OPPOSITION No B 2 646 779

Bentley Motors Limited, Pym’s Lane, Crewe, Cheshire CW1 3PL, the United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Botão Azul – Comércio de Vestuário S.A., Avenida Túlio Espanca, Edifício Oficina Midas Auto, Porta Raimundo, 7005 840 Evora, Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisbon, Portugal (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 779 is partially upheld, namely for the following contested goods:

Class 3: Perfumery; cosmetics.

Class 25: Clothing, footwear, headgear; waist belts; scarves.

2.        European Union trade mark application No 14 418 041 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 418 041. The opposition is based on European Union trade mark registrations No 12 793 841, No 3 925 443, No 8 983 553 and No 12 223 798, United Kingdom trade mark registration No 1 140 910 and French trade mark registration No 1 336 574. After a limitation of the grounds of the opposition, 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 12 793 841.

1. The goods and services

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

Class 3: Perfume, cologne, aftershave; deodorants; cosmetics; make up preparations; hair lotions, shampoos, conditioners; soaps; perfumery, essential oils; personal hygiene products; cosmetic kits; creams for cosmetic purposes; shaving preparations.

Class 9: Optical apparatus; eyewear; glasses and sunglasses and accessories therefor; cases, wallets, carriers and holders adapted for glasses and sunglasses; leather cases, wallets, carriers and holders adapted for glasses and sunglasses.

Class 14: Precious metals and their alloys; jewellery; precious stones; watches and clocks; watch and clock cases; jewellery cases; charms; badges of precious metal; boxes of precious metal; table clocks; desk clocks; cufflinks; tie clips; tie pins; lapel pins; pins; jewellery boxes; cuff link boxes; key rings; key trays; cases for watches.

Class 18: Leather and imitations of leather and goods made therefrom; card holders; bags; handbags; shoulder bags; sports bags; backpacks; satchels; briefcases; cases; holdalls; wallets; credit card holders; purses; luggage; suitcases; vanity cases; valises; trunks; travelling bags; boxes of leather; animal hides, animal skins; card holders.

Class 25: Articles of clothing, footwear, and headgear; trousers; jeans; shorts; skirts; dresses; shirts; t-shirts; jumpers; sweatshirts; sweaters; polo shirts; cardigans; pullovers; fleeces; ties; neckties; underwear; nightwear; dressing gowns; bath robes; vests; coats; jackets; waterproof coats; waterproof jackets; scarves; gloves; shawls; swimwear; belts; caps; hats; shoes; boots; trainers; sandals.

Class 35: Retail and wholesale services; retail and wholesale services connected with the sale of perfumes and cosmetics, optical apparatus, glasses, sunglasses, and accessories therefor, jewellery, clocks and watches, leather goods and imitations of leather goods, luggage, handbags, bags, cases and accessories therefor; retail and wholesale services connected with the sale of textiles and textile goods, articles of clothing, footwear and headgear and accessories therefor.

The contested goods and services are the following:

Class 3: Perfumery; cosmetics.

Class 25: Clothing, footwear, headgear; waist belts; scarves.

Class 35: Sales promotion for others of cuff links, jewellery, shoes, bags, pocket wallets, household textiles, perfumery, watches and eyewear.

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 3

Perfumery; cosmetics are identically contained in both lists of goods.

Contested goods in Class 25

Clothing, footwear, headgear; scarves are identically contained in both lists of goods (including synonyms).

The contested waist belts are included in the broad category of the opponent’s belts. Therefore, they are identical.

Contested services in Class 35

The contested sales promotion for others of cuff links, jewellery, shoes, bags, pocket wallets, household textiles, perfumery, watches and eyewear is a specific type of advertising service provided by specialised agencies to business consumers, whereas the opponent’s services in Class 35 are mainly retail and wholesale services, which consist in bringing together and offering for sale a wide variety of different products. Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as in retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that the relevant public is the retailer purchasing the goods or commodities in large quantities, usually for resale. Consequently, the natures and purposes of the contested services are different from those of the opponent’s services in the same class. Furthermore, the services at issue are provided by different undertakings, target different publics and are not in competition. Therefore, the contested services are dissimilar to the opponent’s services in Class 35.

Moreover, there is no connection between the contested services and the opponent’s goods. The contested sales promotion consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, sales promotion for others of cuff links, jewellery, shoes, bags, pocket wallets, household textiles, perfumery, watches and eyewear is dissimilar to the goods being advertised.

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 is average.

3. The signs

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).

Both marks are figurative marks. The earlier mark consists of an emblem containing the letter ‘B’ in white inside a small black ellipse, which in turn is inside a larger grey ellipse, from which extend two wings and a bird’s tail in the same shade of grey. The contested mark consists of the words ‘Mr. Blue’ depicted above an emblem containing the letter ‘B’ in white inside a grey rounded triangle, from which extend two wings of the same grey colour.

The emblems in both marks have no meaning for the relevant public and are, therefore, distinctive.

