OPPOSITION No B 3 071 687

4 Planets S.r.l., Via Ernesto Pietriboni 10/E, 32100 Belluno, Italy (opponent), represented by Bugnion S.p.A., Via Pancaldo, 68, 37138 Verona, Italy (professional representative)

a g a i n s t

Maternia E-commerce s.r.o., Vídeňská 12, 378 33 Nová Bystřice, Czech Republic (applicant), represented by Vogl & Partners S.R.O., Advokátní Kancelář, Čelakovského sady 1580/4, Nové Město, 110 00 Praha 1, Czech Republic (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 687 is upheld for all the contested goods.

2. European Union trade mark application No 17 939 907 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 17 939 907 . The opposition is based on European Union trade mark registration No 17 726 076 ‘#ENJOY’. 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.

1. The goods

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

Class 9: Optical apparatus and instruments; spectacles [optics]; spectacle cases; spectacle lenses; spectacle frames.

The contested goods are the following:

Class 9: Contact lenses; circle lens; blanks for contact lenses; containers for contact lenses (mentioned three times).

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.

All the contested goods are at least similar to the opponent’s optical apparatus and instruments as they coincide at least in producer, relevant public and distribution channels.

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 at least similar are directed at the public at large as well as business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the specialised nature, or terms and conditions of the goods purchased.

3. The signs

#ENJOY
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’ verbal elements ‘ENJOY’ and ‘LENJOY’ might convey a meaning for the English-speaking consumers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which these elements of the signs are meaningless, and therefore distinctive, such as for instance the Hungarian, Italian and Spanish-speaking consumers.

The element ‘#’ in the earlier sign is a symbol which is widespread on social networks and which has the function of tagging messages, discussions etc. on specific subjects or content which usually follow that symbol. Consequently, users and consumers will not attach a specific importance to that symbol (26/10/2017, T-330/16, HELLO DIGITALMENTE DIFERENTES (fig.) / HELLO! (fig.), EU:T:2017:762, § 52). Therefore, this element is considered to be weak.

The contested application’s figurative element is rather fanciful and does not convey any specific meaning, being therefore rather distinctive. However, in this regard, it must be stressed that according to settled case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter (09/09/2008, T-363/06, Magic seat, EU:T:2008:319, § 30; 11/12/2014, T-480/12, MASTER, EU:T:2014:1062, § 49; 14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually and aurally, the signs coincide in the sequence of letters (and sounds) ‘ENJOY’ whereas they differ in the contested sign’s initial letter (and sound) ‘L’. Visually, they also differ in the earlier trade mark’s symbol # and in the figurative element of the contested sign.

Therefore, the signs are visually similar to an average degree while aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the weak element ‘#’ of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 at least similar. They target both the general and the professional public that will pay a degree of attention that can vary from average to high.

The signs have been found visually similar to an average degree while aurally similar to a high degree insofar as the earlier trade mark’s verbal element ‘ENJOY’ is entirely reproduced within the contested application.

The signs are not conceptually similar, however it must be stressed that this difference plays a limited impact in the assessment of the likelihood of confusion between the signs, since it derives from a weak element.

Taking all the above into account, the Opposition Division considers that the assessed differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings, despite the high degree of attention paid in relation to some of them.

Considering all the above, there is a likelihood of confusion on the part of the public for which the signs are meaningless such as for instance the Hungarian, Italian and Spanish-speaking consumers. 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 17 726 076. It follows that the contested trade mark must be rejected for all the contested goods.

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

Sandra IBAÑEZ

Aldo BLASI

Andrea VALISA

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.