OPPOSITION No B 2 538 604

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 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 12/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 604 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 13 287 115 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 13 287 115, namely against some of the goods in Class 9 and all of the goods in Class 28. The opposition is based on European Union trade mark registration No 9 879 339, international trade mark registration designating the European Union No 972 552 and German trade mark registration No 846 001. 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 9 879 339 and international trade mark registration designating the European Union No 972 552.

1. The goods

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

International trade mark registration designating the European Union No 972 552

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.

European Union trade mark registration No 9 879 339

Class 9: Rules (measuring instruments), folding rules, yardsticks; Gauges, in particular thread ring gauges, joint gauges, screw-in gauges.

Class 16: Writing instruments.

Class 17: Sealing and insulating material, included in class 17.

Class 20: Racks and parts of racks, of metal.

Class 21: Glassware, porcelain and earthenware (included in Class 21).

After a limitation to the specification of goods requested by the applicant on 21/08/2015 and accepted by the Office, the contested goods 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 applicant’s 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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 28

Games; toys are identically contained in both lists of goods.

The contested playthings include, as a broader category, the opponent’s toys. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sporting articles not included in other classes include, as a broader category, the opponent’s golf balls. Since the Opposition Division cannot dissect ex officio the broad category 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 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; parlor games; toy vehicles; smart toys; watches [toy]; cameras [toy]; telescope [toy]; game appliances and game gadgets; toys activated by laser; video game devices are included in the broad categories of the opponent’s games, toys. Therefore, they are identical.

The contested gymnastic articles not included in other classes are considered similar to the opponent’s games, toys. These goods may coincide in their nature and purpose. In addition, they may have a similar method of use and target the same users. Furthermore, their sales channels may coincide, since many outlets that sell games and toys also include departments catering for outdoor activities, where gymnastic articles may be found (11/12/2014, R 730/2014-1, QUIERO MIMITOS (MARCA FIGURATIVA) / bebé Mimittos (MARCA FIGURATIVA), §31-36).

The contested decorations for Christmas trees are festive decorations. They are dissimilar to the opponent’s games, toys, plush toys, model vehicles and miniature vehicles, golf balls in Class 28 and to all the other goods for which the earlier marks are registered in Classes 6, 7, 8, 9, 16, 17, 20 and 21. They have different natures, purposes and methods of use. They are neither complementary to nor in competition with each other. Moreover, they are produced or offered by different companies, are sold through different distribution and trade channels and target different publics.

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 partly identical and partly similar are directed mainly at the public at large. The degree of attention is deemed to be average.

3. The signs

	SpyX
Earlier trade marks	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 earlier marks are figurative marks made up of the upper case letters ‘SPAX’, depicted in a fairly standard bold typeface. The letter ‘X’ is surrounded by a circular figurative element. The earlier marks’ verbal element ‘SPAX’ has no meaning for the public in the relevant territory and has a normal degree of distinctiveness. Considering that the circular figurative element is of a rather decorative nature, the verbal element ‘SPAX’ is the more distinctive element in the earlier marks. The earlier marks have no element that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is a word mark, ‘SpyX’. In word marks, the word itself is protected, not its written form. Therefore, in the present case, it is irrelevant whether the mark is depicted in lower or in upper case letters. The contested sign has no meaning for the public in the relevant territory. Therefore, it has no elements that could be considered clearly more distinctive than other elements and, as a whole, must be seen as being of a normal distinctiveness for all the goods concerned. Finally, being a word mark, the sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in three out of four letters in the same order, namely ‘SP*X’. However, they differ in their third letter, namely ‘A’ in the earlier marks versus ‘Y’ in the contested sign, the typeface of the letters and the figurative element of the earlier marks.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, 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 signs’ third letters, ‘A’ versus ‘Y’. Both of these letters are vowels, so the difference does not result in different numbers of syllables, different rhythms or different intonations.

Therefore, the signs are aurally similar to an average degree.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning in relation to any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. 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).

The contested goods are partly identical, partly similar and partly dissimilar to the goods for which the earlier marks are registered.

As a preliminary point, 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. The graphic arrangement of the earlier marks and their figurative element, described above, do not offset the presence of the verbal element ‘SPAX’. By contrast, it is most likely that consumers will refer to these marks as ‘SPAX’ instead of describing their graphic arrangement or figurative element.

The signs under comparison are similar to the extent that the earlier marks’ verbal element ‘SPAX’ and the contested sign, ‘SpyX’, coincide in three out of four letters, which appear in the same order. The signs differ in their third letters, ‘A’ in the earlier marks and ‘Y’ in the contested sign. However, these differences do not alter the similar overall structures and lengths of the signs.

Furthermore, the difference between the earlier marks’ verbal element ‘SPAX’ and the contested sign, ‘SpyX’, is found in the middle of these elements, where it is more likely to go unnoticed by consumers.

Consequently, the visual and aural differences do not enable average consumers, who rarely have the chance to make a direct comparison between different, but must trust in their imperfect recollection of them, to safely distinguish the marks in the context of identical goods or goods that are similar. Moreover, the verbal elements of the signs do not convey any semantic content to the relevant public that would help in differentiating them.

Considering all the above, in particular taking into account the average degree of attention of the relevant public and based on the average degree of inherent distinctiveness of the earlier marks, the Opposition Division finds that there is a likelihood of confusion on the part of the public, including the likelihood that consumers may believe that the goods come from the same undertaking or economically-linked undertakings.

The Opposition Division finds that there is a likelihood of confusion on the part of the public; therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 9 879 339 and international trade mark registration designating the European Union No 972 552.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade marks.

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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks 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 marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on German trade mark registration No 846 001.

Since this word mark is made up of the letters ‘SPAX’ and thus is identical to the verbal element of the opponent’s earlier trade marks, which have been compared with the contested sign, and because this word mark covers a narrower scope of goods in Class 6 than the earlier marks, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, 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

Tobias KLEE

Sandra KASPERIUNAITE

Gueorgui IVANOV

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.