Jazzva | Decision 2682444 - Pelikan Vertriebsgesellschaft mbH & Co. KG v. Kulturno društvo Jazzva
Date Published: Oct 1, 2017
OPPOSITION No B 2 682 444
Pelikan Vertriebsgesellschaft mbH & Co. KG, Werftstr. 9, 30163 Hannover, Germany (opponent)
a g a i n s t
Kulturno društvo Jazzva, Celovška cesta 99C, 1000 Ljubljana, Slovenia (applicant).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 682 444 is upheld for all the contested goods, namely:
Class 16: Stationery.
2. European Union trade mark application No 15 254 063 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 254 063, namely against some of the goods in Class 16. The opposition is based on, inter alia, German trade mark registration No 302 015 041 531. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 015 041 531.
- The goods
The goods on which the opposition is based are the following:
Class 16: Writing instruments; fountain pens; ball point pens; pencils; mechanical pencils; fibre-tipped pens; textmarker; ink eradicators; crayons; gift boxes for writing instruments; pencil sharpeners.
The contested goods are the following:
Class 16: Stationery.
Contested goods in Class 16
The contested stationery overlaps with the opponent’s pencils. Therefore, these categories cannot be clearly separated and they are considered identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large and the professional public.
The degree of attention is considered to be average.
- The signs
Jazz | Jazzva |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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).
The earlier mark is the word mark ‘Jazz’, while the contested sign is the word mark ‘Jazzva’. The relevant public will understand the English word ‘Jazz’ as the name of the famous music style, since this term is widely used in popular culture. As this word is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
As a whole, the contested sign ‘Jazzva’ has no meaning for the relevant public and is, therefore, distinctive. Although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Thus, bearing in mind that it composes the beginning of the conjoined term and the fact that it is a well-known form of music, it is considered that the relevant public will perceive the previously mentioned English word ‘Jazz’ in the contested sign.
Visually and aurally, the signs coincide in the common letter string ‘Jazz-’, which encompass the totality of the earlier mark and the first four letters (out of six) of the contested sign ‘Jazzva’. The signs solely differ, visually and aurally, in the additional letters ‘va’ found at the end of the contested sign.
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.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, as was concluded above, the earlier mark comprises the distinctive word ‘Jazz’, while the relevant consumers will also perceive the element in question in the contested sign. To that extent, the signs are conceptually similar to at least an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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).
As has been concluded above, the contested goods are identical and the signs are visually, aurally and conceptually similar to an average degree.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case, the signs under comparison coincide in the sequence of letters ‘Jazz-’, which encompass the totality of the earlier mark and the first four letters (out of six) of the contested sign ‘Jazzva’, as was previously mentioned. Furthermore, the signs solely differ in the additional letters ‘va’ found at the end of the contested sign.
Considering that the initial parts of the signs are the ones that first catch the attention of the reader, as was explained above in section c), the additional letters contained at the end of the contested sign are not enough to set them clearly apart in relation to the identical goods, bearing in mind the above-mentioned principle of imperfect recollection and the visual, aural and conceptual similarity between the marks.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the German public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 041 531. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier German trade mark registration No 302 015 041 531 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Gueorgui IVANOV | José Alexandre DE PAIVA ANDRADE TEIXEIRA | Dorothée SCHLIEPHAKE |
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.