OPPOSITION No B 2 660 978

Hobbico, Inc., 1608 Interstate Drive, Champaign, Illinois 61821, United States of America, (opponent), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative)

a g a i n s t

Tower Pro OÜ, Narva mnt 5, 10117 Tallin, Estonia; Umemoto LLC, Misakicho 3-3-3 Chiyoda-ku, Tokyo 101-0061, Japan; Tower Pro Pte Ltd, 342 Ang Mo Kio Avenue 1 #03-1561D, Singapore 560342, Singapore (applicants).

On 30/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 660 978 is partly upheld, namely for the following contested goods in Classes 7 and 28:

Class 7: Engines for model vehicles; Motors for model aircraft; Motors for model boats; Engines and motors for model vehicles, aircraft and boats; Engines for scale models.

Class 28 (in its entirety): Scale model aeroplanes; Toy robots; Radio-controlled toys; Vehicles (Radio-controlled toy -); Radio controlled model vehicles; Radio-controlled toy vehicles; Radio controlled toy model cars; Electronically operated toy motor vehicles; Toy model vehicles; Electronic remote controlled toys; Remote controlled scale model vehicles; Electronic remote controlled toy vehicles; Battery operated remote controlled toy vehicles; Remote controlled toys in the form of vehicles.

2. European Union trade mark application No 14 818 521 is rejected for all the above goods. It may proceed for the remaining goods in class 7, namely Electric motors for machines; Electric motors for machines with a digital servo drive controller; Servomotors; Actuators for mechanisms.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods (in Classes 7 and 28) of European Union trade mark application No 14 818 521 (word mark:
“TOWER PRO”). The opposition is based on the following earlier trade marks:

• European Union trade mark registration No 318 139 (word mark: “TOWER HOBBIES”);

• Spanish trade mark registration No 2 041 386 (word mark: “TOWER HOBBIES”);

• Spanish trade mark registration No 2 115 011 (figurative mark:
  “ ”).

The opponent invoked Article 8(1)(b) and 8(5) EUTMR. Furthermore, the opposition is based on the non-registered United Kingdom trade marks “TOWER” and “TOWER HOBBIES”, for which the opponent invoked Article 8(4) EUTMR.

SUBSTANTIATION OF THE EARLIER SPANISH TRADE MARK REGISTRATIONS

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 10/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/07/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks. The Opposition Division will continue the examination of the opposition based on European Union trade mark registration No 318 139.

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.

1. The goods and services

The goods and services in Classes 9, 28 and 39 on which the opposition is based are the following:

Class 9: Electric and electronic devices for operating toy vehicles.

Class 28: Games, playthings, toy vehicles.

Class 39: Distribution services for toys.

The contested goods in Classes 7 and 28 are the following:

Class 7: Electric motors for machines; Electric motors for machines with a digital servo drive controller; Servomotors; Engines for model vehicles; Motors for model aircraft; Motors for model boats; Engines and motors for model vehicles, aircraft and boats; Engines for scale models; Actuators for mechanisms.

Class 28: Scale model aeroplanes; Toy robots; Radio-controlled toys; Vehicles (Radio-controlled toy -); Radio controlled model vehicles; Radio-controlled toy vehicles; Radio controlled toy model cars; Electronically operated toy motor vehicles; Toy model vehicles; Electronic remote controlled toys; Remote controlled scale model vehicles; Electronic remote controlled toy vehicles; Battery operated remote controlled toy vehicles; Remote controlled toys in the form of vehicles.

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 7

The contested Engines for model vehicles; Motors for model aircraft; Motors for model boats; Engines and motors for model vehicles, aircraft and boats; Engines for scale models have the same purposes, distribution channels, public and producers as the opponent´s goods in Class 28 toy vehicles. Therefore, they are similar.

The remaining Electric motors for machines; Electric motors for machines with a digital servo drive controller; Servomotors; Actuators for mechanisms have different natures and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 28

The contested Scale model aeroplanes; Toy robots; Radio-controlled toys; Vehicles (Radio-controlled toy -); Radio controlled model vehicles; Radio-controlled toy vehicles; Radio controlled toy model cars; Electronically operated toy motor vehicles; Toy model vehicles; Electronic remote controlled toys; Remote controlled scale model vehicles; Electronic remote controlled toy vehicles; Battery operated remote controlled toy vehicles; Remote controlled toys in the form of vehicles are included in the broad categories of, or overlap with, the opponent’s playthings, toy vehicles. Therefore, they are identical.

2. Relevant public – degree of attention

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

In the present case, the goods found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, because the goods will be selected carefully and are not acquired daily.

3. The signs

TOWER HOBBIES	TOWER PRO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Greek-speaking parts of the relevant public.

Both signs are word marks which are protected in all different typefaces.

Neither of the marks has any elements that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, both signs are word marks comprising two words. The first words, ‘TOWER’, are identical and the second words, namely ‘HOBBIES’ in the earlier trade mark and ‘PRO’ in the contested sign, differ from each other. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are visually similar to an above average degree.

Aurally, the first parts of the signs will be pronounced identically. The signs differ in their second words, namely ‘HOBBIES’ in the earlier trade mark and ‘PRO’ in the contested sign. The first words of each sign coincide in terms of rhythm, sound and pronunciation. Therefore, the signs are aurally similar to an above 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 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar and partly dissimilar. The signs are visually and aurally similar to an above average degree.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual and aural similarities between the signs, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods, there is, even taking account of the high degree of attention for a part of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish- and Greek-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The applicant has not filed any observations in reply. Therefore, its arguments cannot be examined.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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 shall 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.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 10/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/07/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

Under this legal basis, the opposition is filed for the non-registered trade marks “TOWER” and “TOWER HOBBIES”.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 10/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/07/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Konstantinos MITROU

Peter QUAY

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.