OPPOSITION No B 2 535 741

Be Wiser Insurance Services Limited, Barrett House Savoy Close, Andover Hampshire SO10 2HZ, United Kingdom (opponent), represented by Blake Morgan LLP, New Kings Court Tollgate Chandler's Ford, Eastleigh, Hampshire SO53 3LG United Kingdom (professional representative)

a g a i n s t

Damerik S.L., Onyar, 75-81 (P.I. Polingesa) E-17457 Riudellots de la selva, Spain

(applicant), represented by Ingenias Av. Diagonal 421,2º E-08008 Barcelona, Spain (professional representative).

On 04/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 535 741 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 666 805. The opposition is based, inter alia, on UK trade mark registrations No 2 545 853 and No 3 068 430. 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 United Kingdom trade mark registrations No 2 545 853 and No 3 068 430.

1. The goods and services

The goods and services on which the opposition is based are inter alia the following:

Class 16: Stationery; printed matter; printed publications; instructional and/or teaching materials; packaging materials; writing implements; paper, cardboard; packaging containers and bags; envelopes (stationery); books and magazines; manuals and handbooks; calendars; clip boards; printed matter; photographs; pictures; posters; stickers; stickers for vehicles; stickers for clothing; Hags (of paper); stationery; office requisites; document holders, files and pads (stationery); plastic materials for packaging; signboards of paper or cardboard; self-adhesive plastic films fur decorative purposes; writing and drawing implements.

Class 25: Clothing, footwear, headgear and gloves; leather clothing, footwear, headgear and gloves; clothing, footwear, headgear and gloves all adapted for use with motorcycles.

Class 28: Games, toys and playthings; model vehicles; scale model vehicles; toy vehicles; radio-controlled scale model vehicles; radio-controlled toy vehicles; scale model kits; soft toys; knee guards; elbow guards; shin guards; protective pads and protective gear for use in connection with sporting activities; sports gloves and sporting articles.

Class 35: Advertising; business management; business administration; office functions; price analysis services; price comparison of the goods and services of other vendors, enabling customers to conveniently view and compare the goods and services of those vendors; advertising of the goods or services of other vendors, enabling customer to conveniently view and compare the goods and services of those vendors; advertising of the goods and services of other vendors, enabling customer to conveniently view and compare the goods and services of those vendors.

The contested goods and services are the following:

Class 16: Adhesives for stationery or household purposes; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Printed matter; Decoration and art materials and media; Paper and cardboard; Works of art and figurines of paper and cardboard, and architects' models; Stationery and educational supplies; Books for children; Drawing books; Activity books; Song books; Pop-up books; Picture books; Story books; Writing or drawing books.

