OPPOSITION No B 3 010 975

Rubie’s Costume Co., Inc., One Rubie Plaza, Richmond Hill, New York 11418, United States (opponent), represented by Durán — Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Henbrandt Limited, 5 Wentworth Road, Ransomes Europark, Ipswich, Suffolk, IP3 9SW, United Kingdom (applicant), represented by Hepworth Browne Limited, 15 St Paul’s Street, Leeds, LS1 2JG, United Kingdom (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 010 975 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 179 904 for the figurative mark , namely against all the goods and services in Classes 2, 3, 14, 16, 20, 24, 25, 28 and 35. The opposition is based on European Union trade mark registration No 33 860 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.

a) The goods and services

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

Class 3: Cosmetics and cleaning preparations.

Class 25: Clothing.

Class 28: Toys and sporting goods.

The contested goods and services are the following:

Class 2: Paints; varnishes; colours; lacquers; enamel coatings (in the nature of paints); colouring matters; dyestuffs (none being for laundry or toilet purposes); pigments; fixatives for paints or colours; artists’ colours; oil colours in stick form; colouring sticks (paints).

Class 3: Cosmetics, being make-up; cosmetic paints; body paints; face paints; skin make-up; make-up products; make-up for the face; make-up for the body; special effects make-up; make-up removal wipes impregnated with toilet preparations; glitter for use as cosmetics and make-up; glitter gel; glitter spray; sparkle for use as cosmetics and make-up; nail polish; nail colour; cosmetic wax for the temporary colouring of teeth; water based hair make-up; make-up in the form of theatre blood, gel blood, cake blood, clown white; face painting kits; temporary tattoos for cosmetic purposes.

Class 14: Key rings (jewellery), key rings (trinkets or fobs), key fobs, and key fobs of leather or imitation leather; jewellery; clocks; watches; watch straps.

Class 16: Artists’ materials; drawing materials; paper; cardboard; drawing boards; crayons; pastels; chalks; erasers; pencil sharpeners; writing and drawing materials and implements; pencils; pens; markers; paint brushes; artists’ brushes; paint boxes; painting sets; coloured liquids for use in children’s crafts; printed matter; books; instructional and teaching materials; painting by number painting sets; adhesives for graphic arts purposes; glitter glue for artistic purposes; modelling compounds, modelling clay and modelling paste; ink; writing ink; drawing ink; paper and cardboard articles for use in relation to craft; artists’ craft kits combining paper, cardboard and foil for making pictures; arts, crafts and modelling equipment; stationery; removable tattoos; stickers; stencils; paper goods, namely, festive decorations, party decorations, party bags, ornaments, paper napkins, banners, flags, pennants, bunting, table cloths and table mats.

Class 20: Plastic party ornaments; plastic cake decorations; gift package decorations made of plastic; figurines of plastic, resin or wood; picture frames; key rings (non-metallic).

Class 24: Flags, not of paper; bunting; banners; plastic flags and pennants.

Class 25: Clothing; headgear; fancy dress costumes and outfits; articles of fancy dress; Halloween costumes; costumes for use in children’s dress-up play; party clothing including party hats.

Class 28: Toys, games or playthings; craft toys and/or models sold in kit form; oy model hobby craft kits; children’s multiple activity toys; kits of parts (sold complete) for making toy models; toy jewellery; toy masks, novelty masks; children’s play cosmetics, children’s play makeup; costumes being children’s playthings; dressing up accessories being children’s playthings, namely false body parts, false hair, beards and moustaches; dressing up accessories, namely false noses, false swords, knives and other weapons, false armour, false wands, false glasses, canes and brooms; toy musical instruments; soap bubbles; balloons; novelties for parties, party crackers; party poppers; party favours; confetti; practical jokes (novelties); sporting articles and sports equipment; novelty hats.

