OPPOSITION No B 3 069 984

Kabushiki Kaisha Park Way (also trading as Park Way Co., Ltd.), 5-13, Midorigaoka 1-chome, Meguro-ku, Tokyo, Japan (opponent), represented by Roeb y Cia, S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Zhenwu Chen, No. 29, Tanghan Village, Hengshan Town, Lianjiang City, Guangdong Province, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 06/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 984 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 950 917 ‘SPARK MOMENTS’ (word mark), namely against all the goods in Classes 3 and 21. The opposition is based on European Union trade mark registration No 14 836 571 (figurative mark). 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 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shampoos (low irritative shampoos, straightening shampoos, damage care shampoos, hair coloring shampoos, hair growth shampoos); hair treatments (hair straightening treatments, damage care hair treatments, hair coloring treatments, hair growth treatments); hair conditioners (low irritative hair conditioners, hair straightening conditioners, damage care hair conditioners, hair coloring conditioners, hair growth conditioners); hair styling agents (hair mists, hair gels, hair waxes, pomades, hair mousses, hair foams, hair creams, hair treatment oils, hair treatment essence waters, hair straightening essence waters, lotions for curly hair, hair tonics, hair essences, protein water for hair, herb water for hair); bleach (hair bleaches, oxidizing agents for hair bleaching); hair setting lotions.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brushmaking materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; tint bowls (bowls of plastic); combs (tail combs, cut combs, tapered cutting combs, guide combs, shampoo combs, tint combs, teasing combs, metal combs, combs with brushes, perm combs, combs with handle, cases for combs); brushes (round brushes, half round brushes, cushion brushes, dusting brushes, horse tail brushes, bristle brushes, neck brushes).

The contested goods are the following:

Class 3: Bath salts, not for medical purposes; bath salts; ethereal oils; essential oils; lavender oil; cosmetic preparations for baths; lipsticks; cotton swabs for cosmetic purposes; cotton sticks for cosmetic purposes; beauty masks; nail varnish; nail polish; false eyelashes; cosmetic preparations for eyelashes; cosmetic kits; cosmetics; cotton wool for cosmetic purposes; cosmetic pencils; varnish-removing preparations; oils for cosmetic purposes; eyebrow cosmetics; false nails; nail care preparations; eyebrow pencils; massage gels, other than for medical purposes; lip glosses; nail art stickers; lipstick cases; eyeshadow; mouthwashes, not for medical purposes; dentifrices; preparations for cleaning dentures; breath freshening sprays; dental bleaching gels; teeth whitening strips; teeth whitening preparations; tooth powder; mascara.

Class 21: Basins [receptacles]; spice sets; mess-tins; containers for household or kitchen use; salad bowls; services [dishes]; jugs; pitchers; lunch boxes; strainers for household purposes; cutting boards for the kitchen; bread boards; fitted picnic baskets, including dishes; table napkin holders; kitchen utensils; baking mats; potholders; drinking bottles for sports; tea services [tableware]; coffee services [tableware]; tea strainers; nozzles for watering hose; watering devices; sprinkling devices; sprinklers; brushes; toothbrushes; toothbrushes, electric; heads for electric toothbrushes; cosmetic utensils; toilet cases; fitted vanity cases; powder puffs; make-up removing appliances; make-up brushes; eyelash brushes; abrasive pads for kitchen purposes; gloves for household purposes; gardening gloves; oven mitts; barbecue mitts; kitchen mitts; car washing mitts.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is considered average.

c) The signs

	SPARK MOMENTS
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 contested sign is a word mark composed of two terms that are meaningful in English. The term ‘SPARK’ refers, inter alia, to ‘a tiny bright piece of material that flies up from something that is burning’ (information extracted from Collins English Dictionary on 22/04/2020 at www.collinsdictionary.com/dictionary/english/spark). The term ‘MOMENTS’ is the plural of the noun ‘MOMENT’ which refers, inter alia, to ‘a very short period of time’ (information extracted from Collins English Dictionary on 22/04/2020 at www.collinsdictionary.com/dictionary/english/moment). Whether taken separately or together, they have no meaning in relation to the relevant goods. The elements forming the contested sign are, therefore, distinctive.

The verbal element ‘moments’ will not only be understood by the part of the public that speaks English, but also by the public whose language contains an equivalent word that is either identical or similar, (e.g. moment in French, moment in German, and momento in Italian and Spanish), as well as by the public that has some command of English, since the term ‘moment’ is a basic word. This element is also distinctive in this constellation.

For the part of the public that will not understand any of the elements of the contested sign, they are also distinctive.

