OPPOSITION No B 3 066 908

Fred Ramirez, 2225 Park Place, 89423 Minden, United States of America (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, G5 8PL Glasgow, United Kingdom (professional representative)

a g a i n s t

Amplus HA SAS, 58 avenue de Paris, 71100 Chalon Sur Saone, France (applicant).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 908 is upheld for all the contested goods, namely all the goods in Class 28.

2. European Union trade mark application No 17 926 122 is rejected for all the above goods. It may proceed for the remaining uncontested goods in Class 13.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 926 122 for the figurative mark , namely against all the goods in Class 28. The opposition is based on European Union trade mark registrations No 1 664 804 for the word mark ‘STOMP’ and No 698 738 for the word mark ‘STOMP ROCKET’. The opponent invoked 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.

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 registrations No 1 664 804.

a) The goods

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

Class 28: Toys.

The contested goods are the following:

Class 28: Toy weapons; firearm targets; toy pistols; paintballs [ammunition for paintball guns] [sports apparatus]; toy models; toy holsters; paintball guns [sports apparatus]; toy guns; caps [percussive] for toy pistols; toy gun holsters; toy air pistols; toy cap pistols; water pistols; aerosol actuator guns [playthings]; paintball guns; games; toys; targets; electronic targets; dart boards; targets for sporting use; clay pigeons [targets]; target games; target launchers [sports articles]; archery targets; radio-controlled miniature aerial targets for sports; bows for archery; archery quivers; arrows [for archery]; archery implements; clay pigeon traps; darts; costume masks; costumes being children’s playthings; body protectors for sports use; sports training apparatus; crossbows [sporting apparatus]; sporting articles and equipment; camouflage screens [sports articles]; nets for sporting purposes; spears for use in fishing; harpoon guns [sports articles]; gloves made specifically for use in playing sports.

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. These factors are known as the ‘Canon criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

A part of the contested goods consist of various types of toys (e.g. the contested toy weapons; toy pistols; water pistols), games (e.g. the contested games; target games), playthings (e.g. the contested aerosol actuator guns [playthings]; costumes being children’s playthings) and parts or accessories thereof (e.g. the contested caps [percussive] for toy pistols). These goods are similar to at least a low degree (if not identical) to the opponent’s toys. At the very least all of them usually coincide in their purpose, they have the same producers, target the same public and may be distributed through the same channels.

The remaining contested goods are various types of sporting articles, apparatus and equipment or goods for sporting use or sporting purposes (e.g. the contested paintball guns [sports apparatus]; targets for sporting use; sports training apparatus; crossbows [sporting apparatus]; sporting articles and equipment).

As noted by the Court, there has been a continuous shift between sports articles on the one hand and games on the other, to the extent where it is known that sporting goods are used for games and that certain games can also be considered as sports goods. A number of sports articles are offered in simplified form as toys, such as balloons or snowshoes, so that an exact delimitation between the 'gymnastic and sporting articles' on the one hand, and the products 'games and toys' on the other hand, proves difficult in some cases (16/09/2013, T-250/10, Knut – der Eisbär, EU:T:2013:448, § 41-51). The same reasoning applies mutatis mutandis to the opponent’s toys and the remaining contested goods, all of which are related with sport. These goods may have the same nature, they may be manufactured by the same producers and they may target the same public. Therefore, they are considered similar to a low degree 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 similar to a low degree or similar to at least a low degree are directed largely at the public at large.

The degree of attention is average.

c) The signs

STOMP
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 signs are meaningful in those countries where English is understood. This affects the perception of the signs by that public, in particular their conceptual understanding, and the assessment of likelihood of confusion in these territories, as explained below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, namely the public in Ireland, Malta and the United Kingdom.

The earlier mark is a word mark composed of the word ‘STOMP’. In the case of word marks, it is the word as such that is protected and not its written form.

The contested sign is a figurative mark composed of the word ‘STOMP’ in yellow upper-case letters depicted against a dark green rectangular background. The stylisation of the verbal element and the figurative background of the contested sign are merely decorative and, therefore, non-distinctive for the goods.

The coinciding English word ‘STOMP’ will be understood as either a noun, referring to ‘(in jazz or popular music) a tune or song with a fast tempo and a heavy beat’ or a verb, indicating ‘tread heavily and noisily, typically in order to show anger’ (information extracted from Lexico Dictionary on 16/10/2019 at www.lexico.com/
en/definition/stomp). It is not descriptive, allusive or otherwise weak in relation to the relevant goods and is inherently distinctive for the goods to an average degree.

The contested mark has no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide entirely in their only verbal element, ‘STOMP’. The contested sign differs in the stylisation of its verbal element and figurative background, both of which are not particularly distinctive, if at all, and will not attract much of the public’s attention. It is 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 signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘STOMP’, present identically in both signs. The purely figurative elements of the contested sign, including its stylisation, are not subject to an aural assessment. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will evoke the concept of the word ‘STOMP’, as explained above, the signs are conceptually 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.

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. 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually highly similar, and they are aurally and conceptually identical. The earlier mark has a normal degree of distinctiveness for the relevant public, namely the public at large displaying an average degree of attention.

The earlier word mark, ‘STOMP’, is entirely and without modifications incorporated in the contested sign, where it constitutes its only verbal element. The contested sign differs only in the stylisation of this verbal element and the figurative background, both of which are non-distinctive; therefore, these elements will not attract much consumers’ attention, if any at all.

Moreover, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, the fact that the contested goods are similar to (at least) a low degree is compensated by a high overall similarity between the signs.

Taking into account the above factors, and in view of the interdependence principle, the Opposition Division considers that a likelihood of confusion on the part of the English‑speaking part of the public, namely the public in Ireland, Malta and the United Kingdom, is inevitable. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 664 804.

It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining, uncontested, goods in Class 13.

For the sake of completeness, it needs to be clarified that the observations filed by the applicant on 20/05/2019 cannot be taken into account in the proceedings. This is because they were filed in French and no translations into the language of the proceedings, namely, English, were filed within one month from the date of the submission of the original document.

According to Article 146(9) EUTMR, the applicant’s first reply or the opponent’s reply to the applicant’s observations may be in any language of the Office. If the applicant’s first reply or the opponent’s counter-reply is not in the language of proceedings but in one of the languages of the Office, the submission will not be taken into account unless the applicant or the opponent submits a translation of these documents into the language of the proceedings within the time limit of one month from the date of receipt of the original by the Office. The Office will not request the parties to send a translation; the parties have to send one on their own initiative.

As the earlier right, European Union trade mark registration No 1 664 804, 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.