Class 28: Festive decorations and artificial Christmas trees; Toys, games, playthings and novelties; Dolls' clothing accessories; Play mats for use with toy vehicles; Play mats containing infant toys; Toy food; Toy camping apparatus; Toy traffic control apparatus; Toy sporting apparatus; Indoor play apparatus for children; Toy household apparatus; Dart board cabinets; Climbing frames (play things); Toy harmonicas; Novelties for parties, dances [party favors, favours]; Paper party favours; Imitation toilet articles being toys; Infants' swing seats; Toy aeroplanes; Paper airplanes; Buckets [playthings]; Balls for games; Toy miniature model boats; Dolls' feeding bottles; Toy bicycles; Wooden toy building blocks; Plug-in bricks [toys]; Toy horns; Playing balls; Playing bowls; Rocking horses; Toy musical boxes; Toy supermarket checkout apparatus; Kaleidoscopes; Dolls' beds; Toy cameras [not capable of taking a photograph]; Toy lorries; Marbles; Paper face-masks; Toy wheelbarrows; Children's playhouses; Toy castles; Toy pushchairs; Toy pedal cars; Toy rockets; Kite tails; Swings; Kites; Confetti; Toy racing sets; Toy tool sets; Toy gardening sets; Toy sets; Dolls' houses; Toy buckets and spades; Dice; Dart boards; Play money; Toy candy bowl mechanical dispensers; Toy building components; Toy swords; Play structures for children; Chips and dice [gaming equipment]; Toy figurines; Foosball tables; Toy garages; Toy guitars; Toy tools; Toy musical instruments; Toy jewellery; Ring games; Racing car games; Building games; Toy sewing sets; Draughts; Dominoes; Skill and action games; Toy printing sets; Magicians' sets (play things); Board games; Quiz games; Role playing games; Train sets; Sports games; Mechanical games; Electronic games; Manipulative games; Musical games; Toys; Wooden toys; Stuffed toys; Toys made of plastics; Fabric toys; Inflatable toys; Toys made of metal; Infant development toys; Bathtub toys; Toys being for sale in kit form; Toy construction kits; Toy model hobbycraft kits; Kits of parts [sold complete] for making toy model cars; Marionettes; Juggling equipment; Toy microphones; Face masks being playthings; Miniatures for use in games; Furniture for dolls' houses; Toy furniture; Dolls; Mobiles [toys]; Toy vanity cases; Teddy bears; Tops (Spinning -) [toys]; Bowls [games]; Chess pieces; Paddling pools; Water pistols; Piñatas; Toy binoculars; Puzzles [toys]; Toy clocks and watches; Toy robots; Jigsaw puzzles; Dolls' clothes; Animal replicas as playthings; Toy hats; Rattles [playthings]; Toy telephones; Play tents; Toboggans; Sleighs [recreational equipment]; Tricycles [playthings]; Model railways; Toy trumpets; Magic tricks; Play tunnels; Toy bakeware and toy cookware; Toy wagons; Toy tableware; Toy cars; Doll costumes; Shoes for dolls; Electronic toys; Electronic learning toys; Toys adapted for educational purposes; Electronic games for the teaching of children.

Class 35: Retailing in shops and via the internet of stationery, printed matter, clothing for children, games, playthings and childcare goods; Commercial trading and consumer information services; Advertising, marketing and promotional services; Business assistance, management and administrative services; Administration of the business affairs of franchises.

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 Printed matter; Stationery and Educational supplies; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Paper and cardboard;, are identically contained in both lists of goods and services (including synonyms).

The contested adhesives for stationery or household purposes are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested Books for children; Drawing books; Activity books; Song books; Pop-up books; Picture books; Story books; Writing or drawing books; Media are included in the broad category of the opponent’s Books. Therefore, they are identical.

The contested decoration and art materials overlap with, the opponent’s drawing implements, self adhesive plastic films for decorative purposes. 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 works of art and figurines of paper and cardboard

The contested architects' models are dissimilar to the opponent’s goods and services as they have a different nature and purpose. Furthermore, they have different distribution channels and they are manufactured/offered by the different undertakings.

Contested goods in class 28

Toys, games, playthings are identically contained in both lists of goods and services.

