The opponent, represented by the team of IP Consulting, filed an opposition against some of the goods of European Union trade mark application, namely against all the goods in Class 3. The opposition is based on international trade mark registration designating Bulgaria, Poland and Romania.
The relevant territory is Bulgaria and the opponent invoked 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 from economically linked undertakings.
The applicant has provided some extracts from Google®, showing a search on “LIQIUD VELVET”. They argue that the contested sign is not “used commonly in any context. Indeed, essentially all references /in the Google® search/ are to the applicant’s brand, marked on its own website and through its distribution network”.
The Opposition Division finds that the word “VELVET” (present in both signs) is meaningless for the relevant public and that it is distinctive. The initial word “LIQIUD” of the contested sign is also meaningless to the Bulgarian public. It is also a distinctive element in the contested sign.
Therefore, neither sign has a meaning for the public in the relevant territory so a conceptual comparison is not possible.
The signs coincide in the distinctive word “VELVET” and differ in the distinctive word “LIQUID”. Nevertheless, the signs’ common and distinctive element “VELVET” appears as an independent element in the contested sign. It is the sole element to be read and pronounced in the earlier mark. The signs are visually and aurally high similar.
The likelihood of confusion on the part of the public must be appreciated globally. All factors relevant to the circumstances of the case shall be taken into account. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration insofar as it designates Bulgaria. It follows that the contested trade mark must be rejected for all the contested goods.
Since the applicant is the losing party, it must bear the opposition fee. The applicant must bear also the costs incurred by the opponent in the course of these proceedings.