OPPOSITION No B 2 988 676

Winter Holding GmbH & Co KG, Heidelberger Str. 9-11, Nussloch, Germany (opponent)

a g a i n s t

Min Sun, Guildbourne PS, 2a Ann Street, Worthing, West Sussex, BN11 1NX, United Kingdom, and King Palace Limited, Unit 1107, Celebrity Commercial Centre, 64 Castle Peak Road Kowloon, Kowloon, Hong Kong (applicants), represented by Francisco Javier Justel Tejedor, C/ Lanuza, Nº2-1º E, 03001 Alicante, Spain (professional representative).

On 07/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 988 676 is upheld for all the contested goods.

2. European Union trade mark application No 17 101 106 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 101 106 for the word mark ‘Cartoonimals’. The opposition is based on, inter alia, European Union trade mark registration No 11 177 508 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.

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 11 177 508.

1. The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing; children’s clothing; infants’ clothing; babies’ clothing; footwear; infants’ footwear; footwear soles; rubbers [footwear]; casual footwear; ladies’ footwear; pumps [footwear]; children’s footwear; footwear for men; footwear for women; children’s headwear; headwear; headgear for wear; thermal headgear; sports headgear [other than helmets]; headgear.

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.

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.

Contested goods

Clothing; footwear; headgear are identically contained in both lists of goods.

The contested children’s’ clothing; infants’ clothing; babies’ clothing are included in the broader category of the opponent’s clothing. Therefore, they are identical.

The contested children’s headwear; headwear; headgear for wear; thermal headgear; sports headgear [other than helmets] are included in the broader category of the opponent’s headgear. Therefore, they are identical.

The contested infants’ footwear; rubbers [footwear]; casual footwear; ladies’ footwear; pumps [footwear]; children’s footwear; footwear for men; footwear for women are included in the broader category of the opponent’s footwear. Therefore, they are identical.

Before the rest of the contested goods are compared with the opponent’s goods, a clarification is required regarding the natural meaning of the opponent’s goods made of these materials (leather and imitations of leather) and not included in other classes. According to the Office’s Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the category goods made of leather and imitations of leather does not provide a clear indication of the goods that are covered, as it states only what the goods are made of, and not what they are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capability and know-how to be produced and/or used, and may target different consumers, be sold through different sales channels and therefore relate to different market sectors.

When comparing the contested footwear soles and the opponent’s vague category goods made of these materials (leather and imitations of leather) and not included in other classes, it cannot be assumed, without further examples or an express limitation by the opponent clarifying the category, that they have the same purpose, that their methods of use are the same, that they have the same distribution channels or that they are in competition or complementary. However, their natures can be considered the same, as the contested goods are or may be goods made of leather (or an imitation thereof) and it is reasonable to assume that the goods may be produced by the same companies, given that the required know-how and machinery (i.e. for cutting leather) may also be the same. Therefore, these goods are similar to only a low degree.

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 a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered average.

3. The signs

	Cartoonimals
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).

In the present case, the verbal element of the earlier mark, ‘Cartoon’, will be understood by the English-speaking part of the public as having, inter alia, the following meaning: ‘a humorous or satirical drawing’ (information extracted from Collins Dictionary on 07/12/2018 at https://www.collinsdictionary.com/dictionary/english/cartoon). As this element has no direct relationship to the relevant goods, it follows that it is distinctive to an average degree. Consequently, the Opposition Division finds it appropriate to focus on the English-speaking part of the public.

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). Even though the sequences of letters ‘Cartoon’ and ‘imals’ of the contested sign are not visually separated, consumers will naturally look for a meaning when reading a word. Therefore, although the contested sign, ‘Cartoonimals’ has no meaning as such, it is likely that part of the English-speaking public will perceive it as a combination of ‘Cartoon’ and ‘animals’. This will not affect the distinctiveness of the sign, since neither of these two words has a meaning in relation to the goods in question, nor does the combination of them, and they are therefore distinctive to an average degree.

Since the contested sign is a word mark, it is to be noted that word marks do not claim any particular figurative element or appearance. A word mark is a mark consisting entirely of letters, words or associations of words, written in printed characters in a normal font, without any specific graphic element (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 74).

Moreover, 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 sequence of letters ‘Cartoon’, constituting the first seven letters of the contested sign. They differ in the last sequence of letters of the contested sign, ‘imals’, and in the slight stylisation of the earlier mark.

As the entire verbal element of the earlier mark is contained in the initial part of the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Cartoon’, present identically in both signs. The pronunciation differs in the sound of the letters ‛imals’ of the contested sign, which have no counterparts in the earlier mark.

As the sound of the entire earlier mark is contained in the sound of the initial part of the contested sign, the signs are aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually 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.

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.

As concluded above, the goods are identical and similar to a low degree. The signs are visually similar to an average degree, aurally similar to a higher than average degree and conceptually similar to an average degree. The relevant public is the public at large and business customers, and their degree of attention is considered average.

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). In the present case, the average visual degree of similarity, the higher than average aural degree of similarity and the average degree of conceptual similarity between the signs offset the low degree of similarity between some of the goods.

It is true that, as noted by the applicants, the contested sign has a different ending, which is not likely to be disregarded by consumers. Nevertheless, the commonality in ‘Cartoon’, which is unrelated to the goods in question and constitutes the entire verbal element of the earlier mark and the first and longer part of the contested sign, will not remain unnoticed.

Moreover, it is common in many industry sectors for the same distinctive element to be configured in various ways according to the type of products that it covers and for the same undertaking to use a sub-brand to distinguish various production lines. Indeed, it is highly conceivable that the relevant consumer will 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In their observations, the applicants argue that they own several trade mark registrations for the word ‘Cartoonimals’ that coexist with the opponent’s earlier mark. However, only one of the trade marks referred to is registered in the European Union and may therefore be relevant.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicants must be rejected as unfounded.

Furthermore, in their observations, the applicants argue that the earlier trade mark has a low distinctive character given that many trade marks include ‘CARTOON’. In support of this argument, the applicants refer to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘CARTOON’. Under these circumstances, the applicants’ claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of 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 opponent’s European Union trade mark registration No 11 177 508. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 11 177 508 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).

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 applicants are the losing party, they 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Mads Bjørn Georg JENSEN

Vít MAHELKA

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.