OPPOSITION No B 2 903 477

The Paper & Office Equipment Spain Ass, S.A. Poessa, Polígono Industrial Bakiola Nave 1, 48498 Arrankudiaga, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Modeverlag Lutterloh, Kemptener Strasse 84 88131 Lindau, Germany (applicant).

On 19/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 903 477 is partially upheld for the following contested goods and services:

Class 16: Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples.

Class 35: Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs.

Class 41: Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

2. European Union trade mark application No 16 432 023 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 and services of European Union trade mark application No 16 432 023 for the word mark ‘The Golden Rule’. The opposition is based on European Union trade mark registration No 14 536 726 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 and services

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

Class 16: Writing or drawing books; School writing books; Files [office requisites]; Binders; Document files [stationery]; File covers; Paper folders; Index files; Printed matter; Bookbinding articles; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Paper; Paperboard.

Class 35: Advertising; Supplying services for others (purchase of goods and services for other enterprise); Import, export and sole agencies; Management assistance for franchised businesses; Retailing in shops, via electronic means or via global computer networks of writing or drawing books, files, folders, paper, cardboard and office requisites.

The contested goods and services are the following:

Class 9: Rulers [measuring instruments]; Measuring rulers; Measuring tapes.

Class 16: Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers; Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves; Printed matter; Printed matter for instructional purposes; Printed material in the nature of color samples.

Class 35: Advertising; Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Provision of space on web-sites for advertising goods and services; Promoting the goods and services of others through discount card programs.

Class 41: Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet.

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 9

All the contested goods in Class 9 refer to various measuring instruments, namely rulers or tapes which serve to measure distances or to draw straight lines in orienting, geometry, technical drawing, etc.

Therefore, the contested Rulers [measuring instruments]; Measuring rulers; Measuring tapes serve technical activities and they have nothing in common with the classical office stationery which fall under Class 16 and refer to commercially manufactured writing materials. The goods in question do not share the same distribution channels and are not expected to be provided by the same undertakings as the opponent’s goods in Class 16. Furthermore, they are neither complementary nor in competition. Therefore the contested goods are dissimilar to the opponent’s goods in Class 16.

A fortiori, they are also dissimilar to the opponent’s services in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, the aforementioned goods and services have different methods of use and are neither in competition nor complementary. Moreover, they do not target the same public and are not distributed or offered through the same channels.

Contested goods in Class 16

The contested Printed matter is identically included in the opponent’s list of goods in Class 16.

The contested Printed matter for instructional purposes; Printed material in the nature of color samples are included in the opponent’s broader category of the Printed matter. Therefore, they are identical.

The contested Rulers; Straight edges for drawing; Ungraduated rulers; Drawing rulers are included in a broad category of the opponent’s stationery. Therefore, they are identical.

The opponent’s broad category of Instructional and teaching material (except apparatus) are the tools used in educational lessons, which includes active learning and assessment. Basically, any resource a teacher/instructor uses to help him teach his students is an instructional material. There are many types of instructional materials depending of the field of teaching. Sewing a wardrobe means feeling confident with sewing patterns. Consequently, learning to sew clothes will necessarily encompass instructional/teaching material such as contested Sewing patterns; Dressmaking patterns for drawing; Patterns for dressmaking; Patterns for making clothes; French curves. These goods cannot be clearly separated from a broad category of the opponent’s Instructional and teaching material (except apparatus). Consequently, they are identical.

Contested services in Class 35

The contested Advertising is identically listed in the opponent’s list of services in Class 35.

The contested Online advertisements; Computerised business promotion; Advertising services relating to the recruitment of personnel; Advertising and marketing; Advertising services relating to newspapers; Business promotion; Promotion of fairs for trade purposes; Promotion of special events; Classified advertising; On-line advertising on a computer network; Advertising services relating to clothing; Advertising in the popular and professional press; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Dissemination of advertising for others via the Internet; Promoting the goods and services of others through discount card programs serve to promote various business activities or reinforce the their owners’ position in the market through publicity. Therefore, they are all included in a broad category of the opponent’s Advertising. These services are identical.

The remaining Provision of space on web-sites for advertising goods and services also belongs to the opponent’s Advertising services since these services intend to promote other companies’ goods/services, albeit via different means. They are, therefore, identical.

Contested services in Class 41

All the contested Publication of printed matter; Publication of printed matter, other than publicity texts; Publication of printed matter in electronic form on the Internet are similar to the opponent’s School writing books in Class 16 as the goods and services are complementary and may be offered by the same producers/providers.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public will display an average degree of attention when encountering the relevant goods and services.

3. The signs

	The Golden Rule
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 earlier mark is a figurative mark composed of the verbal element ‘GOLDEN’, written in standard uppercase letters with the first letter ‘G’ slightly bigger than the rest of the letters and followed by a figurative element representing a shape of an apple in black and white.

The contested sign is a word mark composed of three verbal elements: ‘The Golden Rule’. In the case of word marks, it is the word as such that is protected and not its written form.

