OPPOSITION No B 2 683 715

Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

SCS Trade UK Limited, Unit 3, The Old Print Works, 25 Tapster Street, Barnet, London EN5 5TH, United Kingdom (applicant), represented by Baron Warren Redfern, 1000 Great West Road, Brentford TW8 9DW, United Kingdom (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 683 715 is upheld for all the contested goods.

2. European Union trade mark application No 14 949 515 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 949 515. The opposition is based on European Union trade mark registration No 8 310 518. 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.

1. The goods

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

Class 9: Spectacles and sunglasses; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Mobile phone display screen protectors in the nature of films; Protective covers for smartphones; Glass covers for mobile phone screens.

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 goods

All of the contested goods, namely mobile phone display screen protectors in the nature of films; protective covers for smartphones; glass covers for mobile phone screens are specifically intended for the protection of mobile phones. The opponent’s goods are, inter alia, data processing equipment; apparatus for recording, transmission or reproduction of sound or images, which are broad categories of goods that include the products for which the applicant’s protective cases and films are specifically designed. Furthermore, the goods under comparison are often purchased and used together, since consumers tend to choose to buy a protective cover or film at the time of purchasing a mobile phone. In addition, the contested goods can also be manufactured by the same companies. In summary, the market reality shows that these goods can have the same target consumers, distribution channels and manufacturers and are also highly complementary to each other. Therefore, these goods are similar.

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 similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

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-speaking part of the relevant public.

The opponent’s mark is a figurative mark consisting of a black stylised image of a bull, the word ‘TORO’ in fanciful upper case letters and, underneath those two elements, the word ‘OSBORNE’ in much smaller standard upper case letters. The bull device and the word ‘TORO’ are the dominant elements of the mark, given their eye-catching position and size.

The contested sign is also a figurative mark, consisting of the letter sequence ‘IN*ORO’ with a device in the third position. The device, which is grey, resembles both the letter ‘T’ and a stylised image of a bull’s head, and it also performs the function of dividing the word element into two parts: ‘IN’ and ‘TORO’. The sign also includes, underneath this element, the word ‘GLASS’ in a standard typeface. None of these elements are clearly more dominant than the others; however, the element ‘IN*ORO’, including the device, is dominant, since it is larger than the other word element, it is depicted in two different colours and it is placed at the top of the sign.

Both marks contain the element ‘TORO’, understood by the Spanish-speaking public to mean ‘bull’, and this is reinforced by the device element in both signs, depicting a bull or a bull’s head. It should also be noted that the relevant consumers, when perceiving a verbal sign (or a verbal part of a sign, as in this case), will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This is particularly likely to be the case here, given that the coinciding element ‘TORO’ is visually separated from ‘IN’ by the unusual stylisation of the letter ‘T’, resembling a bull’s head. The remaining elements of the signs, ‘OSBORNE’ and ‘GLASS’, are meaningless in the relevant territory and they thus have a normal degree of distinctiveness.

Visually, the signs coincide in the word ‘TORO’. Furthermore, this is the dominant element of the earlier mark, while, in the contested sign, it is placed at the top. The signs differ in their typefaces, in the stylisation of the letter ‘T’ in the contested sign, in the ways in which their figurative elements are depicted and in the additional word elements, which are in secondary positions and will have less impact than the signs’ other elements. Since the earlier sign’s dominant part has significant similarities to the element at the top of the contested sign, thus creating a strong visual association between them, the signs must be considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘TORO’ and differs in their additional word elements, ‘OSBORNE’, ‘IN’ and ‘GLASS’. Since this aural coincidence results from the earlier sign’s dominant element and the contested sign’s initial, upper, part, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the concept of a bull, by both their verbal and their figurative elements, and the signs’ remaining elements will not convey any meaning. In fact, the distinctive concept of a bull is present in a rather emphatic way in both signs.

As a result, the signs are considered conceptually highly similar.

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 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

Account is taken of the fact that 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).

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are similar and the signs convey the identical concept of a bull. In addition, they have visual and aural similarities, while most of their differing elements will have a limited impact on the relevant public, given their smaller size and less significant position.

In fact, the contested sign replicates the earlier sign’s dominant element, both in the verbal element ‘TORO’ and in the concept of a bull.

Consequently, in spite of the differences in some of the word elements, there is a likelihood of confusion because the visual, aural and, in particular, conceptual coincidences are overwhelming.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-peaking part of the public. 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, and there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 310 518. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Solveiga BIEZA

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.