OPPOSITION No B 2 548 256

Jovi, S.A., Pol. Ind. ‘Can Jardí’ Av. Bizet, 39-41, 08191 Rubi, Spain (opponent), represented by Ponti & Partners, S.L.P., C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Yoobi Trading Corporation Limited, 4/F. Aubin House, 171-172 Gloucester Road, Wan Chai, Hong Kong (applicant), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 06/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 548 256 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 767 611 for the figurative mark , namely against all the goods and services in Classes 16, 35 and 41. The opposition is based on European Union trade mark registrations No 5 298 708 for the word mark ‘JOVI’ and No 283 762 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 EUTM No 5 298 708 for the word mark ‘JOVI’, as it is the most similar to the contested mark.

a) The goods and services

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

Class 16: Water colours (paintings), adhesive tape dispensers (stationery), adhesive tapes, adhesives (glues) for stationery or household purposes, modelling clay, pads (stationery), rubber erasers, catalogues, modelling wax not for dental purposes, exercise books, indian inks, drawing and modelling instruments and articles, instructional and teaching materials (except apparatus), school supplies (stationery) including paint boxes, writing materials including pencils, ball-point pens and fountain pens, drawing sets, plastics for modelling, palettes for painters, modelling paste, pen cases, pencil holders, propelling pencils, penholders, pencil sharpeners, blotters.

Class 28: Toys for handicrafts relating mainly to painting, drawing and modelling; toys.

Class 39: Distribution of school requisites, stationery, games and playthings.

The contested goods and services are the following:

Class 16: Printed matter; books; children’s activity books; children’s storybooks; coloring books; comic books; poster books; graphic novels; magazines; journals; address books; index cards; notebooks; notepads; self-stick notes; diaries; composition books; bookmarks; posters; calendars; book covers; scrapbook albums; sticker albums; sketchbook albums; photograph albums; adhesive-backed photographs; arts and crafts paint kits; markers; pens; highlighter pens; writing instruments; erasers; pencils; pencil cases; pencil sharpeners; decorative pencil top ornaments; rulers; drafting, drawing and ungraduated rulers; notebook dividers; notebooks; writing grips; glue for stationery, school or household purposes; glue sticks for stationery, school or household purposes; bookmarks; folders; binders; push pins; paper clips; paper staplers; staple removers; slate boards for writing; stencils; rubber stamps and stamp pads; activity kits consisting of stickers and stamps; heat applied appliqués made of paper; decals and transfers; stickers; adhesive tape; adhesives and adhesive bands for stationery or household purposes; coasters made of paper; paper pennants; postcards; trading cards; paper; stationery; writing paper; envelopes; memo pads; lunch bags; adhesive corners for photographs; paper for printing photographs; animation cells; art prints; chalk; crayons; modeling materials and compounds for use by children; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and bookmarks; paper party decorations; paper cake decorations; paper party supplies, namely paper hats, paper party favors, paper napkins, paper placemats, paper gift wrap and paper gift wrapping ribbons, paper table cloths and paper party bags; gift bags printed invitations; greeting cards; crossword puzzles; desktop or personal organizers; organizers for stationery use.

Class 35: Retail and online retail store services featuring school supplies, stationery, stationery supplies, desktop and other personal organizers, containers, calculators, computer data storage devices, accessories for personal electronics and digital devices, furniture, backpacks, bags, luggage, books, arts and crafts materials, clothing, jewelry and fashion accessories.

Class 41: Entertainment and education services; educational and entertainment services, namely, media production services for motion pictures, television and Internet; providing educational information regarding the status and educational needs of schoolchildren in the field of school supplies; providing educational and entertainment information in the fields of current events and entertainment for a socially conscious audience via a global computer network system; entertainment and educational services in the nature of competitions in the fields of entertainment, education, culture, sports, and other non-business and non-commercial fields; charitable donation services, namely, providing school supplies and educational materials and supplies to students and schools.

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.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 16

Some of the contested goods are identical or similar to goods (in Class 16) on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

Contested services in Class 35

The contested services are retail services of various goods.

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 retail services and online retail store services featuring school supplies, stationery, stationery supplies, desktop and other personal organizers, books, arts and crafts materials are at best similar to a low degree to some of the opponent’s goods in Classes 16 and 28.

