OPPOSITION No B 3 058 604

Textron Innovations Inc., 40 Westminster Street, 02903, Providence,, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, EC4A 1JP, London, United Kingdom (professional representative)

a g a i n s t

Shenzhen Bell Creative Science and Education Co. Ltd, 902 South Block, Yuanxing Technology Building, No.1 Songpingshan Road, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

On 29/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 604 is partially upheld, namely for the following contested goods and services:

Class 9: Computer game software; computer software applications; animated cartoons; electronic publications, downloadable; electronic instructional and teaching apparatus and instruments; teaching robots; audiovisual teaching apparatus.

Class 28: all contested goods, except body-building apparatus; machines for physical exercises; in-line roller skates.

Class 41: Toy rental; games equipment rental; game services provided on-line from a computer network; organization of competitions [education or entertainment]; providing on-line electronic publications, not downloadable; providing on-line videos, not downloadable; organization of electronic game competitions; club services [entertainment or education]; none of the foregoing is related to the education in the field of aviation.

2. European Union trade mark application No 17 882 215 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services (Classes 9, 28 and 41) of European Union trade mark application No 17 882 215 (figurative mark ). The opposition is based on European Union trade mark registration No 4 920 948 (figurative mark ).

The opponent initially invoked Article 8(1) (b) and Article 8(5) EUTMR. With letter of 18/02/2019 the opponent withdrew Article 8(5) EUTMR as a basis of the opposition and informed the Office that the opposition shall solely be based on 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.

1. The goods and services

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

Class 28 Games and playthings; model vehicles; model aircraft; scale model airplanes; scale model helicopters; toy aeroplanes; toy helicopters; stress relief balls for hand exercise; teddy bears; flying discs; toy banks; board games; chess sets; golf gloves; divot repair tools for golfers; golf accessory pouches; golf tees; golf balls; golf ball markers; golf bags; golf bag covers.

As far as the opponent in its submissions of 18/02/2019 refers to further goods of the earlier mark (i.e. in Class 16) it has to be noted that in the notice of opposition the opponent clearly indicated that the opposition is only based on the abovementioned goods in Class 28. As the submissions of 18/02/2019 where filed only after the expiration of the opposition period (29/06/2018) the opposition can only be considered to be based on the abovementioned goods in Class 28.

The contested goods and services are, after the applicant limited the services in Class 41, the following:

Class 9 Computer game software; Cell phone straps; Electronic instructional and teaching apparatus and instruments; Eyeglasses; Animated cartoons; Electronic notice boards; Bags adapted for carrying photographic apparatus; Pedometers; Wire, electric; Microscopes; Electronic pocket translators; Computer software applications, downloadable; Electronic publications, downloadable; Wearable activity trackers; Electronic book readers; Talking books; Teaching robots; Resuscitation mannequins [teaching apparatus]; Audiovisual teaching apparatus; Projectors.

Class  28 Apparatus for games; Smart toys; Toys; Toy robots; Chess games; Body-building apparatus; Balls for games; Machines for physical exercises; Wrist guards for athletic use; In-line roller skates; Joysticks for video games; Building blocks [toys]; Swimming pools [play articles]; Electronic games for the teaching of children.

Class  41 Educational services; Film distribution; Arranging and conducting of workshops [training]; Mobile library services; Publication of books; Screenplay writing; Games equipment rental; Gymnastic instruction; Toy rental; Game services provided on-line from a computer network; Coaching [training]; Organization of competitions [education or entertainment]; Providing on-line electronic publications, not downloadable; Providing on-line videos, not downloadable; On-line publication of electronic books and journals; Organization of electronic game competitions; Arranging and conducting of conferences; Arranging and conducting of in-person educational forums; Arranging of training courses; Club services [entertainment or education]; none of the foregoing is related to the education in the field of aviation.

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.

Contested goods in Class 9

The contested goods computer game software; computer software applications are similar to the opponent’s games in Class 28 as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested goods animated cartoons; electronic publications, downloadable are similar to the opponent’s games in Class 28 as they can coincide in purpose, producer, relevant public and distribution channels.

The contested goods electronic instructional and teaching apparatus and instruments; teaching robots; audiovisual teaching apparatus are similar to the opponent’s games and playthings in Class 28 insofar as the goods of the earlier mark also include educational electronic and audiovisual games and playthings, which may coincide with the contested goods in purpose, method of use, producer and relevant public.

However the contested resuscitation mannequins [teaching apparatus] are very specific teaching mannequins that are produced by special companies and are used for professional medical education in cardiopulmonary resuscitation. They do not coincide in purpose, producer, relevant public and distribution channels with any of the opponent’s goods; they are neither in competition nor complementary to each other. Therefore, they are dissimilar.

The contested goods cell phone straps; eyeglasses; electronic notice boards; bags adapted for carrying photographic apparatus; pedometers; wire, electric; microscopes; electronic pocket translators; downloadable; wearable activity trackers; electronic book readers; talking books; projectors are dissimilar to all the goods of the earlier mark as they differ in producer, relevant public, distribution channels and are neither in competition nor complementary to each other.

