DohVinci | Decision 2334533 - Brigitte Müller v. Hasbro, Inc.
Date Published: Oct 11, 2017
OPPOSITION No B 2 334 533
Brigitte Müller, Rotthauser Str. 91, 45884 Gelsenkirchen, Germany (opponent)
a g a i n s t
Hasbro, Inc., 1027 Newport Avenue, Pawtucket, Rhode Island 02862, United States of America (applicant), represented by Gill Jennings & Every LLP, The Broadgate Tower, 20 Primrose Street, London EC2A 2ES, United Kingdom (professional representative).
On 24/03/2017, the Opposition Division takes the following
1. Opposition No B 2 334 533 is upheld for all the contested goods.
2. European Union trade mark application No 12 412 251 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 412 251. The opposition is based European Union trade mark registration No 5 631 304. 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: Paper, cardboard and goods made from these materials, included in Class 16; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging, included in Class 16; Printers’ type; Printing blocks.
Class 28: Toys; Decorations for Christmas trees.
The contested goods are the following:
Class 16: Paper, cardboard, not included in other classes; printed matter; photographs; stationery; artists’ materials; paint brushes; instructional and teaching material (except apparatus); stickers; modeling clay; arts and craft kits.
Class 28: Toys, games and playthings.
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 16
Paper, cardboard, not included in other classes; printed matter; photographs; stationery; artists’ materials; paint brushes; instructional and teaching material (except apparatus) are identically contained in both lists of goods (albeit using slightly different wordings).
The contested stickers are included in the broad category of the opponent’s stationery. Therefore, they are identical.
The contested modeling clay; arts and craft kits are included in the broad category of the opponent’s artists’ materials. Therefore, they are identical.
Contested goods in Class 28
Toys are identically contained in both lists of goods.
The contested games and playthings are similar to the opponent’s toys. These goods have the same purpose, namely providing pleasure and amusement. They can have the same producers, end users and distribution channels.
- 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 is considered average.
- The signs
Earlier trade mark
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of economy of procedure, the Opposition Division finds it appropriate to focus the comparison of the signs on, for instance, the Spanish-speaking part of the public.
The earlier mark is a figurative mark that consists of the verbal elements ‘DA VINCI’, written in stylised upper case letters and depicted on a single line, inclined slightly upwards from the left.
The contested sign is also a figurative mark and consists of the verbal elements ‘Doh Vinci’, depicted in stylised letters and displayed on two lines, in which the first letters, ‘D’ and ‘V’, of each word are upper case.
The conflicting signs have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
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). The figurative elements confined to the stylised depictions of the verbal elements in both signs are not of a nature that will convey any memorable semantic content, nor will they affect the pronunciation of the signs. Moreover, consumers are well accustomed to trade marks in which a verbal element is embellished with a fanciful typeface.
Visually, both signs are composed of two verbal elements, and they coincide in the first letters, ‘D’, of their first elements and in their second elements, ‘VINCI’. However, they differ in the remaining letters of their first elements, ‘*A’ in the earlier mark and ‘*oh’ in the contested sign. The signs differ further in the stylisation and arrangement (over one or two lines) of their verbal elements, as described above, but these differences will have a limited impact.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of their first letters, ‘D’, and the syllables ‛VIN-CI’, present identically in both signs. The pronunciation differs in the sound of their second letters, ‘A’ of the earlier mark and ‘O’ of the contested sign (since the third letter, ‘H’, of the contested sign is silent). Therefore, the signs, both of which consist of three syllables, ‘DA-VIN-CI’ and ‘Doh-Vin-ci’, have very similar rhythms and intonations.
Therefore, since the pronunciation of the signs differs only in the sound of their second letters, ‘A’ versus ‘O’, they are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the earlier mark as a reference to the famous artist Leonardo da Vinci, an Italian historic figure of arts and sciences, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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).
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).
The goods are partly identical and partly similar. The consumer’s degree of attention is average and the earlier mark has a normal degree of distinctiveness.
The signs are visually similar to an average degree, since they coincide in most of their letters and differ in their second letters, ‘A’ in the earlier mark and ‘O’ in the contested sign (followed in the latter by an additional letter, ‘H’), and in their stylisations and arrangements, as seen above. Aurally, the signs are highly similar, since they differ only in the sound of their second letters, ‘A’ versus ‘O’, and both signs consist of three syllables, ‘DA-VIN-CI’ and ‘Doh-Vin-ci’, which, therefore, results in the signs having very similar rhythms and intonations. The signs are not conceptually similar.
The applicant emphasises the importance of the beginnings of the conflicting signs for the consumer’s perception of the signs. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, however, the beginning of the signs is the shortest element in both, namely verbal elements consisting of two letters, ‘DA’, in the earlier mark, and three letters, ‘Doh’, in the contested sign, the first letters of which, ‘D’, coincide. Since the signs also coincide in their second elements, ‘VINCI’, it is considered that the overlapping six-letter/sound sequence, ‘D* VINCI’, clearly outweighs the differences that are confined to a few letters in the middle and the stylisations and arrangements of the signs.
The applicant claims that consumers will associate the mark applied for with its other trade mark ‘Play-Doh’, with which they are familiar, and will perceive the former as a brand extension of the latter. To support this claim, the applicant submits evidence with details of the use of the trade mark ‘Play-Doh’ and of the products sold under the mark applied for. However, these documents and the information provided regarding some sales figures for products sold under the trade mark ‘Play-Doh’, between 1955 and 2005, are not conclusive and do not allow the Opposition Division to find that the average consumer will recognise and establish a link between the mark applied for ‘Doh Vinci’ and the abovementioned trade mark ‘Play-Doh’, which is not the subject of the present proceedings.
Furthermore, it is important to recall that the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
Consequently, the applicant’s argument must be set aside.
In its observations, the applicant also argues that the earlier trade mark has a limited distinctive character given that there are many trade marks that include ‘Da Vinci’. In support of its argument, the applicant refers to several European Union trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Da Vinci’. Under these circumstances, the applicant’s claims must also be set aside.
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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 631 304. It follows that the contested trade mark must be rejected for all the contested goods.
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Marta GARCÍA COLLADO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.