OPPOSITION No B 2 974 239

Rainbow Play Systems, Inc, 500 Rainbow Parkway, 57006, Brookings,, United States of America (opponent), represented by Osborne Clarke LLP, One London Wall, EC2Y 5EB, London, United Kingdom (professional representative)

a g a i n s t

Shang Hai Zhuo Yun Intl Trading Co.,Ltd, Flat 33 Cadnam Lodge, 34 Schooner Close, E14 3GQ London, United Kingdom (applicant)

On 14/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 974 239 is partially upheld, namely for the following contested goods:

Class 28 Fairground and playground apparatus; Toys, games, playthings and novelties; Sporting articles and equipment.

2. European Union trade mark application No 16 945 404 is rejected for all the above goods. 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 945 404 (figurative mark ), namely against all the goods in Class 28. The opposition is based on, inter alia, European Union trade mark registration No 391 417 (figurative mark ). The opponent invoked Article 8(1)(b) EUTMR.

As a preliminary remark it has to be noted that the opponent stated in the notice of opposition that the opposition is directed only against part of the goods of the contested application, namely those in Class 28. In its letter of 21/02/2018 however, filed after the expiry of the three-month opposition period, the opponent claims that the opposition shall be directed against all the goods of the contested mark. Such an extension of the scope of the opposition cannot be accepted as the opponent clearly limited the scope of the opposition in the notice of opposition. A request for an extension of the scope of the opposition filed after the expiry of the three-month opposition period must be rejected as inadmissible.

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 391 417.

1. The goods

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

Class 28 Playground equipment; play structures; swing sets, climbers, platforms, jungle gymns, playhouses, slides, climbing ladders, chin-up bars; protective covers for all of the aforesaid.

The contested goods are the following:

Class 28 Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Toys, games, playthings and novelties; Sporting articles and equipment.

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 playground apparatus is included in the broad category of the opponent’s playground equipment. Therefore, they are identical.

The contested goods sporting articles and equipment include, as a broader category the opponent’s chin-up bars. 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 toys, games, playthings and novelties include, as a broader category the opponent’s playhouses. 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 fairground apparatus is similar to the opponent’s playground equipment as they may coincide in purpose, method of use and can target the same public.

The contested festive decorations and artificial Christmas trees are dissimilar to all the opponent’s goods as they differ in nature, purpose, method of use, relevant public and producer. They are neither complementary 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 found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, depending on the price and the specialised nature of the goods. Some fairground apparatus for example may be rather specialised and high in price.

3. The signs

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 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.

The word elements RAINBOW and UNICORN of the signs have a meaning in certain territories, for example in countries where English is understood. Thus, the Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public

The word elements RAINBOW and UNICORN are neither descriptive nor allusive of the goods in question and are therefore distinctive.

The earlier mark’s figurative elements comprise of the depiction of a rainbow surrounded by clouds and the sun. They are neither banal nor do they have any meaning with regard to the goods in question and are therefore distinctive. The stylization of the letters of the word element RAINBOW and its frame however are purely decorative and therefore non-distinctive.

The contested sign comprises of the word elements RAINBOW UNICORN and two figurative elements arranged above them, namely a stylised representation of a unicorn’s head with a wavy underline and a depiction of a rainbow. They are neither banal nor do they have any meaning with regard to the goods in question and are therefore distinctive. The stylization of the letters of the word elements RAINBOW UNICORN however is merely decorative and therefore not distinctive.

The figurative elements of the contested mark (representation of a unicorn’s head in conjunction with the representation of a rainbow) visually dominate the word elements of mark by virtue of their position and size.

However, 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).

Furthermore, 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.

Visually, the signs coincide in the distinctive word element RAINBOW, being the only verbal element of the earlier mark and the first verbal element of the contested sign. They differ with respect to the other distinctive word UNICORN of the contested mark, as well as the particular graphic design of the marks, whose distinctiveness varies, as described above.

Therefore, the signs are similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters RAINBOW, present identically in the beginning of both signs, and differs in the sound of the letters UNICORN of the contested sign, which have no counterpart in the earlier mark. The figurative elements will not be pronounced.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the considerations above regarding the semantic content of the marks. The signs coincide in the meaning of RAINBOW, whereas the further concept UNICORN of the contested mark has no equivalent in the earlier mark. Given that some of the graphic elements of the marks (depiction of a unicorn's head and depictions of rainbows) merely illustrate the meaning of the word elements UNICORN and RAINBOW, as set out above, they have no further influence on the conceptual comparison. The same cannot be said however for the concepts of clouds and the sun, present only in the earlier mark. Bearing in mind that they are purely figurative elements, they will have less impact on the consumer than the word elements though.

Therefore, the signs are similar to an average degree.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive figurative elements (stylisation of the letters, frame) in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are visually similar to a below-average degree and aurally and conceptually similar. The goods are identical, similar or dissimilar. The degree of attention of the relevant public will vary from average to high and the distinctiveness of the earlier mark is normal.

There is a likelihood of confusion for identical and similar goods since the only word element of the earlier mark is included as an independent distinctive element at the beginning of the contested mark and, in addition, the coincidences establish a conceptual link between the signs. Therefore, despite the differences between the signs, it is highly conceivable that the relevant consumer (including those who are highly attentive) may perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 391 342 (word mark ‘RAINBOW PLAY SYSTEMS, INC.’)

Since this mark covers the same scope of goods the outcome cannot be different with respect to goods for which the opposition has already been rejected.

Therefore, no likelihood of confusion exists with respect to those goods.

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

Konstantinos MITROU

Tobias KLEE

Lars HELBERT

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.