OPPOSITION No B 2 421 660

Juguetes Falomir, S.A., C/ Tuejar, 43, 46183 La Eliana (Valencia), Spain (opponent), represented by Leggroup, C/ Campoamor 13, 1º, 28004 Madrid, Spain (professional representative)

a g a i n s t

Epse Jouéclub Entente des Professionnels Spécialistes de L’enfant (Société Anonyme coopérative), 26 rue Roger Touton, Centre Commercial de Gros, 33000 Bordeaux, France (applicant), represented by Conny Knepper, 32 cours de l’Intendance, 33000 Bordeaux, France (professional representative).

On 25/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 421 660 is partially upheld, namely for the following contested goods and services:

Class 16: Notebooks and canvas for drawing, colouring and painting; Canvas for painting; Blackboards for writing and drawing; Colour and glitter gels (playthings); Modelling paste and accessories therefor; Modelling clay; Mandalas (playthings); Magnets (playthings); figurines of paper and cardboard; Moulds for creative leisure activities; Accessories for modelling and decorating creations (playthings).

Class 28: Toys; Toys; Creative leisure activities, in particular kits for creations made from salt dough (playthings); Potters’ wheels and accessories therefor (playthings); Pyrography kits (playthings); Moulding workshops and accessories therefor (playthings); toy and theatrical masks; Soap gemstones (playthings); Knitting workshops for children (playthings); Jewellery for children (playthings); Accessories for making jewellery for children (playthings); Scoubidou strings (playthings); Figurines of wood to be decorated (playthings); Mosaics for decoration (playthings); toy sewing kits; Fusible plastic beads (playthings); Sequins (playthings).

Class 41: Online gaming services for children.

2. Community trade mark application No 12 417 011 is rejected for all the above goods and services. 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 and services of Community trade mark application No 12 417 011, namely some of the goods and services in Classes 16 and 41 and all the goods in Class 28. The opposition is based on Spanish trade mark registration No 3 032 673. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

The goods on which the opposition is based are the following:

Class 28: Playthings and games.

The contested goods and services are the following:

Class 16: Stickers; Pencils; Felt pens; Ink; Paints for drawing; Pastel crayons; Writing chalk; Writing instruments; Paint brushes; Easels for drawing; Hole punches for creative leisure activities; Notebooks and canvas for drawing, colouring and painting; Canvas for painting; Blackboards for writing and drawing; Stamping inks; Manuals for creative leisure activities; Patterns and stencils for creative leisure activities; Drawings; Rub down transfers; Stickers of paper; Colour and glitter gels (playthings); Modelling paste and accessories therefor; Modelling clay; Tools for calligraphy; Engravings; Mandalas (playthings); Magnets (playthings); figurines of paper and cardboard; Moulds for creative leisure activities; Accessories for modelling and decorating creations (playthings); Pictures; Photographs; Games catalogues.

Class 28: Toys; Toys; Creative leisure activities, in particular kits for creations made from salt dough (playthings); Potters’ wheels and accessories therefor (playthings); Pyrography kits (playthings); Moulding workshops and accessories therefor (playthings); toy and theatrical masks; Soap gemstones (playthings); Knitting workshops for children (playthings); Jewellery for children (playthings); Accessories for making jewellery for children (playthings); Scoubidou strings (playthings); Figurines of wood to be decorated (playthings); Mosaics for decoration (playthings); toy sewing kits; Fusible plastic beads (playthings); Sequins (playthings).

Class 41: Online gaming services for children.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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

The contested colour and glitter gels (playthings); mandalas (playthings); magnets (playthings); figurines of paper and cardboard; accessories for modelling and decorating creations (playthings) are similar to the opponent’s playthings. These goods have the same distribution channels, the same public – because they target the same consumers – and the same purpose (amusement).

The contested notebooks and canvas for drawing, colouring and painting; canvas for painting; blackboards for writing and drawing; modelling paste and accessories therefor; modelling clay; moulds for creative leisure activities are similar to the opponent’s playthings and games because they can be used by children for amusement purposes. In fact, they have the same relevant public and the same purpose. In addition, they have the same distribution channels.

The contested stickers; pencils; felt pens; ink; paints for drawing; pastel crayons; writing chalk; writing instruments; paint brushes; stamping inks; stickers of paper are stationery articles. The usual origin, the nature and the purpose of these goods are different from those of the opponent’s goods in Class 28. Furthermore, their methods of use and distribution channels differ. Therefore, these goods are dissimilar.

The contested easels for drawing; hole punches for creative leisure activities; tools for calligraphy; patterns and stencils for creative leisure activities are artists’ materials. The usual origin, the nature and the purpose of these goods are different from those of the opponent’s goods in Class 28. Furthermore, their methods of use and distribution channels may differ. Therefore, these goods are dissimilar.

