DECISION

of the Second Board of Appeal

of 11 May 2021

In case R 1748/2020-2

Honor Metro Limited

Ste. 223-231 Tsimshatsui Ctr, 66 Mody Rd

Tsim Sha Tsui, Kowloon

Hong Kong Special Administrative Region of the People's Republic of China

Applicant / Appellant

represented by POTTER CLARKSON LLP, The Belgrave Centre, Talbot Street, Nottingham NG1 5GG, United Kingdom

Tamasu Butterfly Europa GmbH

Kommunikationsstraße 8

47807 Krefeld

Germany

Opponent / Defendant

represented by RDP RÖHL - DEHM & PARTNER, Moritzplatz 6, 86150 Augsburg, Germany

APPEAL relating to Opposition Proceedings No B 2 820 911 (European Union trade mark application No 15 547 409)

The Second Board of Appeal

composed of S. Stürmann (Chairperson and Rapporteur), C. Negro (Member) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 15 June 2016, Honor Metro Limited (‘the applicant’) sought to register the word mark

RAINBOW BUTTERFLY UNICORN KITTY

for the following list of goods and services:

Class 9 - 3-D glasses; accessories for mobile, portable and handheld devices, namely, battery chargers, headphones, speakers, cases, protective covers, protective display screen covers, wired and wireless ear buds, microphones and hands-free devices; audio speakers; batteries; bicycle helmets; blank flash drives; cameras; computer application software for mobile, portable and handheld devices for use in distribution and viewing of audio, video and audiovisual content and information relating to the field of entertainment; computer game programs, cartridges and discs; computer peripheral equipment; digital media, namely, pre-recorded DVDs, CDs, high definition digital discs, video cassettes, digital video discs, digital versatile discs, downloadable audio and video files, all featuring audiovisual and multimedia entertainment content; downloadable audio and video recordings featuring entertainment and music; downloadable audio, video and audiovisual multimedia content in the field of entertainment, namely, motion picture films and television shows; downloadable computer game programs; downloadable computer screen saver software; downloadable electronic game programs; downloadable electronic publications, namely, informational sheets, informational flyers, leaflets, newsletters, periodicals, style guides, books and manuals, all featuring information relating to audiovisual and multimedia entertainment content; downloadable image files containing artwork, text, audio, video, games and graphics relating to audiovisual and multimedia entertainment content; downloadable music files; downloadable ringtones for mobile phones, portable and handheld devices; downloadable video recordings featuring audiovisual and multimedia movie clips, movie trailers, interviews, reviews, commentary, music videos, motion pictures and television shows in the field of drama, action, adventure, animation, comedy, drama and science fiction; earbuds; electronic game software; eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor; eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; game software, including downloadable computer game application software, computer game software provided on CDs, DVDs, cartridges and memory cards; headphones; interactive computer game programs; magnetically encoded gift cards and encoded electronic chip gift cards; magnets; media players; phonograph records featuring music; pre-recorded DVDs featuring entertainment and music; pre-recorded media, namely, DVDs, CDs, high definition digital discs, video cassettes, digital video discs, digital versatile discs, and downloadable audio and video files, all featuring audiovisual and multimedia entertainment content in the field of drama, action, adventure, animation, comedy, drama and science fiction; protective carrying cases specifically adapted for mobile phones, MP3 players, cameras, personal digital assistants, portable media devices and handheld computers; radios; video game cartridges, video game cassettes, video game discs, video game software and video game programs; video games for mobile devices, personal computers, consoles, and tablets;

Class 16 - Activity kits consisting of stickers, stamp pads and toy stamps; address books; address labels; adhesive labels; adhesive note paper; adhesive notepads; adhesives for stationery or household purposes; agendas; appointment books; art pictures; art prints, artists' materials, namely, paint brushes, art pads, art paper, artists' pencils, artists' pens, arts and craft clay kits, arts and craft paint kits, chalk, chalk sticks, color pencils, colored pens, craft glue for stationery and household purposes; bathroom tissue; binders as stationery; blank cards; blank note cards; blank notebooks; blank or partially printed paper labels; blank writing journals; book covers; bookmarks; books; book-cover paper; calendars; cardboard hang tags; Christmas cards; coasters made of paper; coasters made of cardboard; comic books; craft paper; crayons; daily planners; decals and transfers; decorative paper centerpieces; decorative pencil top ornaments; diaries; drawing pads; drawing paper; drawing pencils; drawing rulers; drawing tablets; easel pads; engagement books; envelopes; erasers; facial tissue; felt marking pens; felt pens; felt tip markers; felt writing pens; felt-tip pens; flags and pennants of paper; folders; gift bags; graphic novels; graphic prints and representations; greeting cards; hand towels of paper; highlighter pens and markers; holiday cards; illustrated notepads; ink pens; iron-on transfers; letter paper; magazines in the field of entertainment and music; markers; mechanical pencils; memo blocks; memo pads; modeling clay; nail stencils; note cards; notebooks; notepads; occasion cards; paper; paper bags and sacks, paper banners; paper clips; paper gift cards; paper gift tags; paper gift wrap; paper gift wrapping ribbons; paper hang tags; paper note tablets; paper party bags; paper party decorations; paper cake decorations; paper cake toppers; paper clips; paper lunch bags; paper napkins; paper pennants; paper place mats; paper serviettes; paper staplers; paper table cloths; paper table linens; paper tissues; paper towels; party favor gift boxes sold empty; party goodie bags of paper; party ornaments of paper; pencil cases; pencil sharpeners; pencils; pens; photograph albums; photographs; picture books; picture postcards; poster books; posters; printed invitations; printed paper signs; rubber stamps; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, pencil sharpeners, writing grips, glue for stationery purpose; scrapbook albums; sketch books and sketch pads; slate boards for writing; stamp pads; staple removers; stationery; stencils; sticker albums; stickers; trading cards; wall stickers and murals; writing paper;

Class 18 - All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; beach umbrellas; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; parasols; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; umbrellas and covers therefor; vanity cases sold empty; wallets and wrist-mounted carryall bags;

Class 24 - Bath towels; beach towels; bed blankets; bed linen; bed sheets; bed spreads; cloth pennants; comforters; coverlets; curtains; drapery; duvet covers; duvets; fabric flags; fabric valances; felt pennants; household linen; kitchen towels; lap blankets; paper bed covers; pillow cases; pillow shams; place mats, not of paper; quilts; shower curtains; table cloths, not of paper; table linen; table napkins of textile; throws; towels; vinyl place mats;

Class 25 - Aprons; aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; costumes for use in children's dress up play; cover ups; dresses; ear muffs; flip flops; footwear; galoshes; gloves; Halloween costumes; Halloween costumes and masks sold in connection therewith; hats; headwear; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits;

