iWATION | Decision 2748922
Date Published: Sep 24, 2017
OPPOSITION No B 2 748 922
C&A IP Holdings, LLC, 114 Tived Lane East, Edison New Jersey 08837, United States of America (opponent), represented by Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative)
a g a i n s t
Direlec Group, S.L., Avenida del Carme, Nº2, 46715 Alqueria de la Comtessa, Spain (applicant), represented by Imma Marti Peiro, C/ Manuel Sanchis Guarner, Nº8, 3º, PTA 8, 46702 Gandia, Spain (professional representative).
On 29/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 748 922 is upheld for all the contested goods.
2. European Union trade mark application No 15 386 931 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 386 931 for the figurative mark . The opposition is based on European Union trade mark registration No 15 109 168 for the figurative mark
. 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 goods
The goods on which the opposition is based are the following:
Class 28: Weightlifting belts; exercise equipment, namely, stability balls, exercise bands, weights, yoga blocks and straps; swim diving fins; exercise weights; arcade games; baby swings; bags specially adapted for sports equipment; bath toys; crib toys and mobiles; dumb-bell sets; electric action toys; plush toys; scuba flippers; swimming gloves; aquarium fish nets.
The contested goods are the following:
Class 28: Sporting articles and equipment; toys, games, playthings and novelties; skates; roller skates; skateboards; scooters [toys].
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
The contested sporting articles and equipment include, as a broader category, the opponent’s exercise equipment, namely, stability balls, exercise bands, weights, yoga blocks and straps; swim diving fins. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested games include, as a broader category, the opponent’s arcade games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested toys, playthings include, as broader categories, the opponent’s electric action toys; plush toys. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested skates; roller skates; skateboards and the opponent’s bags specially adapted for sports equipment coincide in producers, relevant public and distribution channels. Furthermore, they are complementary. Therefore, they are similar.
The contested novelties are small usually cheap new toys, ornaments, or trinkets (see Collins Dictionary online at https://www.collinsdictionary.com/dictionary/english/novelty). These goods are designed to serve no practical purpose, and are sold for their uniqueness, humor, or simply as something new. The contested scooters [toys] refer to a child’s toy for riding on. These goods have some points of contact with the opponent’s electric action toys; plush toys, as they may have the same purpose being objects designed for playing and entertainment and they may coincide in relevant public and distribution channels. Therefore, they are similar at least to a low degree.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is deemed to be average.
- 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 signs are figurative marks in black. The earlier mark contains the verbal element ‘IVATION’, depicted in rather standard lower case letters. To the right of the verbal element is a figurative element, consisting of nine dots in a rhomboid arrangement, three pairs of which are vertically connected. The contested sign consists of the verbal element ‘IWATION’, depicted in stylised lower and upper case letters of the same size.
The verbal elements of the marks, ‘IVATION’ in the earlier mark and ‘IWATION’ in the contested sign, have no meanings for the public in the European Union and are, therefore, distinctive. The figurative device in the earlier mark is an abstract element which does not convey any meaning either and is also distinctive.
The marks under comparison have no elements that could be considered clearly more distinctive than other elements or visually dominant.
Visually, the signs coincide in the sequence of letters ‘I*ATION’, present identically in both marks. They differ in their second letters, ‘V’ in the earlier mark and ‘W’ in the contested sign, which are visually quite similar, and in the figurative element of the earlier mark. They also differ in the stylisation of the verbal elements in both marks, which is not particularly striking and will be perceived as a graphical means of bringing the verbal elements to the attention of the public.
Moreover, as regards the figurative element of the earlier mark, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
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 letters ‘I*ATION’, present identically in both signs. The pronunciation differs in the sound of the second letters, namely ‘V’ in the earlier mark and ‘W’ in the contested sign, which are, nevertheless, aurally quite similar or occasionally identically pronounced in some of the relevant languages (e.g. in German and Polish). Moreover, the marks are composed of the same number of syllables and, therefore, they have the same rhythm. The figurative element of the earlier mark does not influence the pronunciation. Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods under comparison are identical or similar and target the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal.
The signs are visually and aurally similar to a high degree on account of their verbal elements ‘IVATION’ in the earlier mark and ‘IWATION’ in the contested sign. The impact of only one differing letter in each of the verbal elements of the marks is not sufficient to clearly distinguish the marks visually and aurally. The figurative element of the earlier mark and the stylisation of both signs are not sufficient to obscure or camouflage the verbal elements, which, as seen above, have a stronger impact on the consumer than the figurative components of the mark. The conceptual aspect does not influence the assessment of the similarity of the signs.
All of the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.
Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The Opposition Division considers that the strong visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory.
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 well founded on the basis of the opponent’s European Union trade mark registration No 15 109 168. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Justyna GBYL | Boyana NAYDENOVA | Begoña URIARTE VALIENTE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.