OPPOSITION No B 2 871 443

The Essential One Limited, Unit 2 Dunscar Business Park, BL7 9PQ, Bolton, United Kingdom (opponent)

a g a i n s t

Karla Veronica Schindler, Klosterfeldstrasse 9, 6921 Kennelbach, Austria (applicant), represented by Mapa Trademarks, Alameda San Mamés 43 bis, 3ª planta, dpto 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 13/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 871 443 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 509 911 for the word mark ‘Essential Kids’. The opposition is based on European Union trade mark registration No 14 260 194 for the figurative mark , in relation to which the opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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 24: Filtering materials of textile; textile goods, and substitutes for textile goods.

Class 25: Clothing; footwear; headgear; hats.

Class 28: Toys, games, playthings and novelties.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

On 08/01/2018, the applicant restricted the list of goods and services of the contested sign to the following:

Class 9: Educational software; recorded content; media content; software.

Class 16: Educational publications; printed publications; books; baby books; books for children; children’s activity books; manuals [handbooks]; textbooks; story books; printed matter.

Class 28: Games; toys, games, playthings and novelties; fairground and playground apparatus; all the aforementioned goods are educational teaching materials.

Class 41: Education, entertainment and sport services; education and instruction services; arranging and conducting of educational events; club services [entertainment or education]; cultural activities; organisation of educational activities for summer camps; theatre productions; publication of educational materials; publishing and reporting.

On 29/01/2018, the Office forwarded the restriction to the opponent, giving a deadline of 03/04/2018 to inform the Office whether or not it maintained the opposition. The Office indicated that, if the opponent did not reply, the proceedings would continue and the Office would take a decision. The opponent did not reply to this notification.

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 9

The contested educational software; software are similar to the opponent’s games in Class 28. According to the case-law, the term games is very general and covers everything from ‘amusements’, ‘sports’ and ‘pastimes’ to ‘games of chance for money’ (19/04/2016, T‑326/14, Hot Joker / Joker, EU:T:2016:221, § 49; confirmed by 06/12/2016, C‑342/16 P, Hot Joker / Joker, EU:C:2016:931). This term includes electronic or on-line versions of games, including also educational games. Software is essential for the functioning of electronic or on-line games and, in this sense, it is complementary to the opponent’s games. These types of goods may be used in the same establishments and will be purchased by the same public (see by analogy 19/04/2016, T‑326/14, Hot Joker / Joker, EU:T:2016:221, § 54). The distribution and manufacturing channels necessarily overlap. The relevant public would perceive the goods as having a common commercial origin (see by analogy 21/11/2017, R 1876/2016-4, Goalwin / Goal, § 16).

The contested media content is the information, material, digital files, such as audio files or video files, presented on a website or other digital medium. The contested recorded content includes material, such as audio files, video files or electronic publications, maintained on a memory device. These categories of goods also include content with the purpose of entertainment; as such, they have the same purpose as the opponent’s toys, games, playthings and novelties in Class 28. They may target the same public, be distributed through the same channels and have the same producers. Therefore, these goods are considered similar to a low degree.

Contested goods in Class 16

The contested educational publications; printed publications; books; baby books; books for children; children’s activity books; manuals [handbooks]; textbooks; story books; printed matter are various types of books, publications and printed matter, mainly for children. They may have the same purpose, which is educational or recreational, and the same consumers and points of sale as the opponent’s games in Class 28; there are many games on the market with an educational purpose. On the one hand, the contested goods, such as educational publications; books; baby books; books for children; children’s activity books; story books and printed matter, in general, may consist of certain types of simple games or similar activities, for example labyrinths, colouring in, matching elements; on the other hand, the opponent’s games customarily contain certain types of printed publications; manuals [handbooks] or textbooks, in particular more sophisticated ones, or these publications may be purchased separately. In addition, the contested printed matter, as a broad category, includes goods such as ‘strategy guide books for card games’. These goods may have the same nature as certain types of the opponent’s games, for example ‘card games’. Therefore, there is a low degree of similarity between all of these goods.

Contested goods in Class 28

The contested games [all the aforementioned goods are educational teaching materials] are included in the broader category of the opponent’s games. Therefore, they are identical.

The contested toys, games, playthings and novelties [all the aforementioned goods are educational teaching materials] are included in the broader category of the opponent’s toys, games, playthings and novelties. Therefore, they are identical.

