OPPOSITION No B 2 911 207

emoji company GmbH, Necklenbroicher Strasse 52-54, 40667, Meerbusch, Germany (opponent), represented by Hucke & Schubert, Waidmarkt 11, 50676, Köln, Germany (professional representative)

a g a i n s t

Accessory Innovations LLC, 34 West 33rd Street, Suite 600, 10001 New York, United States of America (applicant), represented by Bugnion S.P.A., Viale Lancetti 17, 20158 Milano, Italy (professional representative).

On 26/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 911 207 is upheld for all the contested goods.

2. European Union trade mark application No 16 496 721 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 496 721 for the word mark ‘EMOJINATION’, namely against all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 14 733 927 for the word mark ‘The Emojis’. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights. Furthermore, the opponent invoked Article 8(1)(a) EUTMR in relation to the earlier European Union application No 16 299 752.

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 European Union trade mark registration No 14 733 927 for the word mark ‘The Emojis’.

1. The goods

Preliminary remark

In the notice of opposition the opponent wished to base the opposition on all the goods and services for which the earlier rights were registered. Therefore, the Opposition Division will proceed accordingly.

Therefore, the earlier goods to be taken into account are the ones for which the earlier mark is registered, namely:

Class 3: Shampoos for pets; Shampoos; Shoe polish; Laundry detergent; Make-up; Powder for make-up; Oils for perfumes and scents; Perfumery; Perfume; Lipsticks; False nails; False eyelashes; Dry shampoos; Cosmetic pencils; Henna [cosmetic dye]; Hair spray; Hair tonic; Depilatory preparations; Depilatory wax; Scale removing preparations for household purposes; Scented water; Javelle water; Deodorants for human beings or for animals; Bath salts, not for medical purposes; Cosmetic preparations for baths; Antiperspirants [toiletries]; Eyebrow pencils; Eyebrow cosmetics; Breath freshening strips; Breath freshening sprays; Decorative transfers for cosmetic purposes; After-shave lotions; Furbishing preparations; Dentifrice; Dental bleaching gels; Polishing wax; Shoe wax.

The contested goods are the following:

Class 3: Cosmetics; lip balm (non-medicated); nail polish, nail decals and art stickers, adhesive nail coverings, nail tips, artificial fingernails; shower gel, body wash, bubble bath, body lotion, shampoo, conditioner, skin soap.

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.

The contested cosmetics include as a broader category the earlier Cosmetic pencils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested artificial fingernails overlap with the opponent´s False nails. Therefore, they are identical.

The contested body wash, bubble bath, skin soap are included in or overlap with the broad category of the opponent´s Cosmetic preparations for baths. Therefore, they are identical.

The contested shampoo is identically mentioned in the opponent´s specification albeit in plural.

The contested conditioner as a broader category includes or at least overlaps with the opponent´s Hair spray. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent´s decorative transfers for cosmetic purposes being various cosmetic stickers include as a broader category the contested nail decals and art stickers, adhesive nail coverings. Therefore, they are identical.

The contested nail tips overlap with the opponent´s false nails. Therefore, they are identical.

The contested nail polish is similar to a high degree to the opponent´s false nails, as they have the same purpose which is to improve the appearance of nails and they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested lip balm (non-medicated); shower gel, body lotion are cosmetic products that are similar to the opponent’s deodorants for human beings because they may have the same producers, end users and distribution channels.

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 (to different degrees) are directed at the public at large with an average degree of attention.

3. The signs

The Emojis	EMOJINATION
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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters. Additionally, the word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

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.

Since the signs in question are composed of terms which are meaningful in certain territories, for example in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. The understanding of the terms, may, in the opinion of the Opposition Division, increase the likelihood of confusion.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

As to the contested sign, taken as a whole, it may be perceived by the public in question as a ‘digital image that is used to express an emotion’, vis-a-vis a nation, country (definitions extracted from the Collins English Dictionary, online version on 19/03/2020). However, notwithstanding the perception of the meaning of the sign as a conceptual unit, it is clear that the relevant English-speaking will intuitively comprehend the elements ‘emoji’, and ‘nation‘ in the sign. Consequently, the contested sign will be perceived by the relevant public as a combination of two meaningful elements, ‘emoji’ and ‘nation’.

