OPPOSITION No B 2 945 734

Essential Export, S.A., Santa Ana, Forum II, Edificio Pacheco Coto, Cuarto Piso, San José, Costa Rica (opponent), represented by Arochi & Lindner, S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)

a g a i n s t

Blissity, Franz-Joseph-Str. 11, 80801 Munich, Germany (applicant).

On 20/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 945 734 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 727 802 for the word mark ‘Totochie’. After a limitation to the application, made by the applicant on 23/03/2018, the opposition is directed against all the goods in Class 16. The opposition is based on European Union trade mark registrations No 6 212 451 for the figurative mark and No 15 213 457 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods

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

• EUTM No 6 212 451

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags and briefcases; umbrellas, parasols and walking sticks except those intended for sports.

Class 25: Clothing, footwear, headgear, except beachwear, sports clothing, sports shoes and sports headgear.

• EUTM No 15 213 457

Class 18: Leather and imitation leather, trunks (luggage), valises, carrying cases, portfolio bags, wallets, haversacks; umbrellas and parasols, walking sticks, except haversacks intended for practising sports and except goods intended for practising sports.

Class 25: Underwear and casual clothing, including jeans, trousers, jump-suits, shirts, tee-shirts, sweatshirts and sweaters, inter alia; headgear and footwear, expressly not including: beach clothing, sports clothing, footwear for practising sports and goods designed for practising sports.

The contested goods are, after a limitation by the applicant, the following:

Class 16: Books; music books; baby books; fantasy books; story books; comic books; books for children; children’s books; children’s storybooks; children’s comics; children’s books incorporating an audio component; printed educational materials; comics; pictures; magazines; comic magazines; picture books; greeting cards; posters.

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

The opponent argues that the goods in Class 16, which are all types of printed matter, might be made of the opponent’s goods in Class 18, to the extent that, for example, books may have leather covers, and that, therefore, those goods are similar. The Opposition Division notes that the mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar. Leather covers are indivisible parts of books and cannot be obtained independently from them. In the present case, the contested goods in Class 16 and the opponent’s goods in Classes 18 and 25 have different natures, different purposes and different methods of use. They are not complementary or in competition. Furthermore, they do not originate from the same undertakings and they target different relevant publics. The opponent argues that the goods in Class 16 may be sold in the same retail outlets as the leather goods in Class 18. Although some large retails shops might sell a wide variety of goods, books and leather goods are usually sold in different sections of retail stores. Therefore, the contested goods in Class 16 are dissimilar to all the opponent’s goods in Classes 18 and 25.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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

Chantal VAN RIEL

Saida CRABBE

Mads Bjørn Georg JENSEN

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.