PAUL WALKER | Decision 2748310
Date Published: Sep 24, 2017
OPPOSITION No B 2 748 310
CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)
a g a i n s t
The Executor of the Estate of Paul William Walker IV comprising Paul W. Walker III, 11400 West Olympic Blvd. 9th Floor, Los Angeles, California 90064, United States of America (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).
On 29/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 748 310 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 321 243, namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 984 026. 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 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
The contested goods are the following:
Class 25: Clothing, t-shirts, hats, sweatshirts, hoodies, jackets, footwear, headgear.
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.
Clothing, footwear, headgear are identically contained in both lists of goods.
The contested T-shirts, sweatshirts, hoodies, jackets are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are 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.
The degree of attention is considered to be average.
- The signs
Paul | PAUL WALKER |
Earlier trade mark | Contested sign |
The relevant territory is the Benelux countries: Belgium, the Netherlands and Luxembourg.
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 signs are both word marks, namely ‘Paul’ (earlier mark) and ‘PAUL WALKER’ (contested sign). It should be noted that it is the words as such that are protected and not their written forms. Therefore, it is irrelevant whether the signs are written in upper or lower case letters or in a combination thereof.
The word ‘PAUL’, present in both marks, is a widely known male name throughout the relevant territory and will be perceived as such by the relevant public. Consequently, the contested sign, ‘PAUL WALKER’, will be perceived as a first name and a family name.
Regarding the distinctive elements of the marks, both words, ‘PAUL’ and ‘WALKER’, are distinctive to an average degree in relation to the goods in question. However, it should be noted that, contrary to the opponent’s argument, family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. Therefore, consumers tend to pay more attention to family names than to first names. Moreover, the family name ‘Walker’ is not common in the Benelux countries. In the view of the Opposition Division, ‘Walker’ will be more striking for the relevant public than the first name ‘Paul’.
Visually and aurally, the signs are similar to the extent that they coincide in the word ‘PAUL’. It constitutes the earlier mark in its entirety and is the first element of the contested sign. However, the signs differ in the second verbal element, ‘WALKER’, of the contested sign, which has no counterpart in the earlier mark and will create significant visual and aural differences between the signs.
Therefore, the signs are visually and aurally similar to a low degree.
Conceptually, reference is made to the previous assertions regarding the words ‘PAUL’ and ‘WALKER’. The marks coincide in ‘PAUL’; however, the earlier mark will be perceived as referring to any person (some abstract unidentified person) named ‘Paul’, whereas the additional element ‘WALKER’ in the contested sign provides a narrower determination of the person, and therefore the contested sign will be perceived as referring to a particular person named ‘Paul Walker’.
Therefore, the signs are conceptually similar to a low 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
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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The signs are visually, aurally and conceptually similar to a low degree. Contrary to the opponent’s arguments, the fact that the signs have in common the first name ‘Paul’ and that this word is at the beginning of the contested sign is not sufficient for the relevant public to be confused with regard to the origin of the goods. Admittedly, the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow. However, that is only a general rule and does not apply in this case (14/10/2003, T-292/01, Bass, § 50; 06/07/2004, T-117/02, Chufafit, § 48). This is because, as previously stated, not only is the coinciding element the least striking element in the contested sign, but the additional element, ‘WALKER’, recognised as a surname, has a higher intrinsic value as an indicator of the origin of the goods and leads to a sufficient distance with respect to the earlier mark.
As a direct consequence, consumers will focus their attention not on the first name, but rather on the surname, designating a specific ‘Paul’ from the family ‘Walker’, as opposed to any other man named ‘Paul’. This difference is of particular importance, since it puts conceptual distance between the signs and will therefore help consumers to differentiate between them. This is because common experience shows that the same first names may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some kind of association between persons (the identity of the persons or a family link).
In addition, the applicant submitted various documents in Dutch, English, French, German and Spanish and according to which Paul Walker is a late American actor, an icon of Hollywood movies. Therefore, it is clear that the name ‘Paul Walker’ belongs to a real person and may be recognised as such by the relevant consumers.
Consequently, it can be concluded that the differences between the signs under comparison are sufficiently striking and outweigh the commonalities to such an extent that a likelihood of confusion, including a likelihood of association, on the part of the relevant public with an average degree of attention can safely be excluded, even in relation to the identical goods. Therefore, in the view of the Opposition Division, the relevant public will not be mistaken with regard to the origin of the goods in question when encountering goods bearing the marks ‘Paul’ (earlier mark) or ‘PAUL WALKER’ (contested sign).
The opponent refers to previous decisions of the Office (i.e. 31/10/2016, B 2 594 573, Chiara Ferragni, and 25/04/2017, B 2 703 596, Nadine Daro) to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as they concern different factual circumstances (i.e. different first names and family names as well as different territories). Therefore, this argument has to be set aside.
In addition, the opponent argues that the name ‘Paul’ is not a popular given male name in the Netherlands nowadays. This does not mean, however, that the name is not known in the Benelux countries. The name ‘Paul’ is one of the biblical names and is deeply rooted in European and international culture.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.
Therefore, 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.
The Opposition Division
Rasa BARAKAUSKIENE | Michal KRUK | Loreto URRACA LUQUE |
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.