OPPOSITION No B 2 538 505

Altenloh, Brinck & Co. GmbH & Co. KG, Kölner Str. 71-77, 58256 Ennepetal, Germany (opponent), represented by Dr. Solf & Zapf, Schloßbleiche 20, 42103 Wuppertal, Germany (professional representative)

a g a i n s t

Atomic Monkey Products Limited, Room 811, 8/F., Corporation Park, No. 11 On Lai Street, Shatin, New Territories, Hong Kong, Special Administrative Region of Hong Kong of the People’s Republic of China (applicant), represented by Cabinet Chaillot, 16-20, avenue de L'Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 24/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 505 is partially upheld, namely for the following contested goods:

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; toy radio control devices; radio-controlled action toys; battery operated toy vehicles; remote-controlled toy vehicles. toy laser pointing devices; toy digital cameras; action playsets sold as a unit for make-believe play spy activities, battle activities and adventure activities; computerized toy vehicles; toy vehicles incorporated with camera, video, loud speaker and antenna; toys, games, and playthings, namely, action target games; target games; toy vehicles and accessories therefor; children's multiple activity toys; toy safes; toy watches; toy motion sensors; toy electronic listening devices; toy walkie-talkies; toy magnifying glasses; toy cameras; toy pens; toy binoculars; toy scopes; toy motion alarm traps; toy decoders; toy door alarms; toy lights; toy tool belts; toy lasers; toy text messengers; toy goggles; toy voice recorders; toy trackers; toy briefcases; toy multi-purpose tool kits; toy periscopes; non-metallic knives with toy tools; toy canteens: toy flashlights; toy disc launchers; toy shredders; toy kaleidoscopes; battery operated action toys; electronic action toys; remote· control toys, namely toy vehicles, toy planes, toy helicopters, toy tanks, toy figures; electronically operated toy vehicles; board games; electronic board games; radio control toy vehicles; toys including combination toy telescopes and microscopes; toy carry-all belts; toys; parlor games; toy vehicles; smart toys; watches [toy]; cameras [toy]; telescope [toy]: game appliances and game gadgets; toys activated by laser; video game devices.

2. European Union trade mark application No 13 287 107 is rejected for all the above goods. It may proceed for the remaining goods.

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 13 287 107, namely against all the goods in Class 28. The opposition is based on, inter alia, international trade mark registration No 972 552 designating the European Union. 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 International trade mark registration No 972 552 designating the European Union.

1. The goods

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

Class 6: Goods of metal, as far as included in this class, as mechanical fastening elements, screws, nuts as well as threaded inserts of metal.

Class 7: Motor driven tools; inserts and insert tools for motor driven tools; adapted cases for the aforesaid goods.

Class 8: Hand tools (hand-operated), inserts and insert tools for hand-operated tools; cases adapted for the aforesaid goods.

Class 28: Games, toys, plush toys, model vehicles and miniature vehicles, golf balls.

The contested goods, after a limitation made by the applicant, are the following:

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toy radio control devices; radio-controlled action toys; battery operated toy vehicles; remote-controlled toy vehicles. toy laser pointing devices; toy digital cameras; action playsets sold as a unit for make-believe play spy activities, battle activities and adventure activities; computerized toy vehicles; toy vehicles incorporated with camera, video, loud speaker and antenna; toys, games, and playthings, namely, action target games; target games; toy vehicles and accessories therefor; children's multiple activity toys; toy safes; toy watches; toy motion sensors; toy electronic listening devices; toy walkie-talkies; toy magnifying glasses; toy cameras; toy pens; toy binoculars; toy scopes; toy motion alarm traps; toy decoders; toy door alarms; toy lights; toy tool belts; toy lasers; toy text messengers; toy goggles; toy voice recorders; toy trackers; toy briefcases; toy multi-purpose tool kits; toy periscopes; non-metallic knives with toy tools; toy canteens: toy flashlights; toy disc launchers; toy shredders; toy kaleidoscopes; battery operated action toys; electronic action toys; remote· control toys, namely toy vehicles, toy planes, toy helicopters, toy tanks, toy figures; electronically operated toy vehicles; board games; electronic board games; radio control toy vehicles; toys including combination toy telescopes and microscopes; toy carry-all belts; toys; parlor games; toy vehicles; smart toys; watches [toy]; cameras [toy]; telescope [toy]: game appliances and game gadgets; toys activated by laser; video game devices.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the same list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Games are identically contained in both lists of goods.

The contested playthings overlap with, the opponent’s games. Therefore, they are identical.