Class 28 - Action skills games; action-type target game sets comprising toy gun, toy suction darts and target; amusement game machines; apparatus for electronic games adapted for use with an external display screen or monitor; arcade game machines; arcade games; audio and visual headsets for use in playing video games; balloons; balls for games; balls for juggling; balls for sports; basketballs; bath toys; battery-operated action toys; beach balls; bean bags; bendable play figures and accessories therefor; board games; bobble head dolls; body boards and leashes therefor; boomerangs; bubble-making wand and solution sets; card games; carnival masks; cases for action figures; cases for play accessories; checkers; chess sets; children's dress-up accessories; children's multiple activity toys; children's play cosmetics; Christmas tree ornaments and decorations that are neither confectionery nor illuminated; clothing for stuffed and plush toys; coin-operated game tables; collectable toy figures; confetti; construction toys; controllers for game consoles; costume masks; crib mobiles; crib toys; decorative wind spinners; dice; dice games; doll accessories; doll cases; doll clothing; doll costumes; doll furniture; doll houses; dolls; dominoes; drawing toys; Easter egg coloring and decorating kits; educational card games; electronic learning toys; floats for bathing and swimming; flying discs; footballs; game cards; handheld game consoles; infant toys; inflatable bath toys; inflatable bop bags; inflatable pool toys; inflatable swimming pools (play articles); inflatable pool toys; inflatable toys; in-line skates; jack-in-the-boxes; jigsaw puzzles; jump ropes; kaleidoscopes; kick board flotation devices; kites; latex squeeze toy figures; magic tricks; manipulative puzzles; marbles; mechanical action toys; memory games; mobiles for children; musical toys; paper dolls; paper face masks; paper party hats; paper streamers; parlor games; party favors in the nature of small toys and noisemakers; party games; pet toys; pinatas; pinball games; pinball machines (coin or non-coin operated); pinball-type games; plastic character toys; plastic party hats; plastic toy hoops; play swimming pools; play tents; playground balls; playing cards; playsets for action figures; playsets for dolls; plush toys; puppets; pull toys; push toys; puzzles; radio-controlled toy airplanes; radio-controlled toy robots; radio-controlled toy vehicles; ride-on toys; role playing games; roller skates; rubber balls; sand toys; skateboards and skateboard bags; skim boards; sling shots; snow boards; snow globes; snow saucers; snow sleds; soccer balls; spinning tops; squeeze toys; streamers; stuffed toys; surfboard leashes; surfboards; swim flippers; tabletop games; talking toys; target games; toboggans; toy action figures and accessories therefor; toy aircraft; toy and novelty face masks; toy animals; toy armor; toy banks; toy boats; toy bows and arrows; toy boxes; toy building blocks; toy construction sets; toy cosmetics; toy figures; toy film cartridges and viewers; toy hoop sets; toy play houses; toy play tents; toy robots; toy sand boxes; toy scooters; toy swords; toy tools; toy trains and parts and accessories therefor; toy vehicle playsets; toy vehicles and accessories therefor; toy watches; toy walkie-talkies; toy weapons; transforming robotic toys; video game consoles; vinyl dolls; water squirting toys; wind-up toys; yo-yos;

Class 41 - Amusement park rides; amusement parks; electronic publishing services, namely, publication of text and graphic works of others online featuring entertainment, science fiction, animation, novelizations, scripts, comic books, strategy guides, photographs, commentary and interviews; entertainment in the nature of a themed area in an amusement park; entertainment in the nature of an ongoing television series in the field of action, adventure, animation, comedy, drama and science fiction; entertainment services in the nature of development and production of multimedia entertainment content; entertainment services in the nature of development, production and distribution of audio visual television programs in the field of action, adventure, animation, comedy, drama and science fiction; entertainment services, namely, personal appearances by individuals and characters associated with motion pictures and television programs; entertainment services, namely, production and distribution of motion pictures; entertainment services, namely, production of television programs; entertainment services, namely, providing information, news and commentary in the field of entertainment; entertainment services, namely, providing online video games, providing online computer games, providing online interactive games, providing online electronic games, providing temporary use of non-downloadable video games, providing temporary use of non-downloadable computer games; entertainment services, namely, providing temporary use of non-downloadable interactive games, providing temporary use of non-downloadable electronic games, providing temporary use of non-downloadable video games via an on-demand service and providing temporary use of non-downloadable computer games via an on-demand service; fan clubs; multimedia publishing of movie trailers and film clips; presentation of live show performances; providing a website featuring entertainment information; providing a website featuring non-downloadable videos and images in the field of action, adventure, animation, comedy, drama and science fiction provided via global computer networks, wireless communication networks and portable device applications; theme parks.

The application was published on 13 October 2016.
On 19 December 2016, Tamasu Butterfly Europa GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application for a part of the goods, namely:

Class 18 – All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; parasols; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bags;

Class 24 – Bath towels; beach towels; kitchen towels; towels;

Class 25 – Aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; footwear; galoshes; gloves; hats; headwear; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits;

Class 28: Balls for games; balls for juggling; balls for sports; basketballs; beach balls; boomerangs; cases for play accessories; flying discs; footballs; in-line skates; kick board flotation devices; party games; playground balls; rubber balls; skateboards and skateboard bags; skim boards; snow boards; snow globes; snow saucers; snow sleds; soccer balls; surfboard leashes; surfboards; swim flippers.

The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR.
The opposition was based on the following earlier rights:

EUTM registration No 12 624 607 for the figurative mark

filed on 21 February 2014 and registered on 18 September 2014 for the following goods:

Class 18 - Casual bags, In particular travelling bags, handbags and sports bags;

Class 24 - Towels;

Class 25 - Clothing, in particular outerclothing, winter jackets, windbreaker jackets, fleece jackets, underwear, T-shirts, sports and leisure clothing, sports shirts, sports trousers, tracksuits, jogging suits and leotards, sweatbands and headbands; Knitwear (clothing), in particular jumpers, sweatshirts; Terry-towelling goods, namely bathrobes; Footwear, particularly athletic shoes for tennis and table tennis; Headgear, in particular hats and caps;

Class 28 - Sports and games equipment for table tennis and tennis, and parts therefor; Ball pitching machines; Tables for table tennis; Balls, including balls for sports and balls for games, golf balls; Tennis balls, Tennis balls; Racquets and bats, including tennis racquets, baseball bats, cricket bats, golf clubs and hockey sticks; Table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular handles, strings, grip tape and protective tape; Protective apparatus, including shin guards, knee, elbow and ankle guards for sports purposes; Roller skates and ice skates, inline skates; Table tennis nets and tennis nets; Nets for sporting purposes; Goal and ball nets; Start and finish banners, tapes and awnings for sports events; Privacy screens and partitions for halls and tennis courts, display boards for sports results, ball throwing machines, Skis, Ski bindings, Ski sticks, shot puts, Discuses, javelins, Darts, Bows and arrows, Billiard equipment, Gym clubs, Sport hoops, Snowboards, Surfboards, Skateboards, Ball inflators, Benches and seats for sporting use, Sleds, Jump ropes, Diving equipment.