However, the contested fairground and playground apparatus [all the aforementioned goods are educational teaching materials] are various installations to be placed in areas dedicated to fairs or play areas that in addition, as follows from the specification of the list of contested goods, are also educational teaching materials. These goods and the opponent’s goods in Class 28, namely toys, games, playthings and novelties, have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though some of these goods may be sold through the same distribution channels (e.g. department stores), they are normally placed in different sections of the said outlets. Therefore, these goods are dissimilar.

The contested fairground and playground apparatus [all the aforementioned goods are educational teaching materials] are also clearly dissimilar to all the opponent’s goods and services in Classes 24, 25 and 35. They have nothing in common, as they clearly differ in their natures and methods of use, they target different publics with entirely different needs and they are distributed or offered through very different channels. They have different usual producers or providers. In addition, they are neither complementary to nor in competition with each other.

Contested services in Class 41

The term publishing refers to the action of producing and issuing (printed or electronic matter) for distribution and sale, and the term reporting consists of the activity of collecting information and transforming it into a format that can then be made available in a variety of ways. The contested broadly worded publishing and reporting have at least a low degree of similarity to the opponent’s business analysis, research and information services, which also involve aspects of publishing and reporting for business management purposes. Although these services are generally provided by different companies, they clearly have the same nature and may, to a certain degree, have the same purpose and target the same public.

The contested entertainment services is a broad phrase that includes, inter alia, amusement arcades, namely venues where people play arcade games such as video games, pinball machines, electro-mechanical games and coin-operated billiards. As noted above, the opponent’s games in Class 28 is also a general term that includes various types of games, including those identical or similar to the games available in amusement arcades, such as arcade games, hand-held video games, and pinball games and machines. These contested services and the opponent’s games have an identical purpose, namely entertainment, which is achieved through the same means, and they have similar methods of use. They target the same public and may have similar distribution channels, namely amusement arcades. In addition, these goods and services are complementary in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Even taking into account the difference between the nature of the goods and services, a certain degree of similarity between the contested services and the opponent’s games in Class 28 cannot be denied.

On the contrary, the remaining contested services, education and sport services; education and instruction services; arranging and conducting of educational events; club services [entertainment or education]; cultural activities; organisation of educational activities for summer camps; theatre productions; publication of educational materials, are considered dissimilar to all of the opponent’s goods in Class 28. Although some of the contested services may have the same purpose — of entertainment, either general recreation or education through entertainment — they have different means of achieving this purpose. In any case, such a remote link is insufficient for establishing any degree of similarity between them. They have different natures (intangible services versus tangible goods). They are generally offered or provided through different channels. Although they may have the same public, to a certain degree, that public will not expect the contested services and the opponent’s goods to originate from the same provider/manufacturer. They are neither complementary to nor in competition with each other.

All the more, the aforementioned contested services are dissimilar to all the opponent’s goods in Classes 24 and 25. They have nothing in common, as they clearly differ in their natures, intended purposes and methods of use. They target publics with different needs and are offered or distributed through different channels. They also differ in their usual origins, and they are neither complementary to nor in competition with each other.

These contested services are also dissimilar to all the opponent’s services in Class 35, namely advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services. The opponent’s advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. The opponent’s business analysis, research and information services and business assistance, management and administrative services are all various business management services that are intended to help companies manage their businesses by setting out the strategy and/or direction of companies. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. The opponent’s commercial trading and consumer information services are in essence retailing services in the broadest sense, namely services around the actual sale of goods, such as providing the customer with an opportunity to conveniently see, compare or test the goods and providing the necessary information to the consumer. Such services are not limited to the sale of particular goods.

As follows from the above, the opponent’s services in Class 35 have different purposes from the contested services, which aim to provide various educational, instructional, sporting and cultural activities. They have different methods of use, target entirely different publics and are offered through different channels by different specialised entities. In addition, they are neither complementary to nor in competition with each other.

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	Essential Kids
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 words ‘the Essential One’, depicted in a stylised beige typeface resembling childish handwriting, with the letters ‘E’ and ‘O’ in upper case and the remaining letters in lower case. The letter ‘E’ of the word ‘Essential’ is stylised and depicted as a childish drawing of a chick. Likewise, the letter ‘O’ of the word ‘One’ is stylised and depicted as a childish drawing of an animal’s head. Below the upper case letter ‘O’ of the verbal element there is a figurative element composed of three dashes in beige, green and beige followed by a green cross that, altogether, may be associated with a drawing of a route on a treasure map.

