TWINTOUCH | Decision 1645244 - MAT Communication Solutions S.A. v. KIDO SPORTS CO. LTD
Date Published: Oct 1, 2017
OPPOSITION No B 1 645 244
Mat Communication Solutions S.A., Calle Sant Sebastià, 202 Bis, 08223 Terrassa (Barcelona), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Kido Sports Co. Ltd, 657-3 Kido Bld. Deungchon-dong, Gandeo-gu, Seoul 157-030, Republic of Korea (applicant), represented by Michel Mall, 39, rue du Maréchal Foch, 67000 Strasbourg, France (professional representative).
On 19/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 645 244 is upheld for all the contested goods, namely:
Class 9: Protective helmets.
2. European Union trade mark application No 7 469 182 is rejected for all the contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 7 469 182, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 6 404 222. 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 European Union trade mark registration No 6 404 222.
- The goods
The goods on which the opposition is based are the following:
Class 9: Protective helmets, protective helmets for sports, motorcycle helmets.
The contested goods are the following:
Class 9: Protective helmets.
Protective helmets are identically contained in both lists of goods.
- 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 average.
- The signs
TWIINS | |
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 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.
As regards the contested sign, 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).
The elements ‘TWIINS’ of the earlier mark and ‘Twin’ of the contested sign are meaningless in some countries where English is not understood. However, thanks in particular to the French expression ‘la French touch’, referring to a typically French style, part of the French-speaking public will perceive the component ‘Touch’, placed after the word ‘Twin’, as an equivalent of the French word ‘touche’ with the meaning of ‘having a particular way of doing something’. Although this term may suggest the idea of an added value, it does not really affect to its distinctive character because this reference is indirect and in no way it describes any characteristics of the goods. The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public in the relevant territory.
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.
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).
Visually, the signs coincide in the letters ‘TWI*N’. The earlier sign is a word mark and, thus, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case letters. However, the signs differ, as regards the earlier mark, in the fourth and last letters, namely ‘I’ and ‘S’. As regards the contested sign, the signs differ in the word ‘Touch’ and in the figurative components of the contested sign, namely the colours and the stylisation of the typeface, considered to have a lesser impact. Indeed, the fancy typeface of the contested sign is not particularly elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish. Therefore, the signs are visually similar to a below average degree.
Aurally, taking into account that, in French, the second letter ‘I’ and the last letter ‘S’ of the earlier mark will not be pronounced, the signs coincide in the sound of ‘TWIINS’ of the earlier mark and ‘TWIN’ of the contested sign. The pronunciation of the signs differs in the sound of the additional verbal component ‘TOUCH’ of the contested sign. As the additional figurative components of the contested sign are not subject to a phonetic assessment, the signs are considered aurally similar to an average degree.
Conceptually, for part of the French-speaking public, only the contested sign conveys a meaning. For those consumers, the signs are not conceptually similar. For the remaining French-speaking consumers, neither of the signs has a meaning. Since a conceptual comparison is not possible for these consumers, the conceptual aspect does not influence the assessment of the similarity of the signs.
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
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
The goods are identical and target the public at large whose degree of attention is average. The signs are visually similar to a below average degree and aurally to an average degree. The coincidences in the contested sign are placed in the initial part that first catches the attention of the reader. Conceptually, for some French-speaking consumers, the signs are not conceptually similar and, for others, the conceptual aspect has no impact.
Although the additional component ‘TOUCH’ of the contested sign has been considered distinctive, it must be pointed out that it can be associated by some French-speaking consumers with the meaning of a small addition or detail that makes the goods ‘TWIN’ particular. In that sense, these consumers will centre more their attention to the component ‘TWIN’ of the contested sign.
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, the identity between the goods offsets the lesser degree of similarity between the marks.
Finally, 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). Moreover, 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 covered are from the same or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the French−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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 6 404 222. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark No 6 404 222 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 right 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.
The Opposition Division
Sandra IBAÑEZ | Benoit VLEMINCQ | Frédérique SULPICE |
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.