Erfolg vor dem EUIPO!
Die Schweizer Herstellerin von Luxuswaren, die Bally Schuhfabriken Aktiengesellschaft aus Caslano, hat erfolglos Widerspruch aus der Marke “BALLY” gegen die Markenanmeldung unserer Mandantin “DIT IS BALIN” eingelegt. Das EUIPO wies den Widerspruch (Opposition) am Entscheidung vom 28. Juli 2022 zurück. Nach richtiger Ansicht des EUIPO ähneln sich die Zeichen nur leicht. Das Verfahren haben wir von einer anderen Kanzlei übernommen und zu Ende geführt.
Verbraucher neigten im Allgemeinen dazu, sich auf den Anfang eines Zeichens zu konzentrieren, wenn sie einer Marke begegneten. Dies läge daran, dass das Publikum von links nach rechts lese, so dass der Teil links vom Zeichen (der Anfangsteil) die Aufmerksamkeit des Lesers zuerst auf sich ziehw. Außerdem sei bei der Prüfung der Zeichenähnlichkeit auf den Gesamteindruck abzustellen, den die Zeichen hervorrufen, da der Durchschnittsverbraucher ein Zeichen in der Regel als Ganzes wahrnehme und nicht auf einzelne Einzelheiten achte (Urteil vom 27. Juni 2012, T-344/09, Cosmobelleza, EU:T:2012:324, Rn. 52). Obwohl das angefochtene Zeichen drei Buchstaben der älteren Marke enthale, befänden sich diese Buchstaben in den kollidierenden Zeichen an unterschiedlichen Stellen, die sehr unterschiedliche Längen und Strukturen aufweisen, was einen entscheidenden Einfluss hat. Daher seien die Zeichen in visueller Hinsicht nur in sehr geringem Maße ähnlich.
Im vorliegenden Fall seien die Zeichen insgesamt in bildlicher Hinsicht nur in sehr geringem Maße und in klanglicher Hinsicht allenfalls in geringem Maße ähnlich. Hinzu komme, dass entweder der begriffliche Aspekt keinen Einfluss auf die Beurteilung der Zeichenähnlichkeit hat oder die Zeichen begrifflich nicht ähnlich sind.
In visueller Hinsicht stimmten die Zeichen lediglich in der Aneinanderreihung der drei Buchstaben “BAL” überein, die in den Zeichen an unterschiedlichen Stellen stehen. Die Zeichen hätten eine unterschiedliche Anzahl von Buchstaben, nämlich fünf gegenüber zehn, was in hohem Maße zu einem recht unterschiedlichen visuellen Gesamteindruck sowie zu einem abweichenden Gesamtrhythmus und einer abweichenden Intonation beitrafe. Darüber hinaus wird, wie die Widersprechende in ihrem Vorbringen einräumt, der Wortbestandteil ‘IS’ des angefochtenen Zeichens von den meisten Verbrauchern in der Europäischen Union verstanden werden, was für diesen Teil des Publikums einen begrifflichen Kontrast zwischen den Zeichen schaffen werde.
Die Widerspruchsabteilung war daher der Auffassung, dass die bildlichen und klanglichen Übereinstimmungen in der Buchstabenfolge “BAL” nicht ausreichten, um die maßgeblichen Verbraucher bei der Begegnung mit der angefochtenen Marke “DIT IS BALIN” an die ältere bekannte Marke “BALLY” zu erinnern. Der sehr geringe oder allenfalls geringe Grad der Ähnlichkeit zwischen den Zeichen reiche nicht aus, um eine Verbindung zwischen den beiden Marken herzustellen, selbst wenn man den gewissen Bekanntheitsgrad der älteren Marke für einige der relevanten Waren berücksichtigte.