However, the contested retail and online retail store services featuring containers, calculators, computer data storage devices, accessories for personal electronics and digital devices, furniture, backpacks, bags, luggage, clothing, jewelry and fashion accessories and the opponent’s goods in Classes 16 and 28 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

For the sake of completeness, it is noted that the contested services in Class 35 are dissimilar to the opponent’s distribution services in Class 39. Distribution services are transport services and are not considered similar to retail. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the sale of the goods that are transported. The services differ in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

Contested services in Class 41

Some of the contested services in Class 41 are similar to goods in Classes 16 and 28 on which the opposition is based. For example, the contested education services are similar to the opponent’s books in Class 16, as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. They are complementary. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the contested services in Class 41 and the opponent’s goods in Classes 16 and 28 listed above. The examination of the opposition will proceed as if all the contested services in Class 41 were similar to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

For the sake of completeness, it is noted that some of the contested services in Class 41 are dissimilar to the opponent’s distribution services in Class 39. These services have a different nature, a different purpose and a different method of use. They are neither in competition nor complementary. They are provided by different undertakings, through different channels and target a different relevant public.

b) 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 or assumed to be identical or similar (to varying degrees) are directed at the public at large and at a professional public with specific knowledge or expertise.

The degree of attention varies from average to higher than average depending on the specific nature, price and frequency of purchase of the goods and services.

c) The signs

JOVI
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 verbal elements ‘JOVI’ (earlier mark) and ‘yoobi’ (contested sign) have no meaning for the relevant public and are, therefore, distinctive.

The figurative element in the contested sign is a fanciful depiction of a bird and as it has no particular relation to the relevant goods and services, it has a normal degree of distinctiveness.

The verbal element ‘yoobi’ and the figurative element depicting a bird are the co-dominant elements in the contested sign, as they are the most eye-catching and overshadow the much smaller verbal elements ‘one for you. one for me.’ underneath. The verbal element ‘one for you. one for me.’ will be understood by the English-speaking part of the relevant public and it will be a meaningless expression/motto for the remaining part of the relevant public. Irrespective of whether these words are understood or not, they have an average degree of distinctiveness.

The earlier mark is a word mark. In the case of word marks, it is irrelevant whether the letters composing them are written in upper- or in lower-case letters (25/11/2015, T‑763/14, SOPRAPUR / Sopro et al., EU:T:2015:883, § 56).

Visually, the earlier mark and the co-dominant verbal element of the contested sign coincide in the letters ‘*O**I’. However, they differ in the letters ‘J’ and ‘V’ in the earlier mark and in the letters ‘y*ob*’ in the contested sign. The earlier mark is composed of four letters, while the co-dominant verbal element of the contested sign is composed of five letters. Therefore, they are relatively short, and the differences between them will be perceived more readily.

The fact that the signs coincide in only two letters is not sufficient to consider them similar, as their overall visual impressions are different, because of the differing letters and remaining different elements of the contested sign.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121). The same reasoning also applies to marks/elements that do not have the same number of letters, but a similar number of letters (e.g. four versus five letters, as in the present case).

Furthermore, the signs differ in the co-dominant and distinctive figurative element in the contested sign and in the less dominant additional verbal elements ‘one for you. one for me.’, which have no counterparts in the earlier mark.

Taking into account the above, the signs are visually not similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark, ‘JOVI’, and the co-dominant verbal element of the contested sign, ‘yoobi’, will be pronounced by part of the relevant public (e.g. the Dutch- and German-speaking parts of the public) as ‘JOVI’ and ‘JOBI’. The pronunciation differs for these parts of the relevant public in the sound of the letters ‘V’ in the earlier mark and ‘B’ in the contested sign, which will clearly be perceived due to the short length of those words. For the remaining part of the relevant public, the pronunciation will differ more. In addition to the difference in the letters ‘V’ and ‘B’, part of the relevant public will also pronounce the letters ‘O’ and ‘OO’ differently, and another part will even pronounce the first letters, ‘J’ and ‘Y’, differently. Moreover, the letters ‘V’ and ‘B’ will be pronounced the same for the Spanish-speaking public, but the first letters, ‘J’ and ‘Y’, and the letters ‘O’ and ‘OO’ will create aural differences between the signs.

Furthermore, the signs differ aurally in the sound of the additional less dominant verbal elements, if pronounced.

Therefore, the signs are aurally similar to a higher-than-average degree for part of the relevant public and aurally similar to an average or low degree for another part of the relevant public.

Conceptually, although the public in the relevant territory will perceive some elements with a meaning in the contested sign (the figurative element and the less dominant verbal elements), as explained above, 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.

d) 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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

e) 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. 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 earlier mark is assumed to have enhanced distinctiveness. The relevant public is the public at large and a professional public, the degree of attention varies from average to higher than average.

