OPPOSITION No B 3 098 506

Njb Design - Nils Badertscher, General-Dufour-Strasse 85a, 2502 Biel, Switzerland (opponent), represented by Hoefer & Partner Patentanwälte Mbb, Pilgersheimer Str. 20, 81543 München, Germany (professional representative)

a g a i n s t

Tiktok Information Technologies UK Limited, Wework, 125 Kingsway, WC2B 6NH London, United Kingdom (applicant), represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW London, United Kingdom (professional representative).

On 22/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 506 is partially upheld, namely for the following contested goods:

Class 28: Games and playthings; gymnastic and sporting articles; free-standing video games apparatus; toys; balls for games; balls for play; balloons; dolls; board games; card games; ordinary playing cards; electronic games not included in other classes; play figures; action figures; automatic amusement apparatus; automatic gaming machines; clothing for toy figures; clothing for dolls; dolls accessories; computer games apparatus; construction games; construction toys; costume masks; pet toys; rocking horses; cuddly toys; surfboards; sail boards; skateboards; inline skates; parts and fittings for all the aforesaid goods.

2. European Union trade mark application No 18 012 509 is rejected for all the above goods. It may proceed for the remaining goods, namely decorations for Christmas trees; parts and fittings for all the aforesaid goods in Class 28.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against the goods in Class 28 of European Union trade mark application No 18 012 509 ‘TikTok’ (word mark). After the division of the mark by the applicant, the application only covers goods in Class 28, therefore, the opposition is directed against all the goods of the application. The opposition is based on international trade mark registration designating the European Union No 1 256 518, ‘TIKTOKI’. 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 28: Games, toys.

The contested goods are the following:

Class 28: Games and playthings; gymnastic and sporting articles; free-standing video games apparatus; decorations for Christmas trees; toys; balls for games; balls for play; balloons; dolls; board games; card games; ordinary playing cards; electronic games not included in other classes; play figures; action figures; automatic amusement apparatus; automatic gaming machines; clothing for toy figures; clothing for dolls; dolls accessories; computer games apparatus; construction games; construction toys; costume masks; pet toys; rocking horses; cuddly toys; surfboards; sail boards; skateboards; inline skates; parts and fittings for all the aforesaid goods.

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.

Games and toys are identically contained in both lists of goods.

The expression playthings is a synonym of toys. Therefore, these contested goods are also identical.

The contested free-standing video games apparatus; balls for games; balls for play; balloons; dolls; board games; card games; ordinary playing cards; electronic games not included in other classes; play figures; action figures; automatic amusement apparatus; automatic gaming machines; clothing for toy figures; clothing for dolls; dolls accessories; computer games apparatus; construction games; construction toys; costume masks; pet toys; rocking horses; cuddly toys are included in the broad category of the opponent’s games, toys. Therefore, these goods are identical.

The contested gymnastic and sporting articles, surfboards; sail boards; skateboards; inline skates are similar to a low degree to the opponent’s games, since there has been a continuous shift between sports articles and games. Some sporting goods are used for games and certain games can also be considered as sporting goods, such as the boomerang or the kite. A number of sports articles are offered in a simplified form as toys, such as balls or rackets, so an exact differentiation between gymnastic and sporting articles, and games; toys proves difficult in some cases. These goods have a similar purpose, namely providing pleasure and amusement. They may be manufactured by the same companies and target the same consumers through the same distribution channels.

The contested decorations for Christmas trees are dissimilar to all of the goods of the earlier mark. They have a different nature, purpose and method of use. This finding is not affected by the fact that some toys can also be used as decorations for Christmas trees, since decoration is not their primary function.

The contested parts and fittings for all the aforesaid goods are often produced and/or sold by the same undertaking that manufactures the end products and target the same purchasing public, as in the case of spare or replacement parts. Depending on the goods involved, the public may also expect the component to be produced by, or under the control of, the original manufacturer. Consequently, the parts and fittings of those contested goods that have been found identical or similar are also at least similar to a low degree to the games; toys of the earlier mark. The parts and fittings of the contested goods found dissimilar, namely parts and fittings for decorations for Christmas trees are considered dissimilar to all of the goods on which the opposition is based.

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 or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

TIKTOKI	TikTok
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).

Neither the earlier mark nor the contested sign has a meaning for the public in the relevant territory. Therefore, they are distinctive.

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 contested sign consists of six letters, which are identically included at the beginning of the earlier mark. The only visual difference lies in the additional letter ‘I’ at the end of the earlier trade mark. Therefore, the signs are visually highly similar.

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 ‘TIKTOK’, which are identically depicted in both signs. They only differ in the sound of the last letter ‘I’ of the earlier mark, which has no counterpart in the contested sign. Consequently, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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

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 goods are partly identical or similar to a low degree and partly dissimilar and the signs are visually and aurally highly similar on account of the identical sequence of letters ‘TIKTOK’. The marks do not have any meaning that might help consumers to differentiate between them. The degree of attention of the relevant public is average.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international registration designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña URIARTE VALIENTE

Claudia SCHLIE

Boyana NAYDENOVA

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.