EUTM registration No 11 145 109 for the word mark Butterfly, filed on 28 August 2012 and registered on 28 December 2012 for the following goods and services:

Class 24 - Towels;

Class 25 - Clothing, in particular outerclothing, winter jackets, windbreakers, fleece jackets, underpants, T-shirts, sportswear and leisurewear, sport shirts, sport trousers, training suits, jogging suits and leotards, sweatbands and headbands, knitwear, in particular stockings, socks, sports socks, sweaters, singlets, jersey clothing; Knitwear (clothing), in particular jumpers, sweatshirts; Terry-towelling goods, namely bathrobes; Footwear, particularly athletic shoes for tennis and table tennis; Headgear, in particular caps;

Class 28 - Sporting apparatus; Sports and games equipment for table tennis and tennis, and parts therefor; Ball pitching machines; Table tennis tables.

By decision of 29 June 2020 (‘the contested decision’), the Opposition Division upheld the opposition for a part of the contested goods, namely:

Class 18 – All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bags;

Class 24 – Bath towels; beach towels; kitchen towels; towels;

Class 28 – Balls for games; balls for juggling; balls for sports; basketballs; beach balls; boomerangs; cases for play accessories; flying discs; footballs; in-line skates; kick board flotation devices; party games; playground balls; rubber balls; skateboards and skateboard bags; skim boards; snow boards; snow globes; snow saucers; snow sleds; soccer balls; surfboard leashes; surfboards; swim flippers.

It gave, in particular, the following grounds for its decision:

The Opposition Division found it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration 12 624 607.

Contested goods in Class 18

The contested ‘all-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bags’ are all if not identical, then at least similar to the opponent’s casual bags, in particular travelling bags, handbags and sports bags. These goods are either included in, or overlap with, the broad category of the opponent’s goods or at least have the same distribution channels, target the same public and have the same commercial origin.
However, the contested parasols have no relevant links with any of the opponent’s goods. They have a different nature, purpose and method of use. They are neither complementary nor in competition. Their commercial origins are also different. These goods are considered dissimilar.

Contested goods in Class 24

Towels are identically included in both lists of goods.
The contested bath towels; beach towels; kitchen towels are included in the broad category of the opponent’s towels. Therefore, they are identical.

Contested goods in Class 25

Footwear; headwear are identically contained in both lists of goods (including synonyms).
The contested aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; galoshes; gloves; hats; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits are different types of clothing, footwear or headgear. As such these goods are included in the broad categories of the opponent’s clothing, in particular outerclothing, winter jackets, windbreaker jackets, fleece jackets, underwear, T-shirts, sports and leisure clothing, sports shirts, sports trousers, tracksuits, jogging suits and leotards, sweatbands and headbands; footwear, particularly athletic shoes for tennis and table tennis; headgear, in particular hats and caps. Therefore, they are identical.

Contested goods in Class 28

Skateboards; snow boards; surfboards; in-line skates are identically contained in both lists of goods.
The contested balls for games; balls for juggling; balls for sports; basketballs; beach balls; footballs; playground balls; rubber balls; soccer balls are included in the broad category of the opponent’s balls, including balls for sports and balls for games, golf balls. Therefore, they are identical.
The contested skim boards are a type of surfboards. They are included in the broad category of the opponent’s surfboards. Therefore, they are identical.
The contested snow sleds are included in the broad category of the opponent’s sleds. Therefore, they are identical.
The contested skateboard bags; surfboard leashes; cases for play accessories are similar to the opponent’s skateboards; surfboards, balls, including balls for sports and balls for games, golf balls. These goods have the same distribution channels and target the same public. They also have the same commercial origin.
The contested kick board flotation devices; swim flippers are similar to the opponent’s diving equipment. They have the same distribution channels, target the same public and originate from the same undertakings.
The contested boomerangs; flying discs; party games; snow globes; snow saucers; are similar to the opponent’s balls, including balls for sports and balls for games, golf balls as they are distributed through the same channels, target the same public and originate from the same undertakings.

Relevant public — degree of attention

In the present case, the goods found to be identical or at least similar are directed at the public at large.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
The relevant territory is the European Union.

Comparison of the signs

The common element ‘BUTTERFLY’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division found it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The verbal element ‘RAINBOW’ of the contested sign will be perceived as ‘an arch (= curved shape) of different colours seen in the sky when rain is falling and the sun is shining’ (information extracted from Cambridge English Dictionary on 09/06/2020 at https://dictionary.cambridge.org/dictionary/english/rainbow). The common element ‘BUTTERFLY’ will be understood as ‘a kind of insect’ by the relevant public. The element ‘UNICORN’ of the contested sign will be understood as ‘an imaginary white creature like a horse with a single horn growing from the front of its head’ (information extracted from Cambridge English Dictionary on 09/06/2020 at https://dictionary.cambridge.org/dictionary/english/unicorn). The verbal element ‘KITTY’ in the contested sign will be perceived as a reference to ‘a cat or kitten’. All these elements have no clear and evident meaning for the relevant goods and as such they are all considered distinctive.
The depiction of the figurative element of the earlier mark is not very elaborate and will not attract the consumer’s attention.
Visually, the signs coincide in the verbal element ‘BUTTERFLY’. The signs differ in the verbal elements ‘RAINBOW’ and ‘UNICORN KITTY’ of the contested sign. Even though the signs have different beginnings, the verbal element ‘BUTTERFLY’ is the only element of the earlier mark and is placed as the second verbal element in the contested sign, where it plays an independent role.
Moreover, although the contested sign is composed of four distinctive words, the verbal element ‘BUTTERFLY’ is the longest word of that sign (it is composed of nine letters versus the remaining seven- and five-letter words) and, as such will not go unnoticed by the relevant public.
Therefore, the signs are similar to a below-average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BUTTERFLY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘RAINBOW’ and ‘UNICORN KITTY’ of the contested sign, which have no counterparts in the earlier mark.
Therefore, the signs are similar to a below-average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the common element ‘BUTTERFLY’ and due to the fact that the contested sign does not constitute a concept as a whole but will be perceived as referring to four different concepts, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion proceeded.

Distinctiveness of the earlier mark

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’).
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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The Opposition Division found that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 624 607. As stated above, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. 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 goods cannot be successful.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there was no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there was no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
The opponent has also based its opposition on European Union trade mark registration No 11 145 109 for the word mark ‘Butterfly’.
This mark covers the same or a narrower scope of goods in Classes 24 and 25 as well as sporting apparatus; sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; table tennis tables in Class 28. The contested parasols have no direct points of contact with any of the opponent’s goods. They satisfy different needs, their natures, purposes, methods of use, providers and distribution channels are distinct. These goods are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
The examination proceeded with regard to European Union trade mark registration No 11 145 109 in relation to which Article 8(5) EUTMR has been invoked.

