CANCELLATION No 20 182 C (INVALIDITY)

KMA Concepts Limited, Suite 1003, Silvercord Tower 1, 30 Canton Road, Tsim Sha Tsui, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Maclachlan & Donaldson, Unit 10, 4075 Kingswood Road, Citywest Business Campus, Dublin D24 C56E, Ireland (professional representative)

a g a i n s t

Magic Box Int. Toys, S.L.U., Plaça Xavier Cugat 2, Edifici D, Planta 2ª A, 08174 Sant Cugat del Vallés (Barcelona), Spain (EUTM proprietor), represented by Intelect Legal Services, Diputació, 304, 1º 4ª, 08009 Barcelona, Spain (professional representative).

On 17/09/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 16 164 204 is declared invalid for all the contested goods, namely:

Class 28: Games; toys.

3. The European Union trade mark remains registered for all the uncontested goods and services, namely:

Class 16: Paper; paperboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; trading cards.

Class 28: Decorations for Christmas trees; gymnastic articles.

Class 41: Game services provided on-line from a computer network; providing on-line electronic publications, not downloadable; television entertainment.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 16 164 204 ‘SUPERZINGS’, namely against some of the goods in Class 28. The application is based on, inter alia, international trade mark registration No 1 304 971 designating the European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that goods covered by both marks are identical and that the marks are similar overall. Therefore, there is likelihood of confusion between the marks. The promotional and laudatory message contained in the contested sign by the use of the word ‘SUPER’ is clear, and it is exclusively used for the purpose of presenting a claim about the superiority of those goods over those of the applicant.

The EUTM proprietor requested the applicant to file evidence of use for all the goods covered by earlier international trade mark No 1 089 808 ‘Zing’.

In reply, the applicant submitted evidence in order to prove the use of the earlier IR No 1 089 808 ‘Zing’.

The EUTM proprietor contested the evidence provided by the applicant. Furthermore, it claimed that the signs are sufficiently dissimilar to avoid a likelihood of confusion since they have a different number of syllables. Moreover, the word ‘SUPER’ cannot be separated from the other letters composing the contested mark and the signs demonstrate significant graphical differences.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 1 304 971 designating the European Union, which is not the object of the proof of use request.

1. The goods

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

Class 28: Action skill games; action target games; action-type target games; aero-dynamic disk for use in playing catching games; arrows; disc toss toys; hand-powered non-mechanical flying toy; mechanical action toys; mechanical toys; molded toy figures; plastic character toys; pop up toys; rubber character toys; tossing disc toys; toy airplanes; toy animals; toy bows and arrows; toy figures; toy gliders; toy guns; toy rockets; toy sling planes; toy weapons; water toys; water squirting toys.

The contested goods are the following:

Class 28: Games; toys.

Contested goods in Class 28

The contested games; toys include, as broader categories, the applicant’s action skill games and mechanical toys. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

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 are directed at the public at large with an average degree of attention.

3. The signs

	SUPERZINGS
Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the verbal element ‘ZING’. It will be perceived as meaningless and therefore has a normal degree of distinctiveness in relation to the relevant goods. The earlier mark also includes graphical elements (colours, typography and zigzag lines), which, due to their decorative nature, are less distinctive than the verbal element.

As far as the contested mark ‘SUPERZINGS’ is concerned, while average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, they will nevertheless, when perceiving a word sign, break it down into verbal elements which, for them, suggest a concrete meaning or which resemble words known to them (14/02/2008, T‑189/05, Galvalloy, EU:T:2008:39, § 62). Therefore, the relevant public in the European Union will understand immediately that the contested mark includes the internationally used word ‘SUPER’, which indicates that something is ‘very good, excellent, superb or of the highest quality or is especially well designed for its purpose’. In this context, the word ‘SUPER’ is a laudatory element and lacks any distinctive character. The verbal element ‘ZINGS’ will be perceived as meaningless and therefore has a normal degree of distinctiveness in relation to the relevant goods.

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

Visually, the signs coincide in the sequence of letters ‘ZING’, which is the only verbal element of the earlier mark. They differ in the figurative elements of the earlier mark as well as in the additional letters ‘SUPER****S’ of the contested mark.

In relation to the figurative elements, which are only included in the earlier mark, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, bearing in mind all the above as well as the fact that the word ‘SUPER’ lacks any distinctive character, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in sound of the letters ‘ZING’, which is the entire earlier mark. The signs aurally differ in the additional sound of the letters ‘SUPER****S’ of the contested mark, which have no counterparts in the earlier mark. As seen above, the word ‘SUPER’ is non-distinctive, and to this extent the signs are aurally similar to a high degree.

Conceptually, as seen above, the word ‘SUPER’ included in the contested mark will be perceived by the relevant public as a laudatory element meaning ‘very good, excellent’. To that extent, the signs are not conceptually similar. However, the difference has little impact in the comparison of signs as it lays on a non-distinctive element.

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.

According to the applicant, the earlier trade mark has a reputation in the European Union for all goods on which the application is based. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The applicant only submitted evidence in order to prove the use of earlier trade mark No 1 089 808 ‘Zing’. Since it was submitted before the closure of the adversarial part of the proceedings (period to substantiate a claim of reputation), the following evidence will be taken into account:

1. Affidavit signed by the director of KMA, dated 27/09/2018, stating that the applicant has been selling toys in the EU for many years. Moreover, it provides turnover figures.

2. List of ‘ZING’ trade marks registered by the applicant.

3. Images of ‘ZING’ games and toys.

4. An article published online in Oregon Business News with information about the applicant.

5. Print outs from e-commerce platforms that demonstrate ‘ZING’ products being offered online in the EU.

6. Copies of invoices of ‘ZING’ products sold to clients in various EU countries.

Despite showing some use of the trade mark, 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 provide independent information of 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 show that the trade mark is known by a significant part of the relevant public. Therefore, the Cancellation Division concludes that the evidence submitted by the applicant does not demonstrate that the earlier trade mark acquired either reputation or a high degree of distinctiveness through use.

Consequently, 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 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 goods are identical and the signs are visually similar to an average degree and aurally similar to a high degree. Conceptually, the signs are not similar. However, as mentioned above, the difference has little impact in the comparison of signs as it lays on a non-distinctive element.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The earlier mark, which enjoys a normal degree of distinctiveness, is reproduced in its entirety within the contested mark. The additional differing elements are mainly the non-distinctive word ‘SUPER’ of the contested mark and the less distinctive graphical elements of the earlier mark, which are not enough to counteract the similarities between the signs. Therefore, it is likely that consumers with an average degree of attention will associate the signs with the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion, including a likelihood of association on the part of the public.

Therefore, the application is well founded on the basis of the applicant’s international trade mark registration No 1 304 971 designating the European Union. It follows that the contested trade mark must be declared invalid for all the contested goods.

As the earlier international trade mark registration No 1 304 971 designating the European Union leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Frédérique SULPICE

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.