OPPOSITION No B 3 067 235

ShinHan Art Materials, Inc., ShinHan Bldg., 16-24 Bulkwang-Dong Eunpyung-Gu, Seoul, Republic of Korea (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Shanghai Zhende Commercial and Trading Co. Ltd., Room 106, Building 6, No.2046-1 South Town of Donghai Village, Caojing Town, Jinshan District, Shanghai, People’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki,

Podczachy 27, 99-300 Kutno, Poland (professional representative).

On 29/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 235 is upheld for all the contested goods.

2. European Union trade mark application No 17 931 001 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 17 931 001 for the figurative mark . The opposition is based on European Union trade mark registration No 10 061 372 for the word mark ‘TOUCH’. 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.

a) The goods

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

Class 16: Artists’ materials; writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices and accessories for all of the same.

The contested goods are the following:

Class 16: Steel pens; pencils; painters' brushes; pencil leads; pencil lead holders; mechanical pencils; writing implements [writing instruments]; drawing pens; fountain pens; paintbrushes; writing brushes; marking pens; crayons; refills for ballpoint pens; drawing brushes; oil pastels; charcoal pencils; dry erase markers; drawing boards; painters' easels; drawing instruments; palettes for painters; paint boxes and brushes; canvas for painting; paint trays; papers for painting and calligraphy; tracing paper; aquarelles; paintings.

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

The term ‘including’, used in the opponent’s list of goods in Class 16, 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 opponent’s goods, namely artists’ materials and writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices and accessories for all of the same, are broad categories that, taken together, include various substances, raw ingredients, materials and tools that may be used by an artist to create a work of art, such as pens, pencils, paints, brushes, easels, boards, palettes, canvases or paper (e.g. in the form of drawing blocks or water colour paper).

Bearing in mind the above, it is clear that all the contested goods are either included in, or at least overlap with, the opponent’s artists’ materials; writing and drawing instruments including art and grafitti markers, pens, pencils, air brush devices and accessories for all of the same. Therefore, the goods under comparison are identical.

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 and professional public, such as artists and painters.

The degree of attentiveness of the relevant public may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

c) The signs

TOUCH
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 have a meaning 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 countries, 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 trade mark is a word mark composed of the word ‘TOUCH’. In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier sign is presented in upper or lower case characters, or in a combination thereof. For example, it could be depicted in title case, ‘Touch’.

The contested sign is a figurative mark composed of the clearly recognisable words ‘Touch mark’ depicted in a black italic title case typeface, resembling a handwritten style. The stylisation of these verbal elements is largely decorative and inherently distinctive to at most a low degree.

The coinciding English word ‘Touch’ may be understood as either a verb, meaning (1) ‘come into or be in contact with’, (2) ‘handle in order to interfere with, alter, or otherwise affect’, (3) ‘affect or concern’ and/or (4) ‘produce feelings of affection, gratitude, or sympathy in’, or as a noun, meaning (1) ‘an act of touching someone or something’, (2) ‘a small amount; a trace’ and/or (3) ‘a distinctive manner or method of dealing with something’ (information extracted from Lexico Dictionaries on 25/07/2019 at www.lexico.com/en/definition/touch). Given that these meanings, as such, are not descriptive, allusive or otherwise weak in relation to the relevant goods, the inherent distinctive character of the word ‘Touch’ must be seen as average.

The English noun ‘mark’ of the contested sign may be understood as a reference to, inter alia, ‘a sign, symbol, or other indication that distinguishes something’ and, as such, it might be seen as distinctive to a low degree given that it merely reinforces the fact that the contested sign is a trade mark. However, a combination of the words ‘Touch’ and ‘mark’, although usually written jointly as ‘Touchmark’, may also be seen perceived as a noun, indicating ‘a maker's mark stamped on pewter objects’ (information extracted from Collins Dictionary on 25/07/2019 at www.collinsdictionary.com/dictionary/english/mark and www.collinsdictionary.com/
dictionary/english/touchmark). Whatever the meaning, the Opposition Division will proceed on the assumption that the word ‘mark’ is distinctive to an average degree, as this is the best case scenario for the applicant.

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

Visually and aurally, the signs coincide in the word ‘Touch’, which constitutes the only element of the earlier sign as well as the first and longer element of the contested sign. It will have identical sound in both signs. It is settled case-law that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Therefore, this element of the contested sign is likely to attract most of the consumer’s attention both on visual and aural levels.

The contested sign differs in its second word, ‘mark’, and the sound it produces, which have no counterpart in the earlier mark. It also differs in the stylisation of its verbal elements which is not particularly distinctive and is less relevant in view of the verbal nature of the earlier mark which can be stylised in various ways. The purely figurative elements of the contested sign are not subject to an aural assessment.

Consequently, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Whether the contested sign will be perceived as a whole, namely as a complete semantic unit ‘Touch mark’, or as a sum of its elements, both marks will evoke a similar concept of the word ‘Touch’, while the signs will differ in the concept evoked by the noun ‘mark’. In any case, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

a) 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.

b) 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 (recital 11 of the EUTMR). 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).

In the present case, the goods are identical. The signs are visually and aurally similar to at least an average degree and they are conceptually similar to an average degree. The earlier mark has a normal degree of distinctiveness.

The relevant public is composed of the public at large and the professional public, displaying an average to high degree of attention.

In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them. Account must be taken of the fact that average consumers, even those who pay a high degree of attention, 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; 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The contested sign includes the earlier mark, ‘Touch’, in its entirety. This element is distinctive for the goods and it is located at the beginning of the contested sign, namely in the part where consumers normally focus their attention (21/05/2015, T-420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). The contested sign differs from the earlier mark in the word ‘mark’, which is located in a more distant position within this sign. It also differs from the earlier mark in the stylisation of its verbal elements which, however, is not particularly distinctive and less relevant.

Therefore, the differing elements have less impact on the consumers’ perception of the marks than the coinciding element ‘TOUCH’, and the overall impressions created by the signs is that they are similar to each other.

Moreover, 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.

Although the public may detect certain differences between the conflicting signs, they may be led to believe that the contested sign refers to a new product line of the earlier mark for identical goods. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the Opposition Division concludes that there is 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, displaying an average to high degree of attention. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 061 372. 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 that the contested trade mark must be rejected in its entirety.

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

Gueorgui IVANOV

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.