Class 35: Retail and wholesale services connected with the sale of the following goods: arts and craft materials and supplies, paints, varnishes, colours, lacquers, enamel coatings, colouring matters, dyestuffs, pigments, fixatives for paints or colours, artists’ colours, oil colours in stick form, colouring sticks, cosmetics, being make-up, cosmetic paints, body paints, face paints, skin make-up, make-up products, make-up for the face, make-up for the body, special effects make-up, make-up removal wipes impregnated with toilet preparations, glitter for use as cosmetics and make-up, glitter gel, glitter spray, sparkle for use as cosmetics and make-up, nail polish, nail colour, cosmetic wax for the temporary colouring of teeth, water based hair make-up, make-up in the form of theatre blood, gel blood, cake blood, clown white, face painting kits, temporary tattoos for cosmetic purposes, sunglasses, key rings (jewellery), key rings (trinkets or fobs), key fobs, and key fobs of leather or imitation leather, jewellery, clocks, watches, watch straps, artists’ materials, drawing materials, paper, cardboard, drawing boards, crayons, pastels, chalks, erasers, pencil sharpeners, writing and drawing materials and implements, pencils, pens, markers, paint brushes, artists’ brushes, paint boxes, painting sets, coloured liquids for use in children’s crafts, printed matter, books, instructional and teaching materials, painting by number painting set, adhesives for graphic arts purposes, glitter glue for artistic purposes, modelling compounds, modelling clay and modelling paste, ink, writing ink, drawing ink, paper and cardboard articles for use in relation to craft, artists’ craft kits combining paper, cardboard and foil for making pictures, arts, crafts and modelling equipment, stationery, removable tattoos, stickers, stencils, partyware, paper goods, namely, party decorations, party bags, ornaments, paper napkins, banners, flags, pennants, bunting, table cloths and table mats, clothing and costumes for cats and dogs, plastic party ornaments, plastic cake decorations, gift package decorations made of plastic, figurines of plastic, resin or wood, picture frames, plastic flags and pennants, key rings (non-metallic), flags, bunting, banners, clothing, headgear, fancy dress costumes and outfits, articles of fancy dress, Halloween costumes, costumes for use in children’s dress-up play, party clothing including party hats, novelty hats, toys, games or playthings, craft toys and/or models sold in kit form, toy model hobby craft kits, children’s multiple activity toys, kits of parts (sold complete) for making toy models, toy jewellery, toy masks, novelty masks, children’s play cosmetics, children’s play makeup, costumes being children’s playthings, dressing up accessories, including false body parts, false noses, false hair, beards and moustaches, false swords, knives and other weapons, false armour, false wands, false glasses, canes and brooms, toy musical instruments, soap bubbles, balloons, novelties for parties, party crackers, party poppers, party favours, confetti, practical jokes (novelties), festive decorations, bags, badges, horns, whistles, sporting articles and sports equipment.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 2

The contested paints; varnishes; colours; lacquers; enamel coatings (in the nature of paints); colouring matters; dyestuffs (none being for laundry or toilet purposes); pigments; fixatives for paints or colours; artists’ colours; oil colours in stick form; colouring sticks (paints) are substances used for painting, dying, polishing and protecting surfaces. Their purposes differ from those of the opponent’s goods in Classes 3, 25 and 28, which includes cosmetics, with the purpose of beautifying or cleaning the human body, clothing, which protects the body against the elements, and toys and sporting goods, which are designed to be played with or used in relation to sports activities. Furthermore, their producers and distribution channels are different. These goods are not in competition with each other and are not complementary. Consequently, these goods are dissimilar.

Contested goods in Class 3

The contested cosmetics, being make-up; cosmetic paints; body paints; face paints; skin make-up; make-up products; make-up for the face; make-up for the body; special effects make-up; glitter for use as cosmetics and make-up; glitter gel; glitter spray; sparkle for use as cosmetics and make-up; nail polish; nail colour; cosmetic wax for the temporary colouring of teeth; water based hair make-up; make-up in the form of theatre blood, gel blood, cake blood, clown white; face painting kits; temporary tattoos for cosmetic purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested make-up removal wipes impregnated with toilet preparations are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.

Contested goods in Class 14

The contested key rings (jewellery), key rings (trinkets or fobs), key fobs, and key fobs of leather or imitation leather; jewellery; clocks; watches; watch straps are various personal ornaments, decorative objects or instruments used to indicate time. Their purposes are completely different from those of the opponent’s goods in Classes 3, 25 and 28, as described above. Furthermore, these goods differ in their nature and are neither in competition with each other nor complementary. Their producers and distribution channels are also not the same. Therefore, these goods are dissimilar.

Contested goods in Class 16

The contested artists’ materials; drawing materials; paper; cardboard; drawing boards; crayons; pastels; chalks; erasers; pencil sharpeners; writing and drawing materials and implements; pencils; pens; markers; paint brushes; artists’ brushes; paint boxes; painting sets; coloured liquids for use in children’s crafts; printed matter; books; instructional and teaching materials; painting by number painting sets; adhesives for graphic arts purposes; glitter glue for artistic purposes; modelling compounds, modelling clay and modelling paste; ink; writing ink; drawing ink; paper and cardboard articles for use in relation to craft; artists’ craft kits combining paper, cardboard and foil for making pictures; arts, crafts and modelling equipment; stationery; removable tattoos; stickers; stencils; paper goods, namely, festive decorations, party decorations, party bags, ornaments, paper napkins, banners, flags, pennants, bunting, table cloths and table mats include various stationery items, artists’ materials and paper goods, which differ in both nature and purpose from the opponent’s cosmetics and cleaning preparations in Class 3, clothing in Class 25 and toys and sporting goods in Class 28. Moreover, these goods are neither in competition with each other nor complementary. They also have different producers and distribution channels. Therefore, these goods are dissimilar.

