OPPOSITION No B 2 709 924

Luce Bianca S.R.L., Via Nuova Poggioreale T7, Centro Polifunzionale Inail, 80143 Napoli, Italy (opponent), represented by Barzanò & Zanardo, Via Piemonte, 26, 00187 Roma, Italy (professional representative)

a g a i n s t

Charlotte Devynck, 9 Rue Georges Huchon, 94300 Vincennes, France (applicant), represented by Julie Bellesort, 22, Avenue de Friedland, 75008 Paris, France (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 924 is partially upheld, namely for the following contested goods:

Class 3: Perfume; Hair lotion.

Class 16: Face towels of paper.

Class 25: Headgear; Footwear; Clothing; Hats.

2.        European Union trade mark application No 15 204 936 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 all the goods of European Union trade mark application No 15 204 936. The opposition is based on Italian trade mark registration No 1 521 819. The opponent invoked Article 8(1)(b) and 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.

1. The goods

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

Class 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.

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 and parasols; Walking sticks; Whips, harness and saddlery.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Brushmaking materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

The contested goods are the following:

Class 3: Perfume; Hair lotion.

Class 16: Clothing patterns; Paintings; Aquarelles; Drawings; Face towels of paper; Table linen of paper.

Class 25: Headgear; Footwear; Clothing; Hats.

The earlier Italian trade mark registration No 1 521 819 is registered for the entire class headings of Classes 14, 18, 21, 25, 26 and 30  of the Nice Classification. It was filed on 08/05/2012. 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 classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition.

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 Classes 3 and 25

The contested goods in these classes are included identically in the earlier goods in the same classes. In this regard, it should be borne in mind that ‘hats’ falls under the earlier ‘headgear’.

Contested goods in Class 16

When comparing the contested goods face towels of paper, the Opposition Division considers that these goods are similar to a low degree to cosmetics in Class 3 of the earlier mark which, among other products, comprise lotions, powders and wipes that can be used for hygiene purposes. To this extent they share a similar purpose of personal hygiene. The goods at hand are targeted at the same consumer and can be found in the same shops or the same sections in supermarkets.

The contested goods cover a variety of very specific items, namely, patterns to make clothing, works of art, and paper products.

While there is a link of sorts between the contested clothing patterns and the earlier clothing, since the contested goods may be used to make the earlier goods, it is not sufficient for a finding of similarity between the goods. The companies which are responsible for producing clothing patterns do not generally manufacture the actual clothing so the relevant consumer will not think that the production of the goods lies with the same company. The distribution channels for the goods will not be the same either. As such, these goods are deemed dissimilar. The contested clothing patterns are also found dissimilar to all the remaining goods in Class 25, which includes all the goods in the alphabetical list, for all the reasons given above which can be applied by analogy.

The contested Clothing patterns; Paintings; Aquarelles; Drawings; Table linen of paper are also deemed to be dissimilar to all the remaining earlier goods which include beauty products in Class 3, precious metals and stones, jewellery and clocks and watches in Class 14, leather and imitations of leather and goods made of those materials, as well as miscellaneous goods in Class 18, all sorts of household and kitchen products in Class 21, sewing accessories in Class 26 and foodstuffs in Class 30. There are no points of contacts between these goods as they will not be manufactured by the same companies, distributed through the same channels and they serve different purposes. Furthermore, they are not complementary. The contested goods are also found dissimilar to all the goods appearing in the relevant alphabetical lists.

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 or similar to a low degree are directed at the public at large. The degree of attention is average.

3. The signs

	LE BÉBÉ FRANÇAIS
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 element ‘Bebé/BÉBÉ’ of the earlier mark and the contested sign will be associated with ‘bebè’, meaning ‘baby’. The fact that the accents are different is not significant and does not affect the meaning. The word ‘LE’ in each mark will be understood as the definite article ‘the’ in its plural and feminine form. Overall ‘LE Bebé/BÉBÉ’ would be understood as ‘the babies’, in this case, female babies.  Bearing in mind that the relevant goods include clothing and perfumery, this element is weak for the goods in Classes 3, 16 and 25, as it will be seen as simply denoting a line of products for babies.

As regards the contested sign, the word ‘FRANÇAIS’ might be associated with the Italian word ‘francese’, meaning ‘French’, possibly denoting the origin of the goods. Therefore the degree of distinctiveness of this word is slightly weaker.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in ‘le bebé/BÉBÉ’. The extra accent in the contested sign will hardly be noticed. They differ in ‘FRANÇAIS’ in the contested sign and, from a visual perspective, the slight stylisation of the earlier mark.  