The contested sporting articles not included in other classes include, as broader categories, the opponent’s golf balls. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested toy radio control devices; radio-controlled action toys; battery operated toy vehicles; remote-controlled toy vehicles. Toy laser pointing devices; toy digital camera; action playsets sold as a unit for make-believe play spy activities, battle activities and adventure activities; computerized toy vehicles; toy vehicles incorporated with camera, video, loud speaker and antenna; toy vehicles and accessories therefor; children's multiple activity toys; toy safes; toy watches; toy motion sensors; toy electronic listening devices; toy walkie-talkies; toy magnifying glasses; toy cameras; toy pens; toy binoculars; toy scopes; toy motion alarm traps; toy decoders; toy door alarms; toy lights; toy tool belts; toy lasers; toy text messengers; toy goggles; toy voice recorders; toy trackers; toy briefcases; toy multi-purpose tool kits; toy periscopes; non-metallic knives with toy tools; toy canteens: toy flashlights; toy disc launchers; toy shredders; toy kaleidoscopes; battery operated action toys; electronic action toys; remote· control toys, namely toy vehicles, toy planes, toy helicopters, toy tanks, toy figures; electronically operated toy vehicles; radio control toy vehicles; toys including combination toy telescopes and microscopes; toy carry-all belts; toys; toy vehicles; smart toys; watches [toy]; cameras [toy]; telescope [toy]; toys activated by laser; are included in the broad category of the opponent’s toys. Therefore, they are identical.

The contested toys, games, and playthings, namely, action target games; target games; board games; electronic board games; parlor games; game appliances and game gadgets; video game devices are included in the broad category of the opponent’s games. Therefore, they are identical.

The contested gymnastic articles not included in other classes are similar to the opponent’s golf balls as they have a very similar purpose and nature. Moreover they are distributed and marketed by the same companies and are usually found next to each other in shops and target the same end users

The contested decorations for Christmas trees serve to adorn Christmas trees. These goods are dissimilar to all of the opponent’s goods in Class 28 which comprise games, toys and sporting balls. The purposes and methods of use of these goods are different. They do not share producers or distribution channels. Neither are they in competition with each other nor complementary. The same reasoning applies for the opponent’s other goods in Classes 6, 7 and 8. The nature of these good is also different from the contested goods and aim different public.

2. 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 and similar are directed at the public at large. The degree of attention is considered to be average.

3. 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 unitary character of the European Union trade mark means that an earlier European Union trade mark or an International Registration designating the European Union 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the letters ‘SPA’ in bold followed by a cross-shaped ‘X’ within a circle. The public in the relevant territory will perceive the verbal elements of the sign as the word ‘SPAX’, which does not have any meaning in Spanish.

The contested sign is a figurative mark consisting of the letters ‘SPY’ in bold stylised typeface in two grades of grey followed by a letter ‘X’ of bigger size. This last letter is depicted against a circular background with vertical and horizontal lines in different grades of dark grey. Having in mind that people tends to read letters which are together forming words independently of its size, the public will perceive the contested sign as ‘SPYX’ which does not have any meaning in Spanish.

Visually, the signs coincide in ‘SP*X’. Moreover, they have the same structure, being the first three letters in bold followed by a letter ‘X’ with a circular device. However, they differ in the letter ‘A’ in the third position in the earlier mark and the letter ‘Y’ in the same position in the contested sign, as well as, in the colours of the contested mark and in the stylisation of each sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SP*X’, present identically in both signs. The pronunciation differs in the sound of the letter ‘A’ in the third position in the earlier mark and in the letter ‘Y’ in the same position in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods.

The conflicting signs are visually and aurally similar to the extent that they all contain the sequence of letters ‘SP*X’.

The differences between the signs result from the letter ‘A’ of the earlier mark and the corresponding letter ‘Y’ of the contested sign, in the colours of the contested sign, and in the different typefaces used in each mark.

Nevertheless, the signs have in common three letters out of four in the same order. The differing letters are not located at the beginning of the signs and, thus, this difference will be less perceptible to the public. Moreover, both signs present the same visual structure of four letters with a circular device at the end of the sign.

As regards the different stylisation of the letters in each sign, the relevant consumer will focus their attention on the verbal elements in each mark. This is justified by the fact that, when signs consist of both word and figurative components, it has been established that the word component of the sign usually has a greater 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.

It should be taken into account that, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In addition, according to the principle of interdependence between the relevant factors, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and in the present case most of the relevant goods are indeed identical.

In view of all the relevant factors in the present case, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall similarity between them resulting from their visual and aural similarities, and the relevant public could believe that the identical and similar goods come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s International trade mark registration No 972 552 designating the European Union. 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.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

Community trade mark registration No 9 879 339 for the figurative mark covering goods in Classes 9, 16, 17, 20 and 21 and German trade mark registration No 846 001 for the word mark ‘SPAX’ covering goods in Class 6.

These other earlier rights invoked by the opponent cover goods such as measuring instruments in Class 9, writing instruments in Class 16, sealing and insulating material in Class 17, racks and parts of racks of metal in Class 20, glassware, porcelain and earthenware in Class 21 and screws in Class 6 which are clearly different to those applied for in the contested trade mark. These goods differ in nature and purpose. They are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected, namely decorations for Christmas trees; no likelihood of confusion exists with respect to those goods.

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 shall 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

Lena FRANKENBERG GLANTZ

Victoria DAFAUCE MENÉNDEZ

Zuzanna STOJKOWICZ

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.