Kung Food PANDA | Decision 2708207

Date Published: Sep 24, 2017

OPPOSITION No B 2 708 207

DreamWorks Animation L.L.C., 1000 Flower Street, Glendale, CA 91201, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Taste Tools OÜ, Tartu mnt 18 Harjumaakond, 10115 Tallinn, Estonia (applicant).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 708 207 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 135 783.

The opposition is based on the following earlier rights:

European Union trade mark registration No 5 112 677 KUNG FU PANDA (word mark)

European Union trade mark registration No 6 673 594 KUNG FU PANDA (word mark)

European Union trade mark registration No 8 758 377 KUNG FU PANDA: LEGENDS OF AWESOMENESS (word mark)

European Union trade mark registration No 9 454 431 DREAMWORKS KUNG FU PANDA (word mark)

The opposition is based on Article 8(1)(b) and 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.

The goods and services

The goods and services on which the opposition is based are the following:

EUTM No 5 112 677 KUNG FU PANDA

Class 9: Scientific, nautical, surveying, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Automatic vending machines and mechanisms for coinoperated apparatus; Cash registers, calculating machines, fire-extinguishing apparatus; Magnets and sunglasses.

EUTM No 6 673 594 KUNG FU PANDA

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; including paper party decorations; paper party supplies; namely, paper napkins, paper place mats, gift wrapping paper and gift wrapping ribbons, paper gift wrap bows, paper table cloths and paper party bags; children's activity books, children's storybooks, comic books, coloring books, book marks, loose leaf binders, stationery-type portfolios, spiral bound notebooks, note pads or writing pads, diaries, daily planners, calendars, scrapbook albums, sketchbook albums, photograph albums, sticker albums, stickers, decals, stamp pads or inking pads, rubber stamps, heat applied appliques made of paper, temporary tattoos, slateboards for writing, pencils, pens, pencil erasers, decorative pencil-top ornaments, pen cases and pencil cases, pen boxes and pencil boxes, pencil sharpeners, chalk, markers, posters, postcards, trading cards, greeting cards, pennants made of paper, painting sets for children; arts and crafts paint kits; study kits, consisting of pencil erasers, drawing rulers, pencil sharpeners and pencil case; stationery packs consisting of writing paper, envelopes, markers, and stencils; and activity kits consisting of stickers and stamps.

Class 25: Clothing, footwear, headgear including shirts and tops, dresses, skirts, pants, trousers, jeans, shorts, rompers, overalls, sweatshirts and sweat pants, sweatsuits, caps and hats, gloves, suspenders, ties, coats and jackets, hosiery, shoes, boots, slippers, pajamas, robes, sleepshirts, sleepwear, underwear, Halloween costumes, and cloth baby bibs.

Class 28: Games and playthings; gymnastic and sporting articles not included in other Classes; decorations for Christmas trees; including action figures and accessories therefor, bathtub toys, kites, toy building blocks, board games, costume masks, hand-held unit for playing electronic games, die cast miniature toy vehicles, dolls, doll accessories, doll clothing, bean bag dolls, bendable play figures, flying disks, inflatable vinyl play figures, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, rollerskates, toy banks, wafer squirting toys, stuffed toys, toy vehicles, Christmas tree ornaments; pinball machines and model craft kits of toy figures; paper party hats; and playing cards.