The goods are or are assumed to be partly identical (contested goods in Class 16), partly similar to an average degree (contested services in Class 41), partly similar to a low degree (some of the contested services in Class 35) and partly dissimilar (some of the contested services in Class 35).

The signs are visually not similar and aurally, for at least part of the relevant public, similar to a higher-than-average degree. Conceptually, the signs are not similar.

The opponent’s goods in Classes 16 and 28, and the contested goods in Class 16 assumed to be identical to those goods, are books, stationery, art/craft items and toys. Those goods are commonly purchased in establishments where goods are arranged on shelves or are offered for visual inspection by the shopkeeper when the public asks to see them. Therefore, consumers are guided by the visual impact of the mark they are looking for. Consequently, the visual impression is clearly of primary importance for the goods in Class 16, outweighing the aural impression.

Although the aural aspect might be equally relevant in relation to the contested services in Classes 35 and 41, those services are only similar (Class 41) and similar to a low degree (some of the contested services in Class 35) to the opponent’s goods in Classes 16 and 28 and some even dissimilar (some of the contested services in Class 35).

With respect to the contested services that are dissimilar, namely some of them in Class 35, 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 services cannot be successful.

The Opposition Division has assumed in section d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The strong visual and conceptual differences between the marks, and the fact that the identical goods in Class 16 are bought after a visual inspection, and that some of the contested services in Classes 35 and 41 are not identical, but only similar to an average and to a low degree, counterbalance the aural similarities and lead to the conclusion that the relevant public will be able to safely distinguish between the signs, even if the earlier mark has enhanced distinctiveness.

The opponent 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 EUTMR, 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 opponent are not relevant to the present proceedings, as those cases are not comparable to the present case. The marks referred to had more letters in common and were more similar overall than the marks in the present case (e.g. 10/05/2017, R 1768/2016‑4, YOOPY / JOOP et al.; 10/11/2016, B 2 558 958; 29/09/2008, R 27/2008‑2, Neemisis / NEMASYS) and/or the goods and services in question were different from those in the present case (10/11/2016, B 2 558 958). The case of 31/05/2018, B 2 934 761, JOVI-COLOR v HOBBYCOLOUR were much more similar than the marks in the present case. In the previous case, the marks were long marks, which were found to be visually similar to a low degree (due to the similarities in the second, less distinctive parts of the signs), aurally almost identical (because their pronunciations might differ only in their penultimate letters) and conceptually identical, while in the present case, the marks are relatively short, clearly differ aurally in at least one letter and are visually not similar, for the reasons explained in section c) of this decision.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of reputation at this stage.

The opponent has also based its opposition on earlier European Union trade mark registration No 283 762 for the figurative mark .

This earlier right invoked by the opponent is less similar to the contested sign. This is because it contains further figurative elements that are not present in the contested sign. Moreover, in addition to the goods in Classes 16 and 28, it covers goods in Class 2, such as paints and dyes, which cannot create a higher degree of similarity than the ones found in the comparison of the goods and services, as analysed in section a) above. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

The examination of the opposition will now proceed to the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to its earlier European Union trade mark registrations No 5 298 708 and No 283 762.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

Preliminary remark

According to Rule 19(3) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), the facts, evidence and arguments in support of the opposition must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, some of the evidence filed by the opponent is not in the language of the proceedings.

On 23/07/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired, after some extensions, on 28/11/2017.

The opponent did not submit all the necessary translations, as will be indicated in the summary of the evidence below.

According to Rule 19(4) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Taking into account the above, the Opposition Division will only take into account the evidence translated into the language of the proceedings and the evidence that despite being in Spanish is self-explanatory.

Reputation

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 23/02/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

• European Union trade mark registration No 283 762 for the figurative mark

Class 2: Paints, varnishes, lacquers; colorants; mordants; paints and dyes.

Class 16: Water-colours (paintings), adhesive tape dispensers (stationery), adhesive tapes, adhesives (glues) for stationery or household purposes, modelling clay, pads (stationery), rubber erasers, catalogues, modelling wax not for dental purposes, exercise books, indian inks, drawing and modelling instruments and articles, instructional and teaching materials (except apparatus), school supplies (stationery) including paint boxes, writing materials including pencils, balls for ball-point pens and fountain pens, drawing sets, plastics for modelling, palettes for painters, modelling paste, pen cases, pencil holders, propelling pencils, penholders, pencil sharpeners, blotters.