Reputation — Article 8(5) EUTMR

According to the opponent, the earlier trade mark has a reputation in the European Union, in particular in Germany.
The Opposition Division found that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.
If the evidence of reputation is not in the correct language, it must be translated into the language of the proceedings within the same period of four months, as required by Rules 16(1) and 17(3) EUTMIR. However, in view of the volume of documents often needed to prove reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues, etc.
Moreover, according to Article 81(2)(b) EUTMDR, the rules on translating the evidence applicable in the present case derive from Article 19(3) and (4) EUTMIR, which was in force when the adversarial part of the proceedings started. These articles state that the Office can only consider evidence that is submitted in the language of the opposition proceedings. Therefore, the documents that have not been translated will not be taken into account.
A substantial part of the evidence is in German, which is not the language of the proceedings. The self-explanatory evidence, such as catalogues and website printouts, showing goods bearing the trade mark ‘BUTTERFLY’ (albeit in a figurative form), and thus demonstrating use with regard to at least some of the relevant goods, does not require translation. However, the evidence also includes articles in German, which may provide indications of the extent of the recognition of the mark by the relevant public, but these have not been translated into the language of the proceedings and, therefore, cannot be taken into account.
Furthermore, the evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan or if the territory to which it relates is not clear, it will not be able to demonstrate reputation in the EU or in a Member State. Therefore, figures concerning sales in the EU as a whole, or worldwide sales, cannot demonstrate reputation in a specific Member State if the relevant data are not broken down by territory. In other words, a wider reputation must also be proven specifically for the relevant territory if it is to be taken into account.
The opponent claimed reputation in the European Union and particularly in Germany. However, very little of the evidence refers to this territory. The mere fact that some of the evidence is in German does not prove that the trade mark in question is recognised by the relevant German public. The internet printouts state that ‘Butterfly’ is the world leader in table tennis equipment and a sponsor of some international table tennis championships. They also state that ‘BUTTERFLY’ has been the leading brand of table tennis equipment in the United Kingdom for over 30 years and that many of the world’s best players use ‘BUTTERFLY’ blades or rubbers. However, the documents submitted are not sufficient to demonstrate that these claims are not merely laudatory promotional messages but based on surveys, market share or any objective information provided by independent sources. Moreover, the evidence is not sufficient to prove that the earlier trade mark has a reputation either in Germany or in the European Union.
The WIPO trade mark registration certificate does not indicate use of the mark or reputation, but only the fact of registration. The Google search results demonstrate some presence of the trade mark on the German market. However, they do not demonstrate the degree of the recognition of the trade mark by the relevant public.
Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concluded that the opponent failed to prove that its trade mark has a reputation.
Moreover, the opponent stated that its goods only target professionals. Therefore, the relevant public in relation to which the mark’s reputation should be assessed is a professional public, not the general public.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

On 25 August 2020, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 23 October 2020.
In its response received on 22 December 2020, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

The arguments raised in the statement of grounds may be summarised as follows:

The appellant submits that the EUIPO has carried out an incorrect assessment of the similarity between the goods at issue. It is submitted that some of the contested goods in Classes 18 and 28 are clearly dissimilar to the goods relied upon by the opponent. The EUIPO erred in considering that these goods are identical or similar to the opponent’s goods and has inadequately grouped together goods which do not share similar characteristics when justifying its conclusions.
In respect of Class 18, the Opposition Division considered that all the contested goods besides ‘parasols’ are, if not identical, at least similar to the opponent’s goods, given the broad category of the earlier goods.
Although it is accepted that the opponent’s goods, ‘casual bags’, constitute a relatively broad category of goods, it must be kept in mind that they are nevertheless a sub-category of the broader category ‘bags’. That is to say the term ‘casual’ in the earlier registration cannot be ignored and must be interpreted as such, meaning ‘informal’ and referring to bags meant to be used or worn in informal settings.
Therefore, it cannot be considered that the term ‘casual bags’ includes, or is similar to, for example, ‘beach umbrellas; umbrellas and covers therefor; suit bags; document cases; business case; vanity cases sold empty, cosmetic bags sold empty’. These goods have a different nature, serve a different purpose and do not typically originate from the same undertaking as ‘casual bags’.
Similarly, in respect of Class 28, it is submitted that some of the contested goods, for example ‘snow globes’ or ‘party games’ are clearly dissimilar to the opponent’s Class 28 goods. The opponent’s goods are concerned with physical activity and fitness, whereas ‘snow globes’ serve a decorative purpose, and ‘party games’ are used for entertainment purposes. As such, it is submitted that these goods have a different purpose, are directed towards different consumers and are not typically offered by the same undertakings.
Consequently, it is submitted that the EUIPO has carried out an incorrect assessment of the comparison between the respective goods.
The appellant submits that, in its assessment of the respective marks, the EUIPO incorrectly focused on only one of the four composing elements of the contested mark and failed to compare the marks as a whole. As a result, the EUIPO found that ‘the signs are visually and aurally similar to a below-average degree and conceptually similar to a low degree’. The appellant submits that, when considered as a whole, the respective marks are dissimilar from a visual, aural and conceptual perspective.
In reaching the conclusion that the marks are similar, the EUIPO focused its analysis on the shared element BUTTERFLY, which is the sole element of the earlier registration and the second element of the contested mark. The EUIPO failed to give sufficient consideration to the additional elements in the contested mark which play a significant role from a visual, aural and conceptual perspective, and distinguish the contested mark, as a whole, from the earlier registration.
The appellant notes that the EUIPO stated, at page 7 of the decision, that ‘although the contested sign is composed of four distinctive words, the verbal element “BUTTERFLY” is the longest word of that sign (it is composed of nine letters versus the remaining seven- and five-letter words) and, as such will not go unnoticed by the relevant public’.
The first issue with this statement is that the relevant public will see the contested mark in its entirety and will not proceed to count the letters of each constituent element. As such, when faced with the mark RAINBOW BUTTERFLY UNICORN KITTY, the element BUTTERFLY will not be the most visually striking element in the mark, being of similar perceptible size to RAINBOW or UNICORN and being the second element of the word mark.
Secondly, although the EUIPO correctly stated that the element BUTTERFLY will not go unnoticed by the relevant public (a fact uncontested by the appellant), the more relevant question to answer in this case is not whether the common element will go unnoticed, but rather: will the remaining elements of the contested mark go unnoticed?
If these elements go unnoticed, then it would be reasonable to assume that the marks are similar. However, the additional elements in the contested mark are of at least equal distinctive character as the element BUTTERFLY and, therefore, they will undoubtedly be noticed and remembered by the relevant public. Their size cannot be dismissed as negligible when compared to the element BUTTERFLY. To put matters into perspective, the additional elements of the contested mark constitute 19 letters out of a total of 28 letters and 7 syllables out of a total of 10. As such, these elements cannot be arbitrarily overlooked when comparing the respective marks.
Furthermore, considering that consumers pay more attention to the beginning of the marks, given that they read from left to right, it could be argued that the element RAINBOW, which is the first element of the contested mark, is more likely to be remembered by the relevant consumers than the element BUTTERFLY.
Therefore, it would be unreasonable to consider that the relevant consumers are more likely to remember the element BUTTERFLY in the contested mark as opposed to any of the other composing elements of the mark, particularly the element RAINBOW, which is placed at the beginning of the mark.
Furthermore, from a conceptual perspective, it is submitted that the relevant consumers will understand the earlier mark BUTTERFLY to refer to a type of insect, while the mark RAINBOW BUTTERFLY UNICORN KITTY will not be perceived as having any particular meaning, as the individual elements do not form a coherent phrase. As such, the contested mark will be perceived as an enumeration of unrelated words. At most, it could be considered that the mark refers to a number of items considered to be ‘cheerful’, ‘endearing’, etc. Therefore, the conceptual impression created by the respective marks is different.
In view of the above, it is submitted that the EUIPO carried out an incorrect assessment of the comparison between the marks, by focusing on one component of the contested mark. As such, the appellant submits that the EUIPO has failed to adequately consider the contested mark as a whole and, as a result, erroneously found the marks to be similar.
It is submitted that even if the respective goods are identical or similar, there would still be no risk of confusion between the earlier registration and the contested mark, due to the undeniable differences between the respective marks. It is submitted that the additional elements RAINBOW, UNICORN and KITTY in the contested mark are sufficient to grant the contested mark an overall impression which is distinguishable from the earlier mark, considering, in particular, their distinctive character.
The mere fact that the marks at issue share the element BUTTERFLY should not be enough to lead to a conclusion of confusing similarity.
The appellant contends that, given the overall impression created by the contested mark, there is no likelihood of confusion between the contested mark and the earlier registration despite the shared element BUTTERFLY.

