OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECISION of 19/07/2010 RULING ON OPPOSITION No B

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) Opposition Division DECISION of 19/07/2010 RULING ON OPPOSITION No B Opponent: Bambino Mio Limited 12 Staveley Way Brixworth, Northamptonshire NN6 9EU United Kingdom Representative: A.A. Thornton & Co. 235 High Holborn London WC1V 7LE United Kingdom Trade marks: 1) 2) Bambino Mio 3) BAMBINOMIO a g a i n s t Applicant: Cazitex, Naamloze vennootschap Industriepark LAR C Rekkem Belgium Representative: Bureau Gevers Brussels Airport Business Park Holidaystraat, Diegem Belgium Contested trade mark: BAMBINEO

2 Decision on Opposition No B page : 2 of 11 I. FACTS AND PROCEDURE On 30/11/2006 the applicant filed the contested trade mark No to register the trade mark shown on the cover page for goods in classes 5, 16 and 25. The opposition is directed against all of the goods covered by the contested trade mark. The opposition is based on: Community trade mark registration No of the trade mark shown on the cover page as mark number 1, filed on 11/04/2000 and registered on 02/05/2003 for goods in classes 3, 16 and 25. The United Kingdom trade mark registration No of the trade mark shown on the cover page as mark number 2, filed on 19/02/2003 and registered on 07/01/2005 for goods in classes 3, 16, 21 and 25. The United Kingdom trade mark registration No of the trade mark shown on the cover page as mark number 1, filed on 24/03/1999 and registered on 31/03/2000 for goods in class 25. The United Kingdom trade mark registration No of the trade mark shown on the cover page as mark number 2, filed on 28/05/2004 for goods in classes 3, 16, 21 and 25. The United Kingdom trade mark registration No of the trade mark shown on the cover page as mark number 1, filed on 19/04/2000 and registered on 22/06/2001 for goods in classes 3, 16 and 25. Community trade mark application No of the trade mark shown on the cover page as mark number 1, filed on 28/05/2004 for goods in classes 3, 16, 21 and 25. The non-registered trade mark / trade name / company name shown on the cover page as trade mark number 2, used in the course of trade in all member states of the European Community in connection with the following goods (class 3) Substances for laundry use; pre-wash treatments for nappies, cleaning preparations; wipes impregnated with cleaning preparations; soaps; (class 16) nappy liners made wholly or principally ofpaper or cellulose; (class 21) plastic buckets; nappy buckets; buckets for soaking and/or storing nappies; parts and fittings for the aforesaid goods; (class 25) nappies; swim-nappies; training pants; pure cotton nappies; nappy covers; water-proofnappy covers; accessories for use with all the aforesaid goods. The non-registered trade mark shown on the cover page as trade mark number 3, used in the course of trade in all member states of the European Community in connection with the following goods (class 3) Substances for laundry use; pre-wash treatments for nappies, cleaning preparations; wipes impregnated with cleaning preparations; soaps; (class 16) nappy liners made wholly or principally ofpaper or cellulose; (class 21) plastic buckets; nappy buckets; buckets for soaking and/or storing nappies; parts and fittings for the aforesaid goods; (class 25) nappies;

3 Decision on Opposition No B page : 3 of 11 swim-nappies; training pants; pure cotton nappies; nappy covers; water-proofnappy covers; accessories for use with all the aforesaid goods. The opposition is based on all of the goods covered by the earlier rights. The grounds of the opposition are those laid down in Article 8(1)(a), 8(1)(b) and 8(4) of the Community Trade Mark Regulation (CTMR). The opponent argues that there is a likelihood of confusion because of the similarity of the marks and because the goods covered by the marks are partly identical and partly similar. The opponent also claims that the use of the contested mark would constitute a misrepresentation with the likely result of damaging the reputation and goodwill of the earlier marks. The applicant did not submit any arguments in response. II. DECISION The opposition is based on several earlier signs. For reasons of procedural economy the Office will first asses the likelihood of confusion between earlier Community trade mark registration No shown on the cover page as mark No 1, the United Kingdom trade mark registration No shown on the cover pages as mark No 2, and the contested trade mark. 1. Likelihood of Confusion Article 8(1)(b) CTMR a) Comparison of the goods In assessing the similarity of the goods concerned, all the relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose of use and their method of use and whether they are in competition with each other or are complementary (see Judgment of 29 September1998, Case C-39/97, Canon, ECR I-5507). Further factors include the purpose of the goods and services, whether or not they may be expected to be manufactured, marketed or provided by the same undertaking, or by economically linked undertakings, as well as their distribution channels and sales outlets. The goods on which the opposition is based and covered by the earlier Community trade mark registration No are the following: Class 3: Substances for laundry of nappies; pre-wash treatments for nappies; cleaning preparations for nappies. Class 16: Nappy liners made wholly or principally of paper or cellulose. Class 25: Nappies; swim-nappies; training pants. The goods on which the opposition is based and covered by the earlier the United Kingdom trade mark registration No are the following:

