OPPOSITION No B 2 807 884

Diset, S.A., Calle C, nº3, Sector B, Zona Franca, 08040 Barcelona, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Sabina Mirca Zamboni, Via Navene Vecchia, 89, 37018 Malcesine (VR), Italy (applicant), represented by Benedetta Cacialli, Piazza Dei Giudici, 2, 50122 Firenze, Italy (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 807 884 is partially upheld, namely for the following contested goods:

Class 28: Games; arcade games; electronic games; toys.

Class 35: Wholesaling and retailing of games.

2. European Union trade mark application No 15 683 923 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 683 923 , namely against some of the goods and services in Classes 28 and 35. The opposition is based on, inter alia, Spanish trade mark registrations No 1 536 188 and No 1 536 189 . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registrations No 1 536 188 and No 1 536 189.

a) The goods and services

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

(1) Spanish trade mark registration No 1 536 188

Class 28: Games, toys, dolls.

(2) Spanish trade mark registration No 1 536 189

Class 35: Import-export, sole agency and representation services of all kind of games, toys, dolls and accessories.

The contested goods and services are the following:

Class 28: Costume masks; games; arcade games; electronic games; toys; decorations for Christmas trees; Christmas trees of synthetic material; artificial Christmas trees; decorations for Christmas trees; costume masks; paper hats [party novelties]; streamers [party novelties]; festive decorations and artificial Christmas trees.

Class 35: Wholesaling and retailing of games and party articles.

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 28

Games; toys are identically contained in the lists of the contested goods and of the goods covered by earlier mark (1).

The contested arcade games; electronic games are included in the broad category of the opponent’s games covered by earlier mark (1). Therefore, they are identical.

The contested decorations for Christmas trees (listed twice); Christmas trees of synthetic material; artificial Christmas trees; festive decorations and artificial Christmas trees; costume masks (listed twice); paper hats [party novelties]; streamers [party novelties] are dissimilar to the opponent’s games, toys and dolls covered by earlier mark (1), as these goods have different natures, purposes and methods of use and are usually manufactured by different undertakings and sold through different distribution channels. Furthermore, they are neither in competition nor complementary.

The contested goods are also dissimilar to the opponent’s services in Class 35 covered by earlier mark (2), since, apart from being different in nature, as services are intangible whereas goods are tangible, they serve different needs. The opponent’s import-export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are considered to relate to business administration, not to the actual retail or wholesale of goods. The opponent’s sole agency and representation services of all kind of games, toys, dolls and accessories involve a business assistance or organisation providing a particular service on behalf of another business, including those with an exclusive agreement to a particular company or territory. These are professional representation services provided by one enterprise to other enterprises as customers, related to promotion of the business’s goods in order to introduce them into the market. The opponent’s services are fundamentally different in nature and purpose from the manufacturing of goods. Therefore, the contested goods differ in their nature, purpose, commercial origin, relevant consumers and distribution channels from the opponent’s services in Class 35.

Contested services in Class 35

The contested wholesaling and retailing of games are similar to a low degree to the opponent’s games in Class 28 of earlier mark (1) that were found to be identical to the contested goods in Class 28, as indicated above. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

However, the contested wholesaling and retailing of party articles are considered dissimilar to the opponent’s goods in Class 28 of earlier mark (1), as similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can be found only where the goods involved in the retail services and the specific goods covered by the other mark are identical, and this condition is not fulfilled in the present case. These contested goods are also dissimilar to the opponent’s import-export, sole agency and representation services of all kind of games, toys, dolls and accessories of earlier mark (2), which are related to business assistance and administration and not to the actual retail or wholesale of goods. Consequently, these services have different natures and intended purposes and it would not be expected that they come from the same undertakings. The services in question would be distributed through different channels and have different relevant consumers. Moreover, they are neither complementary nor in competition.

1. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to a low degree are directed at the public at large and business customers in the toys and games market sectors. The degree of attention is considered to be average.

2. The signs

Earlier marks (1) and (2)
Earlier trade marks	Contested sign

The relevant territory is Spain.

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

The earlier marks are figurative marks consisting of the verbal element ‘LANINA’, depicted in stylised upper-case letters, and a figurative element above it that resembles a drawing of a little girl.

The contested sign is a figurative mark, consisting of the verbal element ‘1anina’, depicted in black stylised lower-case letters, with a red figurative element above it, depicting a stylised image of a boy and a girl holding hands. The verbal element ‘1anina’ may be perceived by the relevant public as the combination of the numeral ‘1’ and the meaningless word ‘anina’. However, due to the specific stylisation of this verbal element, at least part of the public will perceive this verbal element as ‘lanina’.

The degree of distinctiveness of the figurative elements of the earlier marks and the contested sign is limited in relation to the goods in question, as they may be perceived as alluding to the intended purpose of the goods, namely that these are games and toys for girls or children. By contrast, these elements have an average degree of distinctiveness in relation to the relevant services.