Class 28: Toys for handicrafts relating mainly to painting, drawing and modelling, explicitly excluding construction toys.

• European Union trade mark registration No 5 298 708 for the word mark ‘JOVI’

Class 16: Water colours (paintings), adhesive tape dispensers (stationery), adhesive tapes, adhesives (glues) for stationery or household purposes, modelling clay, pads (stationery), rubber erasers, catalogues, modelling wax not for dental purposes, exercise books, indian inks, drawing and modelling instruments and articles, instructional and teaching materials (except apparatus), school supplies (stationery) including paint boxes, writing materials including pencils, ball-point pens and fountain pens, drawing sets, plastics for modelling, palettes for painters, modelling paste, pen cases, pencil holders, propelling pencils, penholders, pencil sharpeners, blotters.

Class 28: Toys for handicrafts relating mainly to painting, drawing and modelling; toys.

Class 39: Distribution of school requisites, stationery, games and playthings.

The opposition is directed against the following goods and services:

Class 16: Printed matter; books; children’s activity books; children’s storybooks; coloring books; comic books; poster books; graphic novels; magazines; journals; address books; index cards; notebooks; notepads; self-stick notes; diaries; composition books; bookmarks; posters; calendars; book covers; scrapbook albums; sticker albums; sketchbook albums; photograph albums; adhesive-backed photographs; arts and crafts paint kits; markers; pens; highlighter pens; writing instruments; erasers; pencils; pencil cases; pencil sharpeners; decorative pencil top ornaments; rulers; drafting, drawing and ungraduated rulers; notebook dividers; notebooks; writing grips; glue for stationery, school or household purposes; glue sticks for stationery, school or household purposes; bookmarks; folders; binders; push pins; paper clips; paper staplers; staple removers; slate boards for writing; stencils; rubber stamps and stamp pads; activity kits consisting of stickers and stamps; heat applied appliqués made of paper; decals and transfers; stickers; adhesive tape; adhesives and adhesive bands for stationery or household purposes; coasters made of paper; paper pennants; postcards; trading cards; paper; stationery; writing paper; envelopes; memo pads; lunch bags; adhesive corners for photographs; paper for printing photographs; animation cells; art prints; chalk; crayons; modeling materials and compounds for use by children; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and bookmarks; paper party decorations; paper cake decorations; paper party supplies, namely paper hats, paper party favors, paper napkins, paper placemats, paper gift wrap and paper gift wrapping ribbons, paper table cloths and paper party bags; gift bags printed invitations; greeting cards; crossword puzzles; desktop or personal organizers; organizers for stationery use.

Class 35: Retail and online retail store services featuring school supplies, stationery, stationery supplies, desktop and other personal organizers, containers, calculators, computer data storage devices, accessories for personal electronics and digital devices, furniture, backpacks, bags, luggage, books, arts and crafts materials, clothing, jewelry and fashion accessories.

Class 41: Entertainment and education services; educational and entertainment services, namely, media production services for motion pictures, television and Internet; providing educational information regarding the status and educational needs of schoolchildren in the field of school supplies; providing educational and entertainment information in the fields of current events and entertainment for a socially conscious audience via a global computer network system; entertainment and educational services in the nature of competitions in the fields of entertainment, education, culture, sports, and other non-business and non-commercial fields; charitable donation services, namely, providing school supplies and educational materials and supplies to students and schools.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 28/11/2017 the opponent submitted the following evidence:

 Document No 1: copy of documentation from the website www.jovi.es, dated 06/02/2017, giving information in English on the opponent and its history. The extract demonstrates the mark and states, inter alia, ‘A company with more than 75 years of experience. … With over 75 years of experience, JOVI is a world leader in its sector, present in 80 countries’. The goods shown are writing goods, such as pencils, highlighters, chalks, erasers, paint, paint brushes, modelling paste, clay.

 Document No 2: information in Spanish, not translated, on the presence of the opponent at different international fairs in Europe and abroad, for example, ‘Paperworld’s Fair’ (Frankfurt, 2010).

 Document No 3: information in Spanish, not translated, on collaborations with different entities in Spain, for example, with Foundation ‘Institut Amatller’ (2010) and ‘Rik & Rok’ (2010).

 Document No 4: information in Spanish, not translated, on workshops and formative courses organised by the opponent (2010).

 Document No 5: copies of some invoices dated 2000-2004 addressed to clients in Spain regarding ‘JOVI’ goods showing the mark on top of them and the word ‘JOVI’ in some of the goods descriptions.

