OPPOSITION No B 3 019 323

Piko Asia Ltd., Flat 5, 5/F Lemmi Centre, 50 Hoi Yuen Road, Kwun Tong, Kowloon, Hong Kong, People’s Republic of China (opponent), represented by Gerstenberg Rechtsanwälte, Uhlandstrasse 2, 80336 München, Germany (professional representative)

a g a i n s t

Bob Licensing SARL, 21 Rue Docteur Emile Bataille, 76250 Deville les Rouen, France (applicant).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 019 323 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 283 706 ‘BLIKO’, namely against all the goods in Class 28. The opposition is based on German trade mark registration No 2 022 296 ‘PIKO’. 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

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

Class 28: Toys, namely model railways, building models, electromechanical toys, children’s household appliances, grocery items, plastic constructional vehicles as well as plastic vehicles designed to seat children.

The contested goods are the following:

Class 28: Games; Toys.

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

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

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 toys include, as a broad category, the opponent’s toys, namely model railways, building models, electromechanical toys. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested games are highly similar to the opponent’s toys, namely model railways, building models, electromechanical toys, as they have the same purpose and nature. Furthermore, they usually have the same producers, relevant public and distribution channels.

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 found to be identical or highly similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

PIKO	BLIKO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs, namely ‘PIKO’ (the earlier mark) and ‘BLIKO’ (the contested sign), are word marks with no meaning for the relevant public, and they are therefore distinctive.

Both marks are rather short words, the earlier mark consisting of four letters and the contested sign of five.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

It should also be borne in mind that 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 their last three letters, ‘IKO’, and differ in their first letters, namely ‘P’ in the earlier mark and ‘BL’ in the contested sign.

Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have some of them in common. In the present case, it is considered that the differences at the beginnings of the marks under comparison and their different lengths will not go unnoticed by the relevant consumers when they perceive the marks visually.

Therefore, the signs under comparison are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘IKO’, present identically at the end of each sign. The pronunciation differs in the sounds of the signs’ first letters, ‘P’ in the earlier mark and ‘B’ in the contested sign, and said difference increases due to the additional consonant ‘L’ of the contested sign.

Therefore, the signs are aurally similar to a lower than average degree.

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 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. 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.

e) Global assessment, other arguments and conclusion

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 goods are identical or highly similar and target the general public, which has an average degree of attention.

The signs are visually similar to a low degree and aurally similar to a lower than average degree on account of the sequence of letters that they have in common, ‘IKO’, which is situated at the ends of the marks and is not present as an independent and distinguishable element in them. The examination of the similarity of the signs must take into account the overall impression produced by them, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

The conceptual aspect does not influence the assessment of the similarity of the marks.

Considering all of the above, in the overall impression conveyed by the signs, the differences at their beginnings outweigh the commonalities, and therefore the signs will not lead consumers to associate the goods with the same undertaking or economically linked undertakings, or to confuse the signs.

Therefore, the Opposition Division finds that the differences between the signs will enable the relevant consumers to safely distinguish between them, even for identical goods.

Considering all the above, there is no likelihood of confusion on the part of the public. 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 (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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Sofia SACRISTAN MARTINEZ

Martin EBERL

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.