The reading of the verbal elements of the earlier sign as ‘the Essential One’ is not obvious on account of the stylised nature of the letters ‘E’ and ‘O’, and may require some time and effort. Particular elements of this expression will be understood by the English-speaking public, namely the word ‘the’ will be understood as a determiner ‘used to refer to a person, place, or thing that is unique’ (as in ‘the Queen’, ‘the Mona Lisa’, ‘the Nile’); the word ‘Essential’ will be understood as an adjective, meaning ‘absolutely necessary; extremely important’ and describing the word ‘One’, which will be understood as a pronoun ‘referring to a person or thing previously mentioned or easily identified’ or ‘a person of a specified kind’ (information extracted from Oxford Dictionaries on 02/07/2018 at en.oxforddictionaries.com/definition/the; en.oxforddictionaries.com/definition/one; en.oxforddictionaries.com/definition/
essential). As these elements are basic English words, they will also be understood by the publics throughout the relevant territory. In addition, the word equivalents of the element ‘Essential’ are visually and aurally similar in many languages of the relevant territory, for example essentiell (German), essentiel (French), essenziale (Italian), essentieel (Dutch), essenzjali (Maltese) and essential (Romanian). As pointed out by the applicant, the meaning and the common understanding of the word ‘essential’ throughout the European Union finds confirmation in case-law of the Board of Appeal (e.g. 11/07/2017, R 2067/2016-5, Dr. Jacob’s essentials (fig.) / COMPAL essential (fig.) et al., § 32-33).

The public will not attach much trade mark significance to the word ‘the’, because it is a determiner that merely refers to the phrase that follows it, and it does not play an independently distinctive role within the earlier sign; consequently, this element is considered distinctive to a low degree. The expression ‘Essential One’ will be associated with certain meanings in relation to the opponent’s goods and services that are similar to the contested services. In relation to the opponent’s business analysis, research and information services in Class 35, it may be understood as an indirect reference to a basic service, the one that is ‘absolutely necessary’, in the fields of business analysis, research and information. The same association is likely in relation to the opponent’s toys, games, playthings and novelties in Class 28, with the difference that the word ‘Essential’ may be understood as a reference to the product’s basic version/basic element that is ‘absolutely necessary’ for its proper functioning or that may be expanded to enjoy additional features. Consequently, the degree of distinctive character of the words ‘Essential One’ in relation to the opponent’s goods and services must be seen as low.

The stylisation of the verbal elements of the opponent’s sign is largely decorative, save for the stylised letters ‘E’ and ‘O’, and, therefore, inherently distinctive to a low degree. The drawings of a chick (as incorporated in the letter ‘E’), an animal’s head (as incorporated in the letter ‘O’) and a route on a treasure map have no meaning in relation to the opponent’s services in Class 35; therefore, for these services they are inherently distinctive to an average degree. In relation to the opponent’s toys, games, playthings and novelties in Class 28, the concepts of a chick, an animal’s head and a route on a treasure map may allude to the type or content of the goods, and thus their distinctiveness in relation to these goods is reduced; however, bearing in mind the stylised nature of these depictions, the Opposition Division considers that their inherent distinctiveness is just below average.

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

The contested mark is a word mark composed of the words, ‘Essential Kids’. Since the applicant seeks protection for a word mark, it is irrelevant whether the contested sign is depicted in upper or lower case letters, or in a combination thereof; the word as such is registered and not its written appearance. For the same reasons, word marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘Essential’ will be understood throughout the relevant territory in its adjectival meaning, as explained above. The word ‘Kids’ is a basic English word that will be understood throughout the relevant territory as a plural form of the noun ‘kid’, meaning ‘a child or young person’ (information extracted from Oxford Dictionaries on 02/07/2018 at en.oxforddictionaries.com/definition/kid). The expression ‘Essential Kids’ is distinctive to a low degree for the contested goods and services, as it may be perceived allusive of certain characteristics: on the one hand, the fact of being ‘absolutely necessary’ for a certain purpose, for example being a main piece of software, such as an operating system (in the case of goods in Class 9) or being a basic version/a main element of a game or a toy, as explained above (in the case of goods in Class 28), indicating a basic level of educational or entertaining content (in the case of the majority of the goods and services in Classes 9, 16, 28 and 41); and, on the other hand, the intended user of the goods and services, namely children or young people.