EUTM No 8 758 377 KUNG FU PANDA: LEGENDS OF AWESOMENESS

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; including computer game cartridges; computer game cassettes, and computer game tapes; video game cartridges, video game cassettes; prerecorded audio cassettes featuring motion picture soundtracks; prerecorded video cassettes featuring animated motion pictures; prerecorded audio tapes featuring motion picture soundtracks; prerecorded video tapes featuring animated motion pictures; prerecorded DVDs featuring animated motion pictures; prerecorded CDs featuring music and motion picture sound tracks; multimedia software recorded on CD-ROM featuring music, motion picture soundtracks and animated motion pictures; and prerecorded DVDs featuring music and motion picture sound tracks; prerecorded computer software programs featuring music and motion picture sound tracks; interactive multimedia software programs containing motion pictures for entertainment; interactive multi-media software for playing games; magnets and sunglasses.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; including paper party decorations; paper party supplies, namely, paper napkins, paper place mats, giftwrapping paper and paper gift wrapping ribbons, paper gift wrap bows, paper table cloths and paper party bags; children's activity books, children's storybooks, comic books, coloring books, book marks, loose leaf binders, stationery-type portfolios, wire-bound notebooks, note pads or writing pads, diaries, daily planners, calendars, scrapbook albums, sketchbook albums, photograph albums, sticker albums, stickers, decals, stamp pads or inking pads, rubber stamps, heat applied appliques in the form of decals made of paper, temporary tattoos, slateboards for writing, pencils, pens, pencil erasers, decorative pencil-top ornaments, pen cases and pencil cases, pen boxes and pencil boxes, pencil sharpeners, chalk, markers, posters, postcards, trading cards, greeting cards, pennants made of paper, painting sets for children; arts and crafts paint kits; study kits, consisting of pencil erasers, drawing rulers, pencil sharpeners and pencil case; stationery packs consisting of writing paper, envelopes, markers, and stencils; and activity kits consisting of stickers and rubber stamps.

Class 25: Clothing, footwear, headgear; including shirts and tops, dresses, skirts, pants, trousers, jeans, shorts, rompers, overalls, sweatshirts and sweat pants, sweatsuits, caps and hats, gloves, suspenders, ties, coats and jackets, hosiery, shoes, boots, slippers, pajamas, robes, sleepshirts, sleepwear, underwear, Halloween costumes, and cloth baby bibs.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; including action figures and accessories therefor, bathtub toys, kites, toy building blocks, board games, costume masks, hand-held unit for playing electronic games, die cast miniature toy vehicles, dolls, doll accessories, doll clothing, bean bag dolls, bendable play figures, flying discs, inflatable vinyl play figures, jigsaw puzzles, marbles, paper party hats, plush toys, puppets, ride-on toys, skateboards, balloons, rollerskates, toy banks, water squirting toys, stuffed toys, toy vehicles, Christmas tree ornaments; pinball machines and model craft kits of toy figures; and playing cards.

Class 41: Entertainment services in the nature of an animated television series.

EUTM No 9 454 431 DREAMWORKS KUNG FU PANDA

Class 9: Photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sounds or images; magnetic data carriers, recording discs; data processing equipment and computers; including computer peripherals, namely mouse pads, holders for compact discs, computer game cartridges, computer game cassettes, and computer game tapes; video game cartridges, video game cassettes; prerecorded audio cassettes, prerecorded video cassettes, precorecorded audio tapes, prerecorded video tapes, prerecorded discs featuring music and motion picture sound tracks; CD-ROM and DVD programs featuring music and motion picture sound tracks; computer operating system software; prerecorded computer software programs featuring music and motion picture sound tracks; interactive multimedia software programs containing motion pictures for entertainment; interactive multimedia software for playing games.

The contested services are the following:

Class 39: Delivery of food by restaurants.

Class 43: Restaurants; Delicatessens [restaurants]; Hotel restaurant services; Mobile restaurant services; Restaurant services provided by hotels; Snack-bars; Catering in fast-food cafeterias.

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 services in Classes 39 and 43 are services provided by persons or establishments whose aim is to prepare food and drink for consumption or concern the delivery of prepared food.

The opponent, at the same time, has protection for goods and services in Classes 9, 16, 25, 28 and 41, i.e. scientific, audio-visual, electronic apparatus (9), clothing, footwear, headgear (25), toys, apparatus for playing games, sports equipment, amusement and novelty items, as well as certain articles for Christmas trees (28), and animated television series (41). The nature and purpose of the opponent’s goods and services is different from that of the contested services. They are not provided by the same producers/services providers. They are neither complementary, nor in competition. Therefore, the goods and services are dissimilar.

