OPPOSITION Nо B 3 063 032

 

Hasbro, Inc., 1027 Newport Avenue, 02861 Pawtucket, United States of America (opponent), represented by Thomas Grimm, Prannerstraße 10, 80333 München, Germany (professional representative) 

 

a g a i n s t

 

Shenzhen Chuangteng Technology Co., Ltd., 2/F-202, Complex Bldg., Second Ind. Zone, Nankeng, Bantian St., Longgang Dist., 518000 Shenzhen, People’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27, 99-300 Kutno, Poland (professional representative).

On 15/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 063 032 is partially upheld, namely for the following contested goods:

 

	Class 28: Targets; scale model kits [toys]; darts; flying discs; caps for pistols [toys]; articles of clothing for toys; toy pistols; archery implements; parlor games; costume masks.
2.	European Union trade mark application No 17 907 024 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 29/08/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 907 024 ‘NFSTRIKE’ (word mark), namely all the goods applied for in Class 28. The opposition is based on European Union trade mark registration No 7 280 811 ‘N-STRIKE’ (word mark) for which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and also on the non-registered sign ‘N -STRIKE’ used in the course of trade in the United Kingdom, for which the opponent invoked Article 8(4) EUTMR.

PRELIMNARY REMARK

On 01/02/2020, the United Kingdom (‘the UK’) withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(4), EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision. It follows that the opposition must be dismissed with respect to Article 8(4) 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 28: Toys; games and playthings; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 28: Targets; scale model kits [toys]; darts; flying discs; caps for pistols [toys]; articles of clothing for toys; toy pistols; archery implements; parlor games; camouflage screens [sports articles]; costume masks; chest protectors [for baseball]; face masks for sports; leg guards for athletic use; swimming belts; weight lifting belts [sports articles]; belts (weight lifting -) [sports articles]; weight lifting belts.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 scale model kits [toys]; caps for pistols [toys]; articles of clothing for toys; toy pistols are included within the broader category of the opponent’s toys and so they are identical.

The contested parlor games and costume masks are included within the broader category of the opponent’s games and playthings respectively and so they are identical.

The contested targets; darts; flying discs; archery implements, include both toy versions of targets, darts, flying discs, and archery implements as well as regular versions of such items for sports, and so they must be held to overlap with the opponent’s toys. Therefore, they are identical.

However, the remaining contested goods - camouflage screens [sports articles]; chest protectors [for baseball]; face masks for sports; leg guards for athletic use; swimming belts; weight lifting belts [sports articles]; belts (weight lifting -) [sports articles]; weight lifting belts – being sporting articles, or otherwise items for sports, do not share relevant points of contact with the opponent’s toys; games and playthings; parts and fittings for all the aforesaid goods to warrant or justify a finding of similarity.

While sporting articles are intended, above all, for engaging in physical exercise, the sole function of toys, games and playthings is, in principle, to entertain. The goods in comparison have different intended purposes and they are not interchangeable or in competition with each other. They are usually not produced by the same specialist undertakings and even when found in the same distribution channels (e.g. large retail stores), they will not be placed in the same specialist departments (04/06/2013, T 514/11, BETWIN, EU:T:2013:291, § 36, 38; 04/12/2019, T 524/18, BILLABONG, EU:T:2019:838, § 44-45, 51). Therefore, they are dissimilar.

At paragraph 15 of its submissions of 22/01/2021, the opponent refers to the particular manner of use of the earlier mark. However, the comparison of goods is based on the list of goods as registered and/or applied for so that the actual goods for which the earlier mark may be used is not relevant to this instant comparison. At paragraph 16 of the said submissions, the opponent contends that it is usual office practice to find low similarity between sporting articles and its toys, games and playthings. However, contrary to this contention, current Office practice (as set out in the Office’s online database concerning similarity of goods/services, available at https://euipo.europa.eu/sim/search) is that, in Class 28, sporting articles are dissimilar to toys, games or playthings, as has been explained above.

Therefore, these submissions of the opponent are not well-founded and must be dismissed.

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 for which, being toys, games and playthings, the degree of attention is average.

 

 

c) The signs

 

N-STRIKE	NFSTRIKE
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 common word/component ‘STRIKE’ is not necessarily meaningful in certain 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 English-speaking part of the public such as Ireland and Malta, given that a conceptual similarity increases the risk of confusion which is not necessarily so for the non-English-speaking public.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

As a verb in English, ‘strike’, present in both signs, refers to the action of hitting something deliberately (information extracted from Collins Dictionary on 14/07/2021 at https://www.collinsdictionary.com/dictionary/english/strike). As this word alludes to the purpose of the opponent’s toys, games and playthings and of some of the relevant contested goods, such as targets, darts, flying discs, it is weakly distinctive, while being normally distinctive of some other of the relevant contested goods, such as parlor games or costume masks to which it bears no direct reference.

Neither the letter ‘N’ of the earlier mark nor the letter combination ‘NF’ of the contested sign bears any meaning with respect to the goods in question and so each is normally distinctive.

While the hyphen in the earlier mark will not go unnoticed, it does not play any role as an indicator of commercial origin.

Visually and aurally, the signs coincide in the letters/sounds ‘N*STRIKE’, differing only in the letter/sound ‘F’ at second position of the contested sign, as well as, visually speaking, the hyphen of the earlier mark which does not play any role as an indicator of commercial origin. On this basis, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that the signs coincide in the meaning of the word ‘STRIKE’, they must be held to be conceptually similar to an average degree, and this is so despite the fact that this coinciding word is weakly distinctive character for some of the goods in question, having regard to the fact that this is the only meaningful element of each sign.

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 impliedly claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

 

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 descriptive meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weakly distinctive element in the mark, as stated above in section c) of this decision, for the opponent’s goods in question.

e) 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 covered are from the same or economically linked undertakings.

In the present case the goods have been found to be partly identical and partly dissimilar. The earlier mark as a whole is normally distinctive. The degree of attention of the relevant public is average. For the public under analysis, the signs have been found to be visually and aurally highly similar and conceptually similar an average degree.

Taking the relevant factors into consideration, the Opposition Division considers that the strong overall similarities between the signs are not counteracted by the differences, pertaining only to the additional letter ‘F’ at second position of the contested sign, and to the hyphen in the earlier mark which does not play any role as an indicator of commercial origin.

While it is true that the coinciding word/component ‘STRIKE’ is weakly distinctive for some of the goods in question, it is important to point out that the coincidence does not stop there: in fact, the signs coincide in all their elements save for the said additional letter ‘F’ of the contested sign and hyphen of the earlier mark.

In any event, the Guidelines of the Office (Guidelines for Examination in the Office, Part C, Opposition, Section 2, Chapter 7, Global Assessment, section 6.2) make it clear that coincidence in an element with a low degree of distinctiveness can lead to a finding of a likelihood of confusion where, inter alia, the overall impression of the marks is highly similar or identical, and this is the case here where the signs have been found to be visually and aurally highly similar, as well as being conceptually similar to an average degree.

Moreover, the goods themselves are fairly ordinary consumer products that are commonly purchased in retail outlets, such as toy stores, where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 No 7 280 811 ‘N-STRIKE’. 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 to those of the earlier mark.

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

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 17/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was initially due to expire on 22/01/2019 but following an extension of the cooling off period as well as an extension of time granted to the opponent, as its request, the said time limit expired on 22/01/2021.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds of opposition under the said provision are concerned.

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

 

 

Irena LYUDMILOVA LECHEVA

Kieran HENEGHAN

Carlos MATEO PÉREZ

 

 

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.