OPPOSITION No B 2 651 894

ShinHan Art Materials, Inc., ShinHan Bldg., 16-24 Bulkwang-Dong Eunpyung-Gu, Seoul, Republic of Korea (LA) (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Tombow Pencil Co. Ltd. 6-10-12 Toshima, Kita-Ku, Tokyo 114-8583, Japan (applicant), represented by Hoefer & Partner Patentanwälte mbB, Pilgersheimer Str. 20, 81543 Munich, Germany (professional representative).

On 20/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 651 894 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 of European Union trade mark application No 14 766 422. The opposition is based on European Union trade mark registration No 10 061 372. The opponent invoked Article 8(1)(b) EUTMR.

1. The goods

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

Class 16: Artists' materials; writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices and accessories for all of the same.

The contested goods are the following:

Class 16: Stationery; correction tapes; correction tape dispensers; correction fluids; adhesive for stationery or household purposes; adhesive tapes for stationery or household purposes; adhesive tape dispensers; writing instruments; writing ink; writing cases; erasers; rubber erasers; plastic erasers; pencil erasers; drawing instruments; glue for stationery or household purposes; pencils; color pencils; pencil sharpeners; pencil holders; crayons; fountain pens; fountain pen ink cartridges; ballpoint pens; ballpoint pen refills; rollerball pens; rollerball pen refills; mechanical pencils; marking pens; marking pen refills.

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.

The term ‘including’, used in the opponent’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).

Consequently, the opponent’s broader category writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices includes the following contested goods: writing instruments; drawing instruments; pencils; color pencils; crayons; fountain pens; ballpoint pens; rollerball pens; mechanical pencils; marking pens. Therefore, they are identical.

The contested stationery includes, as a broader category, or overlap with, the opponent’s writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices. 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 following contested goods fall into the broader category of the opponent’s accessories for all of the same [writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices]: correction tapes; correction tape dispensers; correction fluids; writing ink; writing cases; erasers; rubber erasers; plastic erasers; pencil erasers; pencil sharpeners; pencil holders; fountain pen ink cartridges; ballpoint pen refills; rollerball pen refills; marking pen refills. Therefore, they are identical.

The contested adhesive for stationery or household purposes; adhesive tapes for stationery or household purposes; adhesive tape dispensers; glue for stationery or household purposes have some points in common with the opponent’s writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices to the extent that they target the same public and have the same distribution channels. It follows that these goods are similar to a low degree.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

TOUCH
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 earlier mark is a word mark “TOUCH”.

The contested mark is a figurative mark composed of a black circle partially interrupted by an element which will likely be perceived as the letter “A”, followed by the letters “IR”, all in black. Below these letters the word “touch” is placed, written in smaller and finer black lowercase letters. The element “AIR”, together with the circle is the dominant element of the contested sign because it is the most eye-catching given its size and central position.

It should be noted that “TOUCH” refers to the act of coming so close to an object as to be or come into contact with it. This English word will also be understood by the French-speaking relevant public due to the equivalent “toucher”.

In part of the relevant territory “AIR” of the contested sign will be understood as the invisible gaseous substance surrounding the earth, a mixture mainly of oxygen and nitrogen. This English or French word may also be perceived in other parts of the relevant territory due to similar equivalents, e.g. Spanish aire, Italia aria, Romanian aer. For the rest of the public this term is meaningless.

Visually, the signs coincide in the element “TOUCH”. However, they differ in “AIR”.

They also differ in the stylisation of and the circle in the contested sign. It is true, as the opponent argues, that 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.

However, the verbal element of a sign does not automatically have a stronger impact (judgment of 31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (judgment of 23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). In addition, when the earlier mark is a word mark, the figurative elements of the contested sign may even play a decisive role in differentiating the signs.

In the present case, the contested sign’s dominant element “AIR”, due to its size, central position, and in particular being further accentuated by the large circle around it, clearly has a stronger impact on the consumer than the coinciding element “TOUCH”.

Therefore, the signs are visually similar to a low 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 “TOUCH”, present identically in both signs. The pronunciation differs in the sound of the letters “AIR” in the contested sign.

Therefore, the signs are aurally similar to a medium degree.

Conceptually, based on the above findings, the signs will be similar to an average degree for the English and French-speaking relevant public, on account of sharing the concept of “touch”, although they will also conceptually differ as far as the concept of “air” is concerned.

In the rest of the relevant territory, the signs will either be conceptually not similar, if the term “air” is understood in the contested sign, or a conceptual comparison will not be possible where neither of the signs has a perceptible meaning.

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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, § 22 et seq.).

It is true, in the present case, that the signs visually, aurally and for some also conceptually coincide as far as the word “TOUCH” is concerned.

However, the visual differences placed in the contested sign’s dominant element “AIR”, further accentuated by the circular design element, are sufficiently striking to render the coinciding element “TOUCH” secondary in the overall impression of the contested mark.

Moreover, it should be borne in mind that the goods themselves, stationery, writing and drawing instruments are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T 488/07, Egléfruit, EU:T:2010:145).

Consequently, given that the visual aspect is more important for the goods at hand, even if they are identical and especially if they are only lowly similar, the visual differences placed in the dominant element of the contested sign are considered sufficient to exclude a likelihood of confusion.

Considering all 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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.