OPPOSITION No B 3 082 811

Heinrich Bauer Verlag KG, Burchardstraße 11, 20095 Hamburg, Germany (opponent), represented by Erlburg Rechtsanwaltsgesellschaft mbH, Friedrichstraße 88,
10117 Berlin, Germany (professional representative)

a g a i n s t

Joy Masters, Sia, Kalmju iela 22, 2150 Sigulda, Latvia (applicant), represented by Law Offices of Valters Gencs, Kr. Valdemara iela 21, 3rd Floor, 1010 Riga, Latvia (professional representative).

On 28/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 811 is upheld for all the contested goods.

2. European Union trade mark application No 18 009 006 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 (in Class 16) of European Union trade mark application No 18 009 006 (figurative mark:
‘ ’). The opposition is based on, inter alia, German trade mark registration No 302 016 009 310 (figurative mark: ‘ ’). The opponent invoked Article 8(1)(b) and Article 8(5) 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 German trade mark registration No 302 016 009 310.

1. The goods

The goods in Class 16 on which the opposition is based are, inter alia, the following:

Paper, cardboard and goods made from these materials [included in class 16], namely paper napkins, paper towels, toilet paper, household paper and paper towels; posters of paper; flags of paper; printed matter, in particular magazines, newspapers, books, catalogs and brochures; bookbinding material; photographs [prints]; teaching and teaching aids [except apparatus]; stationery; posters; decals; cards [paper goods]; adhesives for stationery or household purposes; artist's requisites, brushes, typewriters and office requisites [except furniture]; packing bags, wallets, paper bags, cardboard or plastic; printers' type; printing blocks.

The contested goods in Class 16 are the following:

Paper; paper products; occasion cards; books; photo albums and collectors' albums; calendars; gift cards; envelopes [stationery]; agendas; postcards; wrapping and present paper; paper gift boxes; gift bags; advent calendars; invitation cards; adhesive labels; money envelopes.

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

The term ‘in particular’, used in the opponent’s list of goods, 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Paper is identically contained in both lists of goods.

The contested paper products include, as a broader category, the opponent’s paper, and goods made from these materials [included in class 16], namely paper napkins, paper towels, toilet paper, household paper and paper towels. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested occasion cards; gift cards; invitation cards are included in the broad category of the opponent’s cards [paper goods]. Therefore, they are identical.

The contested books; photo albums and collectors' albums; calendars; agendas; postcards; advent calendars are included in the broad category of the opponent’s printed matter, in particular magazines, newspapers, books, catalogs and brochures. Therefore, they are identical.

The contested envelopes [stationery] are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested adhesive labels have the same nature, purpose, public and producer as the opponent´s adhesives for stationery or household purposes. Therefore, they are highly similar.

The contested wrapping and present paper; paper gift boxes; gift bags are at least similar to the opponent´s paper bags as they have the same purpose, distribution channels, public and producer.

The contested money envelopes are at least similar to the opponent´s wallets as they have the same purpose, distribution channels, public and producer.

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 identical or similar to varying degrees are directed at the public at large. The public’s degree of attentiveness is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs are figurative marks. However, the figurative elements of the earlier trade mark are very limited, namely the use of a bold font for the word element ‘JOY’. Therefore, they are non-distinctive.

The figurative elements of the contested sign are reminiscent of a very curved and specially designed script, which resembles handwriting, with the words ‘Joy’ and ‘Masters’ overlapping at one point. Since the figurative elements are not basic, they are distinctive.

The common element ‘JOY’ of both signs will be associated by only a part of the German public with ‘a feeling of great pleasure and happiness’ (Oxford Dictionary). Bearing in mind that the relevant goods are print-related, the distinctiveness of this element could be limited, as it could be perceived as related to a positive feeling or association when buying these goods. However, in its judgment (29/03/2017, T‑387/15, J AND JOY / joy SPORTSWEAR (fig.) et al., EU:T:2017:233, § 45), the General Court considered that ‘it is necessary to take into account that, as indicated by the Board of Appeal, the English word ‘joy’ is not necessarily understood by average German consumers’. Following the judgment of the Court and based on the fact that it is not a basic word of the English language, in order to avoid a limited degree of distinctiveness, the Opposition Department will focus on that part of the German public that does not understand this word and for whom it therefore has a normal degree of distinctiveness.

The English word ‘MASTER’ – found in its plural form, ‘Masters’, in the contested sign – is basic English vocabulary and is recognised by the German public due to the aural and visual proximity to the German word ‘Meister’ (the common linguistic root is the Latin word ‘magister’). It will be perceived as an indication of excellent quantity and/or quality. This word has the effect of conveying to consumers the feeling that the goods offer a certain amount of added value compared to conventional specimens of that type, since they do not simply comply with the norm, but have been designed or produced by someone who is a master, an expert as a result of many years of expertise or advanced and documented training. Consumers will associate a particular level of care and specific technical knowledge with the claim of ‘Master’ and will generally be willing to pay a higher price for high-quality products of this type. As a result, consumers will have greater confidence in these goods from the start. Therefore, the term is non-distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

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).

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.

Visually, the earlier trade mark is completely included as the first element of the contested sign, although depicted differently. The second element of the contested sign, ‘Masters’, cannot influence the outcome in a relevant manner because it is non-distinctive. Even taking into account the distinctive typeface of the contested sign, the signs are visually similar to an above average degree.

Aurally, the figurative stylisation will not be pronounced. The signs are identical as regards the common and distinctive element ‘JOY’. The difference in the non-distinctive element of the contested sign, ‘Masters’, has no great impact for the outcome of the comparison. Therefore, the signs are aurally similar to a high degree.

Conceptually, the elements of both signs are either meaningless or non-distinctive, having no influence on the outcome of the comparison, which is, therefore, neutral.

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.

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 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 non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods 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, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the above average degree of visual similarity, the high degree of aural similarity, the neutral outcome of the conceptual comparison, the average degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the public and the similarity or identity of the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld.

The applicant has not submitted any observations.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opposition is well founded under Article 8(1)(b) EUTMR.

As the earlier German right ‘ ’ 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).

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(5) 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

Gonzalo BILBAO TEJADA

Peter QUAY

Claudia MARTINI

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.