4 Decision on Opposition No B page : 4 of 11 Class 3: Substances for laundry use; pre-wash treatments for nappies, cleaning preparations; wipes impregnated with cleaning preparations; soaps. Class 16: Nappy liners made wholly or principally of paper or cellulose. Class 21: Plastic buckets; nappy buckets; buckets for soaking and/or storing nappies; parts and fittings for the aforesaid goods. Class 25: Nappies; swim-nappies; training pants; pure cotton nappies; nappy covers; water-proof nappy covers; accessories for use with all the aforesaid goods. The contested goods are the following: Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; diapers and pants for incontinency; diapers and pants of textile material for incontinency. Class 16 : Disposable babies' napkin-pants; disposable diapers; disposable babies' diapers. Class 25: Diaper-pants; babies' diapers of textile; diapers and diaper pants of textile material. Contested goods in class 5: The applicant s pharmaceutical and veterinary preparations; sanitary preparations for medical purposes are similar to the opponent s soaps in class 3 covered by the United Kingdom trade mark registration No The Office points out that these goods can share the same purpose of use to the extent that the goods of the opponent can also be medicated and used for medical purposes. These goods are sold in the same stores, in particular in pharmacies and they can be produced by the same companies. It is likely that soaps, also having medicated nature, originate from the same company as the opponent s goods. The applicant s disinfectants; fungicides, herbicides are similar to the opponent s soaps as these goods can share the same purpose to disinfect and destroy unwanted organisms. The opponent s soaps can also be an important ingredient in the applicant s herbicides, as is the case in post-emergent herbicides which are used to dry weeds and plants. Vice versa, the opponent s soaps can include the ingredients of the applicant s disinfectants; fungicides and be used for the same purposes. It is likely that these goods can be found in the same stores and are provided by the same companies. The applicant s preparations for destroying vermin are similar to the opponent s soaps. These goods share the same purpose, to enhance cleanliness and hygiene. They are complementary as they can be used together, and it is likely that the opponent s soaps are used after destroying vermin with the goods of the applicant. These goods may also originate from the same companies, and there is therefore a degree of similarity. The applicant s diapers and pants for incontinency; diapers and pants of textile material for incontinency are similar to the opponent s nappies in class 25. Despite the fact that these goods are ultimately destined for different users (the goods of the

5 Decision on Opposition No B page : 5 of 11 applicant are destined for adults and senior citizens, while the opponent s goods are destined for babies), they are similar because they share the same nature, method of use and purpose of use. They may also be produced by the same companies. The applicant s dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax are dissimilar to the opponent s soaps. These goods have different purposes (human consumption, dental health, as opposed to cleaning substance). They originate normally from different companies and are offered in different sections of supermarkets. Even if these goods were offered in the same shops, such as pharmacies, it is unlikely that they would be considered similar, as the method of use and purpose of use of these goods are clearly different. These goods are also dissimilar to all the other goods of the opponent in classes 3, 16, 21 and 25 as there are few links between these goods of the opponent and those of the applicant. Contested goods in class 16: the applicant s disposable babies' napkin-pants; disposable diapers; disposable babies' diapers and the opponent s nappy liners made wholly or principally of paper or cellulose all belong to the category of (dispensable) diapers. These goods are therefore identical. Contested goods in class 25: the applicant s diaper-pants; babies' diapers of textile; diapers and diaper pants of textile material and the opponent s nappies belong all to the category of (cloth) diapers. These goods are therefore identical. It follows from the above that the following goods of the application are either identical or similar to the goods in relation to which the earlier trade mark is protected: Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; disinfectants; preparations for destroying vermin; fungicides, herbicides; diapers and pants for incontinency; diapers and pants of textile material for incontinency. Class 16 : Disposable babies' napkin-pants; disposable diapers; disposable babies' diapers. Class 25: Diaper-pants; babies' diapers of textile; diapers and diaper pants of textile material. All the other goods of the application are dissimilar to the goods covered by the earlier trade mark. b) Comparison of the signs The signs to be compared are the following: 1) 2) Bambino Mio Earlier trade mark BAMBINEO Contested trade mark