Kai Jüdemann, Fachanwalt für Urheber- und Medienrecht
OPPOSITION No B 3 146 932
Bally Schuhfabriken Aktiengesellschaft, Via Industria, 1, 6987 Caslano, Switzerland (opponent), represented by Elzaburu, S.L.P., Edificio Torre de Cristal Pº de la Castellana 259C, planta 28, 28046 Madrid, Spain (professional representative)
a g a i n s t
…, represented by Jüdemann Rechtsanwälte, Schlüterstraße 37, 10629 Berlin, Germany (professional representative).
On 28/07/2022, the Opposition Division takes the following
DECISION:
1. Opposition No B 3 146 932 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASREASONS
On 17/05/2021, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 399 049 for the word mark ‘DIT IS BALIN’, namely against some of the goods and services in Classes 18, 25 and 35. The opposition is based on European Union trade mark registration No 103 424 for the word mark ‘BALLY’. 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.ONS
a) The goods and services
The goods on which the opposition is based are the following:
Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices; chemico-technical products for the care and treatment of shoes and leather.
Class 14: Precious metals and their alloys, as well as goods manufactured therefrom or coated therewith (so far as included in Class 14); jewellery, imitation jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather and goods made from these materials (so far as included in Class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, cloth and plastic bags and pouches.
Class 25: Clothing, including belts, neckties, collar protectors and scarves, footwear; soles, heels, shanks and other parts of shoes; headgear.
The contested goods and services are the following:
Class 18: Evening handbags; beach bags; belt bags and hip bags; drawstring pouches; bucket bags; Boston bags; pocket wallets; shopping bags; felt pouches; purses; drawstring bags; cosmetic purses; toiletry bags; courier bags; duffel bags; rucksacks; key cases; shoulder bags; sports packs; daypacks; textile shopping bags; gym bags; cross-body bags; umbrellas; bumbags; children’s shoulder bags.
Class 25: Baby bibs [not of paper]; bandanas [neckerchiefs]; printed t-shirts; womens’ outerclothing; face mask [clothing]; face masks [fashion wear]; shirts; menswear; jackets [clothing]; hooded pullovers; hooded sweatshirts; short-sleeved t-shirts; bathing suit cover-ups; outerclothing for girls; outerclothing for boys; babies’ outerclothing; polo shirts; polo sweaters; scarves; shawls and headscarves; sweaters; sweat jackets; sweat shirts; tee-shirts; tops [clothing]; kerchiefs [clothing]; neckerchiefs; dresses; baseball caps; berets; bobble hats; caps being headwear; sun visors [headwear]; peaked caps; sports caps and hats; sun hats; headbands [clothing]; knitted caps; boaters; bath sandals; esparto shoes or sandals; baby bodysuits; baby tops; baby clothes; snap crotch shirts for infants and toddlers.
Class 35: online retail store services relating to clothing; online retail store services relating to cosmetic and beauty products; retail store services in the field of clothing; retail services in relation to clothing accessories; retail services in relation to stationery supplies.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.
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 18
Umbrellas are identically contained in both lists of goods.
The contested evening handbags; beach bags; belt bags and hip bags; drawstring pouches; bucket bags; Boston bags; shopping bags; felt pouches; purses; drawstring bags; cosmetic purses; toiletry bags; courier bags; duffel bags; rucksacks; shoulder bags; sports packs; daypacks; textile shopping bags; gym bags; cross-body bags; bumbags; children’s shoulder bags at least overlap with, the opponent’s cloth and plastic bags and pouches. Therefore, they are identical.
The contested pocket wallets; key cases are at least similar to the opponent’s goods, such as cloth and plastic bags and pouches, as they coincide in, at least, producers, relevant public and distribution channels.
Contested goods in Class 25
The contested bandanas [neckerchiefs]; printed t-shirts; womens’ outerclothing; shirts; menswear; jackets [clothing]; hooded pullovers; hooded sweatshirts; short-sleeved t-shirts; bathing suit cover-ups; outerclothing for girls; outerclothing for boys; babies’ outerclothing; polo shirts; polo sweaters; scarves; shawls and headscarves; sweaters; sweat jackets; sweat shirts; tee-shirts; tops [clothing]; kerchiefs [clothing]; neckerchiefs; dresses; baby bodysuits; baby tops; baby clothes; snap crotch shirts for infants and toddlers are included in the broad category of, or at least overlap with, the opponent’s clothing. Therefore, they are identical.