The element ‘Mr.’ of the contested sign is a basic English abbreviation used before a man’s name when you are speaking or referring to him and, therefore, the contested sign will be perceived as referring to a man called Blue; therefore, it is an indication that the relevant goods target men. As regards the letter ‘B’ inside the emblem in the contested sign, this could be perceived by the relevant public as the initial of the name ‘Blue’. Moreover, the word ‘Blue’ of the contested sign, as such, is the English term for the colour blue and is part of the basic English vocabulary (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30). Consequently, this element will be understood by the relevant public and it could be perceived as allusive for the relevant goods.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their figurative elements, both consisting of an emblem containing the letter ‘B’ in white inside a small rounded shape, from which extend two wings. However, they differ in the additional words ‘Mr. Blue’ of the contested sign, as well in the fact that the stylisation of the wings and the small rounded shape in the emblem are slightly different. Moreover, in the figurative device of the earlier mark, there is a reproduction of a bird’s tail, which does not have a counterpart in the contested sign.

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 letter ‘B’, present identically in both signs. The pronunciation differs in the sound of the additional words ‘Mr. Blue’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually similar to an average 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

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 and they are directed at the public at large with an average degree of attention. The services are dissimilar.

The signs have a certain degree of visual similarity owing to the coinciding depiction of an emblem containing the letter ‘B’ in white inside a small rounded shape, from which extend two wings. The Opposition Division considers that this coinciding figurative element significantly influences the overall impression of the marks. Although this figurative element in the mark applied for is not visually identical to that in the earlier mark, the figurative element of the contested sign plays an independent distinctive role in relation to the other components of the sign. In fact, owing to the position and size of the figurative element at issue, it cannot be regarded as negligible in the overall impression created by the contested mark. Furthermore, the letter ‘B’ in the centre of the emblem in the contested mark will be perceived by the relevant public as the initial letter of the name ‘Blue’. Moreover, the words ‘Mr. Blue’ could allude to the fact that the relevant goods target men.

Taking into account the nature of the relevant goods in Class 25, it should be underlined that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50).

The visual aspect is also important for the rest of the relevant goods, namely perfumery and cosmetics in Class 5, which are commonly purchased in beauty shops or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for.

In this context, it must be borne in mind that likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442). Furthermore, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, as a result of their similarities, that they derive from the same undertaking or indeed 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).

Considering all the above and taking into account the identity between the goods, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the relevant public for all the identical goods. In this respect, consumers tend to remember the similarities rather than the dissimilarities between signs. Furthermore, account should also be 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).

In its observations, the applicant argues that it owns an international registration containing the words ‘Mr. Blue B’ and the same figurative element as that in the present case in the Registry of International Registrations, which coexists with the opponent’s earlier marks. Moreover, the applicant noted that it is the owner of various commercial establishments where articles with the trade mark ‘MR BLUE B’ have been commercialised for a very long time.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include an emblem containing the letter ‘B’ in white inside a small ellipse, from which extend two wings. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include an emblem containing the letter ‘B’ in white inside a small ellipse, from which extend two wings. Under these circumstances, the applicant’s claims must be set aside.

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 European Union trade mark registration No 12 793 841.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

After a limitation of the classes of the earlier marks, the opponent has also based its opposition on the following earlier trade marks:

(1) European Union trade mark registration No 3 925 443, , for Motor vehicles and parts and fittings therefor in Class 12, Jewellery, watches and clocks in Class 14 and Leather and imitations of leather and goods made therefrom; bags, suitcases, holdalls, wallets, purses, luggage in Class 18.

(2) European Union trade mark registration No 8 983 553, , for Optical apparatus; eyewear; sunglasses and accessories therefor in Class 9.

(3) European Union trade mark registration No 12 223 798, , for Precious metals and their alloys; jewellery, watches and clocks; table clocks; desk clocks; cufflinks; jewellery boxes; cuff link boxes; key rings in Class 14, Leather and imitations of leather and goods made therefrom; card holders; bags; briefcases; cases; document wallets; holdalls; wallets; purses; luggage in Class 18 and Textiles and textile goods; cushion covers; plaids; bed covers; duvets; duvet covers; bed linen; blankets; table covers; table cloths; place mats; table mats; drinks mats; table linen; table settings; place settings in Class 24.

(4) United Kingdom trade mark registration No 1 140 910,  , for Clocks; watches; watch bracelets; watch chains; jewellery; articles made of precious stones; and articles made of precious metals or coated therewith in Class 14 and Bags included in Class 18; pockets wallets; key fobs made of leather or of imitation leather; purses in Class 18.

(5) French trade mark registration No 1 336 574,, for Vehicles; apparatus for locomotion by land, air or water in Class 12.

Since these marks, namely earlier marks (1), (2) and (4), are almost identical to the one that has already been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

Earlier mark (3) invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘BENTLEY’, which is not present in the contested trade mark. Moreover, it covers the same or a narrower scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Earlier marks (1), (3) and (5) invoked by the opponent cover goods in Class 12 or 24, which are clearly different from the contested goods. As has already been mentioned, the contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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.