The contested novelties; Dolls' clothing accessories; Play mats for use with toy vehicles; Play mats containing infant toys; Toy food; Toy camping apparatus; Toy traffic control apparatus; Toy sporting apparatus; Indoor play apparatus for children; Toy household apparatus; Dart board cabinets; Climbing frames (play things); Toy harmonicas; Novelties for parties, dances [party favors, favours]; Paper party favours; festive decorations; Imitation toilet articles being toys; Infants' swing seats; Toy aeroplanes; Paper airplanes; Buckets [playthings]; Balls for games; Infants' swing seats; Toy miniature model boats; Dolls' feeding bottles; Toy bicycles; Wooden toy building blocks; Plug-in bricks [toys]; Toy horns; Playing balls; Playing bowls; Rocking horses; Toy musical boxes; Toy supermarket checkout apparatus; Kaleidoscopes; Dolls' beds; Toy cameras [not capable of taking a photograph]; Toy lorries; Marbles; Paper face-masks; Toy wheelbarrows; Children's playhouses; Toy castles; Toy pushchairs; Toy pedal cars; Toy rockets; Kite tails; Swings; Kites; Confetti; Toy racing sets; Toy tool sets; Toy gardening sets; Toy sets; Dolls' houses; Toy buckets and spades; Dice; Dart boards; Play money; Toy candy bowl mechanical dispensers; Toy building components; Toy swords; Play structures for children; Chips and dice [gaming equipment]; Toy figurines; Foosball tables; Toy garages; Toy guitars; Toy tools; Toy musical instruments; Toy jewellery; Ring games; Racing car games; Building games; Toy sewing sets; Draughts; Dominoes; Skill and action games; Toy printing sets; Magicians' sets (play things); Board games; Quiz games; Role playing games; Train sets; Sports games; Mechanical games; Electronic games; Manipulative games; Musical games; Toys; Wooden toys; Stuffed toys; Toys made of plastics; Fabric toys; Inflatable toys; Toys made of metal; Infant development toys; Bathtub toys; Toys being for sale in kit form; Toy construction kits; Toy model hobbycraft kits; Kits of parts [sold complete] for making toy model cars; Marionettes; Juggling equipment; Toy microphones; Face masks being playthings; Miniatures for use in games; Furniture for dolls' houses; Toy furniture; Dolls; Mobiles [toys]; Toy vanity cases; Teddy bears; Tops (Spinning -) [toys]; Bowls [games]; Chess pieces; Paddling pools; Water pistols; Piñatas; Toy binoculars; Puzzles [toys]; Toy clocks and watches; Toy robots; Jigsaw puzzles; Dolls' clothes; Animal replicas as playthings; Toy hats; Rattles [playthings]; Toy telephones; Play tents; Toboggans; Sleighs [recreational equipment]; Tricycles [playthings]; Model railways; Toy trumpets; Magic tricks; Play tunnels; Toy bakeware and toy cookware; Toy wagons; Toy tableware; Toy cars; Doll costumes; Shoes for dolls; Electronic toys; Electronic learning toys; Toys adapted for educational purposes; Electronic games for the teaching of children are included in the broad category the opponent’s toys, games, playthings. Therefore, they are identical.

The contested artificial Christmas trees are dissimilar to the Opponent`s goods and services as they have different nature and purpose, moreover they are neither in competition nor complementary.

Contested goods in class 35

The contested advertising; business administration; business management services are identically contained in both lists of services.

Administration of the business affairs of franchises is included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested business assistance is similar to the Opponent’s business administration as they have the same purpose. They can coincide in producer and end user. Therefore the services are similar.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore the contested Retailing in shops and via the internet of stationery, printed matter, clothing for children, games, playthings and childcare goods are similar to a low degree to the opponent’s printed matter, clothing, games; toys and playthings.

The marketing and promotional services include, as broad category, the opponent’s advertising and advertising of the goods or services of other vendors, enabling customers to conveniently view and compare the goods and services of those vendors. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested commercial trading and consumer information services; include, as broad category, the opponent’s price comparison of the goods and services of other vendors, enabling customers to conveniently view and compare the goods and services of those vendors. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods and services. Some of the goods at issue in Class 28 can be inexpensive goods purchased on a daily basis (for example cheap, toys or paper and cardboard and printed matters). The habitual buying behaviour associated with those goods can result in a lower degree of attention. On the other hand, some of the services at issue are specialised and imply a high degree of sophistication on the part of the consumers (for instance administration of the business affairs of franchises). To that extent, the degree of the public’s attention may be high for a part of the goods and services in question.