6 Decision on Opposition No B page : 6 of 11 The relevant territory is the European Union regarding the first earlier sign, and the United Kingdom regarding the second earlier sign. The first earlier sign is a figurative mark consisting of two words Bambino Mio written in a stylised typeface. The second earlier sign is a word mark, Bambino Mio. The contested mark is a word mark consisting of the word BAMBINEO. Taking into account the fact that the signs share the same six letters BAMBIN in the same order at their beginning, there is some visual similarity, even despite the fact that the first earlier mark is presented in a stylised typeface. Furthermore, both signs end with the letter O. The signs differ visually in that the earlier signs consist of two words, while the contested sign has only one word. The earlier signs also have the letters O MI in the middle of the signs, whereas the contested sign has the letter E. Aurally, the earlier signs are pronounced in five syllables as BAM BI NO MI O while the contested sign is pronounced in four syllables as BAM BI NE O. The signs share three same syllables, which are placed at the beginning and end of the signs, while they differ in the third and fourth syllables of the earlier sign. There is certain degree of aural similarity, as the beginnings of the signs have the same syllables, and the signs also have the same letter at their end. Conceptually, the word MIO means my in Italian. The word BAMBINO means little boy in Italian. This meaning little boy will be picked up by speakers of some other languages, too, such as the English-speaking public. However, in many languages this term will have no exact meaning. The word BAMBINEO of the application is an invented term. However, for the Italian consumers, it is likely to evoke the word BAMBINO due to its high similarity (only one-letter difference). It follows that for the Italian-speaking consumers and the European consumers who understand the meaning of the word BAMBINO there is a certain degree of conceptual similarity since all signs refer to the same concept of little boy. For the remaining consumers, no conceptual comparison can be made. c) Global assessment According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see Judgment of 11 November 1997, Case C-251/95, Sabèl, ECR I-6191). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. 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 goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see Judgment of 29 September 1998, Case C-39/97, Canon, ECR I-5507).

7 Decision on Opposition No B page : 7 of 11 For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer s level of attention is likely to vary according to the category of goods or services in question (see Judgment of 22 June 1999, Case C-342/97, Lloyd Schuhfabrik Meyer, ECR I-3819). The goods have been found to be partially identical and partially similar and partially dissimilar, and they are directed at the public at large. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered (see Judgment of 22 June 1999, Case C-342/97, Lloyd Schuhfabrik Meyer, ECR I-3819). As to the distinctive character of the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. In the present case, it is important to note that the word BAMBINO of the earlier mark means little boy in Italian. Bearing in mind that the goods in relation to which there could be confusion are diapers and napkin-pants, it is considered that this word is descriptive of the end-consumers of the goods in question in relation to part of the goods, namely: Class 16: Nappy liners made wholly or principally of paper or cellulose. Class 25: Nappies; swim-nappies; pure cotton nappies; nappy covers; water-proof nappy covers; accessories for use with all the aforesaid goods. However, this weakness is established only among the consumers who understand the meaning of the word BAMBINO as referring to little boy. Regarding the consumers who do not understand this word, it has no meaning in relation to the goods at hand. Therefore, the distinctiveness of the earlier mark must be seen as normal. Therefore, in a comparison of the signs, the Office has shown that there is some visual similarity between the signs. The signs also have a certain degree of aural similarity. It has earlier been pointed out that the main similarity, the identical letters BAMBIN, are placed at the beginning of the signs. Due to the fact that the main visual and aural similarity is placed in the initial part of the signs, it should be noted that this similarity may or may not be relevant, depending on several factors. In some cases it can be considered that the initial part of the sign is the most important. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader (see Judgment of 22 June 2005, Case T-34/04, Plus

