OPPOSITION No B 3 058 086

Ribeiro & Issa Lda, Rua Abranches Ferrao 4D, 1600-001 Lisboa, Portugal (opponent)

a g a i n s t

Partyland Europe Ltd, No 29 St Mary Street, BKR 4684 Birkirkara, Malta (applicant).

On 22/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 086 is upheld for all the contested goods.

2. European Union trade mark application No 17 878 202 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 878 202 for the figurative mark . The opposition is based on Portuguese trade mark registration No 349 227 for the word mark ‘PARTY LAND’. The opponent invoked Article 8(1)(a) and (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, inter alia, the following:

Class 16: Tissues; napkins of paper; tablecloths of paper; crepe paper streamers; bunting of paper; flags of paper; metallic paper party decorations; paper party decorations; decorative paper garlands for parties.

Class 21: Paper plates; plastic plates; plates; confectioners’ molds; bakeware; cups and mugs; serving platters; bowls.

Class 28: Party favor hats; party favors; party games; party novelties; party poppers; party poppers [party novelties]; plastic party hats; streamers [party novelties]; toy bakeware and toy cookware; balloons; confetti; party favours; costume masks; Halloween masks; masks (theatrical -); practical jokes [novelties].

The contested goods are the following:

Class 16: Tissues; napkins of paper; tablecloths of paper; crepe paper streamers; bunting of paper; flags of paper; metallic paper party decorations; paper party decorations; decorative paper garlands for parties.

Class 21: Paper plates; plastic plates; plates; confectioners’ molds; bakeware; cups and mugs; serving platters; bowls.

Class 28: Party favor hats; party favors; party games; party novelties; party poppers; party poppers [party novelties]; plastic party hats; streamers [party novelties]; toy bakeware and toy cookware; balloons; confetti; party favours; costume masks; Halloween masks; masks (theatrical -); practical jokes [novelties].

All the contested goods, namely tissues; napkins of paper; tablecloths of paper; crepe paper streamers; bunting of paper; flags of paper; metallic paper party decorations; paper party decorations; decorative paper garlands for parties in Class 16, paper plates; plastic plates; plates; confectioners’ molds; bakeware; cups and mugs; serving platters; bowls in Class 21, party favor hats; party favors; party games; party novelties; party poppers; party poppers [party novelties]; plastic party hats; streamers [party novelties]; toy bakeware and toy cookware; balloons; confetti; party favours; costume masks; Halloween masks; masks (theatrical -); practical jokes [novelties] in Class 28, are identically contained in both lists of 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 identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

PARTY LAND
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 registered trade mark symbol, ®, in the contested sign, is merely an informative indication and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The signs coincide in the verbal elements ‘PARTY’ and ‘LAND’, although they are written as two words in the earlier mark and as a single, slightly stylised blue element in the contested sign.

The additional figurative element of the contested sign will be perceived as a blue circle in which there are the stylised intertwined letters ‘P’ and ‘L’ (or only the stylised letter ‘P’). This figurative element, as a whole, is distinctive to a normal degree since it is not related to the relevant goods. Nevertheless, these letters in the circle are likely to be perceived as a reference to the initial letters of the words constituting the verbal element and as complementing this element. It should be also noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the coinciding verbal components are on an equal footing because the differentiating figurative element merely refers to the verbal element that follows it; the degree of distinctiveness of the verbal elements is the same, irrespective of whether their meaning will be perceived or not by different parts of the relevant public, and therefore it has no material impact on the comparison.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘PARTY LAND’ with the only difference that the verbal elements ‘PARTY’ and ‘LAND’ are written as two elements in the earlier mark and as a single element in the contested sign. However, they differ in the slight stylisation of the verbal element ‘PARTYLAND’, which is not particularly striking, and in the additional figurative element of the contested sign, which has less impact than the verbal element of the mark, as described above.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛PARTY LAND’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, the marks are highly similar if meanings are assigned to the coinciding verbal elements ‘PARTY’ and ‘LAND’, regardless of their distinctiveness. This is because the additional figurative element of the contested sign complements the verbal element rather than introduces a new or different concept that might differentiate the marks. If no meanings are attributed, the conceptual similarity will not influence this assessment.

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.

Regardless of whether the earlier mark’s verbal elements might be of limited distinctiveness in relation to some goods, the earlier mark is presumed to have at least a minimum degree of inherent distinctiveness (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41). As a conclusion, the earlier mark has at least a minimum degree of distinctiveness.

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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In this case, the goods are identical and the degree of attention of the relevant public is average. The signs are visually highly similar, aurally identical and conceptually either highly similar, if meanings are assigned to the coinciding verbal elements, or if not, the conceptual similarity will not influence this assessment. The earlier mark has at least a minimum degree of distinctiveness.

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

The fact that some of the coinciding verbal elements may be of limited distinctiveness in relation to some goods is not relevant for the degree of similarity between the marks, since a likelihood of confusion cannot be dispelled even by the lowest degree of distinctiveness of the coinciding elements.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 349 227. It follows that the contested trade mark must be rejected for all the contested goods.

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(1)(a) 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 (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

Boyana NAYDENOVA

Ali KUÇUKŞAHİN

Lena FRANKENBERG GLANTZ

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.