OPPOSITION No B 3 079 879

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235, Düsseldorf, Germany (opponent)

a g a i n s t

Evergreen Digital Marketing Inc, Dartford Industrial Park, Bourne Road, DA14BZ Dartford, United Kingdom (applicant).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 879 is upheld for all the contested goods.

2. European Union trade mark application No 18 024 103 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 024 103, . The opposition is based on, inter alia, European Union trade mark registration No 779 116, . 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.

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 779 116, .

a) The goods

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

Class 21: Electric toothbrushes.

The contested goods are the following:

Class 21: Heads for electric toothbrushes.

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.

Contested goods in Class 21

The contested heads for electric toothbrushes are similar to the opponent’s electric toothbrushes as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

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 similar are directed at the public at large and the degree of attention displayed by this public in relation to such goods is deemed to be average.

c) The signs

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.

It should be noted that consumers will break down single verbal elements such as the one included in the contested sign, ‘MetroMarket’ into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the English-speaking part of the public, for instance the public in Ireland and Malta, will clearly perceive this single word element as made up of the words ‘Metro’ and ‘Market’, not only because they know these words which suggest a concrete meaning but also because ‘Market’ has a capitalised ‘M’, and associate 'Metro' with the underground railway system in some cities and the word 'Market’ with a place where goods are bought and sold, usually outdoors (see Collins Dictionary online). The same part of the public will associate ‘METRO’ in the earlier mark with the same meaning as in the contested sign. In view of the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking parts of the public.

Be it as it may, it remains that, in English, 'METRO' in both signs has no particular meaning in relation to the relevant goods from the perspective of the part of the public under analysis. Therefore, it is distinctive of these goods. However, the word ’MARKET’ in the contested sign will be perceived as referring to the place or the kind of outlet where the relevant goods are sold. The combination of the words ‘METRO’ and ‘MARKET’ as a whole can either be perceived as referring to a market called ‘METRO’ or as referring to a market in the vicinity of a metro line or a metro station. Whichever way, the consumer will perceive ‘MetroMarket’ as indicating the place where the goods are sold. As a consequence, ‘Market’ is, at best, weak for the contested goods and the word ‘METRO’ is clearly the more distinctive element of the sign.

The word elements of the signs at issue are slightly stylised and are represented in colour. Yet, regardless of their distinctiveness, these features are neither elaborate or sophisticated and merely serve to embellish the respective word elements. Therefore they hardly have an impact on the consumer, if at all. Indeed, 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).

Finally, it should be noted 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. Therefore, although not dominant, the element 'METRO' which is placed at the beginning of the contested sign is not only the more distinctive element of the mark but is also the element that first catches the attention of the reader.

Visually, the signs coincide in the verbal sequence ‘METRO’ although it is represented in a different manner and in different colours in each sign. The signs differ in the additional verbal sequence ‘MARKET’ in the contested sign and in their respective stylisations. Taking into account the degree of distinctiveness of the different elements composing the signs, their impact on consumers and their position within the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters
‛M-E-T-R-O’, present identically in both signs whereas it differs in the sound of the letters ‛M-A-R-K-E-T’ of the contested mark. Taking into account the degree of distinctiveness of the different elements composing the signs, and their position within these, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with an underground railway system, and the additional concept in the contested sign is conveyed by a word with limited distinctiveness, the signs are conceptually similar to a high degree.

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 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. 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 seen above, in the present case, the goods at issue were found to be similar. They are directed at the public at large who display an average degree of attention. The signs are visually and aurally similar to an average degree, and they are conceptually similar to a high degree in that the distinctive word element of the earlier mark, 'METRO', is completely reproduced at the beginning of the contested sign in which it is the more distinctive verbal element. The earlier mark is distinctive to a normal degree.

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).

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/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49) containing not only the common distinctive word ‘Metro’ but also referring to the type of outlet where the goods are sold, namely a market.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 779 116, . 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 or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Finally, since the earlier European Union trade mark registration No 779 116, ‘ 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Begoña URIARTE VALIENTE

Martina GALLE

Claudia SCHLIE

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.