WOW WORLD OF WONDERS | Decision 2680687 - FUTURA LINE INDUSTRY S.r.l. v. Lihua Luo
Date Published: Sep 28, 2017
OPPOSITION No B 2 680 687
Futura Line Industry S.R.L., Località Ceraso Zona Industriale ASI, 81025 Marcianise (CE), Italy (opponent), represented by Manzella & Associati S.R.L., Via dell’Indipendenza, 13, 40121 Bologna, Italy (professional representative)
a g a i n s t
Lihua Luo, No. 48, Team 7, Bolin Village, Yunlong Town, Jianyang City, Sichuan Province 0000, People’s Republic of China (applicant), represented by Knauthe Rechtsanwälte Partnerschaft mbB, Leipziger Platz 10, 10117 Berlin, Germany (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 680 687 is partially upheld, namely for the following contested goods:
Class 16: Stationery and educational supplies; paper stationery.
2. European Union trade mark application No 14 911 655 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 911 655, namely against all the goods in Class 16. The opposition is based on Italian trade mark registration No 1 651 354. 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 16: Blotters; handkerchiefs of paper; face towels of paper; toilet paper; towels of paper; paper; parchment paper; blotting paper; table napkins of paper; table linen of paper; packaging containers of paper; absorbent sheets of paper or plastic for foodstuff packaging; paper sheets [stationery]; paper pads for changing diapers; garbage bags of paper or of plastics; boxes of paper; coasters of cardboard; covers of paper for flower pots; filter paper; paper coffee filters; coasters of paper; bibs of paper; tablecloths of paper; tablemats of paper; drawer liners of paper, perfumed or not; paper for use in the manufacture of surgical drapes.
The contested goods are the following:
Class 16: Stationery and educational supplies; paper stationery; cards; posters; printed matter; photographs.
The contested stationery supplies; paper stationery include, as broader categories, the opponent’s paper sheets [stationery]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical.
The contested educational supplies overlap with the opponent’s paper sheets [stationery] to the extent that the former can include paper educational supplies. Therefore, they are identical.
The contested printed matter refers to printed material produced by printers or publishers, such as books, magazines, booklets, brochures and other publicity materials. The fact that printed matter is made of paper is not sufficient to find it similar to the opponent’s goods, which are mainly paper and various goods made of paper. The goods have different purposes and do not target the same public. They do not have the same distribution channels and they are not complementary or in competition. The same reasoning applies to the remaining contested cards; posters; photographs. Therefore, they are all dissimilar to the opponent’s 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
Earlier trade mark | Contested sign |
The relevant territory is Italy.
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 right consists of the word ‘WOW’ followed by an exclamation mark, in a white stylised font on a purple background. The mark as a whole will be associated with an expression of surprise or sensational success by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The contested sign consists of the element ‘WOW’ in green letters outlined in black, where the ‘O’ is a cartoon image of the earth, and the verbal elements ‘World of Wonders’ underneath in standard black upper case letters. The element ‘WOW’, by virtue of its position and size, is the dominant element in the sign, which will be associated with the meaning given above and is distinctive for the relevant goods. The second element, ‘World of Wonders’ will not be understood by the relevant public and is also distinctive.
Visually, the signs coincide in the distinctive word ‘WOW’. They differ in the typeface and colours used to depict this word, as well as in the additional elements of the signs, as described above, some of which occupy a secondary position in the contested sign.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs by the relevant public will be identical with respect to the coinciding distinctive word ‘WOW’, which is the only pronounceable element in the earlier right, since the exclamation mark merely increases the intensity of the expression. The pronunciation of the signs differs in the element ‘World of Wonders’ in the contested sign, which has no counterpart in the other mark, in the unlikely event that this element will be pronounced, taking into account that it will not be understood by the relevant public.
Therefore, the signs are aurally similar to a high degree, if not identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, and, given that the relevant public will not understand ‘World of Wonders’, it will not perceive the word ‘WOW’ as an acronym of that phrase.
Therefore, the signs are conceptually similar to a high degree.
- 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
According to settled case-law, the risk that the public might believe that the goods or services come from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
In the present case, the marks are similar to the extent that they both include the element ‘WOW’, which is the only word in the earlier mark and the dominant one in the contested sign. The main differences lie in the different graphic depictions of this element in the signs, the additional exclamation mark in the earlier right and the additional figurative element replacing the letter ‘O’ and the element ‘World of Wonders’ in the contested sign.
However, 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). This is the scenario resulting from the findings in the present case, in which the signs are aurally and conceptually similar to a high degree.
Therefore, the Opposition Division is of the view that the similarities between the signs are sufficient to outweigh the differences. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way, given the identity between the relevant goods (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Benoit VLEMINCQ | Begoña URIARTE VALIENTE | Martina GALLE |
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.