The opponent argues that automatic vending machines, covered by the earlier marks in class 9, are closely related to the applicant’s restaurant and home delivery services and, particularly, to the snack bar and catering services, in so far as both snack bars and automatic vending machines sell snacks. These goods and services therefore, in the opponent’s view, serve the same purpose and are aimed at the same kind of consumer. However, it must be pointed out that the manufacture of vending machines in Class 9 must be separated from the filling/re-filling of vending machines, which is a service belonging to Class 39 and companies producing these machines are not necessarily involved in renting them out and re-stocking them. Moreover, the link which according to the opponent connects the goods and services is the general purpose of providing nourishment. However, this connection is too remote to lead to a finding of similarity given that the producers of vending machines and the providers of restaurant and food delivery services do not commonly coincide. The fact that these goods and services satisfy generally similar needs, or that they are both available in shopping centres and cinemas, as the opponent reasons, is not sufficient to establish similarity.

The opponent also claims similarity with its paper goods in Class 16, arguing that it is common practice for restaurants to order napkins, table cloths or glasses bearing the restaurant’s own mark in order to create a uniform corporate image. While this may be the case, restaurants are not generally in the habit of manufacturing their own napkins but order them from a third party. These arguments of the opponent, therefore, must be set aside.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

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 of 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: the 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.

The signs

(1) KUNG FU PANDA

(2) KUNG FU PANDA: LEGENDS OF AWESOMENESS

(3) DREAMWORKS KUNG FU PANDA

Earlier trade marks

Contested sign

The relevant territory is the European Union.

The earlier marks all consist of or contain the word elements ‘KUNG FU PANDA’, which will be understood throughout the relevant territory as the combination of a reference to (1) various Chinese martial arts, some focusing on unarmed combat, others involving the use of weapons and (2) a large animal rather like a bear, which has black and white fur and lives in the bamboo forests of China [Online Collins Dictionary].

‘LEGENDS OF AWESOMENESS’ is an English expression referring to very impressive and often frightening, very old and popular stories that may be true. ‘DREAMWORKS’ is a combination of two English words referring to (i) imaginary events in your mind while you are asleep and (ii) a place where a number of people are employed.

The inherent distinctiveness of all the earlier marks is average as they have no relation to the goods and services.

The relevant public is likely to perceive the reference to Chinese martial arts also in the element ‘Kung Food’ of the contested sign. Moreover, part of the relevant public will even grasp the play on words in the contested mark’s ‘Kung Food’ element which refers to both Chinese martial arts and nourishment. The contested mark, furthermore, contains a distinctive drawing of a black and white panda head with an orange Asian conical hat.

Visually, the signs coincide in ‘KUNG F* PANDA’. They differ in ‘U’/’OOD’, ‘DREAMWORKS’, ‘LEGENDS OF AWESOMENESS’ and the panda head.

The degree of visual similarity is considered average.

Aurally, the signs coincide in ‘KUNG’ and ‘PANDA’ and strongly resemble in the elements ‘Fu’/’Foo’ while they differ in ‘DREAMWORKS’, ‘LEGENDS OF AWESOMENESS’.

The signs are therefore aurally similar to a high degree with regard to the earlier marks (1) and to an average degree with regard to the rest of the signs which contain additional verbal elements.

Conceptually, the signs coincide in, at least, the concept of ‘Kung fu’ and ‘Panda’ (also reinforced by the contested sign’s figurative element). The degree of conceptual similarity will range from average to high, depending on whether the additional differing concepts in ‘DREAMWORKS’, ‘LEGENDS OF AWESOMENESS’ are perceived.

Taking into account the abovementioned visual/aural/conceptual coincidences, the signs under comparison are similar from average to high degree.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 22/02/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date.