The contested baseball caps; berets; bobble hats; caps being headwear; sun visors [headwear]; peaked caps; sports caps and hats; sun hats; headbands [clothing]; knitted caps; boaters are included in the broad category of, or at least overlap with, the opponent’s headgear. Therefore, they are identical.
The contested bath sandals; esparto shoes or sandals are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested baby bibs [not of paper] are pieces of cloth or plastic worn by very young children to protect their clothes while they are eating. The opponent’s clothing is a broad category that includes neckties for babies. Considering that babies’ clothing producers usually offer bibs, not of paper and neckties for babies in the same outlets, they coincide in producers, distribution channels and relevant public. Therefore, they are similar.
The contested face mask [clothing]; face masks [fashion wear] are at least similar to a low degree to the opponent’s clothing as they coincide in producers and distribution channels.
Contested services in Class 35
Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. A low degree of similarity between goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services, provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.
Therefore, the contested online retail store services relating to clothing; retail store services in the field of clothing are similar to the opponent’s clothing in Class 25. In the same way, the contested online retail store services relating to cosmetic and beauty products are similar to the opponent’s cosmetics in Class 3.
An accessory is something extra that improves or completes the main product it is added to. Unlike parts, components and fittings, an accessory does not constitute an integral part of the main product, although it is usually used in close connection. An accessory usually fulfils a useful technical or decorative purpose. In addition, although a certain product may be used in combination with another, this is not necessarily conclusive for a finding of similarity. However, it is common for some accessories to also be produced by the manufacturer of the main product. Consequently, consumers may expect that the main product and the accessories are produced under the control of the same entity, especially when they are distributed through the same trade channels. In such cases, there is a strong indication for similarity.
The contested retail services in relation to clothing accessories pertain to fashion accessories, which are items used to contribute to, or complete, the wearer’s outfit, and chosen specifically to complement the wearer’s look. Traditional accessories include purses and handbags, fans, and similar items. However, according to case-law, accessories may include jackets, shoes, ties, hats, bonnets, belts and suspenders, gloves, muffs, jewellery, watches, sashes, shawls, scarves, spectacles, namely sun spectacles, which must also be considered as fashion accessories due to their special design. They are also subject to fashion/trend changes. Mobile phone accessories, over time, have also become fashion accessories (04/07/2016, R 1871/2015-4, mirrio / MIRTO, § 17). The same rationale also applies to the opponent’s retail services concerning clothing accessories, which at least overlap with the abovementioned goods.
Consequently, the contested retail services in relation to clothing accessories are at least similar to a low degree to at least one of the following opponent’s goods: clothing in Class 25 and/or cloth and plastic bags and pouches in Class 18. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are at least complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
However, contrary to the opponent’s assertions, the contested retail services in relation to stationery supplies have nothing in common with the opponent’s goods in Classes 3, 14, 18 and 25. They clearly differ in nature, serve different needs, have a different purpose and method of use, and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings. Therefore, they are dissimilar.
b) 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 and services found to be identical or similar to varying degrees are directed at the public at large. The public’s degree of attentiveness is average.
c) The signs
BALLY
DIT IS BALIN
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 signs are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). In addition, word marks do not have elements that could be considered clearly more dominant than others.
The earlier mark’s sole verbal element ‘BALLY’ has no meaning for the relevant public and is, therefore, distinctive.