Visually, the signs coincide in the word ‘Essential’, which is the second word in the middle section of the earlier sign and the first word at the beginning of the contested sign. It constitutes a lowly distinctive element of the signs.

The earlier sign differs in its first verbal element, ‘the’, which has no counterpart in the contested sign. Although this element is also considered distinctive to a low degree, it introduces an important and easily perceptible visual difference between the signs, because it is located at the beginning of the earlier sign, where consumers normally focus their attention. In addition, the signs differ in their final elements, namely the third word, ‘One’, of the earlier sign and the second word, ‘Kids’, of the contested sign. Both of these words have a low degree of distinctiveness for the goods and services at issue, but their presence results in different lengths and compositions of the signs, namely the earlier sign is composed of three words of, respectively, three, nine and three letters, while the contested sign is composed of two words of nine and four letters. Therefore, the earlier sign differs from the contested sign in 6 out of its 15 letters, located both at its beginning and in its final word.

In addition, the earlier sign differs from the contested sign in the stylisation of its verbal elements, which, however, is distinctive to a low degree, and thus has a limited impact on consumers’ perception. Importantly, the earlier sign also differs in its stylised figurative elements, namely the drawings of a chick (incorporated in the letter ‘E’), an animal’s head (incorporated in the letter ‘O’) and a route on a treasure map. Although the contested sign is a word mark and may be stylised in various ways, the presence of these figurative elements in the earlier sign is important for the consumer’s perception, because their degree of distinctiveness is average (for the opponent’s services in Class 35) and just below average (for the opponent’s goods in Class 28), while the degree of distinctiveness of the verbal elements composing the marks under comparison is low. Consequently, the figurative layer of the earlier sign, which is not obvious, will not be overlooked by the relevant public.

Considering the above factors, and in particular the fact that the coinciding element is distinctive to a low degree, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘Essential’, present identically in both signs. However, this concurrence must not be overestimated bearing in mind the low degree of distinctiveness of this element, as well as the fact that it will be pronounced in different positions in the signs, namely as the second element of the earlier sign and as the first element of the contested sign.

The earlier sign differs in its first verbal element, ‘the’, which has no counterpart in the contested sign. Despite having a low degree of distinctiveness, this element introduces an important different sound at the beginning of the earlier sign. In addition, the signs differ in their final elements, namely the word ‘One’, in the earlier sign, and the word ‘Kids’, in the contested sign. The pronunciation of the signs also differs in the fact that the earlier sign will be pronounced in three words, while the contested sign will be pronounced in two words. The stylisation of the verbal and figurative elements of the earlier sign is not subject to an aural assessment.

Considering the above factors, and in particular the fact that the coinciding element is distinctive to a low degree, the signs are visually similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs have the word ‘Essential’ in common, which, however, is distinctive to only a low degree. At the same time, the signs differ in their remaining verbal elements, namely the words ‘the’ and ‘One’ in the earlier sign and ‘Kids’ in the contested sign. Although these elements are also distinctive to a low degree, in both cases the word ‘Essential’ functions as an adjective that describes the word that follows it; consequently, the public is likely to attach more attention to the words that follow, namely ‘One’ and ‘Kids’, respectively, rather than to the preceding adjective, ‘Essential’. At the very least, the public will consider these expressions as a whole, ‘the Essential One’ and ‘Essential Kids’, which, altogether, denote quite diverse concepts. While the earlier sign refers to ‘the one’ unspecified person, place, or thing, the contested sign clearly refers to ‘kids’. In addition, the earlier sign differs in the concepts of a chick (incorporated in the letter ‘E’), an animal’s head (incorporated in the letter ‘O’) and a drawing of a route on a treasure map, which have no counterpart in the contested sign and, considering their stylised depiction and the low degree of distinctiveness of the remaining elements, will not be overlooked by the public.

Considering the above factors, and in particular the fact that the coinciding element is distinctive to a low degree, is used as an adjective and describes diverse subjects, the overall conceptual similarity between the signs is at most low.

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.

