OPPOSITION No B 3 068 217

RTL Disney Fernsehen GmbH & Co. KG, Picassoplatz 1, 50679 Köln, Germany (opponent), represented by Görg, Kennedyplatz 2, 50679 Köln, Germany (professional representative)

a g a i n s t

Xitong Chen, No.5, Lane 11, Xingtang Road, Guancheng District, Dongguan Guangdong Province, People's Republic of China (applicant), represented by Zhaoffice Sprl, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 217 is upheld for all the contested goods.

2. European Union trade mark application No 17 935 207 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 17 935 207 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 3 962 099 for the word mark ‘Toggo’. The opponent invoked Article 8(1)(b) EUTMR in relation to this and other earlier right, and Article 8(4) EUTMR in relation to another sign used in the course of trade.

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 registration No 3 962 099.

a) The goods

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

Class 9: Measuring apparatus and instruments; notebooks (computers); computer peripheral devices; computer keyboards; data-processing apparatus; compact disc players; spectacle frames; headphones; chargers for electric batteries; neon signs.

The contested goods are the following:

Class 9: Headphones; computer keyboards; mouse [computer peripheral]; notebook computers; pedometers; neon signs; portable media players; compact disc players; chargers for electric batteries; eyeglass frames.

Headphones; computer keyboards; notebook computers; neon signs; compact disc players; chargers for electric batteries; eyeglass frames are identically contained in both lists of goods (including synonyms).

The contested mouse [computer peripheral] is included in the in the broad category of the opponent’s computer peripheral devices, the contested pedometers are included in the in the broad category of the opponent’s measuring apparatus and instruments and the contested portable media players are included in the broad category of the opponent’s data-processing apparatus. Therefore, these sets of goods 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 with the exception of the neon signs that could be directed also at business consumers. The degree of attention may vary from average to high depending on the price and technical specificities of the goods at issue.

c) The signs

Toggo
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.

While at least one of the signs may be associated with a meaning by a part of the relevant public (e.g. the English speakers), a substantial part of the relevant public in the EU would not associate either sign with any meaning (e.g. Spanish or German public). The Opposition Division will initially consider the likelihood of confusion for the part of the public for which the signs have no meanings, such as the German and the Spanish public and would undertake the analysis from the perspective of the remaining part of the public only if necessary.

Visually, the signs coincide in their structure and length, since both are five-letter single word signs, as well as in the majority of their letters in the same sequence, namely ‘*oggo’. The differences lie in the first letters, ‘T’ vs ‘D’ as well as in the stylisation of the contested sign’s letters, which however, despite not being standard, is not especially striking either. Overall, the signs are similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the number of syllables, intonation, rhythm and the sound of the letters /*oggo/. The difference lies in the sound of the first letters, namely /t/ and /d/, which however are very similar sounds since they are the voiced and unvoiced versions of the same alveolar consonant phoneme. Therefore, overall the signs sound highly similar.

Conceptually, neither of the signs has a meaning for the public on which the comparison at this stage is focused. 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.

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.

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 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

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).

In the present case, the goods are found to be identical and target the public at large and business consumers whose degree of attention may vary from average to high. The signs are visually similar to at least an average degree, aurally similar to a high degree and conceptually not comparable. The inherent distinctiveness of the earlier mark is normal.

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 the above established factors, the Opposition Division concludes that there is a likelihood of confusion on the part of the Spanish and German part of the public. The differences, although not negligible, are not sufficient to create a sufficiently different overall impression and the likelihood of confusion cannot be safely excluded. 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 3 962 099. It follows that the contested trade mark 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 extensive use/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 earlier right European Union trade mark registration No 3 962 099 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). Equally, 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(4) 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, 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

Helen Louise MOSBACK

Vita VORONECKAITE

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.