The contested sign’s first verbal element ‘DIT’ may have a meaning in several European languages, for example in Dutch (‘this’) or French (e.g. [he] ‘says’ or ‘also known as’). In addition, this verbal element is meaningless for part of the relevant public, for example for the Polish-speaking consumers. The earlier mark’s second verbal element ‘IS’ is a third person singular form of the verb ‘BE’, which is a basic English word (30/04/2003, T-707/13 & T-709/13, BE HAPPY, EU:T:2015:252, § 28), and it has the same meaning in Dutch. This meaning will be understood not only by Dutch and English native speakers, but also by persons with a rudimentary knowledge of English. Furthermore, for example the Hungarian-speaking part of the public will understand this verbal element as meaning ‘too’ and/or ‘also’. However, it cannot be completely excluded that a small part of the relevant public, for example a part of the general Polish-speaking consumers with virtually no knowledge of English, may also perceive this verbal element as meaningless.
The distinctiveness of the verbal elements ‘DIT’ and ‘IS’ can vary depending on part of the relevant public. For some consumers, those verbal elements or at least one of them, particularly ‘DIT’ which is devoid of any meaning in numerous EU languages, are meaningless and distinctive. However, for some consumers, for example the Dutch- speaking part of the public, the verbal elements ‘DIT IS’ are somehow subordinate to the verbal element ‘BALIN’. This is because the words ‘DIT IS’ mean ‘that is’, which may be perceived as an introduction to someone. Therefore, the relevant public is likely to pay slightly more attention to the last element ‘BALIN’ than to those two initial elements.
The earlier mark’s third word ‘BALIN’ may be perceived as meaningful in some European languages, for example in Spanish – written with an accent – balín, meaning ‘smaller caliber rifle bullet than ordinary’ (information extracted from Real Academia Espanola on 20/07/2022 at https://dle.rae.es/bal%C3%ADn). For the Dutch-speaking part of the public, particularly due to the inclusion of the words ‘DIT IS’, the verbal element ‘BALIN’ can be seen as a surname. Regardless of how exactly this verbal element will be perceived, it is not descriptive, allusive or otherwise weak in relation to the goods and services at issue and is, therefore, distinctive. Furthermore, the verbal element ‘BALIN’ is meaningless for a part of the relevant public, for example for the German- and Polish-speaking consumers, and it is, therefore, distinctive.
Visually, the signs coincide in the sequence of letters ‘BAL*’, which is included in the beginning of the earlier mark’s sole element and the beginning of the third verbal element of the contested sign. The signs differ in the remaining letters of these verbal elements, namely ‘*LY’ in the earlier mark versus ‘*IN’ in the contested sign. In addition, they differ in the contested sign’s initial verbal elements ‘DIT IS’, which have no counterparts in the earlier mark. Therefore, the marks’ verbal elements have a different number of letters, five in the earlier mark and 10 in the contested sign. Moreover, the contested sign clearly and immediately gives the impression of three verbal elements written separately (consisting of 10 letters in total and, therefore, constituting a long sign), which the relevant public will not fail to notice. This contrasts sharply with the visual impression created by the earlier mark, which is a single and fanciful term of medium length (five letters).
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. Furthermore, an examination of the similarity of the signs must take account of the overall impression produced by those signs, since average consumers normally perceive a sign as a whole and do not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2012:324, § 52). Therefore, although the contested sign includes three letters of the earlier mark, these letters are in different places in the conflicting signs, which have very different lengths and structures, and this has a decisive impact.
Therefore, the signs are visually similar to a very low degree.
Aurally, the way the signs will be pronounced may slightly differ according to the languages in question. In some languages, the repeated ‘L’ of the earlier mark will be pronounced as a single ‘L’. For this part of the public, the signs coincide aurally in the string of letters ‘*BAL*’, but differ in the earlier mark’s last letter ‘*Y’ versus the letters ‘DIT IS ***IN’ in the contested sign. Furthermore, as argued by the opponent, another part of the public may also pronounce the letters ‘Y’ and ‘I’ in the same manner, for example German-speaking consumers. However, for example, the Polish-speaking part of the relevant public is likely to also pronounce the second letter ‘L’ in the earlier mark, which further differentiates the signs.