Contested goods in Class 20

The contested plastic party ornaments; plastic cake decorations; gift package decorations made of plastic; figurines of plastic, resin or wood; picture frames; key rings (non-metallic) are ornaments or decorative objects made of plastic or other non-metallic materials, which differ in nature and purpose from the opponent’s cosmetics and cleaning preparations in Class 3, clothing in Class 25 and toys and sporting goods in Class 28. Furthermore, these goods are neither in competition with each other nor complementary. Their producers and distribution channels are also not the same. Therefore, these goods are dissimilar.

Contested goods in Class 24

The contested flags, not of paper; bunting; banners; plastic flags and pennants and the opponent’s cosmetics and cleaning preparations in Class 3, clothing in Class 25 and toys and sporting goods in Class 28 have nothing relevant in common. They differ in their natures, purposes and methods of use. Furthermore, these goods are neither in competition with each other nor complementary. They also have different producers and distribution channels. Therefore, these goods are dissimilar.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested fancy dress costumes and outfits; articles of fancy dress; Halloween costumes; costumes for use in children’s dress-up play; party clothing including party hats are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headgear serves the same purpose as the opponent’s clothing, as they both give protection against the elements. Furthermore, the distribution channels for these goods are the same and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Therefore, they are considered similar.

Contested goods in Class 28

The contested toys, games or playthings are identically contained in both lists of goods (including synonyms).

The contested craft toys and/or models sold in kit form; toy model hobby craft kits; children’s multiple activity toys; kits of parts (sold complete) for making toy models; toy jewellery; toy masks, novelty masks; children’s play cosmetics, children’s play makeup; costumes being children’s playthings; dressing up accessories being children’s playthings, namely false body parts, false hair, beards and moustaches; dressing up accessories, namely false noses, false swords, knives and other weapons, false armour, false wands, false glasses, canes and brooms; toy musical instruments; soap bubbles; balloons; novelties for parties, party crackers; party poppers; party favours; confetti; practical jokes (novelties); novelty hats are included in, or overlap with, the opponent’s toys. Therefore, they are identical.

The contested sporting articles and sports equipment are included in the opponent’s sporting goods. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail and wholesale services connected with the sale of the following goods: cosmetics, being make-up, cosmetic paints, body paints, face paints, skin make-up, make-up products, make-up for the face, make-up for the body, special effects make-up, make-up removal wipes impregnated with toilet preparations, glitter for use as cosmetics and make-up, glitter gel, glitter spray, sparkle for use as cosmetics and make-up, nail polish, nail colour, cosmetic wax for the temporary colouring of teeth, water based hair make-up, make-up in the form of theatre blood, gel blood, cake blood, clown white, face painting kits, temporary tattoos for cosmetic purposes are similar to a low degree to the opponent’s cosmetics and cleaning preparations in Class 3.

Furthermore, the contested retail and wholesale services connected with the sale of the following goods: clothing, fancy dress costumes and outfits, articles of fancy dress, Halloween costumes, costumes for use in children’s dress-up play, party clothing including party hats, novelty hats are similar to a low degree to the opponent’s clothing in Class 25.

