition is based on, inter alia, German trade mark registration No DD646 525. The opponent invoked Article 8(1)(b) and Article 8(5) 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 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 DD646 525 for which the applicant has not requested the opponent to file proof of use.

1. The goods

The goods on which the opposition is based are the following:

Class 25: Clothing; headgear.

The contested goods are the following:

Class 25: Clothing; headgear.

Clothing; headgear are identically contained in both lists of goods.

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 whose degree of attention is average.

3. The signs

BUFFALO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The earlier mark is the word mark ‘BUFFALO’. This word is meaningless for part of the public (the German equivalent being ‘büffel’). However, the part of the public that understands English will understand this word as referring to a North American bison or a heavily built wild ox with backswept horns, found mainly in the Old World tropics. In relation to the goods (clothing, headgear), the word ‘BUFFALO’ is distinctive regardless of the part of the public taken into account, given that no direct or clear association can be made with the goods. Indeed, contrary to the applicant’s opinion, to perceive that the word ‘BUFFALO’ could refer to a kind of skin perhaps used in the composition of the goods is rather far-fetched, too distant and does not reflect market reality.

The contested sign is a figurative trade mark consisting of several elements one on top of the other. At the top of the sign, a circular device is depicted in which there are some illegible inscriptions and, in the centre, the letter ‘D’ interlaced with two letters ‘B’, with a red star to the left-hand side of the letters. Below this, the word ‘BUFFALO’ is written in bold upper case letters, then on the next two lines are the words ‘DAVID BITTON’ in slightly larger bold upper case letters. A thick black line underlines the word ‘BITTON’, with five red stars under it, followed by another thick black line.

Regarding the distinctive element ‘BUFFALO’, the same considerations apply in the contested sign as in the earlier mark, and the words ‘DAVID BITTON’ will be perceived as the name of a person (‘DAVID’ being a male first name and ‘BITTON’ a surname). These elements are distinctive to an average degree. The letters included in the circular device are likely to be perceived as the initial letters of the verbal elements ‘BUFFALO DAVID BITTON’.

The stylisation and the figurative elements of the contested sign are considered to perform an essentially decorative function. The public is used to perceiving such depictions as ornamental elements and will instantly attribute more trade mark significance to the verbal elements of the sign. In addition, the five stars are banal laudatory elements that will be perceived as referring to the high degree of quality of the goods. Therefore, they are weak.

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).

Although the word ‘BUFFALO’ of the contested sign is written in slightly smaller letters than the words ‘DAVID BITTON’, this difference is not striking and the Opposition Division considers that the words ‘BUFFALO’, ‘DAVID’ and ‘BITTON’ are the co-dominant elements of the sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive word ‘BUFFALO’, which constitutes the entirety of the earlier sign and fulfils an independent distinctive role in the contested sign, also being one of the co-dominant elements in the latter. The earlier sign is entirely included at the beginning of the contested sign where the attention of the public is focused. The signs differ in the remaining word and figurative elements of the contested sign, as described above. Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘BUFFALO’, present identically in both signs. The pronunciation differs in the sound of the elements ‘DAVID BITTON’, which have no counterparts in the earlier sign. Given that the coinciding element is placed at the beginning of the contested sign and forms the entire earlier mark, it is considered that the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, the signs are conceptually similar to an average degree to the extent that they have in common the concept conveyed by the coinciding element ‘BUFFALO’. For the part of the public that does not understand the word ‘BUFFALO’, since the earlier sign 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 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 mark has been extensively used and enjoys 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 mark will rest on its distinctiveness per se. In the present case, as explained above in section c) of this decision, the earlier trade mark as a whole has no clear and direct 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

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).

Account is 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 goods are identical. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a low degree, aurally similar to an average degree and, for part of the public, conceptually similar to an average degree on account of the distinctive element ‘BUFFALO’ placed at the beginning of the contested sign. Even though the additional elements ‘DAVID BITTON’ of the contested sign are distinctive and co-dominant, the Opposition Division considers that the differences between the signs are insufficient to counteract the similarities existing between them, in particular given that the goods are identical.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). The relevant public may assume that the contested sign, ‘BUFFALO DAVID BITTON’, represents a sub-brand of the earlier mark, ‘BUFFALO’, used for a different line of goods.

In its observations, the applicant argues that, when applied to shoes or clothing, the labels bearing the signs look dissimilar. The evidence filed to support this argument is immaterial in these proceedings, since the conflict to be examined is between the earlier German trade mark registration and the EUTM application and not between how these signs are currently used by the parties. Furthermore, the earlier sign referred to by the applicant is not the word mark compared in the present case but is an earlier figurative EUTM, which is not subject to the present comparison.

The applicant refers to two previous decisions of the Office to support its arguments. However, these decisions have not been identified, since the numbers and/or the copies of the decisions have not been provided. In any case, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). In the present case, it seems that the previous cases referred to by the applicant are not relevant to the present proceedings, since the signs are not comparable.

Considering all the above, and in particular the interdependence principle mentioned above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No DD 646 525. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned earlier right 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 rights invoked by the opponent and the proof of used filed in relation to earlier EUTM No 1 495 753 (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Catherine MEDINA

Frédérique SULPICE

Pedro JURADO MONTEJANO

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

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