OPPOSITION No B 2 408 519
Bohema Beheer B.V., Marssteden 46, 7547 TC Enschede, The Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative)
a g a i n s t
Kirsten Gerding, Themsestr. 11, 13349 Berlin, Germany (applicant), represented by Katharina Heinzmann, Dircksenstr. 41, 10178 Berlin, Germany (professional representative).
On 30/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 408 519 is partially upheld, namely for the following contested goods:
Class 16: Decoration and art materials and media; Printed matter; Disposable paper products; Filtering materials of paper; Adhesives for stationery or household purposes; Works of art and figurines of paper and cardboard, and architects' models; Paper and cardboard; Stationery and educational supplies; Bags and articles for packaging, wrapping and storage of paper, cardboard.
Class 28: Toys, games, playthings and novelties; toys adapted for educational purposes.
2. European Union trade mark application No 12 791 877 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 791 877 namely against all the goods in Classes 16 and 28. The opposition is based on, inter alia, European Union trade mark registration No 8 885 386. 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.
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 European Union trade mark registration No 8 885 386.
- The goods
The goods on which the opposition is based are the following:
Class 16: Paper and paper products and goods made from these materials, not included in other classes; artists' materials; materials for modelling; modelling clay, natural clay for modelling, modelling wax or pastes.
Class 19: Building materials (non-metallic);stones, tiles.
Class 28: Toys, playthings; building blocks [toys]; construction toys.
The contested goods are the following:
Class 16: Money holders; decoration and art materials and media; printed matter; disposable paper products; filtering materials of paper; adhesives for stationery or household purposes; works of art and figurines of paper and cardboard, and architects' models; paper and cardboard; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.
Class 28: Festive decorations and artificial Christmas trees; fairground and playground apparatus; toys, games, playthings and novelties; sporting articles and equipment; toys adapted for educational purposes.
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 16
The contested paper is identically contained in both lists of goods.
The contested cardboard is similar to a high degree to the opponent’s paper. They coincide in nature, distribution channels, relevant public and producers.
The opponent’s goods made from these materials, not included in other classes [Paper and paper products] and the contested goods decoration and art materials and media; printed matter; disposable paper products; filtering materials of paper; adhesives for stationery or household purposes; works of art and figurines of paper and cardboard, and architects' models; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard can 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.
Bags and articles for packaging, wrapping and storage of plastics; money holders are dissimilar to the opponent’s goods. They differ in nature, purpose and commercial origin. Furthermore, they are not complementary.
Contested goods in Class 28
The contested toys, playthings are identically contained in both lists of goods.
The contested toys adapted for educational purposes are included in the opponent’s broader category of toys. Therefore, they are identical.
The contested games; novelties overlap with the opponent’s playthings. Therefore, they are identical.
The contested festive decorations and artificial Christmas trees; fairground and playground apparatus; sporting articles and equipment are dissimilar to the opponent’s goods. They have a different nature and purpose. Furthermore, they differ in distribution channels, relevant public and commercial origin, and they are neither complementary nor in competition.
- 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 or similar to various degrees are directed at the public at large.
The degree of attention is average.
- The signs
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BRIX |
Chatbrix |
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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.
‘BRIX’ is not meaningful in certain territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.
At this point it is worth mentioning, that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, this is not a fixed rule and the result depends on the circumstances of the case.
Visually and aurally, the signs coincide in ‘BRIX’. However, they differ in ‘CHAT’ of the contested sign.
Therefore, the signs are similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.
- 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 goods are partly identical and partly similar to various degrees and partly dissimilar.
The marks are visually and aurally similar to an average degree. In particular, the earlier mark is entirely included in the contested sign.
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).
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.
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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
The applicant argues that the element ‘BRIX’ is descriptive for the relevant goods. However, as mentioned above, ‘BRIX’ is meaningless in Polish and, therefore, has a normal distinctiveness.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 8 885 386. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including those found to be similar to a low degree because it is considered that the similarities between the signs are sufficient to compensate the low degree of similarity of part of the goods) to those of the earlier trade mark.
The rest of the contested goods 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 cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
Benelux trade mark registration No 489 837 for the word mark BRIX.
International trade mark registration No 715 788 for the word mark BRIX designating the European Union.
Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and there is no need to examine the proof of use submitted by the opponent in relation to those marks.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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María Clara IBÁÑEZ FIORILLO |
Francesca CANGERI SERRANO |
Michele M. BENEDETTI-ALOISI |
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.