The opponent essentially requests the Board to uphold the contested decision.

Reasons

The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Scope of appeal

In the current case, the applicant challenges the contested decision to the extent the Opposition Division found a likelihood of confusion pursuant to Article 8(1)(b) EUTMR with regard to the following contested goods:

Class 18: All-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bags;

Class 24: Bath towels; beach towels; kitchen towels; towels;

Class 25: Aqua shoes; athletic footwear; bandanas; bathing suits; beanies; berets; belts; bikinis; blazers; blouses; board shorts; body suits; boots; bow ties; boxer shorts; briefs; caps; cloth bibs; coats; cover ups; dresses; ear muffs; flip flops; footwear; galoshes; gloves; hats; headwear; headbands; hooded sweatshirts; hosiery; infant wear; jackets (clothing); jeans; jeggings; jerseys (clothing); jogging suits; jumpers; jumpsuits; knit shirts; leg warmers; leggings; leotards; lounge pants; loungewear; mittens; nightwear; one piece garment for infants and toddlers; overalls; overcoats; pajamas; pants; parkas; play suits; polo shirts; ponchos; pullovers; rain boots; rain hats; rain ponchos; rain slickers; raincoats; rainwear; rash guards; robes; rompers; sandals; scarves; shawls; shirts; shoes; shorts; skirts; skorts; sleep pants; sleep shirts; sleepwear; slipper socks; slippers; snow pants; snow suits; socks; sport shirts; stockings; stoles; surf wear; suspenders; sweaters; sweatpants; sweatshirts; swim caps; swim trunks; swimsuits; swimwear; T-shirts; tank tops; ties (clothing); tights; tops; undergarments; underpants; undershirts; underwear; vests; visors (headwear); warm up suits;

As the opponent did not file any cross-appeal, the remaining goods applied for are not subject to the current appeal. It follows that the contested decision has become final and the registration can proceed for:

Class 18: Parasols

and the goods not concerned by the opposition action as the opposition concerned only a part of the goods and services applied for.

EUTM No 12 624 607

The opposition is based on more than one earlier trade mark. The Opposition Division found it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 624 607. The Board will follow the same approach and examine the other earlier right only if necessary.

Article 8(1)(b) EUTMR

According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).
Likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade 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. (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

Relevant public

The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein).
The relevant public is composed of users likely to use both the goods covered by the earlier mark and the goods covered by the mark applied for (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23).
In the case at hand, the relevant goods are directed at the public at large and professionals (e.g., professional table tennis players). The degree of attention of the general public may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. The degree of attention of the professional public is higher than average (12/01/2006, T-147/03, Quantum, EU:T:2006:10, § 62).
The relevant territory is the European Union.
According to the case-law, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, for a EU trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) EUTMR exists in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57; 16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 21).
In the current case, the Opposition Division focused on the English-speaking part of the European Union, i.e. Ireland and Malta. For reasons of procedural economy, the Board will follow the same approach and take the remaining EU public into account only if necessary.

Comparison of the goods

Article 8(1)(b) EUTMR provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar. Therefore, in all cases it is necessary to consider the degree of similarity between the goods or services covered. In relation to the assessment of the similarity of goods or services the following factors, inter alia, should be taken into account: their nature, their purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28). Further relevant factors are the usual origin of the goods, the pertinent distribution channels (in particular sales outlets) and the relevant public.
In the current case, the Opposition Division held that the relevant contested goods in Classes 18, 24, 25 and 28 are identical or similar to the earlier goods.
The applicant challenges this finding only in respect of some of the contested goods in Classes 18 and 28.

Class 18

With respect to the contested goods in Class 18, the Opposition Division held that the contested

‘all-purpose sports bags; athletic bags; attaché cases; backpacks; beach bags; business cases; carry-on bags; clutch bags; cosmetic bags sold empty; credit card cases; document cases; duffle bags; fanny packs; garment bags for travel; handbags; key cases; knapsacks; leather shopping bags; luggage tags; mesh shopping bags; overnight bags; purses; roll bags; satchels; school bags; shoulder bags; souvenir bags; straps for handbags; straps for luggage; suit bags; suitcases; tote bags; travel bags; trunks; vanity cases sold empty; wallets and wrist-mounted carryall bags’

are all if not identical, then at least similar to the opponent’s

‘casual bags, in particular travelling bags, handbags and sports bags’

because these goods are either included in, or overlap with, the broad category of the opponent’s goods or at least have the same distribution channels, target the same public and have the same commercial origin.

The applicant argues that the earlier ‘casual bags’ do not include and are not similar to the contested ‘beach umbrellas’; ‘umbrellas and covers therefor’; ‘suit bags’; ‘document cases’; ‘business cases’; ‘vanity cases sold empty’, ‘cosmetic bags sold empty’.
The Board notes that ‘beach umbrellas’ and ‘umbrellas and covers therefor’ have not been mentioned in the Opposition Notice by the opponent and are therefore not concerned by the opposition action. Accordingly, the Opposition Division did not examine them.
The contested ‘suit bags’; ‘document cases’; ‘business cases’; ‘vanity cases sold empty’, ‘cosmetic bags sold empty’, are all various types of bags. They have thus the same nature as the earlier ‘casual bags, in particular travelling bags, handbags and sports bags’. In addition, like the earlier ‘casual bags, in particular travelling bags, handbags and sports bags’, the aforementioned contested goods serve to carry things. They have thus the same intended purpose. The conflicting goods can also be produced by the same manufacturers and sold by the same retail outlets. Therefore, the Opposition Division was correct to view them as similar (14/02/2020, R 1702/2019-2, Fer j (fig.) / my way FER (fig.), § 19; 17/01/2020, R 674/2019-2, DARSTELLULNG EINES KREUZES AUF EINEM SCHWARZEN HINTERGRUND (fig.) / DARSTELLUNG EINES KREUZES (fig.), § 27).