For the same reasons, the contested retail and wholesale services connected with the sale of the following goods: toys, games or playthings, craft toys and/or models sold in kit form, toy model hobby craft kits, children’s multiple activity toys, kits of parts (sold complete) for making toy models, toy jewellery, toy masks, novelty masks, children’s play cosmetics, children’s play makeup, costumes being children’s playthings, dressing up accessories, including false body parts, false noses, false hair, beards and moustaches, false swords, knives and other weapons, false armour, false wands, false glasses, canes and brooms, toy musical instruments, soap bubbles, balloons, novelties for parties, party crackers, party poppers, party favours, confetti, practical jokes (novelties), horns, whistles, sporting articles and sports equipment are similar to a low degree to the opponent’s toys and sporting goods in Class 28.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled for the remaining services in the present case, since the goods that are covered by the contested retail and wholesale services connected with the sale of the following goods: arts and craft materials and supplies, paints, varnishes, colours, lacquers, enamel coatings, colouring matters, dyestuffs, pigments, fixatives for paints or colours, artists’ colours, oil colours in stick form, colouring sticks, sunglasses, key rings (jewellery), key rings (trinkets or fobs), key fobs, and key fobs of leather or imitation leather, jewellery, clocks, watches, watch straps, artists’ materials, drawing materials, paper, cardboard, drawing boards, crayons, pastels, chalks, erasers, pencil sharpeners, writing and drawing materials and implements, pencils, pens, markers, paint brushes, artists’ brushes, paint boxes, painting sets, coloured liquids for use in children’s crafts, printed matter, books, instructional and teaching materials, painting by number painting set, adhesives for graphic arts purposes, glitter glue for artistic purposes, modelling compounds, modelling clay and modelling paste, ink, writing ink, drawing ink, paper and cardboard articles for use in relation to craft, artists’ craft kits combining paper, cardboard and foil for making pictures, arts, crafts and modelling equipment, stationery, removable tattoos, stickers, stencils, partyware, paper goods, namely, party decorations, party bags, ornaments, paper napkins, banners, flags, pennants, bunting, table cloths and table mats, clothing and costumes for cats and dogs, plastic party ornaments, plastic cake decorations, gift package decorations made of plastic, figurines of plastic, resin or wood, picture frames, plastic flags and pennants, key rings (non-metallic), flags, bunting, banners, headgear, festive decorations, bags, badges are not identical to any of the opponent’s goods in Classes 3, 25 and 28. Therefore, these contested services and the opponent’s goods are considered dissimilar.

b) 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 varying degrees are directed at both the public at large (e.g. for toys in Class 28) and business customers (e.g. for wholesale services in Class 35). The degree of attention is considered to be average.

c) 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 earlier trade mark is a figurative mark in black and white and depicts a clown, that is, a comic entertainer, especially one in a circus, wearing a traditional costume and exaggerated make-up. The clown is smiling and is in a sitting position with his or her arms held up on each side of his or her body.

The contested mark, also purely figurative, depicts a face with a smiling expression wearing a fanciful hat and a collar. The arms of the hat are blue and red, while the collar and the ornaments at the tips of the hat’s arms are yellow. The contested sign may be perceived as the head of a jester, who historically was ‘a professional joker or “fool” at a medieval court, typically wearing a cap with bells on it and carrying a mock sceptre’ (information extracted from Oxford Online English Dictionary).

However, for part of the public the line between the concept of a clown and a jester, who are both entertainer characters, might be blurred, as both characters often appear with similar costumes. Consequently, it is not unlikely that part of the public will perceive the contested sign as depicting the head of a clown when seeing the sign without proceeding to analyse its various details.

As regards the distinctiveness of the signs, for some of the goods, such as special effects make-up; make-up in the form clown white; face painting kits in Class 3, Halloween costumes; costumes for use in children’s dress-up play in Class 25 and costumes being children’s playthings; dressing up accessories being children’s playthings, namely false body parts, false hair, beards and moustaches; dressing up accessories, namely false noses, false glasses; novelties for parties, party crackers; practical jokes (novelties); novelty hats in Class 28, both signs may be perceived as clearly indicating the nature of the goods, for example that the relevant goods in Class 3 may be character cosmetics, while the goods in Classes 25 and 28 are clown or jester costumes or playthings that form part of such costumes. For these reasons, both signs may be perceived as descriptive for some goods. The same line of reasoning also applies to the retail and wholesale services in Class 35 that relate to the goods for which the signs are considered non-distinctive.

On the other hand, for some of the relevant goods, such as sporting articles in Class 28, neither of the signs indicates any of their characteristics. Consequently, for these goods, the signs are considered distinctive.

The opponent argues in its observations that the human eye is attracted to human faces. In short, it argues that faces, and things approximating images of faces, catch our attention and are therefore often used in marketing communication to catch the attention of the public. The opponent therefore states that the dominant features of the signs are the faces. Along with these arguments, the opponent submitted extracts from two articles, one by the communications consultant Garr Reynolds and the other by Gus Lubin and Haylen Hudson.

The documentation submitted consists of only two articles written by three people in total, and the professional background of Gus Lubin and Haylen Hudson remains unknown. The material submitted is quite sparse and by no means sufficient to support a conclusion that the statements made are scientifically proven facts. Furthermore, even if it is true that the face is the feature that first catches the attention of the public, this does not mean that the remaining features will go unnoticed by the relevant consumer. In addition, since the examples presented in the articles submitted are realistic images of human beings, their conclusions do not necessarily apply to the present case, which, rather, concerns two cartoon-like drawings. Nevertheless, neither the opponent’s statement nor the extracts submitted can be taken into account for the purpose of assessing the likelihood of confusion between signs, as the articles are primarily written to catch the attention of consumers for marketing and communication purposes.