The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely the following:

EUTM No 5 112 677 KUNG FU PANDA

EUTM No 6 673 594 KUNG FU PANDA

EUTM No 8 758 377 KUNG FU PANDA: LEGENDS OF AWESOMENESS (word mark)

Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; including computer game cartridges; computer game cassettes, and computer game tapes; video game cartridges, video game cassettes; prerecorded audio cassettes featuring motion picture soundtracks; prerecorded video cassettes featuring animated motion pictures; prerecorded audio tapes featuring motion picture soundtracks; prerecorded video tapes featuring animated motion pictures; prerecorded DVDs featuring animated motion pictures; prerecorded CDs featuring music and motion picture sound tracks; multimedia software recorded on CD-ROM featuring music, motion picture soundtracks and animated motion pictures; and prerecorded DVDs featuring music and motion picture sound tracks; prerecorded computer software programs featuring music and motion picture sound tracks; interactive multimedia software programs containing motion pictures for entertainment; interactive multi-media software for playing games; magnets and sunglasses.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; including paper party decorations; paper party supplies, namely, paper napkins, paper place mats, giftwrapping paper and paper gift wrapping ribbons, paper gift wrap bows, paper table cloths and paper party bags; children's activity books, children's storybooks, comic books, coloring books, book marks, loose leaf binders, stationery-type portfolios, wire-bound notebooks, note pads or writing pads, diaries, daily planners, calendars, scrapbook albums, sketchbook albums, photograph albums, sticker albums, stickers, decals, stamp pads or inking pads, rubber stamps, heat applied appliques in the form of decals made of paper, temporary tattoos, slateboards for writing, pencils, pens, pencil erasers, decorative pencil-top ornaments, pen cases and pencil cases, pen boxes and pencil boxes, pencil sharpeners, chalk, markers, posters, postcards, trading cards, greeting cards, pennants made of paper, painting sets for children; arts and crafts paint kits; study kits, consisting of pencil erasers, drawing rulers, pencil sharpeners and pencil case; stationery packs consisting of writing paper, envelopes, markers, and stencils; and activity kits consisting of stickers and rubber stamps.

Class 41: Entertainment services in the nature of an animated television series.

EUTM No 9 454 431 DREAMWORKS KUNG FU PANDA

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent put forward the following arguments:

“DreamWorks Animation is a U.S. animation studio that for more than twenty years has been creating high-quality entertainment, including CG animated feature films, television specials and series and live entertainment properties, meant for audiences around the world. The Kung Fu Panda movie to which the opposing marks refer, is an animated film that tells the story of a panda named Po, who lives in the Valley of Peace, a fictional place in ancient China, and who, while working at the noodle restaurant of his goose adoptive father, Mr. Ping, dreams of becoming one of the five Kung Fu warriors. The movie, which was released in 2008, became a huge box-office hit in the USA and in the rest of the world, including Europe, with takings of more than 630 million dollars. This success was repeated with the second and third instalments of the movie, with Kung Fu Panda 2 (2011) grossing more than 660 million dollars and Kung Fu Panda 3 (2016) grossing 518 million dollars.”

On 07/12/2016 the opponent submitted the following evidence:

Information on box-office revenues by country for the movies ‘Kung Fu Panda’, ‘Kung Fu Panda 2’ and ‘Kung Fu Panda 3’, taken from Box Office Mojo (http://www.boxofficemojo.com/). Highlighted among these figures are the figures for European Union countries in 2008, 2011 and 2016, ranging from USD 200 000 (Bulgaria) to USD 39 000 000 (United Kingdom). The figures are also supported by data from the online database Internet Movie Database (http://www.imdb.com/) and the movie data website The Numbers (http://www.the-numbers.com/);

Press clippings (including the famous newspapers The Guardian and The New York Times) on the worldwide box-office success of the ‘Kung Fu Panda movies’;

Document form Imdb.com on nominations and wins of ‘Kung Fu Panda’/’2’/’3’ in award ceremonies such as the Academy Awards, the Golden Globes, the Annie Awards, the Italian Online Movie Awards, the National Movie Awards in the UK, etc;

PDF document prepared by the opponent with information on licensing agreements for merchandise, promotions and partnerships in relation to the ‘Kung Fu Panda’ movies. As far as European Union Member States are concerned, the agreements cover promotions and merchandise, such as games, clothing, paper goods, themed environments, meat-poultry products, ceramics, clothing, baked goods, cookies, pastries, chocolate eggs, candy, confectionery, etc;

Advertisements for the ‘Kung Fu Panda’ movies in shopping centres, on bus stops, buildings, buses, escalators, revolving doors, etc. taken in European Union countries, as it is clearly visible from their surroundings;