The different number of letters largely contributes to the signs’ very distinct overall rhythms and intonations. This is because the earlier mark has two syllables, whereas the contested sign has four syllables, and the coinciding string of letters is placed in very distinct positions within the signs. Therefore, contrary to the opponent’s assertions, the degree of similarity is not particularly significant. A sign’s overall aural impression is influenced by the number and sequence of its syllables and their position within the signs. Therefore, contrary to the opponent’s assertions, the signs are aurally similar to a low degree, at best.
Conceptually, for a part of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
For other parts of the public, for example the Dutch- and English-speaking consumers, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive one or more meanings in the contested sign, the earlier mark has no meaning in that territory. Since one of the signs 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.
d) 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 trade mark has a reputation in the European Union in connection with part of the goods which it is registered, namely:
Class 18: Leather and imitations of leather and goods made from these materials (so far as included in Class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, cloth and plastic bags and pouches.
Class 25: Clothing, including belts, neckties, collar protectors and scarves, footwear; soles, heels, shanks and other parts of shoes; headgear.
This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The opponent also submitted the following evidence.
• An extract from Wikipedia presenting the company, Bally, and its history and business activities since its foundation in 1851 in Switzerland.
• Extracts from Bally’s website, dated 11/08/2012, mentioning the celebration of the 160th anniversary of the brand and the sporty collection for the Olympic Games in 2012.
• Extracts from Bally’s website, dated 08/12/2014, retracing the history of the brand from the 1930s to the present. It is notably mentioned that ‘Scribe’ was the name given to Bally’s iconic men’s shoes in the 1950s, and that the brand expanded its range to include handbags, other leather accessories and ready-to-wear items between the 1950s and the 1970s.
• Copies of the reports Glitter and glamour shining brightly — The 100 most renowned luxury brands and their presence in Europe’s metropolitan centres (by Jones Lang Lasalle), dated July 2011 and presenting the ‘luxury market’ in the EU, and L2 — Gen Y prestige brand ranking, dated 03/05/2010. Both reports mention the mark ‘BALLY’.
• Press articles, inter alia, the following.
o ‘Bally Scribe: The Most Luxurious Shoes in the World’, dated 02/03/2011 and published in the online magazine JustLuxe, according to which ‘Bally Scribe is legendary, with a reputation for being among the most luxurious footwear in the world’.
o ‘The History Of Bally Shoes’ (undated), published in Article RICH. It refers to ‘Bally’s men shoes’ and mentions that the company ‘went from being a tiny brand in a tiny Swiss village to a world-wide fashion icon that has an established reputation for consistently producing high quality products’.
o ‘The History of Bally shoes’, published on 06/10/2013 on www.stylestudio360.com, according to which ‘for over 160 years, the brand name of Bally Shoes has symbolized luxury and the highest quality in craftsmanship. Today, Bally shoes continues to be recognized for its Swiss-made craftsmanship and modern styles of shoes’ and today there are ‘more than 200 Bally stores around the world, as well as the opportunity to purchase Bally products on-line’.
o ‘Bally: Swiss ingenuity’, dated 09/01/2012, published on examiner.com: ‘Bally got its start as a company that produced premium-quality shoes. Clothing, handbags, and other leather goods were added to the line in the 1970s’.
• Media activity report dated November 2013 and depicting the mark (picture) in relation to shoes and bags; the document shows advertising published in magazines and newspapers (e.g. Le Monde, Vogue, Elle, Vanity Fair, The Financial Times, Style, International Herald Tribune) as well as billboard campaigns in various European Union countries (Germany, France, Italy) as well as outside the European Union (China, Japan, United Kingdom, Ukraine, USA). The document contains information regarding circulation numbers of the magazines and newspapers.
Media activity report for the 60th anniversary of the first ascent of Everest, displaying the same mark in advertising in relation to shoes, for example, in the United Kingdom (e.g. The Times), Germany (e.g. Cosmopolitan, OK!, GQ Style, Marie Claire), France (e.g. Elle, Dandy, Blast), Greece (e.g. Vogue), Italy (e.g. Donna Moderna), the Netherlands (Elle, Vogue, L’Officiel, Glamour).