Class 28

With respect to the contested goods in Class 28, the Opposition Division held that, among others, the contested ‘snow globes’ and ‘party games’ are similar to the earlier ‘balls, including balls for sports and balls for games, golf balls’ as they are distributed through the same channels, target the same public and originate from the same undertakings.
The applicant argues that the contested ‘snow globes’ and ‘party games’ are dissimilar to the earlier goods.
With regard to the contested ‘party games’, the Board confirms the assessment of the Opposition Division. In particular, ‘party games’ can include ball-based party games. By way of example, ping pong, paint ball and minigolf are sometimes used as party games. It follows that the earlier ‘balls, including balls for sports and balls for games, golf balls’ and the contested ‘party games’ can have the same manufacturers, target the same public, have the same general purpose (to entertain), be sold through the same outlets and be complementary to each other. Therefore, they are similar.
On the other hand, the Board agrees with the applicant that the contested ‘snow globes’ are dissimilar to the earlier goods.
In particular, ‘snow globes’ are toys or ornaments in the form of a transparent dome that encloses a model of a scene and a liquid containing loose white particles which, when shaken, creates the appearance of a snowstorm. Contrary to the view taken by the Opposition Division, they are not distributed through the same channels, do not target the same public and do not originate from the same undertakings as the earlier ‘balls, including balls for sports and balls for games, golf balls’. They do not have the same purpose or nature as the earlier ‘balls, including balls for sports and balls for games, golf balls’ and are neither complementary nor in competition with them. It follows that they are dissimilar to them.
The contested ‘snow globes’ are neither similar to any other earlier goods. In particular, the earlier goods include mainly (1) casual bags; (2) towels; (3) clothing; (4) knitwear (clothing); (5) bathrobes; (6) footwear; (7) headwear; and (8) various types of sport-related equipment. As stated above, ‘snow globes’ are ornaments or toys that create the appearance of a snowstorm inside their dome. They serve decorative purposes. None of the earlier goods are purely decorative items. Rather, they all serve a utilitarian purpose. They are manufactured by different companies than those who produce the contested ‘snow globes’, target a different type of public, are distributed by different retail outlets and serve a different purpose.

Remaining contested goods

The applicant does not challenge the assessment of the Opposition Division concerning the remaining contested goods. Bearing in mind that the Board may adopt the grounds of a decision taken by the Opposition Division which will in that way make up an integral part of the reasons for the Board’s own decision (13/09/2010, T-292/08, Often, EU:T:2010:399, § 48; 11/09/2014, T-450/11, Galileo, EU:T:2014:771, § 36), the Board refers to and endorses the reasoning set out in the contested decision. It follows that the conflicting goods are identical or similar.

Comparison of the marks

The signs to be compared are:

RAINBOW BUTTERFLY UNICORN KITTY

Earlier EUTM

Contested sign (word mark)
The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).
The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333 § 42).
In light of the foregoing, before examining whether there are any visual, phonetic and conceptual similarities between the marks at issue, the Board will make an assessment on the distinctive and dominant elements of the marks at issue (12/11/2015, T-449/13, WISENT / ŻUBRÓWKA BISON BRAND VODKA, EU:T:2015:839, § 60-61).

Distinctive and dominant elements

In the present case, the earlier mark is a figurative mark that consists of the slightly stylised word ‘BUTTERFLY’.
The English word ‘BUTTERFLY’ refers to ‘an insect with large colourful wings and a thin body’ (https://www.collinsdictionary.com/dictionary/english/butterfly, 07/04/2021). The word ‘BUTTERFLY’ is distinctive in relation to the earlier goods.
The stylisation of the word ‘BUTTERFLY’ is not very elaborate and will not attract the consumer’s attention.
The contested sign is a word mark consisting of the words ‘RAINBOW BUTTERFLY UNICORN KITTY’. All these words are meaningful to the English-speaking public. In particular,

the English word ‘RAINBOW’ refers to ‘an arch of different colours that you can sometimes see in the sky when it is raining’ (https://www.collinsdictionary.com/dictionary/english/rainbow, 07/04/2021);
the English word ‘UNICORN’ refers to ‘an imaginary animal that looks like a white horse and has a horn growing from its forehead’ (https://www.collinsdictionary.com/dictionary/english/unicorn, 07/04/2021);
the English word ‘KITTY’ is sometimes used as an affectionate way of referring to a cat or kitten (https://www.collinsdictionary.com/dictionary/english/kitty, 07/04/2021).

As correctly held by the Opposition Division, all these elements have no clear and evident meaning for the relevant goods and as such they are all considered distinctive.
None of the verbal elements of the contested sign is dominant.

Visual and phonetic comparison

In the present case, the signs coincide in the word ‘BUTTERFLY’ which is the only word of the earlier mark and the second word of the contested mark.
The signs differ to the extent that the contested mark contains the additional words ‘RAINBOW UNICORN KITTY’.
The Opposition Division held that, due to the coincidence in the word ‘BUTTERFLY’, the signs are visually and phonetically similar to a below-average degree. This conclusion was based on the fact that the verbal element ‘BUTTERFLY’ is the longest word of the contested sign and plays an independent role in that sign.
The applicant takes the view that the signs are visually and phonetically dissimilar because the contested mark contains additional verbal elements that are at least as distinctive as the shared element and will be noticed by the relevant public. The applicant also observes that the contested mark will be perceived as ‘an enumeration of unrelated words that do not form a coherent phrase’.
The Court of Justice has held, in relation to marks with a common component, that, where that component is identical to one of the conflicting marks, even if it cannot be regarded as dominating the overall impression, it must nevertheless be taken into account when assessing the similarity of those signs, if it plays an independent distinctive role in that mark. An element of a composite sign does not have such an independent distinctive role where that element forms, with the other element or elements of the sign taken as a whole, a unit which has a meaning different from that of those elements considered individually (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30, 36; 22/01/2010, C‑23/09 P, Ecoblue, EU:C:2010:35, § 45; 08/05/2014, C‑591/12 P, Bimbo Doughnuts, EU:C:2014:305, § 24-25; 08/06/2017, T‑6/16, Southern Territory 23°48'25''S, EU:T:2017:383, § 65-66; 24/09/2019, T‑497/18, IAK (fig.) / IAK - Institut für angewandte Kreativität, EU:T:2019:689, § 70-71).
It follows that, contrary to what has been argued by the applicant, in situations where one of the conflicting marks is identically reproduced in the other mark, the coinciding element does not have to be more distinctive than the other elements of the composite mark to find a similarity between signs sharing the common element. It is sufficient that the coinciding element plays an independent distinctive role in the composite sign, i.e. does not form, together with the other elements, a unit which has a different meaning than the meaning of those elements considered individually.
In the case at hand, the word ‘BUTTERFLY’ is the only element of the earlier mark and plays an independent distinctive role in the contested sign. In particular, as correctly noted by the Opposition Division, the word ‘BUTTERFLY’ is the longest word of the contested sign and therefore will be noticed by the consumers. It follows that it is at least at distinctive as the other elements. In addition, the word ‘BUTTERFLY’ does not form a unit with the other elements of the contested sign because, as confirmed by the applicant, the elements of the contested sign do not form a coherent phase.
In light of the above, the Board is of the view that the conflicting signs are visually and phonetically similar to at least a below‑average degree (see, to the same effect, 08/06/2017, T‑6/16, Southern Territory 23°48'25''S, EU:T:2017:383, § 69; 24/09/2019, T‑497/18, IAK (fig.) / IAK - Institut für angewandte Kreativität, EU:T:2019:689, § 78).