Contested goods in Class 28

The contested goods apparatus for games; smart toys; toys; toy robots; chess games; balls for games; building blocks [toys]; swimming pools [play articles]; electronic games for the teaching of children are included in the broad category of the opponent’s Games and playthings. Therefore, they are identical.

The contested goods joysticks for video games are accessories for video games and as such they are similar to the opponent’s games and playthings. They can coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested goods wrist guards for athletic use are similar to the opponent’s golf gloves as they can coincide in purpose, producer, relevant public and distribution channels.

The contested goods body-building apparatus; machines for physical exercises; in-line roller skates are dissimilar to all the goods of the earlier mark as they differ in purpose, producer/provider, relevant public, distribution channels, method of use and are neither in competition nor complementary to each other. There is in particular no similarity to the opponent’s golf related goods. Whilst these may be considered sporting articles as well, they are not produced by the same undertakings and are bought by different consumers, given that they concern a completely different type of sport.

Contested services in Class 41

The contested services toy rental; games equipment rental; none of the foregoing is related to the education in the field of aviation are similar to the opponent’s games and playthings in Class 28 as they can coincide in purpose, relevant public and are in competition with each other.

The contested services game services provided on-line from a computer network; organization of competitions [education or entertainment]; providing on-line electronic publications, not downloadable; providing on-line videos, not downloadable; organization of electronic game competitions; club services [entertainment or education]; none of the foregoing is related to the education in the field of aviation are similar to the opponent’s games in Class 28 as these goods also include videogames with online functions (in particular online multiplayer functionality). It is common for video game producers to also provide the contested services in support of their video games, to enhance their functionalities and the gaming experience, and/or as an alternative to them. They can therefore coincide in purpose, producer/provider and relevant public; they can be complementary or in competition with each other.

The contested services educational services; film distribution; arranging and conducting of workshops [training]; mobile library services; publication of books; on-line publication of electronic books and journals; screenplay writing; gymnastic instruction; coaching [training]; arranging and conducting of conferences; arranging and conducting of in-person educational forums; arranging of training courses; none of the foregoing is related to the education in the field of aviation are dissimilar to all the goods of the earlier mark as they differ in nature, purpose, producer/provider, distribution channels, method of use and are neither in competition nor complementary to each other.

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 as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. 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 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 applicant argues that the common verbal element BELL is meaningful in English and non-distinctive in relation to e.g. goods in Class 28. However, the opposition division notes that in any case the element BELL is not meaningful in certain other territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Non-English-speaking part of the public such as consumers in Spain, for whom the verbal element BELL in both signs is meaningless and therefore distinctive in relation to all the relevant goods.

Due to the dot and the positioning at the end of the sign the element “.ai” of the contested sign will be perceived by a considerable part of the relevant public, on which the further examination will focus, as a generic part of an internet address, i.e. a generic top level domain (.ai is in fact the Internet country code top-level domain for Anguilla, a British Overseas Territories). Given the generic character of top-level domains it is non-distinctive.

The contested sign was filed as a figurative mark, however it has no figurative elements that could be taken into account in the comparison.

The figurative elements of the earlier mark are limited to the stylization of its letters and a curved line parting the letters. These elements are merely decorative and therefore non-distinctive.

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 the letters BELL. They differ in the use of lower vs. upper case letters in the aforesaid element, the further element ‘.ai’ of the contested sign, their respective typeface and the further graphical aspects of the earlier mark, which are however non-distinctive. Given that the earlier mark’s whole verbal element is included at the beginning of the contested sign as an independently identifiable element the signs are similar to an above-average degree.

Aurally, the pronunciation of the signs coincides in the syllable BELL and differs in the additional syllables PUN/TO (‘punto’ being the Spanish word for dot) and A/I of the contested sign, which are however non-distinctive.

Therefore, the signs are similar to an above-average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘.ai’ of the contested sign will evoke a concept, it is not sufficient to establish any conceptual differences between the signs, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal element ‘bell’, which has no meaning. 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.

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.

The opponent claimed that the earlier trade mark is entirely arbitrary and therefore enjoys an enhanced degree of inherent distinctiveness.

It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can only be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, furthermore be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

Given that the opponent has not filed any evidence showing that a higher degree of distinctiveness of the earlier mark has been acquired, 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.

5. Global assessment, other arguments and conclusion

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.

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).

There is a likelihood of confusion, even for consumers with a high level of attention, because the contested sign incorporates the entire verbal element of the earlier in its beginning as an independent distinctive element, whereas the differences between the signs are confined to non-distinctive or secondary elements and aspects, as described above under section c) of this decision.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that there are several registrations in the EUIPO’s register with the word ‘BELL’ which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Tobias KLEE

Konstantinos MITROU

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.