8 Decision on Opposition No B page : 8 of 11 Warenhandelsgesellschaft mbh / OHIM, (TURKISH POWER/POWER), ECR II-2401). Notwithstanding the foregoing, this will only be true when the sign contains a verbal element (which would explain reading from left to right) and when this verbal element is not very short (otherwise the sign will be perceived immediately in its entirety). In the present case, both conditions are present and, therefore, the fact that the main visual and similarity is placed in the initial part of the signs is relevant. Therefore, it is considered that the visual and aural dissimilarities between the signs are not enough to counteract the visual and aural similarities. Considering all the above, the Office finds that there is a likelihood of confusion on the part of the public, and therefore that the opposition is well founded on the basis of the opponent s Community trade mark registration. It follows from the above that the application must be rejected for the goods found to be identical or similar to those of the earlier trade mark, namely the following goods: Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; disinfectants; preparations for destroying vermin; fungicides, herbicides; diapers and pants for incontinency; diapers and pants of textile material for incontinency. Class 16 : Disposable babies' napkin-pants; disposable diapers; disposable babies' diapers. Class 25: Diaper-pants; babies' diapers of textile; diapers and diaper pants of textile material. The opposition is not successful insofar as the remaining goods are concerned. The opponent has also based its opposition on other earlier trade marks and on an earlier trade mark application. These marks are identical to the earlier marks which have been compared to the contested trade mark. As these earlier rights cover only the same goods as the compared earlier right, the outcome cannot be different. Those goods of the application which were found dissimilar to the goods protected by the compared earlier right are also dissimilar to the goods covered by the other earlier rights as these earlier rights cover only the same goods as the compared earlier right. The dissimilar goods of the application are: Class 5: Dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax. Therefore, regarding these dissimilar goods, no likelihood of confusion exists with respect to those other earlier rights either as, according to Article 8(1)(b) CTMR, similarity of goods is a condition for a finding of likelihood of confusion. 2. Identity Article 8(1)(a) CTMR The opposition was also based on the ground of Article 8(1)(a). According to Article 8(1)(a) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: if it is identical with the earlier trade

9 Decision on Opposition No B page : 9 of 11 mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected. In order for Article 8(1)(a) to be applicable, the opponent s trade marks and goods must be identical to those of the applicant. Two signs are considered identical if they are the same in all respects, i.e. in cases of reproduction, without any modification or addition, of all the elements. In the present case, the marks are not identical, and the first cumulative condition required by Article 8(1)(a) is not fulfilled. Since one of these cumulative conditions is not fulfilled, Article 8(1)(a) does not therefore apply for the signs in question or for the aforementioned contested goods, and the opposition must be rejected. 3. Non-registered trade mark or another sign Article 8(4) CTMR According to Article 8(4) CTMR upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. The grounds of refusal of Article 8(4) CTMR are therefore subject to the following requirements: the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested application; pursuant to the law governing it, prior to the filing of the contested application, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark. the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark. These conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) CTMR cannot succeed. a) Prior use in the course of trade of more than mere local significance The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

10 Decision on Opposition No B page : 10 of 11 Furthermore, such use must indicate that the sign in question is of more than mere local significance. The rationale of that provision is to restrict the number of conflicts between signs by preventing an earlier sign, which is not sufficiently important or significant, from making it possible to challenge either the registration or the validity of a Community trade mark. The contested CTM application was filed on 30/11/2006. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in all member states of the European Union before 30/11/2006. According to Rule 19(1) of the Community Trade Mark Implementing Regulation (CTMIR), the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3) CTMIR, within a time limit specified by it and which shall be at least two months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1) CTMIR. According to Rule 19(2) CTMIR, within the period referred above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition. In the present case, the notice of opposition was not accompanied by any evidence as regards the use of the earlier sign in the course of trade. On 23/11/2007 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the above-mentioned material. This time limit expired on 11/11/2009. The opponent did not submit any evidence concerning the use in the course of trade of the sign on which the opposition is based. It follows that one of the necessary requirements of Article 8(1)(4) CTMR has not been met. The opposition must therefore be rejected as unfounded insofar as it is based on Article 8(4) CMTR. III. COSTS According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs. Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

11 Decision on Opposition No B page : 11 of 11 THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) DECIDES TO: 1. Uphold opposition number B for part of the contested goods, namely: Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; disinfectants; preparations for destroying vermin; fungicides, herbicides; diapers and pants for incontinency; diapers and pants of textile material for incontinency. Class 16 : Disposable babies' napkin-pants; disposable diapers; disposable babies' diapers. Class 25: Diaper-pants; babies' diapers of textile; diapers and diaper pants of textile material. 2. Reject application number No for all the above goods. It may proceed for the remaining goods of the application. 3. Order each party to bear their own costs. The Opposition Division Daniel Gája Tuomas Mattila Angel Escribano Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.