3. The signs

No 2 545 853 No 3 068 430
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 mark No 2 545 853 is a figurative trade mark consisting of a combination of figurative and verbal elements. The figurative element consists of a detailed drawing of a bird, which one will recognise as an image of an owl, standing on its two feet with its wings closed. The features presented in the drawing composing the bird, such as the head, body, legs, feathers, eyes, and beak are drawn in a simple but realistic style, enabling one more or less to identify the kind of bird. The image of the bird is depicted in a larger size than the verbal element, and is therefore the dominant element in the sign. In the verbal element, consisting of the words “Be Wiser Insurance”, the words “Be Wiser” are presented in a larger form than the word “Insurance”. The words “Be Wiser Insurance” will be understood by English speakers as encouraging one to make more intelligent insurance choices The verbal element is distinctive in relation to the goods found to be identical and/or similar to various degrees.

The earlier mark No 3 068 430 is a purely figurative sign consisting of a detailed drawing of a bird’s eyes and beak that one could perceive as a partial representation of an owl head.

The contested sign is, contrary to the earlier sign, a single representation of the outline of an owl with no details, which one could perceive as a cartoon representation of an owl In the picture the owl is not presented as a whole but is cut off half way down with minimalistic effect. The elements enabling one to detect the drawn object (eyes, beak shape of the head) as an owl are presented in a fanciful, cartoonish style, with the eyeballs joined to create a comical effect.

The contested mark has no element that could be considered more dominant (visually eye-catching) than any other elements.

Both the contested and earlier marks have no elements that could be considered clearly more distinctive than any other elements.

Visually, the signs under comparison do not have any coinciding elements. The earlier sign No 2 545 853 is a detailed and fairly naturalistic representation of an owl accompanied by a verbal element, having no counterpart in the contested sign. While the earlier sign No 3 068 430 is a detailed drawing of part of a bird’s head with fierce eyes staring ahead. The contested sign, on the contrary, consists of a simple line-drawing featuring a cartoon owl which is minimalistic, far from naturalistic and which is comical in its aspect.

As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the contested sign in its entirety is figurative, it is not possible to compare them aurally.

Conceptually, the signs under comparison refer to the same concept, as one could perceive both the contested sign and the earlier sign as representations of an owl.

The earlier mark No 2 545 853 also contains the words “Be Wiser Insurance” which will be understood by English speakers as encouraging one to make more intelligent insurance choices.

As regards the earlier mark No 3 068 430 it cannot be said with complete certainty that this representation will be seen as an owl’s face by all consumers, nevertheless at least some consumers will see it as such. This earlier mark is therefore considered conceptually highly similar to the contested mark.

As the signs have been found conceptually highly similar 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.

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 and services 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods and services are partly identical, partly similar to various degrees and partly dissimilar to those of the opponent. The points of coincidence between the marks reside in their conceptual comparison as explained above. The attention of the relevant public will vary from average to high and the earlier signs have normal distinctiveness.

The Court of Justice has established the principle that it is not impossible that the

conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the

reputation it enjoys with the public.

In the present case the signs under comparison have their points of coincidence only in the conceptual comparison. In this respect it should be noted that the earlier trademarks enjoy protection for a particular depiction of a particular bird (an owl) and not for the concept of any owl/bird. The signs show very great visual differences in the way they are represented and one of the earlier marks contains additional verbal element. Furthermore, the phonetic comparison cannot be made because the contested sign is purely figurative. In spite of the conceptual coincidences identified above, a likelihood of confusion does not exist as the differences are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. The relevant public will have no difficulty in distinguishing between the marks regardless of the identity and similarity of some of the goods and services.

Considering all the above, even taking into account that some goods and services are identical there is no likelihood of confusion on the part of the relevant public.

The other earlier rights invoked by the opponent, namely UK trade mark registrations No 2 545 849; No 2 627 957; No 2 627 958; No 2 627 960; No 2 627 961; No 2 627 963; No 2 629 384; No 3 068 422; No 3068436 are less similar to the contested mark. This is because the earlier rights contain less similar verbal figurative elements or additional verbal elements which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected.

Considering all of the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard THEWLIS

Liina PUU

Gailė SAKALAITĖ

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.