• Advertising campaign brief dated 16/05/2011 for the mark , presenting the goals and the visual for the campaign; the mark is depicted in relation to shoes, bags and clothes.
• Press clippings from fashion magazines and newspapers (e.g. Elle, Marie-Claire, Cosmopolitan, Glamour, Grazia, International New York Times, Le Figaro, Lui, Vogue, Style) in the EU (Germany, Greece, France, Italy, the Netherlands, Austria) and outside the EU. They are dated between 2008 and 2017 and they mention the mark ‘BALLY’, mainly in relation to shoes and bags and some items of clothing.
• Invoices: numerous invoices and order confirmations dated between 2011 and 2012, at the top of which the mark is depicted. They are to addresses in several EU countries (Belgium, Czech Republic, Spain, France, Croatia, Italy, Luxembourg and the Netherlands). The invoices mention the following: ‘shoes’, ‘bag’, ‘men shoes’, clothing’ (and ‘jacket’, ‘sweater’, ‘gloves’, ‘blouson’ and ‘leather blousons’).
• Affidavit dated 12/06/2017 and signed by Mr Gianfranco Palermo, Business Support and Group Reporting Director, attesting to the turnover in relation to shoes, outerwear, accessories and jewellery under the mark ‘BALLY’ from 2011 to 2016 in Germany, Switzerland and Europe.
It appears that the total net revenue in Europe was EUR 179 349 914 in 2011, EUR 171 578 852 in 2012 and EUR 175 504 046 in 2016. These amounts include EUR 81 871 365 for ‘shoes’, EUR 82 108 698 for ‘accessories’ and EUR 15 343 396 for ‘ready-to-wear’ items in 2011, EUR 76 954 897 for ‘shoes’, EUR 80 943 788 for ‘accessories’ and EUR 13 680 167 for ‘ready-to-wear’ items in 2012, and EUR 67 398 762 for ‘shoes’, EUR 99 780 506 for ‘accessories’ and EUR 8 324 777 for ‘ready-to-wear’ items in 2016.
The affidavit also refers to investments in advertising for the mark ‘BALLY’ between 2009 and 2016 in Germany, Switzerland and the European Union. For example, the company spent EUR 2 900 000 in 2009 on advertising in the EU, EUR 2 300 00 in 2010, EUR 2 100 000 in 2011 and 2012 and EUR 1 380 000 in 2016.
A list of BALLY’s stores, dated in 2017, with their pictures and addresses in Europe, that is, in France (four stores), the Netherlands (one), Germany (eight), Spain, Italy (three), Germany (one), the United Kingdom (one) and Austria (two).
• excerpts showing numerous photographs from the opponent’s media campaigns for ‘BALLY’ goods between 2016 and 2020.
Some of the evidence shows use of the mark ‘BALLY’ together with additional elements, namely ‘Switzerland’, ‘1851’ and a small figurative element depicting a cross, two branches and a coat of arms. However, given that these additional elements are either non-distinctive (‘Switzerland’ and ‘1851’, as they refer to the geographical origin of the goods and the date of foundation of the brand) or of secondary importance (the figurative element), the Opposition Division considers that the earlier mark is shown as registered.
The applicant claims that the opponent did not submit translations of some of the evidence and that, therefore, this evidence should not be taken into consideration. The Opposition Division notes that, contrary to the applicant’s claim, most of the evidence is in English. As regards the other documents, there is no need to request a translation because of their nature and self-explanatory character (invoices and advertising published in non-English-speaking countries). Therefore, this evidence has to be taken into account in assessing the reputation of the trade mark.
Finally, when assessing the proof of recognition of the mark, the assessment must consider the evidence in its entirety and not each item of evidence individually, as the applicant has done in her observations. The combination of all the items of evidence may be sufficient to indicate the reputation of the mark on the market.
Assessment of the evidence
Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.
The abovementioned evidence indicates that the earlier trade mark was used for a substantial period before the filing of the contested sign, namely since 1851, and that it has enjoyed a reputation in the fashion industry since at least the 1990s.