Consequently, the Opposition Division does not consider that any of the features of the figurative signs at issue are more visually outstanding than any others. The assessment of likelihood of confusion will proceed by assessing the overall impressions conveyed by the marks.

Visually, although the characters in the signs have certain features in common, such as both displaying a cartoon-like depiction of a smiling human face and both wearing costumes, there are also some distinct differences between the two.

First, the earlier mark shows the whole body with quite clear body language, while the contested sign is cropped down to display only a head. Second, even when comparing the heads of both figures, noticeable differences in their features are perceived. While the character in the earlier sign is smiling with the eyes shut, the character in the contested sign has the eyes wide open. In addition, their noses differ: the earlier sign displays a typical round clown nose, while the jester’s nose in the contested sign shows a simple stylisation of a more human-like nose with its bridge and tip. Furthermore, they have different-looking collars and also quite different headpieces: one is pointy with a single circular ornament on top and the other has three arms pointing in different directions. Finally, the signs differ in the use of the colours red, blue and yellow in the contested sign, whereas the earlier mark is black and white.

Taking the above into account, it is concluded that the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both marks will be associated with entertainers in costumes, there will be a certain degree of conceptual similarity between them, which will, however, be at most average for the part of the public that perceives the contested mark as a depiction of a clown’s face, considering the differences between the signs (only the head in the contested mark versus the whole body with clear body language conveyed by the positioning of the arms and legs in the earlier mark). The degree of similarity will be even lower for the part of the public that will perceive the contested sign as the head of a jester, as each of the signs will evoke the concept of a different kind of entertainer, namely a jester in one and a clown in the other.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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. Considering what has been stated above in section c) of this decision, the earlier mark must be seen as non-distinctive for some of the goods and services in question in Classes 3, 25, 28 and 35, as mentioned previously. The mark has a normal degree of distinctiveness for the remaining goods, for which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, § 16, EU:C:1998:442, § 29).

In the present case, the signs are visually not similar, conceptually similar to a low degree for part of the public and conceptually similar to at most an average degree for another part of the public. The aural aspect does not have an impact on the assessment of similarity, as both signs are purely figurative.

The contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. The relevant public consists both of the public at large and of business consumers, and the degree of attention of the relevant public is average. The earlier mark is non-distinctive for some of the goods and services in Classes 3, 25, 28 and 35, while it enjoys an overall average degree of inherent distinctiveness for the remaining goods and services, for which it does not indicate any of their characteristics.

As regards the dissimilar 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 these goods and services cannot be successful.

In relation to the remaining goods and services, even taking into account that some of the goods are identical, the similarities between the marks are not sufficient to lead to a likelihood of confusion on the part of the public.

The signs are similar only conceptually. The earlier trade mark enjoys protection for a particular depiction of a clown and not for the concept of any clown/entertainer. The mere conceptual similarity between the signs is in general not sufficient for a finding of likelihood of confusion, especially for those goods for which the earlier sign is considered non-distinctive. Furthermore, the different depictions of the characters must be taken into account, even for the part of the public that perceives a clown in both signs. The signs show very great visual differences in the ways they are depicted. These differences between the signs are clearly perceptible and sufficient to exclude any likelihood of confusion, even taking into account the principle of imperfect recollection as argued by the opponent. The relevant public, even the non-professionals with an average degree of attention, will have no difficulty in distinguishing between the marks regardless of the identity and similarity between some of the goods and services.

The opponent refers to two decisions of the General Court to support its arguments, namely:

- 18/05/2011, T‑376/09, EU:T:2011:225, concerning the following signs: ;

- 18/09/2014, T‑265/13, EU:T:2014:779, concerning the following signs: .

These previous cases referred to by the opponent are not relevant to the present proceedings. The marks assessed in those cases had much more in common than those in the present case, where the dissimilarities between the signs are clearly perceptible and cannot by any means be characterised as minor. The compositions of the marks in the previous cases were quite similar, in terms of the elements’ dimensions and proportions, whereas in the present proceedings the signs present striking differences in their graphical depictions and their overall compositions. In the present case, the earlier mark displays the whole body of a clown while the contested sign is cropped to only a head. In addition, the details of the two heads, including the depiction of the face, hair and hat, are different. Therefore, the arguments of the opponent must be set aside.

Considering all the above, it can be concluded that the differences between the marks are sufficiently striking to counteract their few similarities. Consequently, the possibility of likelihood of confusion, including likelihood of association, can safely be excluded, even in relation to the identical goods.

Therefore, 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 (formerly 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

Renata COTTRELL

Tu Nhi VAN

Peter QUAY

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.