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

In the present case, the Opposition Division observes that the common term ‘GOLDEN’ will be understood by a part of the relevant public, in particular by the German or English-speaking part of the public as allusive of the exceptional quality of the goods and services in question. However, another part of the relevant public, such as the Spanish- , Polish- and French-speaking public, will not understand this term; indeed, the equivalent terms are in Spanish ‘dorado’, in Polish ‘złoty’ and in French ‘d’or’.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs in the part of the public for which the element ‘GOLDEN’ is meaningless and therefore has a normal degree of distinctiveness, such as Spain, Poland and France.

As for the additional elements, the verbal element ‘The’ is the most commonly used word in English being the only definite article used in the English language. This definite article is just a grammatical tool which serves to introduce the elements it precedes, in the case at hand ‘Golden Rule’ and, consequently, its role will be largely diminished in the assessment of the likelihood of confusion in the present case. Consequently, this element is less distinctive than the remaining terms of the earlier mark, namely the elements ‘Golden Rule’.

The last element of the contested sign ‘Rule’ does not convey any meaning for the relevant public at issue and, therefore, its inherent distinctiveness will be average in relation to the goods and services in question for the part of the public in the relevant territory.

The signs have no elements that could be clearly more dominant (visually eye-catching) than other elements.

Regarding the figurative elements of the earlier mark it must be noted that, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the public will pay less attention to the figurative elements of the earlier mark and will focus more on the verbal element of the sign which is its first element and will instantly perceive it as the badge of origin of the respective goods and services.

Visually and aurally, the signs coincide in the string of the letters constituting the element ‘GOLDEN’ which is the first element of the earlier mark and the first distinctive element of the contested sign. The signs differ in the last element of the contested sign ‘Rule’ which, due to its position in the contested sign, will catch less attention of the relevant part of the public. Furthermore, the signs differ in the additional verbal element ‘The’ of the contested sign as well as the figurative elements of the earlier mark (only visually); however, bearing in mind that the differing elements have limited impact for the reasons given above, the signs are considered visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. The element ‘The’ is of a limited distinctiveness as it merely serves as a definite article in the contested sign and, consequently, it will not be perceived as a business identifier in relation to the relevant goods and services by the Spanish-, Polish- and French-speaking part of the public. In the present case, the public in question will perceive a clear meaning of the figurative element of the earlier mark – the apple and, consequently, the signs are conceptually not similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The contested goods and services are identical, similar and dissimilar to the opponent’s ones. The earlier mark is distinctive to an average degree.

Visually and aurally the signs are similar to an average degree due to the coincidence in the distinctive element ‘Golden’, which plays an independent role in both signs. Furthermore, this element constitutes the first element of the earlier mark and the first and normally distinctive element of the contested sign. The element ‘Golden’ is also the longest verbal element of the contested sign and therefore, it will immediately catch the attention of the relevant public. The additional differentiating elements present in the signs refer either to the last and, therefore, less eye-catching element of the contested sign ‘Rule’ or to the element ‘The’ of the contested sign and the figurative elements of the earlier mark which, as mentioned above, will have less impact on the relevant Spanish-, Polish-, and French-speaking part of the public than the coincidence in the element ‘GOLDEN’. Considering all the above, the relevant public will attribute more trade mark significance to this common element of the signs.

Therefore, given the reproduction of the distinctive element ‘GOLDEN’ it is very likely that the relevant part of the public will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the 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 likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may legitimately believe that the contested sign is a new extension/continuation or a new brand line of goods and services, provided under the opponent’s mark, as it is a normal market practice for brands to introduce their new versions via the introduction of new verbal or/and stylisation components, as in the present case the elements ‘The’ and ‘Rule’ to the contested sign, while preserving the same ‘house’ brand, ‘GOLDEN’.

As a result, taking into account all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding and outstanding element ‘GOLDEN’, and there is a likelihood of confusion, including a likelihood of association with the earlier trade mark, on the part of the Spanish-, Polish and French-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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘GOLDEN’ translated into various languages. In support of its argument the applicant refers to its own European Union trade mark registrations ‘El corte de oro’, ‘La coupe d’or’, ‘Il Taglio d’oro’, ‘Złoty krój’ and one German trade mark registration ‘Der Goldene Schnitt’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘GOLDEN’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the opponent also refers to the fact that its products are copyright protected by the ‘Library of Congress’ in Washington D.C. USA since many decades and submits an excerpt of the said copyright certificate.

In this regard the Opposition Division notes that certainly the applicant may protect its business activities in many ways, including through a copyright; however, this cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Consequently, this argument of the applicant must be set aside, because what is relevant in the context of the present proceedings is that, for the purposes of the EUTMR, the opponent has an earlier right.

Finally, the applicant’s argues that its business activity referring to a pattern making system called ‘The Golden Rule’ has a long tradition and exists since 1935 and filed various items of evidence to demonstrate the above. In this regard the Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Therefore, the opposition is partially well-founded on the basis of the opponent’s European Union trade mark registration No 14 536 726.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to the opponent’s goods and services.

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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

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.