Dossier with photographs of a large variety of products with ‘Kung Fu Panda’, from toothpaste to toys;

Articles about the ‘Dreamworks Magazine’ debuting in Italy in 2010 with Dreamworks animated characters such as ‘KUNG FU PANDA’; about the release of ‘KUNG FU PANDA’ videogames; about the CD ‘KUNG FU PANDA 3 – Music from the motion picture’; screenshot on Amazon.es regarding the sale of such a CD for EUR 14,90; screenshot from an unspecified website in English/Spanish selling ‘Kung Fu Panda 3’ on CD and DVD;

Screenshot dated in 2016 of promotional material at the ‘Shrek Adventure London’ for the new ‘Kung Fu Panda Academy’;

Screenshot of a shop display of ‘Kung Fu Panda’ videogames, according to the opponent in France;

Screenshot of ‘Best buy’ offering ‘Kung Fu Panda 2 3D Blu-Ray’ combo pack for USD 22.99;

Images of promotions of supermarket installations carried out in partnership with companies from a wide variety of sectors and particularly with food sector brands such as Kinder Surprise, Burger King, McDonald’s, Nesquik, Chocapic, Bonduelle, Traditions d’Asie, Wonton Food Inc., etc.;

Information on the competition organised by the international airline Hainan Airlines, and the winning Kung Fu Panda design used on a Boeing airliner;

Promotion of the SKY broadband service with the image of ‘Kung Fu Panda’ characters;

Advertisements broadcast during the 2016 Superbowl with ‘Kung Fu Panda’ characters;

DreamWorks’ partnership with Public Service Advertisements (PSAs) aiming to inspire men to commit to responsible fatherhood and involvement in the care of their children;

Google search results (16 million hits for ‘Kung Fu Panda’), press articles and reviews on the ‘Kung Fu Panda’ movies;

Wikipedia articles on ‘Kung Fu Panda’ movies, press articles on the movie premiers, reviews;

United States Copyright Office certificates of registrations for the animated movies KUNG FU PANDA, KUNG FU PANDA 2 AND KUNG FU PANDA 3, dating from 2008, 2001 and 2016, respectively.

The opponent argues that ‘considering the exploitation of the title KUNG FU PANDA which has already been carried out by the opponent and its licensees through a wide range of merchandise, it will not seem unnatural for the relevant consumer to assume that there is some connection between the services of the applicant and the source of the film. In fact, it is quite common to see authorisation given for the opening of themed restaurants or hotels in which the ambience and decoration is inspired by the storyline and characters of a given movie or cinematographic genre.’

The opponent furthermore argues that ‘it would not be difficult to imagine, for example, DreamWorks deciding to open a restaurant or hotel at its Shrek’s Adventure attraction in London where families could stay overnight or eat in the company of their favourite characters or enjoy oriental-style dishes such as those enjoyed by Po and his friends in the movies’.

It should be pointed out that it is settled case-law that the essential function of a trade mark is to identify the commercial origin of goods or services, thus enabling the consumer who purchases them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (Case T‑360/00 Dart Industries v OHIM (UltraPlus) [2002] ECR II‑3867, paragraph 42, and Case T‑242/02 Sunrider v OHIM (TOP) [2005] ECR II‑2793, paragraph 88). (30/06/2009, T-435/05, Dr No., ECLI:EU:T:2009:226, § 23)

In addition, it must be noted that ‘the distinction between title and trade mark is not ‘unrealistic and artificial’. The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other (judgment of 21 October 2008 in Case T‑73/06 Cassegrain v OHIM (Shape of a bag), not published in the ECR, paragraph 32). Therefore, even if the title of a film can be protected pursuant to certain national laws as an artistic creation independent of the film itself, it cannot automatically enjoy the protection afforded to indicators of commercial origin, since only signs which develop characteristic trade mark functions may enjoy that protection.’ (30/06/2009, T-435/05, Dr No., ECLI:EU:T:2009:226, § 26)

Moreover, even if the documents filed prove that ‘Kung Fu Panda’ has obtained an important success among European consumers as a film, this recognition cannot be transferred ipso facto to any of the opposing goods and services. (R 1506/2009-4 – ZORORI / ZORRO et al § 25).