The word ‘LANINA’, present in the earlier marks and, when perceived as such by the relevant public in the contested sign, is meaningless and has an average degree of distinctiveness. However, when reinforced by the meanings of the figurative elements in the marks under comparison, which consist of or contain a depiction of a girl, part of the public might perceive it as a misspelling of ‘la niña’ meaning ‘the girl’. In this case, the distinctiveness of this element is limited in the same way as indicated above in relation to the figurative elements of the marks. However, whether these verbal elements in the marks under comparison will be meaningless or meaningful for the relevant public and if it leads to associations to the relevant goods, which could affect the distinctive character of these elements for this part of the public, is rather immaterial since due to the identity in the words they are both on an equal footing as concerns their distinctiveness.

Although the verbal element of the contested sign might also be perceived as ‘1anina’, the Opposition Division finds it appropriate first to focus the comparison of the signs on the part of the public that will perceive it as ‘LANINA’ or ‘la niña’, as this part of the public will be more prone to confusion due to the identity of the verbal element to those of the earlier marks.

As the verbal and figurative elements are similar in size, the earlier marks do not have any element that could be considered clearly more dominant than other elements. In the contested sign, however, the figurative element, due to its size and colour, is more visually eye-catching than the verbal element. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the verbal elements of the earlier marks and the contested sign will be the only elements by which the relevant consumers will refer to them and therefore these elements have a stronger impact than the figurative elements.

Visually, the earlier marks and the contested sign coincide in the verbal element ‘LANINA’. The signs differ in their stylisation, the figurative elements and, in the colours of the contested sign.

Although the abovementioned differing features create some visual differences between the earlier marks and the contested sign, considering the weight attributed to these elements (as explained above) and that the verbal element of the contested sign completely reproduces the verbal element of the earlier marks, the signs are considered visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LANINA’. The figurative elements of the earlier marks and the contested sign will not be referred to verbally by the relevant consumers. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier marks and the contested sign. As far as their verbal elements are concerned, they will convey the same meaning when perceived as ‘la niña’. The meanings conveyed by their figurative elements are similar insofar as they consist of or include the concept of a girl. Therefore, the signs are highly similar conceptually for this part of the public

For the part of the public that will perceive the verbal elements in all the signs as meaningless, the signs are conceptually similar to a low degree on account of the meanings conveyed by their figurative elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

3. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low in relation to the relevant goods in Class 28 for the part of the public that will perceive their verbal element as meaningful. However, despite the presence of weak figurative elements, the distinctiveness of the earlier marks must be seen as normal for the remaining part of the public that will perceive their verbal elements as meaningless.

4. Global assessment, other arguments and conclusion

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/or services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the contested goods are partly identical and partly dissimilar and the contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods and services, and they target the public at large and business customers who show an average degree of attention. The degree of distinctiveness of the earlier marks is low or normal, depending on the perception of their verbal elements.

The earlier marks and the contested sign are visually similar to at least an average degree and aurally identical, and the differences in their stylisation, figurative elements, and colours of the contested sign are not of such a nature as to distract the consumers’ attention from this commonality. Moreover, there is a conceptual link between the signs under comparison, especially for the part of the public that will perceive the same meanings in the verbal elements of the earlier marks and the contested sign.

Therefore, it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the goods covered are from the same undertaking or economically linked undertakings. Consequently, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier marks (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. As a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations No 1 536 188 and No 1 536 189.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade marks. Taking into account the abovementioned principle of interdependence, this also applies to the services found to be similar to a low degree, as the obvious similarities between the signs offset the low degree of similarity between these contested services and the opponent’s goods.

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 3 819 349 for the following goods:

Class 14: Girls’ costume jewellery.

Class 25: Fancy dress outfits for children.

Class 28: Bean bag dolls, stuffed toys and dolls in general, doll carriers and accessories for dolls.

The contested decorations for Christmas trees (listed twice); Christmas trees of synthetic material; artificial Christmas trees; festive decorations and artificial Christmas trees; costume masks (listed twice); paper hats [party novelties]; streamers [party novelties] in Class 28 and the contested wholesaling and retailing of party articles in Class 35 that were found to be dissimilar to the opponent’s goods and services in Classes 28 and 35 of earlier mark (1) and earlier mark (2), respectively, in section a) of this decision are, for the same reasons, also dissimilar to the opponent’s goods in Classes 14, 25 and 28 listed above, since, apart from being different in nature, these goods have different purposes and serve different needs from the contested goods and services. Furthermore, they have different methods of use and are usually manufactured by different undertakings and sold through different distribution channels. Furthermore, they are neither in competition nor complementary.

Consequently, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.