Conceptual comparison

The earlier sign refers to the concept of a butterfly, i.e. ‘an insect with large colourful wings and a thin body’, as discussed above.
With regard to the contested sign, the elements ‘RAINBOW BUTTERFLY UNICORN KITTY’ do not form, as discussed above, a coherent concept but will be perceived as an enumeration of four unrelated words referring four different concepts. Due to the presence of the additional words in the contested sign, there is a low degree of conceptual similarity between the signs on the account of the coincidence in the word ‘BUTTERFLY’ .

Distinctiveness of the earlier mark

In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking.
Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22‑23). As such, the distinctive character of a trade mark can be appraised only, firstly by reference to the goods in respect of which registration is sought and, secondly, by reference to the way it is perceived by the relevant public.
In the current case, the opponent explicitly claimed reputation and well-known character only in relation to one of the earlier rights, i.e. European Union trade mark registration No 11 145 109. The opponent did not claim that its European Union trade mark registration No 12 624 607, which the Board is currently examining, is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark No 12 624 607 will rest on its distinctiveness per se.
In view of the fact that the word ‘BUTTERFLY’ is normally distinctive in relation to the relevant goods, the distinctiveness of the earlier sign, as a whole, is normal.

Overall assessment of the likelihood of confusion

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
In the present case, the relevant public consists of the public at large and professionals. The degree of attention varies from average to high. The relevant goods are identical, similar and dissimilar. The signs are visually and phonetically similar to at least a below- average degree. The signs are conceptually similar to a low degree. The distinctiveness of the earlier sign is normal.
With regard to the goods that were found to be dissimilar, the requirements of Article 8(1)(b) EUTMR are not fulfilled. Therefore, the opposition cannot be upheld based on this opposition ground.
With regard to the remaining relevant goods, the Board finds that there can be a likelihood of confusion on the part of the relevant public.
In particular, the earlier mark ‘BUTTERFLY’ is entirely reproduced in the contested sign ‘RAINBOW BUTTERFLY UNICORN KITTY’. Also, the word ‘BUTTERFLY’ plays an independent distinctive role in the contested sign as the elements of the contested sign do not form a unit with a different meaning than the meaning of those elements considered individually.
According to case-law, if a common element in the composite sign retains an independent distinctive role, the overall impression created by that sign may lead the public to believe that the goods or services in question come at least from economically-linked undertakings, which must then lead to a finding that there is a likelihood of confusion (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30, 36; 22/01/2010, C‑23/09 P, Ecoblue, EU:C:2010:35, § 45; 08/05/2014, C‑591/12 P, Bimbo Doughnuts, EU:C:2014:305, § 24-25; 08/06/2017, T‑6/16, Southern Territory 23°48'25''S, EU:T:2017:383, § 65-66; 24/09/2019, T‑497/18, IAK (fig.) / IAK - Institut für angewandte Kreativität, EU:T:2019:689, § 70-71).
This is the case here. In particular, it cannot be excluded that, due to the independent distinctive role played by the word ‘BUTTERFLY’ in the contested sign, the relevant consumers would perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of goods that it designates.
In light of the foregoing, taking into account the relevant factors and their mutual interdependence, there is reason to assume that a significant part of the relevant public will be misled into thinking that the goods bearing the signs in dispute come from the same undertaking or, as the case may be, from undertakings that are economically linked (see, to the same effect, 08/06/2017, T‑6/16, Southern Territory 23°48'25''S, EU:T:2017:383; 24/09/2019, T‑497/18, IAK (fig.) / IAK - Institut für angewandte Kreativität, EU:T:2019:689; 25/11/2020, T-802/19, KISS COLOR, EU:T:2020:568; 11/01/2021, R 228/2020-4, Spirit of America / Spirit et al.; 14/12/2020, R 120/2020-1, ARMOR MODS (fig.) / Armor; 03/09/2020, R 2872020-4, SONIC SKY (fig.) / sky (fig.) et al.).

Earlier decisions

The applicant refers to some earlier decisions of the Opposition Division (03/09/2020, B 3 076 540 concerning the signs BIANCA and CASA BIANCALUNA; 26/04/2016, B 2 472 192 concerning the signs VELVET and REVLON COLORSTAY VELVET SEDUCTION) to substantiate its arguments concerning the lack of a likelihood of confusion.
The Board recalls that the fact that other, earlier trade marks have been registered is only indirectly relevant with respect to the harmonised trade mark law of the European Union. Fundamentally, within the scope of harmonised European trade mark law, and even more so within the examination practice of the Office, attempts should be made to ensure that the same results are reached in comparable cases. However, decisions concerning registrability of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the registration must be assessed solely on the basis of the EUTMR and not on the basis of previous decision-making practice. Prior registrations merely constitute a circumstance which can be taken into consideration without, however, being decisive. The argument regarding the registrability of other trade marks is only relevant if it contains grounds that call into question the assessment by the first instance, which is not the case here however (12/02/2009, C-39/08 & C-43/08, Volks.Handy, EU:C:2009:91; 15/09/2005, C- 7/03 P, BioID, EU:C:2005:547, § 47, 51; 06/03/2007, T-230/05, Golf USA, EU:T:2007:76, § 57-64; 06/07/2011, T‑258/09, Betwin, EU:T:2011:329, § 76-84; 27/02/2015, T-106/14, Greenworld, EU:T:2015:123, § 36).
Finally, it would be contrary to the purpose of the Boards of Appeal as defined in Recital 30 and in Articles 66-71 EUTMR for its jurisdiction to be restricted by the obligation to respect the decisions of the first instance (28/06/2017, T-479/16, AROMASENSATIONS (fig.), EU:T:2017:441, § 42).
The Board has carefully considered the decisions referred to by the applicant. However, in view of the fact that they concern different signs and different goods, they are of limited relevance to the case at hand. Therefore, the Board decided to uphold the contested decision to the above-mentioned extent.

