OPPOSITION No B 2 945 700

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/ Gurtubay 6, 3º izquierda, 28001 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Liouyi International Trading Co. Ltd, 11C-3# Xifa Huayuan Baoan, 518100 Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 945 700 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 16 736 712, , namely against the goods in Class 18. The opposition is based on European Union trade mark registrations No 6 212 451, and No 15 213 457, , for goods in Class 18. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark(s) had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The signs

European Union trade mark registration No 6 212 451 European Union trade mark registration No 15 213 457
Earlier trade marks	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 marks are figurative and consist of the word ‘TOTTO’ depicted in standard uppercase slightly inclined and with the circles of the letters ‘O’ coloured in grey (earlier trade mark 1) and red and yellow (earlier trade mark 2).

The contested sign is a purely figurative mark composed of black lines and red dots. Contrary to the parties’ opinions, the Opposition Division is of the view that consumers will not be able to read any letters in the contested mark but will only perceive lines and two red dots. Even if the lines and dots were intended to form characters, these are so highly stylised that there is no chance consumers would perceive letters in the contested mark. Moreover, it must be noted here that the mere fact that the applicant named the mark as ‘TOTU’ at the moment of filing the European Union trade mark application does not automatically imply that the relevant public will perceive in a clear and definite manner the combination of these letters (see judgment of 24/01/2012, T-593/10, B, EU:T:2012:25, § 28).

Visually, while the signs could possibly coincide in some of the vertical and horizontal black lines which form the letters ‘T’ of the earlier marks and are present in the contested mark, these coincidences are not sufficient to consider the marks share any visual relevant similarity. Even with an effort from consumers to discern some letters in the highly stylised elements of the contested sign, no visual similarities can be detected between the marks.

Therefore, the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the contested sign is purely figurative, it is not possible to compare the signs aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected, regardless of the degree of distinctiveness of the earlier mark and of the relevant public and its degree of attention.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Martina GALLE

Begoña URIARTE VALIENTE

María del Carmen COBOS PALOMO

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.