(Trade mark without text) | Decision 2350208 - JIE BAI v. Adler Europe Holding, Ltd.
Date Published: Oct 1, 2017
OPPOSITION No B 2 350 208
Jie Bai, C/Las Panzas 85, 28860 Paracuellos, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)
a g a i n s t
Adler Europe Holding Ltd., 205 Maywood Ave, Maywood, New Jersey 07607, United States of America (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).
On 13/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 350 208 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 533 774. The opposition is based on European Union trade mark registration No 12 391 165. The opponent invoked Article 8(1)(a) and (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 and services
The services on which the opposition is based are the following:
Class 35: Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.
Class 36: Customs brokerage.
Class 39: Transportation, packaging and storage of goods.
The contested goods and services are the following:
Class 9: Data storage devices, blank USB flash drives; Calculators; Laser pointers; Light pens.
Class 16: Stationery; Printed matters and disposable paper products, catalogs in the field of personalized business gifts, calendars; Notebooks; Diaries; Writing and stamping implements and instruments, pens.
Class 18: Luggage, bags, wallets and other carriers; Tote bags; All-purpose carrying bags; Backpacks; Sport bags; Umbrellas; Traveling bags; Purses; Leather cases.
Class 21: Tableware; Mugs.
Class 35: Computerized on-line retail store services in the field of personalized business gifts, namely blank USB flash drives, calculators, laser pointers, light pens, stationery, printed matters and disposable paper products, catalogs in the field of personalized business gifts, calendars, notebooks, diaries, writing and stamping implements and instruments, pens; Computerized on-line retail store services in the field of personalized business gifts, namely luggage, bags, wallets and other carriers, tote bags, all-purpose carrying bags, backpacks, sport bags, umbrellas, traveling bags, purses, leather cases and mugs; Web-based catalog services featuring personalized business gifts, including blank USB flash drives, calculators, laser pointers, light pens, stationery, printed matters and disposable paper products, catalogs in the field of personalized business gifts, calendars, notebooks, diaries, writing and stamping implements and instruments, pens; Web-based catalog services featuring personalized business gifts, including luggage, bags, wallets and other carriers, tote bags, all-purpose carrying bags, backpacks, sport bags, umbrellas, traveling bags, purses, leather cases and mugs.
Some of the contested services are at least similar to some of the services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were similar to the opponent’s services.
- 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 relevant goods and services are directed at the public at large and at a more specialised public, with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price or nature of the purchased goods and/or services.
- 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).
The earlier mark contains a figurative element depicting a black bird facing right, and, beneath this figurative element, verbal elements consisting of two lines of text, namely the words ‘ZHI YANG’ on each line followed by, presumably, Chinese calligraphy, which will not be read or understood by the relevant public. The element ‘ZHI YANG’ has no meaning for the relevant public and would only be perceived as consisting of fanciful words.
The contested sign is a purely figurative mark comprising a depiction of two parts of a bird’s body – a head and a wing – in black, constituting a stylised depiction of a bird facing left.
All of the elements of both signs are distinctive and none of the elements in the earlier mark could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs are not similar. Even though they coincide in that they depict bird-related shapes, their contours are different. The birds’ heads are looking in opposite directions in the two signs, and the depiction of the bird in the earlier mark also includes, unlike that in the contested sign, the bird’s body and tail. The overall stylisation of the two devices in the signs is also different. Furthermore, the earlier mark contains additional distinctive verbal elements. Contrary to the opponent’s argument that the verbal elements, as they do not have a particular meaning for the relevant public, would be regarded as only secondary, 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).
Aurally, since the contested sign does not contain any verbal elements, the signs cannot be compared, as purely figurative signs are not subject to a phonetic assessment.
Conceptually, as described above, both signs convey the concept of a bird and no meaning is conveyed by the verbal elements of the earlier mark. Furthermore, at least a part of the relevant public would perceive the figurative elements in both signs as depicting birds of prey, since they have similarly shaped beaks. Therefore, the signs are conceptually similar to 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 services 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
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).
In the present case, for reasons of procedural economy, the Opposition Division did not undertake a full comparison of the goods and services and assumed that all of the contested goods and services were at least similar to the opponent’s services. The goods and services are directed at the public at large and at a more specialised public. The public’s degree of attention varies from average to high.
The signs are visually not similar, conceptually similar to an average degree and aurally incomparable. The signs coincide only in that they both depict birds of prey; however, the figurative elements are depicted in very different manners: the heads of the birds are looking in opposite directions and the contours of the shapes do not match. The contested sign also contains several distinctive verbal elements that are of a similar size to the figurative element of a bird, and to which the relevant consumers would pay at least as much of attention. As a result, the visual differences between the marks outweigh any conceptual similarities. Consequently, not even relevant consumers with only an average degree of attention in relation to the relevant goods and services assumed to be similar would perceive the contested mark as a variation of the earlier mark.
Considering all the above, there is no likelihood of confusion on the part of the public and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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
Sam GYLLING | Milda CERNIAUSKAITE | Michaela SIMANDLOVA |
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.