The term ‘PARK’ in the earlier right is meaningful in English. It refers, inter alia, to ‘a public area of land with grass and trees, usually in a town, where people go in order to relax and enjoy themselves’ (information extracted from Collins English Dictionary on 22/04/2020 at www.collinsdictionary.com/dictionary/english/park). Since it has no meaning in relation to the goods, it is distinctive. ‘PARK’ will not only be understood by the part of the public that speaks English, but also by the public whose language contains an equivalent word that is either identical or similar, (e.g. parc in French, park in German, parco in Italian, and parque in Spanish, as well as by the public that has some command of English, since the term ‘park’ is a basic word. This element is also distinctive in this constellation.

The letters ‘Y.S.’ of the earlier mark have no meaning as such, but they will be associated with the initials of some words, probably a name and a surname. In any case, since they have no meaning in relation to the goods in question, they are distinctive.

For the part of the public that will not understand any of the elements of the earlier mark, these elements are, therefore, distinctive.

Irrespective of the language of the relevant public, it cannot be excluded that the term ‘PARK’ may be associated with a surname. This element is also distinctive in this constellation.

Because of its structure, a significant part of the relevant public will associate the earlier sign as a whole with a park known as ‘Y.S.’, where these initials probably belong to a person’s name and surname. The oblique line between the single letters and the term ‘PARK’ only reinforces this assessment. Indeed, although it is a simple figurative element with limited distinctive character, the line plays an important role in the perception of the elements in the earlier sign.

It should be noted that the same reasoning applies in the event that the term ‘PARK’ is associated with a surname. In this case, the letters ‘Y.S.’ will be associated with the initials of a person’s name.

Visually, the signs coincide in the letters ‘S’ and ‘PARK’. However, whereas these letters form a single word in the contested sign, the letter ‘S’ is clearly separated from the letters ‘PARK’ by a dot and an oblique line that visually divides the verbal elements of the earlier trade mark into two parts. They also differ in the letter ‘Y’, followed by a dot at the beginning of the earlier trade mark. They further differ in the term ‘MOMENTS’ of the contested mark, which has no counterpart in the earlier sign, and in the stylisation of the earlier mark.

The Opposition Division does not agree with the opponent’s argument that the relevant public will ignore the dots between the first letters of the earlier right. On the contrary, the public will clearly perceive them as representing the initials of two words. The oblique line after the single letters reinforces the impression that the letter ‘S’ of the earlier mark does not belong to the word ‘PARK’.

It should be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Since the main visual differences between the signs (i.e. the first letter ‘Y’ followed by a dot, the dot after the letter ‘S’ and the oblique line) can be found at the beginning of the earlier sign, their impact will be even greater.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛*PARK’, present identically in both signs, although forming part of different elements, namely ‘PARK’ versus ‘SPARK’. Furthermore, although the earlier mark also contains the letter ‘S’, it will be pronounced individually as a single letter, for the reasons explained above.

Contrary to the opponent’s opinion, the Opposition Division considers that the separation in the form of a dot and a line, even though they themselves are not pronounced, will have an aural impact in that the letter ‘S’ will be pronounced as a single letter in the earlier mark.

The pronunciation further differs in the letter ‘Y’ of the earlier right, which has no counterpart in the contested sign, and in the pronunciation of the term ‘MOMENTS’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. A significant part of the relevant public will perceive all/some meanings in the elements forming the respective signs. Therefore, since the signs will be associated with dissimilar meanings, the signs are conceptually not similar. For the part of the relevant public for which none of the elements has any meaning, the conceptual comparison between the signs is not possible.

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 (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).

As concluded above, the signs are visually and aurally similar to a low degree. Conceptually, the signs are either not similar or the conceptual comparison remains neutral, depending on the part of the public, as explained in section c) of the present decision. The goods are assumed to be identical. Furthermore, the earlier mark enjoys a normal degree of distinctiveness. The degree of attention of the public at large is considered average.

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).

The differing figurative elements – such as the dot and the oblique line after the letter ‘S’ – in the earlier sign, are relevant and convey a different overall impression than that conveyed by the contested sign. The fact that the signs share five letters is not sufficient to outweigh the different visual structures that they have. Furthermore, the remaining verbal elements present in the respective signs, namely the letter ‘Y’ at the beginning of the earlier mark and the word ‘MOMENTS’ in the contested sign, are distinctive.

The goods themselves are fairly ordinary consumer products, commonly purchased in supermarkets or establishments 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). The clear visual and aural differences between the signs are decisive in the present case.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Raphaël MICHE

Cindy BAREL

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.