In particular, the level of investment in advertising, the numerous advertising campaigns and the press articles indicate that the trade mark has a consolidated position on the market in many Member States of the European Union. Furthermore, the evidence demonstrates that the trade mark was used continuously from the early 1990s until the filing of the contested sign. It appears in magazines specialised in fashion, some of them well known and distributed to a wide range of consumers in Europe (as listed above, and in particular Vogue, Elle and Cosmopolitan). That means that the public targeted by these publications had ongoing exposure to the opponent’s trade mark over a long period of time (12/01/2011, R 446/2010-1, TURBOMANIA / TURBOMANIA). This exposure is also corroborated by the presence of, relatively speaking, numerous ‘BALLY’ stores in various Member States of the European Union.
The use of the mark is also evidenced by the invoices submitted by the opponent. Although they only cover a 2-year period (2011-2012), they are sufficiently numerous and concern a sufficient number of countries within the EU. Moreover, they contain mention of the goods concerned, as detailed above.
As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all, contrary to the applicant’s claim.
The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
In the present case, the sales figures given in the affidavit are supported by the invoices and the amounts of advertising investment are supported by the numerous press clippings submitted by the opponent.
Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark ‘BALLY’, has acquired a high degree of distinctiveness through its use in the European Union for shoes and handbags.
However, the evidence does not succeed in establishing that the trade mark has a high degree of distinctiveness for all the goods on which the opposition is based. The evidence mainly relates to shoes and handbags, whereas there is little or no reference to the remaining goods. This is clear, for example, from the press articles evoking the reputation of the mark ‘BALLY’, in which only shoes and bags are mentioned or depicted, and from the affidavit, in which it is obvious that most of the goods sold are shoes and accessories (which include bags).
e) Global assessment, other arguments and conclusion
Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and between the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods and 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.
The earlier mark has acquired a high degree of distinctiveness through its use in the European Union for shoes and handbags. The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The goods and services found to be identical and similar to varying degrees target the public at large. The level of attentiveness is average.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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).
The signs are visually similar to a very low degree and aurally similar to a low degree, at best. In addition, either the conceptual aspect does not influence the assessment of the similarity of the signs, or the signs are conceptually not similar. As explained in detail above, although the signs coincide in some of their letters, there are significant differences between them overall. In this regard, the assessment must take account of the marks’ overall impressions, since average consumers normally perceive a trade mark as a whole and do not proceed to analyse its various details.
The marks’ different overall structures (one versus three verbal elements) must be taken into account when assessing the likelihood of confusion between them, as they will be clearly perceived by the relevant public. In addition, the coinciding string of letters ‘BAL’ is placed in different positions within the signs, which will contribute significantly to their different overall impressions. Furthermore, there are either no conceptual links between the signs as they are both meaningless and therefore distinctive, or the signs are conceptually not similar. Therefore, there is no reason to believe that consumers would link the two signs or confuse them, especially taking into account their average degree of attention for the goods and services at issue. This is also the case for the contested goods that were found identical to the opponent’s goods.
This is particularly true for the part of the public who will associate the contested sign with one or more meanings. Given that the earlier mark will be perceived as a single meaningless term throughout the territory of the European Union, this divergence establishes a relevant conceptual difference between them. In this regard, where one of the signs at issue has a clear and specific meaning that can be grasped immediately and the other does not, such conceptual differences between the signs may counteract the visual and aural similarities between them in the overall assessment of the likelihood of confusion (18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 98; 12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 19, 20, 23; 03/06/2015, T-559/13, GIOVANNI GALLI (fig.) / GIOVANNI, EU:T:2015:353, § 95-97; 26/04/2018, T-554/14, MESSI (fig.) / MASSI et al., EU:T:2018:230, § 73). For this to be the case, at least one of the signs at issue must have a clear and specific meaning that the relevant public can grasp immediately and the other sign must have no meaning or an entirely different one (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54; 06/04/2017, T-49/16, NIMORAL / NEORAL, EU:T:2017:259, § 52). In this context, this part of the public will not regard the coincidence in the shared letters as significant. This is because the recognition of the semantic content(s) of the contested sign’s verbal element(s) is immediate and instinctive. Consequently, consumers will decisively differentiate between the marks.