By claiming reputation in the notice of opposition, the opponent implicitly claimed that the earlier trade mark enjoys enhanced distinctiveness in the European Union for all the goods and services in Classes 24, 25, 28 and 35. However, the opponent did not file any evidence to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The verbal elements of the earlier sign may be associated with certain meanings and are considered distinctive to a low degree for the opponent’s goods and services, as stated above in section c) of this decision. However, the distinctiveness of the earlier mark as a whole, including its figurative layer, must be seen as normal, despite the presence of weak elements in the mark.

5. Global assessment, other arguments and conclusion

In the present case the contested goods and services are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods and services. 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 dissimilar goods and services cannot be successful. The present examination will continue only for the goods and services that were found to be identical or similar to any degree.

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 8 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are visually similar to a low degree and aurally similar to a below average degree. As explained above in section c) of this decision, the signs are at most conceptually similar to a low degree. The earlier trade mark as a whole has a normal degree of distinctiveness for the opponent’s goods and services.

The relevant public is the public at large and business customers displaying an average to high degree of attention.

The Opposition Division is of the opinion that the signs under comparison are not sufficiently similar to lead to a likelihood of confusion. While it is true that the contested sign reproduces the verbal element ‘Essential’ of the earlier sign, this coinciding element is distinctive to only a low degree for the goods and services under comparison. In addition, this element is located in different positions within the signs, namely as the second element of the earlier sign and as the first element of the contested sign and, consequently, the signs have different beginnings, as the earlier sign begins with the word ‘the’. This is an important difference, taking into account settled case-law, according to which 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.

The signs also differ in their final verbal elements, namely the third word, ‘One’, of the earlier sign and the second word, ‘Kids’, of the contested sign. Although the distinctiveness of these elements is low, it is likely that they will attract consumers’ attention more than the word that the signs have in common, ‘Essential’, because the latter functions as an adjective that merely describes the word that follows it. In addition, the earlier sign differs in its figurative layer, and in particular in the stylised depictions of a chick (incorporated in the letter ‘E’), an animal’s head (incorporated in the letter ‘O’) and a route on a treasure map. As explained above in section c) of this decision, these figurative depictions, which are distinctive to either an average or just below average degree and are not obvious, will not be overlooked by the relevant public.

According to the principle of interdependence mentioned above and relied on by the opponent, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion in the present case, and the fact that some of the contested goods in Class 28 are identical to the opponent’s goods cannot compensate for the differences between the signs. At the same time, it should be recalled that some of the goods and services are only similar, including to only a low degree, to the opponent’s goods and services, which speaks against a finding of a likelihood of confusion.

Based on the overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that the mere fact that the marks coincide in the word ‘Essential’, which has a low degree of distinctiveness, is insufficient to trigger a likelihood of confusion, including a likelihood of association, on the part of the relevant public. The differing verbal elements of the earlier trade mark and its figurative layer will enable consumers, even those displaying an average degree of attention, to safely differentiate between the signs. In view of the above differences and as a result of a lack of any other similarities between the signs under comparison, consumers are not likely to make assumptions as regards the commercial origin of the goods and services or, indeed, economic links between commercial undertakings merely on the basis of the word ‘Essential’, which has a low degree of distinctiveness for the goods and services in question.

In its observations, the opponent presents some facts about the history of its brand, the means of distribution that it uses and the territories that it targets. It refers to the results of an internet search regarding the term ‘essential kids baby’ and to the fact that the opponent’s website (www.theessentialone.com) appears next to the results involving the applicant’s website (www.essentialkids.com.au/). It also submitted an example of a brand swing ticket that, as the opponent claims, is used on all its products.

In this regard, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant. In the present case, neither of the marks under comparison is ‘Essential Kids Baby’; in addition, the opponent based its opposition not on a word mark ‘the Essential One’ but on a figurative mark with a particular and not obvious depiction of this expression. In addition, it follows directly from the materials submitted, namely the website’s top-level domain (‘.au’) and the website’s description in in the internet search results (‘Australia’s largest resource and community for parents of your children, from pre-schoolers to primary and high school’), that the examples to which the opponent refers originate in Australia, namely outside the relevant territory for the current examination. Consequently, the opponent’s arguments above have to be dismissed.

Considering all the above, there is no likelihood of confusion for any part of the relevant public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 10/07/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/11/2017. The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.