OPPOSITION No B 3 058 557

Tiffany and Company, 727 Fifth Avenue, 10022 New York, United States of America (opponent), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP, Amsterdam, the Netherlands (professional representative)

a g a i n s t

Shenzhen Sailvan Ecommerce Co., Ltd., Zone C,6/F, China South City Square No.1, Pinghu Town, LongGang District, Shenzhen, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 557 is upheld for all the contested goods.

2. European Union trade mark application No 17 879 720 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 17 879 720 for the word mark ‘Tinfancy’. The opposition is based on, inter alia, European Union trade mark registration No 11 880 838 for the figurative mark .The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR in relation to this earlier mark.

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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 28: Games and playthings including whistles, yo-yos; baby rattles; dolls and plush toys; gymnastic and sporting articles not included in other classes; golf bags; golf tees, golf ball containers; racquet bags; Christmas decorations; dice; checkers and backgammon games, puzzles, musical game apparatus, bubble blowers; playing cards.

The contested goods are the following:

Class 28: Teddy bears; building blocks [toys]; toys; practical jokes [novelties]; parlour games; scale model vehicles; dolls' rooms; toy windmills; gyroscopes and flight stabilizers for model aircraft; drones [toys]; toy cars; intelligent toys; toy mobiles.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 gyroscopes and flight stabilizers for model aircraft are devices used as essential accessories that provide control or stability over the direction of a model aircraft or toy. Given this, there is a link with the opponent’s playthings, since they can have the same producers, relevant public and distribution channels. Furthermore, they are complementary. Therefore, they are considered similar.

The rest of the contested goods are games, toys and playthings for children. They are identically contained in both lists of goods, such as toys or included in the broad category of the opponent’s playthings, such as parlour games that are included in the opponent’s games, or overlap with the opponent’s dolls and plush toys, such as the contested teddy bears. Therefore, they are identical.

2. 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 public’s degree of attentiveness may vary from average to high, depending on the price, sophisticated nature of the goods. It may be high for example in relation to drones [toys]; intelligent toys due to their higher price

3. The signs

	Tinfancy
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 word ‘TIFFANY’ of the earlier mark may be perceived by the vast majority of the public as referring to a female name, therefore, is distinctive. The additional verbal elements ‘& CO.’ are generally understood as referring to ‘and company’. They are generally used in a commercial context to refer to the company, group or undertaking producing the goods. Therefore, they are considered non-distinctive for all the goods in question. The public is accustomed to see them and will not pay as much attention to these elements as to the other, more distinctive, element of the mark. Consequently, the impact of these elements is null.

The element ‘Tinfancy’ of the contested sign has no meaning for the relevant public and in relation to the goods in question and is, therefore, distinctive.

As regards the earlier mark, it is also composed of a less distinctive figurative element of a purely decorative nature, its blue background. The stylisation of the letters of the earlier mark is rather standard. Therefore, the impact of these elements will be minimal

Visually, the signs coincide in the letters and sounds ‘T-I-(*)-F-(*)-A-N-(*)-Y’, namely all the letters (with the exception of the second ‘F’, placed in the middle of the sign) constituting the earlier mark. They differ in the above mentioned additional ‘F’ of the earlier mark, the additional letters ‘N’ and ‘C’ of the contested sign, as well as in the verbal part ‘& Co’ and the figurative element of the earlier mark, which are however elements that will have a limited impact on consumers.

Therefore, the signs are visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of all the letters that constitute the first verbal element of the earlier mark ‘T-I-(*)-F-(*)-A-N-(*)-Y’ (as the sound of the double ‘F’ will not produce a difference). They also coincide in the number of syllables pronounced as [ti-fa-ni] versus [tin-fan-ci] and contain the same vowels which makes the first verbal element of the earlier mark and the contested sign coincident in rhythm and intonation. The signs differ in the pronunciation the additional part ‘and Co’ present in the earlier mark and the additional letters ‘N’ and ‘C’ of the contested sign which have no counterpart.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found visually and aurally similar, the examination of likelihood of confusion will proceed.

4. 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, 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, despite the presence of the non-distinctive element ‘& CO’ in the mark, as stated above in section c) of this decision.

5. 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 contested goods are partly identical and partly similar to the goods of the earlier mark and are directed at the public at large whose degree of attention is considered to vary from average to high.

As regards the signs they are visually similar to a below average degree and aurally similar to an average degree due to the fact that all the letters (with the exception of one, that visually will be hardly noticed and aurally will not be perceived by consumers), of the first and only distinctive element of the earlier mark are reproduced in the contested sign. Furthermore, the contested sign reproduces the same number of syllables and the same vowels of the first and most distinctive element of the earlier mark which makes them coincident in rhythm and intonation.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the public, as the conceptual difference will not be enough to outweigh the overall similarities of the signs.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 880 838. 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 its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the aforementioned earlier mark 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).

Likewise, 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 (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

Manuela RUSEVA

Maria Clara IBAÑEZ FIORILLO

Sofía SACRISTAN MARTÍNEZ

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.