The common term ‘emoji’ (although in plural in the earlier mark) refers to a concrete meaning, as explained above. It has an average degree of inherent distinctiveness in relation to the goods in question because it does not have any descriptive and/or allusive or otherwise weak meaning in relation to them from the relevant public’s perspective.

The element ‘The’ of the earlier mark is the English definite article used at the beginning of noun groups. This element is conjoined semantically with the noun ‘Emojis’, mentioned above, therefore, its impact on the assessment of the likelihood of confusion in the present case is limited.

Visually and aurally, the signs coincide in the word ‘EMOJI’, which constitutes the initial, distinctive element of the contested sign and the singular form of the word ‘EMOJIS’ in the earlier mark.

Although the signs differ in the definite article placed at the beginning of the earlier mark, its role is subordinated to the main term ‘EMOJIS’ in the sign. Therefore, from the visual and aural perspective, the public under examination will attach more importance to the term ‘EMOJIS’ than to the definite article playing only an auxiliary role in the earlier mark, as explained above.

Furthermore, the Opposition Division is of the opinion that the little difference arising from the final letter ‘S’ in the earlier mark can be easily overlooked by the relevant public. The verbal element ‘NATION’ occupies more remote position within the contested sign and, although, it is distinctive in relation to the goods in question, the coinciding element ‘EMOJI’ of the contested sign will attract the public’s attention to a greater extent. Consumers generally tend to focus on the first/initial element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (its initial part) the one that first catches the attention of the reader.

Consequently, taking into account the above mentioned, the signs are considered visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As mentioned above and notwithstanding the perception of the meaning of the contested sign as a conceptual unit, it is clear that the relevant English-speaking consumers will instantly recognise the term ‘EMOJI’ in the beginning of the contested sign, followed by the word ‘NATION’. The term ‘EMOJI’ is inherently distinctive in relation to the goods at issue and, therefore, the coincidence in the term ‘EMOJI(S)/’EMOJI’ generates an average degree of conceptual similarity between the marks. As analysed above, the definite article placed at the beginning of the earlier mark is semantically subordinated to the noun ‘Emojis’.

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 argued that the earlier mark has a high degree of distinctiveness, because it has no connection with the opponent’s goods. However, it should be recalled that a trade mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C 379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market.

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).

The contested goods are partly identical and partly similar (to different degrees) to the opponent’s goods and they are directed at the public at large with an average degree of attentiveness.

The inherent distinctiveness of the earlier mark in relation to the relevant goods is average.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘EMOJI’, which constitutes almost the entire of the most distinctive element of the earlier mark and is fully included and clearly perceptible as its distinctive element at the beginning of the contested sign. The signs differ mainly in the additional term ‘NATION’ of the contested sign, which will be given less attention than the initial element ‘EMOJI’. As analysed above, the final letter ‘S’ of the earlier mark can be easily overlooked by the relevant public; in any case, it will be associated with the plural form of the term ‘EMOJI’ and the definite article ‘The’ plays an auxiliary role in the earlier mark, as analysed above.

Consequently, given the reproduction of the distinctive element ‘EMOJI’ at the beginning of the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, an 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, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent development (represented in a singular form with an addition) of the earlier mark ‘The Emojis’ as it is a common market practice for brands to identify a new version or a new sub-brand through the use of additional verbal elements in combination with the main (‘house’) brand. In other words, consumers may believe that the contested sign ‘EMOJINATION’ constitutes a new product line of the earlier mark ‘The Emojis’, and consequently, confuse the origins of the goods at issue by assuming that they come from the same or economically-linked undertakings.

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). Therefore, considering the visual, aural and conceptual similarities between the signs, it is concluded that consumers, relying on their imperfect recollection of the earlier mark, may think that the relevant contested goods found identical and similar to various degrees to the opponent’s goods come from the same or economically linked companies.

Considering all the above, it is concluded that the differences between the signs are not sufficient to counteract the similarity resulting from the coinciding and independent element ‘EMOJI’ and, therefore, there is a likelihood of confusion in the form of a likelihood of association, for 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 European Union trade mark registration No 14 733 927 and it follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 14 733 927 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a), as invoked by the opponent in relation to the earlier European Union application No 16 299 752.

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), 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

Gueorgui IVANOV

Monika CISZEWSKA

Patricia LÓPEZ FERNÁNDEZ DE CORRES

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.