The contested manuals for creative leisure activities; drawings; rub down transfers; engravings; pictures; photographs; games catalogues are printed matter. The usual origin, the nature and the purpose of these goods are different from those of the opponent’s goods in Class 28. Furthermore, their methods of use and distribution channels differ. Therefore, these goods are dissimilar.

Contested goods in Class 28

The contested toys; toys; creative leisure activities, in particular kits for creations made from salt dough (playthings); potters’ wheels and accessories therefor (playthings); pyrography kits (playthings); moulding workshops and accessories therefor (playthings); toy and theatrical masks; soap gemstones (playthings); knitting workshops for children (playthings); jewellery for children (playthings); accessories for making jewellery for children (playthings); scoubidou strings (playthings); figurines of wood to be decorated (playthings); mosaics for decoration (playthings); toy sewing kits; fusible plastic beads (playthings); sequins (playthings) are included in the broad category of the opponent’s playthings and games. Therefore, they are considered identical.

Contested services in Class 41

The contested online gaming services for children are similar to the opponent’s playthings and games because they can be in competition, they target the same public, they have the same distribution channels and they have the same purpose (amusement).

2. The signs

CREA
Earlier trade mark	Contested sign

The relevant territory is Spain.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘CREA’. However, they differ in that the earlier sign is a word mark, while the contested sign is a figurative mark, characterised by colours and stylisation. The contested sign contains an orange square behind a black rectangle with rounded corners, on which are written the verbal elements ‘CREA’ in white and ‘&CIE’ in orange. In addition, above the letter ‘E’ in the contested sign there are three short dashes. Finally, the verbal element ‘&CIE’ in the contested sign does not have a counterpart in the earlier mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters /CREA/, present identically in both signs, and to that extent the signs are aurally similar. However, the pronunciation differs in the sounds of the element /&/ and of the letters /CIE/ in the contested mark, which have no counterparts in the earlier sign.

Conceptually, the word ‘CREA’, which constitutes the entire earlier mark and the first verbal element of the contested sign, will be perceived by the relevant public as a form of the verb ‘crear’, which means ‘to create’. As regards the element ‘&’, the public in the relevant territory will perceive it as ‘and’; however, the element ‘CIE’ will not be associated with any clear meaning. In addition, the figurative elements of the contested sign do not convey any particular meaning. Since the signs will be associated with similar meanings, they are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘CREA’, included in both marks, will be associated with ‘creative activities’. Bearing in mind that the relevant goods and services relate to games and creative items, it is considered that this element is weak for these goods and services, namely for the goods in question in Classes 16 and 28 and the services in Class 41. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

The element ‘CREA’ of the earlier mark will be associated with ‘something related to creativity’, because, as indicated above, it is a form of the verb ‘crear’, which in Spanish means ‘to create’. Bearing in mind that the relevant goods are playthings and games, it is considered that the earlier mark is weak for these goods, because it indicates that they involve or encourage creative qualities. Consequently, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. 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 and services found to be identical or similar are directed at the public at large. The degree of attention is considered average.

6. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 et seq.).

The word that the signs have in common, ‘CREA’, has a meaning for the relevant public and is weak for the relevant goods and services. However, this fact does not necessarily prevent a finding that there is a likelihood of confusion, since the distinctiveness of the components of the trade marks is only one factor among others involved in the assessment of likelihood of confusion. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The signs coincide in the word ‘CREA’, which constitutes the entirety of the earlier mark and the first element of the contested sign. The fact that the first part of the contested mark coincides with the word that constitutes the earlier sign has to be taken into account when assessing the likelihood of confusion between the marks. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from top to bottom, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the verbal element ‘CREA’ in the contested sign is larger than the verbal element ‘&CIE’. Consequently, the visual, aural and conceptual similarity between the marks is highly relevant for the assessment of the likelihood of confusion between the signs.

Therefore, the signs are visually, aurally and conceptually similar, because they have the verbal element ‘CREA’ in common, which brings to mind the same concept for the relevant public. The differences between the signs are limited to the additional characters ‘&’ and ‘CIE’ and the figurative elements of the contested sign. The additional element ‘&CIE’ is secondary in the contested sign due to its position. With regard to the figurative elements of the contested sign, when a sign consists of both verbal and figurative components, the principle has been established that the word 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 most readily refer to a sign by its verbal component. Therefore, in the present case, the basic decorative elements consisting of two geometrical shapes in orange and black play a secondary role in the mark, as they are used as a background and, therefore, they are not sufficient to rule out a likelihood of confusion or association between the marks.

In addition, 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings since the signs are not comparable.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, although the word ‘CREA’ is weak, and therefore the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar 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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Frédérique SULPICE

Niccoló PETRINA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.