Other earlier marks and Article 8(5) EUTMR

As the opposition is successful based on Article 8(1)(b) EUTMR in relation to the European Union trade mark registration No 12 624 607 with regard to:

Class 24: Bath towels; beach towels; kitchen towels; towels;

Class 28: Balls for games; balls for juggling; balls for sports; basketballs; beach balls; boomerangs; cases for play accessories; flying discs; footballs; in-line skates; kick board flotation devices; party games; playground balls; rubber balls; skateboards and skateboard bags; skim boards; snow boards; snow saucers; snow sleds; soccer balls; surfboard leashes; surfboards; swim flippers.

there is no need to examine the other earlier right invoked by the opponent in relation to these goods, namely European Union trade mark registration No 11 145 109, and the other opposition ground, namely Article 8(5) EUTMR, claimed only in respect of this earlier mark.

European Union trade mark registration No 11 145 109

The opposition based on Article 8(1)(b) EUTMR in relation to the European Union trade mark registration No 12 624 607 was not successful with regard to the contested ‘snow globes’ in Class 28. Therefore, the Board will now examine European Union trade mark registration No 11 145 109 in relation to these goods.

Article 8(1)(b) EUTMR

As the European Union trade mark registration No 11 145 109 is registered for a very similar sign to the other earlier right, namely a word mark ‘Butterfly’ and a narrower scope of goods, the outcome of the examination of the European Union trade mark registration No 11 145 109 based on Article 8(1)(b) EUTMR with regard to ‘snow globes’ cannot be different than the examination of the European Union trade mark registration No 12 624 607 in relation to these goods.
In particular, ‘snow globes’ are dissimilar to the earlier (1) towels; (2) clothing; (3) knitwear (clothing); (4) bathrobes; (5) footwear; (6) headgear; and (7) ‘sporting apparatus; sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; table tennis tables’. As discussed above, ‘snow globes’ are ornaments or toys that create the appearance of a snowstorm inside their dome. They serve decorative purposes. None of the earlier goods are purely decorative items. Rather, they all serve a utilitarian purpose. They are manufactured by different companies than those who produce the contested ‘snow globes’, target a different type of public, are distributed by different retail outlets and serve a different purpose.
It follows that the opposition based on Article 8(1)(b) EUTMR is neither successful with regard to the contested ‘snow globes’ in Class 28 based on the European Union trade mark registration No 11 145 109.
The examination based on the European Union trade mark registration No 11 145 109 in relation to which Article 8(5) EUTMR has been invoked will now proceed in relation to ‘snow globes’ in Class 28.

Article 8(5) EUTMR

According to Article 8(5) EUTMR, an opposition to an application for a European Union trade mark may be founded on an earlier EU trade mark which has a reputation in the European Union or on an earlier national trade mark which has a reputation in the Member State concerned, even though the earlier mark is registered for goods or services which are not similar to the goods or services covered by the application for an EU trade mark, provided that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark.
The application of Article 8(5) EUTMR is subject to the following cumulative conditions:

the earlier mark claimed in the opposition must have a reputation;
the marks at issue must be identical or similar;
there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
there is no due cause justifying the use of the mark.

Since the above conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30).
The types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 23; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 41; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30).
The Opposition Division held that the evidence submitted by the opponent did not demonstrate that the earlier trade mark had acquired a reputation. The opponent disputes this finding.
The Board notes that the opponent specifically claimed reputation only for certain goods, namely ‘sporting apparatus; sports and games equipment for table tennis and tennis, and parts therefor; ball pitching machines; table tennis tables’ in Class 28 (see p. 4 of the Substantiation of Grounds of 28/07/2017). The opponent also explicitly stated that there is reputation only among professional table tennis players and ‘the [reputed] products are not addressed to the general public’(see p. 5 of the Substantiation of Grounds of 28/07/2017).
It follows that alleged reputation concerns only the specialised public (i.e., the professional table tennis players) and not the public the contested sign is addressed to, i.e. the general public.
According to the Court of Justice of the European Union, ‘It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks’ (27/11/2008, C‑ 252/07, Intel, EU:C:2008:655, § 48).
In accordance with the above, the case-law has also specified that, if the reputation does not go beyond the public concerned with the goods and services for which it was registered, the link between the signs is unlikely. This principle has been very recently confirmed in the VertiLight / VERTI judgment, in which the General Court held that, despite the coincidence in the word ‘VERTI’, the relevant public would not establish a link between the signs (28/04/2021, T‑644/19, VertiLight / VERTI, EU:T:2021:222, § 99).
The above principles are of major importance for the case at hand. Even if the earlier sign were even highly reputed among professional table tennis players, the public of snow globes, i.e. the general public, would not know the earlier mark. Thus, it is very unlikely that the general public would make an association between the two marks.
In addition, as discussed above, the relevant signs are similar only to a lower-than-average degree and the relevant goods are dissimilar. Also, the relevant market sectors are very far apart.
In particular, the conflicting goods belong to two completely different and not overlapping markets. ‘Snow globes’ are directed at home/decoration lovers, while the earlier goods are addressed at professional table tennis players. The conflicting goods are offered through different distribution chains, manufactured by different companies and marketed differently. The opponent’s goods revolve around physical activity and fitness, whereas ‘snow globes’ serve a purely decorative purpose and are of a fragile, easily breakable nature as ‘snow globes’ are mostly made of glass/plexiglass. The conflicting goods are also priced differently. ‘Snow globes’ are usually not very expensive and can be bought without much previous thought and planning. The earlier goods belong to professional sports equipment and are therefore more sophisticated and expensive.
In view of the above, the Board is of the view that it is unlikely that the relevant public will make a link between the conflicting signs (see to the same effect, 28/04/2021, T‑644/19, VertiLight / VERTI, EU:T:2021:222, § 99; 27/01/2021, R 202/2020-2, Ooshi / Oysho et al.).
It follows that the requirements of Article 8(5) EUTMR are not fulfilled.

Conclusion

The appeal is successful in relation to the following contested goods:

Class 28: snow globes.

The appeal is rejected, and the contested decision is upheld with regard to the remaining contested goods.

Costs

Pursuant to Article 109(3) EUTMR, where each party succeeds on some and fails on other heads, the Boards of Appeal shall decide a different apportionment of costs. As the appeal is successful in part, it is appropriate to order that each party bears its own costs in the appeal proceedings.
As to the costs of the opposition proceedings, the contested decision ordered that each party bears its own costs. These findings are not altered by the present decision.

Order

On those grounds,

THE BOARD

hereby:

Annuls the contested decision to the extent that application was rejected for the following goods:

Class 28: snow globes;

Rejects the opposition also for the above goods;
Dismisses the appeal in the remainder;
Orders the parties to bear their own costs in the opposition and appeal proceedings.

Signed

S. Stürmann

Signed

C. Negro

Signed

H. Salmi

Registrar:

Signed

H.Dijkema

11/05/2021, R 1748/2020-2, Rainbow butterfly unicorn kitty / BUTTERFLY (fig.) et al.

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	RAINBOW BUTTERFLY UNICORN KITTY
Earlier EUTM	Contested sign (word mark)