Use of the earlier marks on cereal, candy or other foodstuffs is not suitable evidence to prove reputation because the earlier marks are not registered for these goods. Therefore, the fact that the opponent concluded license agreements for such merchandising in the European Union is irrelevant.

The earlier marks cover scientific, audio-visual, electronic apparatus in Class 9, clothing, footwear, headgear in Class 25, toys, apparatus for playing games, sports equipment, amusement and novelty items, as well as certain articles for Christmas trees in Class 28. The opponent, however, failed to provide evidence of sales of any of these goods in the relevant territory.

The opponent refers to the conclusion of licensing agreements for promotion and merchandising within the European Union, for clothing, toys, paper goods. However, the only supporting evidence is an internal table prepared by the opponent listing license agreements for merchandising and promotion, and some images of products displayed in supermarkets. This evidence is clearly insufficient to establish the extent of use, and is particularly inapt to allow for conclusions to be drawn on the degree of recognition of the earlier marks for the goods at hand.

In the case of prerecorded CDs featuring music and motion picture sound tracks or children's activity books, children's storybooks, comic books, the signs are not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the ‘KUNG FU PANDA’ films, or a comic book about the character of ‘KUNG FU PANDA’. (30/06/2009, T-435/05, Dr No., ECLI:EU:T:2009:226, § 27)

As far as goods in Class 9 are concerned, there is no evidence of sales of goods in the relevant territory. Significant box office revenues merely indicate the commercialisation of the movies in movie theatres, i.e. ‘KUNG FU PANDA’ films being shown in theatres across Europe, as also demonstrated by the posters submitted by the opponent. However, such evidence rather refers to entertainment services in Class 41, because the purchase of a movie ticket only allows for a one-time movie experience, but does not amount to buying a tangible good, for example the movie in recorded form.

Entertainment services in Class 41 are only covered by the opponent’s earlier mark ‘KUNG FU PANDA: LEGENDS OF AWESOMENESS’ and they are notably entertainment services in the nature of an animated television series. The use of the term ‘in the nature of’ in the specification is exclusive and restricts the scope of protection only to the specifically listed services, notably animated television series. The documents submitted however only demonstrate significant revenues and promotion of the three ‘Kung Fu Panda’ movies, but not of an animated television series.

Furthermore, as explained above, evidence of showing movies in movie theatres cannot be extrapolated to demonstrate the actual sales of items in Class 9 with the movie as recorded content, let alone the marks’ reputation for those goods, without supporting material in this regard. A screenshot from an unspecified website regarding the sale of a ‘KUNG FU PANDA 3’ DVD, an article about the release of ‘KUNG FU PANDA’ videogames and a store display of video games in France, or a screenshot from a website of Best Buy, a company no longer active in the relevant market, is clearly not sufficient to allow for the conclusion that the trade mark was well established on the marketplace of prerecorded video cassettes featuring animated motion pictures, prerecorded DVDs featuring animated motion pictures or video game cartridges, video game cassettes.

While in the present case, due to the absence of evidence on actual marketing of goods under the mark, it is not necessary to make such an analysis, it is also worth mentioning that according to settled case law a title on a DVD, for example, does not necessarily indicate the commercial origin of the films, but rather their artistic origin. (30/06/2009, T-435/05, Dr No., ECLI:EU:T:2009:226, § 25).

It is clear that the opponent’s movies have generated significant revenues, including in the relevant territory, and the opponent has made investments and marketing effort to promote these movies. However, the protection provided for by copyright, for example, cannot be relied on in opposition proceedings, but only in proceedings for a declaration of invalidity. (30/06/2009, T-435/05, Dr No., ECLI:EU:T:2009:226, § 41).

Based on the above, it must be concluded that the evidence submitted by the opponent failed to demonstrate that the earlier marks have a reputation for the particular goods and services claimed.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDAS

Ioana MOISESCU

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.

Kung Food PANDA | Decision 2708207

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