TOROTOP | Decision 2747007 - GRUPO OSBORNE S.A. v. ZHEN ZHANG
Date Published: Oct 1, 2017
OPPOSITION No B 2 747 007
Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
Zhen Zhang, Floor 6, Building A7, Wangheng Industrial Park, Fuguang Village, Nanshan District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 - Local 1 ‘Llopis & Asociados’, 03012 Alicante, Spain (professional representative).
On 07/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 747 007 is upheld for all the contested goods, namely:
Class 9: Smartwatches; Smart goggles; Navigational instruments; Wearable activity trackers; Covers for smartphones; Battery chargers; Cases for smartphones; DVD players; Headphones; Portable media players; Video recorders; Cameras [photography]; Computers.
Class 14: Watch bands; straps for wristwatches; Watch chains; Watches; Watch cases; Chronographs [watches]; Chronometric instruments; Chronometers; Clocks and watches, electric; Jewelry ornaments.
2. European Union trade mark application No 15 254 006 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 254 006, namely against all the goods in Classes 9 and 14. The opposition is based on:
- European Union trade mark registration No 8 310 518 for goods in Class 9,
- European Union trade mark registration No 8 310 534 for goods in Class 14.
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:
European Union trade mark registration No 8 310 518
Class 9: Spectacles and sunglasses; 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.
European Union trade mark registration No 8 310 534
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
The contested goods are the following:
Class 9: Smartwatches; smart goggles; navigational instruments; wearable activity trackers; covers for smartphones; battery chargers; cases for smartphones; DVD players; headphones; portable media players; video recorders; cameras [photography]; computers.
Class 14: Watch bands; straps for wristwatches; watch chains; watches; watch cases; chronographs [watches]; chronometric instruments; chronometers; clocks and watches, electric; jewelry ornaments.
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.
Contested goods in Class 9
Computers are identically contained in the lists of goods of the contested sign and of earlier EUTM No 8 310 518.
The contested battery chargers are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.
The contested DVD players; headphones; portable media players; video recorders; cameras [photography] are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.
The contested smartwatches; smart goggles; navigational instruments; wearable activity trackers are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.
The contested covers for smartphones; cases for smartphones target the same relevant public as the opponent’s data processing equipment and computers. It is clear that a link exists between these goods and they can be considered complementary to each other. These goods are usually produced by the same manufacturers, and they can be sold through the same distribution channels. Therefore, the goods are similar.
Contested goods in Class 14
Chronometric instruments are identically contained in the lists of goods of the contested sign and of earlier EUTM No 8 310 534.
The contested jewelry ornaments are included in the broad category of or overlap with the opponent’s jewellery. Therefore, they are identical.
The contested watch bands; straps for wristwatches; watch chains are included in, or overlap with, the broad category of the opponent’s goods in precious metals or coated therewith, not included in other classes. Therefore, they are identical.
The contested watches; chronographs [watches]; chronometers; clocks and watches, electric are included in the broad category of the opponent’s horological and chronometric instruments. Therefore, they are identical.
The contested watch cases have the same distribution channels as the opponent’s horological and chronometric instruments. These goods are usually produced by the same manufacturers, and they target the same relevant public. Therefore, the goods are similar.
- 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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
Concerning the goods in Class 14, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.
- The signs
Earlier trade marks | 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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public because it understands the meaning of the verbal element ‘TORO’.
The opponent’s marks are figurative marks consisting of a black stylised image of a bull, the word ‘TORO’ in fanciful upper case letters and, underneath those two elements, the word ‘OSBORNE’ in much smaller standard upper case letters. The bull device and the word ‘TORO’ are the dominant elements of the mark, given their eye-catching position and size.
The contested sign is also a figurative mark, consisting of the letters ‘TOROTOP’ in standard upper case letters. The relevant public will naturally dissect the mark and read ‘TORO’ and ‘TOP’ as separate words. The relevant consumers, when perceiving a verbal sign (or a verbal part of a sign, as in this case), 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). This is particularly likely to be the case here, given that the coinciding element ‘TORO’ will be understood and is the first part of the contested sign. It is followed by the common English word ‘TOP’, meaning ‘the best or choicest part; the cream, flower, pick’ (Oxford English Dictionary 18/05/2017), and is therefore weak, as it conveys a laudatory meaning.
Both marks contain the element ‘TORO’, understood by the Spanish-speaking public to mean ‘bull’, and this is reinforced in the earlier marks by the device element depicting a bull. The remaining element, ‘OSBORNE’, in the earlier marks is meaningless in the relevant territory and thus has a normal degree of distinctiveness.
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).
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.
In the earlier marks, all of the elements are distinctive, while the word ‘TORO’ is dominant due to its position and size within the marks. In the contested sign, the beginning, ‘TORO’, is the distinctive part.
Visually, the signs coincide in the distinctive element ‘TORO’. Furthermore, this is the dominant element of the earlier marks, while in the contested sign it is placed at the beginning. The signs differ in their typefaces, and in the additional letters ‘TOP’ in the contested sign and the additional word element ‘OSBORNE’ in the earlier marks, which are in secondary positions and will have less impact than the marks’ other elements. Since the earlier signs’ dominant verbal element is identical to the beginning of the contested sign, thus creating a strong visual association between them, the signs must be considered visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘TORO’ and differs in their additional word elements, ‘OSBORNE’ in the earlier marks and ‘TOP’ in the contested sign. Since this aural coincidence results from the earlier sign’s dominant and distinctive element and the contested sign’s first and distinctive part (and the rest of each sign is considered weak), the signs are considered aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the concept of a bull. In fact, the distinctive concept of a bull can be perceived in a rather emphatic way in both signs. The word ‘TOP’ in the contested sign also conveys the laudatory concept of being ‘the best’, but it is considered a weak element and therefore has a lesser impact on the conceptual comparison.
As a result, the signs are considered conceptually highly similar.
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 marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
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).
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).
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.
In the present case, the goods are identical or similar and the signs convey the concept of a bull. In addition, they have visual and aural similarities, in the form of the word ‘TORO’, while most of their differing elements will have a limited impact on the relevant public, given their smaller size, less significant position and/or weak distinctive character.
Consequently, in spite of the differences in some of the word elements, there is a likelihood of confusion because the visual, aural and, in particular, conceptual coincidences are overwhelming. This is equally true for those of the public with a higher degree of attention.
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, and there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 8 310 518 and No 8 310 534. 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
Sigrid DICKMANNS | Magnus ABRAMSSON | Claudia MARTINI |
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.