 Document No 6: copies of several articles, dated 2014, published in the Spanish press. Although the evidence is not translated, it demonstrates that ‘JOVI’ appeared on some occasions in the Spanish press and many articles refer to the ‘75^th anniversary’ of the mark. The articles also demonstrate pictures that include the mark and some of the goods sold under it (e.g. moulding clay and pencils).

 Document No 7: copy of the annual report 2014 of ‘JOVI’ in Spanish, which includes information on the history of the mark, the turnover (EUR 15 million in 2013), its presence in 80 countries and the fact that it sells 85 million products per year, as summarised in the opponent’s arguments. The document also demonstrates that the mark has existed since 1939 and celebrates its 75th anniversary. There are many pictures of the goods sold under the mark, that is, different writing instruments, moulding clay, paint, etc.

 Document No 8: copy of the Spanish Patent and Trademark Office’s decision issued on 25/05/2012 in the case JOVI v OBBY COLOR NATIONAL PAINT, S.A. COLORANTE AL AGUA, admitting the distinctive character or reputation of the earlier marks in Spain.

 Document No 9: extracts from webpages showing the mark ‘JOVI’ in the product catalogues of school supplies distributors in Germany, France, Italy, Latvia, Lithuania, Malta, Poland, the Czech Republic, Slovakia and Romania.

 Document No 10: certification issued by the Barcelona Chamber of Commerce in Spanish (not translated), which, according to the opponent, is about the reputation of the trade mark ‘JOVI’ in the stationary industry.

When examining the evidence as a whole, it is clear that the earlier marks have been used in Spain since 1939 in relation to, inter alia, moulding, clay, paints and writing instruments. The opponent also claims on its website that it is a market leader in its sector and that it is present in 88 countries. However, these statements are not supported by the evidence submitted.

Although these facts and evidence might be an indication that the opponent’s marks have been on the market for a significant length of time, it is not enough to prove that the earlier marks have obtained a reputation.

The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public.

The opponent showed that it attended some trade fairs (document No 2). However, only one of the three fairs referred to by the opponent was in the European Union (Frankfurt) and, apart from the fact that this evidence was not translated into the language of the proceedings, no further information was given as to the importance and impact of that particular trade fair.

Moreover, the information on the collaboration with entities in Spain, workshops and formative courses (documents No 3 and No 4) is not translated and vague, it does not give any information on the type of collaboration or the importance of those collaborations.

The invoices (document No 5) only demonstrate that the opponent sold goods under its earlier marks, but do not give any information on the recognition by the relevant public.

The press articles (document No 6) are not translated and can, as explained above, only be taken into account to the extent that these are self-explanatory. They demonstrate that during 2014, the earlier marks appeared on several occasions in the Spanish press and they confirm that the earlier marks celebrated their 75th anniversary.

The annual report 2014 (document No 7) is also not translated and only very general information can be deducted from it.

Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted.

Although the opponent submitted a copy of the Spanish Patent and Trademark Office’s decision issued on 25/05/2012, admitting the distinctive character or reputation of the earlier marks in Spain (document No 8), the decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the national decision submitted by the opponent consists only of one page and does not give any further specific information to clarify on what evidence, facts or reasoning the outcome of this decision is based. Therefore, it is only one element that has to be evaluated together with the remaining evidence.

The same applies to the certification issued by the Barcelona Chamber of Commerce about the reputation of the trade mark ‘JOVI’ in the stationary industry (document No 10). Apart from the fact that this evidence is not translated, it does not give any information on what evidence the conclusion that the earlier marks are reputed is finally based. Although the reliability of certification by authorities is generally high, as emanating from independent and specialised sources, which attest facts in the course of their official tasks, the relevance of a certification to the specific case largely depends on its contents.

The evidence submitted by the opponent to prove the use of its earlier marks on 14/08/2018, after the substantiation deadline, does not contain, on its own or in combination with the evidence analysed above, any indications that would allow the Opposition Division to conclude that the earlier marks have become reputed. This evidence is largely overlapping with the evidence analysed above, and the additional items, such as invoices, price lists, contract with the opponent’s distributor, catalogues and some examples of advertisement, are only proving that the earlier marks have been used and can therefore not change the conclusions reached above.

As a result, the Opposition Division is of the opinion that the evidence taken as a whole does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Chantal VAN RIEL

Saida CRABBE

Mads Bjørn Georg JENSEN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.