OPPOSITION No B 3 074 072

Lego Juris A/S, Koldingvej 2, 7190 Billund, Denmark (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Shantou Pengrui Electronic Technology Co., Ltd., West of Industrial Avenue, Shangxiang Industrial Area, Lianshang Town, Chenghai District, Shantou, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 072 is upheld for all the contested goods.

2. European Union trade mark application No 17 875 008 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 17 875 008 for the 3D shape mark, shown below. The opposition is based on, inter alia, European Union trade mark registration No 50 450 for the 3D shape mark, also shown below. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

Earlier trade mark (EUTM No 50 450)	Contested sign (EUTM No 17 875 008)

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 50 450.

a) The goods

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

Class 28: Games and playthings.

The contested goods are the following:

Class 28: Jigsaw puzzles; parlour games; dolls’ houses.

The opponent’s broad category games and playthings includes a wide variety of goods such as puzzles, video games, card games (for which the earlier mark is normally distinctive, as will be seen below). These goods belong to the same sector of amusement and game articles as the contested jigsaw puzzles; parlour games; dolls’ houses. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria such as their nature, methods of use, whether they are competing goods or whether they are even identical. What is obvious is that these goods clearly belong to one homogeneous sector of goods on the market and for — at least — the majority of them may be produced by the same companies, target the same end user, are sold through the same distribution channels and have a similar purpose. Therefore, the contested goods are at least similar to the opponent’s goods.

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 at least similar are directed at the public at large. The degree of attention is 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 mark and the contested sign are both three-dimensional shapes consisting of figurines resembling a human being or an android (a detailed description of the signs is given below under the visual comparison). They contain five and six views, respectively.

Regarding the distinctive character of the signs, there is no reason to find that a three-dimensional mark resembling a human or an android would have a lower level of distinctiveness for the relevant goods, namely the contested jigsaw puzzles; parlour games; dolls’ houses and the goods within the category of the opponent’s games and playthings for which similarity has been found. The marks in question are neither descriptive, nor allusive of, and are not directly related to the aforementioned goods’ shapes. Therefore, these figurines are endowed with an average degree of inherent distinctiveness.

Visually, the signs coincide to the extent that they resemble a figurine of a human being or an android (depending on the way that they are interpreted, as the depictions are rather basic and do not contain many specific details with regard to their characterisation) with very similar shapes, proportions and position. An example of the front views are the following:

.

They have nearly identical cylindrical heads with rounded edges, very similar trapezoidal torsos and very similar legs, feet, arms and hands.

As far as the differences between them, in general terms, the outline of the contested sign is more accurate and precise (it has more three-dimensional aspects) than the sketch of the earlier mark but, in essence, the shapes reproduced are quite close. The studs on the top of their heads is different, there is only one in the earlier mark, while it is separated into two parts in the contested sign. Another element of dissimilarity is their neck: in the earlier mark, the head and the torso are clearly joined by a short, thick neck, while in the contested sign, the neck is even shorter and hardly noticeable. Further elements of dissimilarity are the facial expression drawn on the earlier mark (which is not present in the contested sign) and the fact that the front part of the contested sign’s feet is rounded. Other differences (apart from these) are barely visible to the naked eye in an overall perception.

The outcome of a visual comparison must be based on a ‘balance’ between similar and dissimilar elements. The former (similar) elements largely outweigh the latter in the present case. The average consumer will retain a very similar overall impression and proportion of the figurines and will not necessarily identify the minor dissimilarities between the signs which are less striking or can easily go unnoticed.

In light of the foregoing, the signs are visually similar to a high degree.

Aurally, purely three-dimensional shapes with no verbal elements are not subject to a phonetic assessment. Therefore, an aural comparison is not possible.

Conceptually, reference is made to the previous assertions concerning the visual comparison, which are valid mutatis mutandi since images or shapes, like words, may translate into concepts.

The concept conveyed by the signs is that of a figurine, which could be associated with a human being or an android, depending on the way it is perceived. Consequently, the signs are conceptually either highly similar or even 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, considering what has been stated in section c), the distinctiveness of the earlier mark must be seen as normal in relation to the opponent’s goods for which similarity has been found.

e) Global assessment, other arguments and conclusion

The goods are at least similar and they target the public at large, whose degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually highly similar and conceptually either highly similar or even identical.

The Court has already held that consumers are capable of perceiving differences between the stylisation of signs. However, the key point is how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphical stylisations and draw comparisons between them (07/10/2014, T‑531/12, T, EU:T:2014:855, § 65).

The signs do demonstrate overwhelming similarities (in particular, the shape, proportions and position) that may visually strike an average consumer of the relevant goods who, in accordance with case-law, perceives the marks as a whole and does not necessarily see them at the same time (or have the chance to make a direct comparison) in normal trade circumstances and must therefore trust in their imperfect recollection. The average consumer will retain — as regards the signs — the overall visual impression of a figurine resembling a human being or an android and will not necessarily remember the small details that distinguish their depictions.

Taking all the above into account, the Opposition Division considers that the minor differences between the signs are insufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

For the sake of completeness, even if, in light of the above assessment of the earlier mark it were to be considered that the distinctive character of the earlier mark were to be lower than the Opposition Division considered it to be, this would not affect the outcome of the case. Although the distinctive character of the earlier mark must be taken into account for the purpose of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services concerned (16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 74). Taking the strong similarities between the signs, the interdependence principle and the closeness of the goods into account, the same would apply even if the marks were found to have only a low degree of distinctiveness.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 50 450. It follows that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As this earlier right 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, 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

Riccardo RAPONI

Birgit FILTENBORG

Andrea VALISA

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.