OPPOSITION No B 3 048 872

Catchum 88 Limited, Horseshoe Farm, Lower Road, SS5 5LR Hockley, United Kingdom (opponent), represented by Dummett Copp LLP, 25 The Square, Martlesham Heath, IP5 3SL Ipswich, United Kingdom (professional representative)

a g a i n s t

Lieblingsköder GmbH, Kühnauer Str. 24, 06846 Dessau-Roßlau, Germany (applicant)

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 872 is upheld for all the contested goods.

2. European Union trade mark application No 17 626 318 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 626 318 ‘Moonlight’ (word mark). The opposition is based on European Union trade mark registration No 17 205 154 ‘MOONSHINE’ (word 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

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

Class 11: Apparatus for lighting; torches, solar powered torches, solar powered lamps, lamps, head torches, security lights.

Class 28: Angling equipment, fishing equipment, fishing tackle, fishing rods, fishing hooks, parts and fittings for fishing rods, fishing rod support systems, fishing rod rests, bags specifically adapted for carrying angling equipment, bags adapted for fishing, fishing and angling lines, bite indicators (fishing tackle), fishing weights, artificial fishing bait; artificial baits for fishing; freeze dried fishing bait; angling nets; landing nets; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 28: Fishing lure boxes; Fishing tackle; Hunting and fishing 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.

Fishing equipment; fishing tackle are identically contained in both lists of goods.

The contested fishing lure boxes are included in the broad category of the opponent’s fishing equipment. Therefore, they are identical.

The pursuit, capture and release, or capture for food of fish is called fishing, which is not commonly categorised as a form of hunting. However, the contested hunting equipment is at least similar to the opponent’s fishing equipment. They have the same purpose in a broad sense, to catch prays, and usually have the same producers, distribution channels and relevant public.

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 similar are directed at the public at large. The degree of attention is average.

c) The signs

MOONSHINE	Moonlight
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 earlier and the contested marks are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as United Kingdom, Ireland and Malta.

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.

Both marks are word marks, ‘MOONSHINE’ versus ‘Moonlight’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

Both the earlier mark, ‘MOONSHINE’ and the contested sign, ‘Moonlight’, will be associated with the light that comes from the moon at night, light from the sun received on earth after refection by the moon (information extracted from Collins English dictionary on 28/01/2018 at https://www.collinsdictionary.com/dictionary/english/moonshine and https://www.collinsdictionary.com/dictionary/english/moonlight).

As neither of them is descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

Visually, the signs coincide in the first letters ‘MOON’, which are distinctive. They differ in the second syllables of the marks, ‘SHINE’ versus ‘LIGHT’, which are also distinctive.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive letters ‛MOON’ in the beginning of both signs. The pronunciation differs in the sound of the letters ‛SHINE’ of the earlier mark and in the sound of the letters ‘LIGHT’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the light that comes from the moon at night, the signs are conceptually identical.

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).

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.

In the present case, the contested goods are partly identical and partly similar to the opponent’s goods. The relevant public is the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree, to the extent that they coincide in their first four letters, ‘MOON’, out of nine letters in both marks. The signs are conceptually identical.

Consumers tend to focus on the beginning of a sign when they encounter a trade mark. In the present case, the differentiating elements come at the end of the marks. This part of the sign does not attract the primary attention of the consumer.

Taking into account all the circumstances of the case, the differences between the marks, namely the different endings, are not sufficient to counterbalance the similarities between them. The relevant public could be mistaken regarding the origin of the goods that are identical or similar.

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 17 205 154. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, it 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.

The Opposition Division

Boyana NAYDENOVA

Lena FRANKENBERG GLANTZ

Begoña URIARTE VALIENTE

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.