Therefore, despite the weak character of the coinciding elements, since they appear at the beginning of the contested sign, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs will be associated with a similar meaning, since the coinciding elements are weak, the conceptual similarity is slightly diminished. The signs are conceptually similar to a low degree.

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

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, the words ‘le Bebé’ in the earlier trade mark have a meaning in connection with the relevant goods in Classes 3, 16 and 25 from the perspective of the public in the relevant territory, namely denoting a line of products for babies. The distinctiveness of the earlier mark for these goods derives purely from its slightly stylised depiction. Therefore, the earlier mark must be seen as possessing a minimum degree of distinctiveness allowing it to be entered on the Italian trade mark register.

5. Global assessment, other arguments and conclusion

The signs have been found visually and aurally similar to an average degree, conceptually lowly similar and the goods at issue are partly identical, partly similar to a low degree and partly dissimilar.

The signs coincide in their beginnings, le bebé/LE BÉBÉ’. Although this expression has been found to have a weak distinctive character in connection with the goods at issue, it cannot be denied that the earlier mark is included entirely at the beginning of the contested sign and will not be ignored. Although ‘FRANÇAIS’ is not an Italian word, it will still be linked with the concept of ‘French’ and has a slightly weaker distinctive character for this reason. In short, this word does not carry sufficient weight in the contested sign to enable it to be distinguished from the earlier mark.

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).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

Since the opposition is partially 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 reputation as claimed by the opponent and in relation to identical and lowly similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree 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 examination of the opposition will continue insofar as it is based on Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Italy.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 10/03/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• B.1. Affidavit: by Fabrizio Verde, owner of Luce Bianca Srl, undated. Mr Verde states that his company was founded in Italy in 2008, making baby girl or boy shaped charms, rings, bracelets, cuff links and earrings. The jewellery quickly became a must-have item for young mothers and was offered for sale in prestigious shops across Italy. Mr Verde mentions considerable turnover generated by products bearing the mark, in Italy, for the years 2009-2015. However, actual figures cannot be mentioned for reasons of confidentiality.

• B.2. Advertising campaigns and invoices: The invoices relate to massive advertising campaigns, since 2012, which involve media press; newspapers advertising; national newspapers such as Corriere della Sera and la Repubblica; advertising on giant posters placed in the centre of the major Italian cities; and advertising in national magazines such as Vanity Fair and Io Donna. The invoices are for considerable amounts, although actual figures cannot be mentioned for reasons of confidentiality.

• B.3. Sales Figures: the sales figures referred to in the affidavit are given in detail for the years 2009-2015 for goods bearing the earlier mark in Italy. Although actual figures cannot be given, the opponent states that over 90% of its total sales correspond to goods bearing the earlier mark.

• B.4. Advertising: videos of commercials published on YouTube and copies of advertising in national magazines such as Vanity Fair, 18 Karati, Io Donna, Diva e Donna, Bimbi al nido, Bomboniera Italiana, Prime Emozioni. An example of advertising is as follows:

• B.5. Social and sporting events: the opponent has participated in various promotional activities under the trade mark, such as the creation of a social network, www.diariolebebe.com devoted to mothers.

• B.6. Co-marketing and co-branding activities: The opponent has promoted several initiatives and proposals together with internationally known partners such as HEINZ ITALIA S.p.A. and Reckitt Benckiser Italia S.p.A.

• B.7. Trade mark license agreements: the opponent has submitted a sample of trade mark licensing agreements signed with Italian jewellers.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation. While it is clear that the opponent has been using the earlier mark for jewellery products aimed at mothers and babies, and has provided considerable evidence of this use, the Opposition Division is not persuaded that the earlier mark has acquired a reputation through this use allowing it to be recognised on the market by the relevant public. It is true that the opponent has invested time and money in the advertising of its mark, as evidenced by the advertising mainly in the Italian press and the invoices for campaigns undertaken. However, drawing conclusions about the proportion of the relevant public that has been made aware of the earlier mark through this advertising is no easy task. Other sorts of evidence would assist here. For example, the opponent could have filed statements from third parties or independent articles published in the press attesting to the success of the opponent’s brand, but it did not. Furthermore, although the opponent mentions the sales made under the earlier mark, there are no documents to back this up, such as invoices or annual reports. To conclude, while the Opposition Division readily accepts that there has been use of the earlier mark, it does not find that the mark has acquired a reputation through this use.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier mark must have a reputation. Since it has been established that the earlier mark does not have a reputation, one of the necessary conditions contained in Article 8(5) has not been fulfilled and the opposition must be rejected.

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

Chantal VAN RIEL

Lucinda CARNEY

Vanessa PAGE

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.