For the part of the public for whom both signs are meaningless, it is very unlikely that the public will analyse the signs to the point of confusing them or establishing an association between them merely because of the coincidence in some letters that are in different positions within the signs. Furthermore, the signs have a different number of verbal elements and clearly differ in their length and structure, as described above.
Therefore, notwithstanding the principles of interdependence and imperfect recollection, the Opposition Division considers that the relevant public will not believe that the goods and services found to be identical or similar to varying degrees originate from the same or economically linked undertakings. The differences between the signs are sufficient for the relevant public to safely distinguish between them.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 for 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: 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.
a) Reputation of the earlier trade mark
The goods for which the opponent has claimed reputation are the following:
Class 18: Leather and imitations of leather and goods made from these materials (so far as included in Class 18); animal skins, hides; trunks and travelling bags;umbrellas, parasols and walking sticks; whips, harness and saddlery, cloth and plastic bags and pouches.
Class 25: Clothing, including belts, neckties, collar protectors and scarves, footwear; soles, heels, shanks and other parts of shoes; headgear.
The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined 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.
The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time (from the early 1900s). The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market in the majority of the countries of the European Union. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods in question, the relevant consumers, etc.
However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to shoes and bags, whereas there is little or no reference to the remaining goods in Classes 18 and 25. This is clear, for example, from the press clippings and articles, in which only shoes and handbags are mentioned.
Consequently, the Opposition Division considers that the earlier mark ‘BALLY’ enjoys a certain degree of reputation in relation to shoes and bags. However, it has no reputation in relation to the other goods.
b) 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.
c) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to some extent.
In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):
• the degree of similarity between the signs;
• the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
• the strength of the earlier mark’s reputation;
• the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
• the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
Strength of the earlier mark’s reputation
The stronger the distinctive character of the earlier mark, the more likely it is that the public, when encountering a later identical or similar mark, will establish a link between the two marks. Accordingly, the degree of distinctive character acquired by the earlier mark must also be taken into consideration for the purposes of ascertaining whether a link may be established between the marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 54 to 57).
In the present case, the earlier mark ‘BALLY’ is inherently distinctive, because it is a verbal element without any meaning in relation to the goods designated by it. In addition, as detailed above, the earlier mark has been found to enjoy a certain degree of reputation in the European Union in connection with shoes and handbags. However, the opponent has not established such a reputation in relation to the other goods.
Degree of similarity between the signs
As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the contested mark will bring the earlier mark with a reputation to the mind of the relevant public. However, although the marks are similar, this is not sufficient for it to be concluded that there is a link between those marks. It is possible that the marks at issue are registered for goods or services in respect of which the relevant sections of the public do not overlap (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 44 to 46).
In the present case, the signs are overall visually similar to a very low degree and aurally similar to a low degree, at best. In addition, either the conceptual aspect does not influence the assessment of the similarity of the signs, or the signs are conceptually not similar.
The signs coincide visually merely in the string of three letters ‘BAL’, which are placed in different positions within the signs. The signs have a different number of letters, five versus 10, which largely contributes to rather distinct visual overall impressions, as well as divergent overall rhythms and intonations. Furthermore, as admitted by the opponent in its submissions, the contested sign’s ‘verbal element ‘IS’ will be understood by most of the consumers in the European Union, which will introduce a conceptual contrast between the signs for this part of the public.’
Therefore, it is the Opposition Division’s opinion that the visual and aural coincidences in the string of letters ‘BAL’ are insufficient to bring to the minds of relevant consumers the earlier reputed trade mark ‘BALLY’, when encountering the contested mark ‘DIT IS BALIN’. The very low, or low at best, degree of similarity between the signs is not sufficient to create a link between the two marks, even taking into account the certain degree of reputation of the earlier mark for some of the relevant goods.
Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
