OPPOSITION No B 2 863 317

Meinhard Mombauer, Toyota-Allee 54, 50858 Köln, Germany (opponent), represented by Bungartz Christophersen Partnerschaft mbB Patentanwälte, Im Mediapark 6A, 50670 Köln, Germany (professional representative)

a g a i n s t

Reflexshop Kft, Eötvös utca 39, 1067 Budapest, Hungary (applicant).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 863 317 is upheld for all the contested goods.

2. European Union trade mark application No 15 839 814 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 839 814 for the word mark ‘reflexshop’. The opposition is based on European Union trade mark registration No 2 609 956 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 28: Games and playthings, including electronic games, included in class 28; Soft toy animals and stuffed toy animals; Gymnastic and sporting articles, included in class 28, including roller skates and inline skates; Decorations for Christmas trees.

The contested goods are the following:

Class 28: Toys, games, playthings and novelties; Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Sporting articles and equipment.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

The opponent’s games are items designed to be played with. They overlap with the contested toys. Therefore, they are identical.

Games, playthings; sporting articles and equipment are identically contained in both lists of goods (including synonyms).

The contested novelties are defined, inter alia, as the plural of ‘a small and inexpensive toy or ornament’ (information extracted from English Oxford Dictionaries on 04/06/2018 at https://en.oxforddictionaries.com/definition/novelty) and are, as such, identical to the opponent’s games and playthings.

The contested festive decorations overlap with the opponent’s decorations for Christmas trees. Therefore, they are identical.

The contested fairground and playground apparatus are similar to the opponent’s gymnastic and sporting articles, included in class 28 that include goods such as basketball baskets, goal posts, and benches for sporting use or artificial climbing walls. The goods compared have a similar nature, purpose and method of use. They can also be in competition or complementary and can target the same relevant public.

The contested artificial Christmas trees are similar to the opponent’s decorations for Christmas trees as they can coincide in the relevant consumer and distribution channels. Furthermore, they are complementary.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers (e.g. fairground and playground apparatus).

The relevant public’s level of attention will vary from average to higher than average, depending on the price, sophistication and intended purpose of the goods.

3. The signs

	reflexshop
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that the public is likely to break a word into word elements which for him have a specific meaning or which resemble words know to him (see, by analogy, 13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). In the present case, although the word ‘reflexshop’ as a whole has no meaning for the relevant public, both English and non-English-speaking public, will split the sign into two elements, namely ‘reflex’ and ‘shop’, because the latter is a basic English word that will be perceived by most of the relevant public, including non-English-speaking, with its very clear meaning i.e. it will be understood as ‘a building, room, or other establishment used for the retail sale of merchandise or services’ (information extracted from Oxford English Dictionary on 04/06/2018 at http://www.oed.com/view/Entry/178518?rskey=SxncXk&result=1&isAdvanced=false#eid). The word is, therefore, non-distinctive in relation to the relevant goods because it will be perceived as the place where the goods are sold.

The elements ‘REFLECTS’ in the earlier trade mark and ‘reflex’ in the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public considering that the similar semantic contents in the English language speak in favour of likelihood of confusion and thus need to be examined more closely.

The element ‘REFLECTS’ could be perceived, inter alia, as the plural of ‘reflection’ (information extracted from Oxford English Dictionary on 05/06/2018 at http://www.oed.com/view/Entry/160910?rskey=5qbR4Y&result=1&isAdvanced=false#eid). Furthermore, part of the relevant public could perceive it as a misspelling of the word ‘reflex’, bearing in mind the relevant goods and that this element is pronounced in a similar way or even identical manner to the first element of the contested sign ‘reflex’.

The element ‘reflex’ could be perceived, inter alia, as ‘an image, reproduction; a thing which reflects or reproduces certain essential features or qualities of an original’ (information extracted from Oxford English Dictionary on 05/06/2018 at http://www.oed.com/view/Entry/160937?rskey=qYAUV0&result=1#eid).

Both ‘REFLECTS’ and ‘reflex’ have no clear and unequivocal meaning in relation to the relevant goods in Class 28 and, therefore, they are distinctive.

The figurative element of the earlier mark consists of two unfinished isosceles triangles, one pointing to the left and the other to the right. They could be perceived as a play button symbol. Bearing in mind that the relevant goods are, inter alia, games and playthings, and that triangles are commonly used shapes and in this case fulfil a merely decorative function, they are considered as of lower than average distinctive character.

It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the contested sign is depicted in lower or upper case letters, or in a combination thereof. atrac

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the first five letters ‘REFLE***’ of the distinctive elements ‘REFLECTS’ in the earlier mark and ‘reflex’ of the contested sign. In this regard, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

They differ in the last letters of the earlier mark ‘CTS’ and in the last letter of first element of the contested sign ‘x’. They also differ in the word ‘shop’ of the contested sign, although it is a non-distinctive element, and in the less distinctive figurative elements and rather standard typeface of the earlier trade mark.

In particular, the verbal element is prevalent, since when signs consist of both word and figurative components, the principle has been established that the word component 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 most readily refer to a sign by its verbal component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the figurative elements in the earlier mark are less relevant.

Overall, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘REFLE*’, present identically in both signs. Furthermore, the pronunciation of the last letters ‘CTS’ in the earlier mark and the sound of the letter ‘x’ in the contested sign is almost identical. The pronunciation differs in the sound of the element ‘shop’ of the contested mark, although this is element is non-distinctive, as described above.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by part of the relevant public with similar concepts in their most distinctive elements, whereas the additional concepts of both signs are less distinctive, as stated above, the signs are conceptually similar to an average degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar. The distinctiveness of the earlier sign as a whole is average. The degree of attention of the relevant public (public at large and professionals) could vary from average to high.

The signs are visually similar to an average degree and aurally highly similar on account of the visual coincidence in the first five letters and the almost identical sound of their distinctive elements, ‘REFLECTS’ in the earlier mark and ‘reflex’ in the contested sign. Finally the clear semantic similarity of their disctinctive elements also gives rise to an average conceptual similarity.

The additional differences partly relate to less distinctive elements (the triangles and typeface in the earlier mark) or to a non-distinctive element in the contested sign (the element ‘shop’).

Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 609 956. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Carlos MATEO PEREZ

Alexandra APOSTOLAKIS

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.