OPPOSITION No B 3 085 902

Method Animation, Société par Actions Simplifiée, 141 Boulevard Ney, 75018 Paris, France and Zagtoon SARL, 78 rue de Provence, 75009 Paris, France (opponents), represented by Strato-IP, 63 boulevard de Ménilmontant, 75011 Paris, France (professional representative)

a g a i n s t

Shenzhen Debaisite Trading Co. Ltd., 101, No. 31, Lane 3, Xiasha Village, Shatou ST, Futian DSIT, Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, LT-01109 Vilnius, Lithuania (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 902 is upheld for all the contested goods.

2. European Union trade mark application No 18 054 623 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponents filed an opposition against all the goods of European Union trade mark application No 18 054 623 ‘Mirakle’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 15 537 467 (figurative mark). The opponents 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 opponents’ European Union trade mark registration No 15 537 467.

1. The goods

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

Class 18: Leather and imitation leather; animal skins, hides; coverings of animal skins, hides (fur pelts), fur pelts (animal skins, hides), boxes of leather or leatherboard, cases of leather or leatherboard, trunks and travelling bags, travelling trunks, suitcases, attaché cases, briefcases (leatherware), briefcases, moleskin (imitations of leather), travelling sets (leatherware); umbrellas, big umbrellas and walking sticks; whips, harness and saddlery; wallets; coin purses, key cases, purses, card holders (bill cases); handbags, rucksacks, wheeled shopping bags; bags for climbers, bags for campers, travelling bags, beach bags, school bags, sports bags, swimming bags; satchels, garment bags for travel, sling bags for carrying infants, pouch baby carriers, slings for carrying infants, straps (leather -); vanity cases (not fitted); collars and covers for animals; net shopping bags and shopping bags; bags or sachets (envelopes, pouches) of leather for packaging, laces of leather, cords of leather, straps of leather; vanity-cases; parasols; umbrellas.

The contested goods are the following:

Class 18: School bags; back packs; pocket wallets; attaché cases; handbags; travelling bags; briefcases; cosmetic bags sold empty; sports bags; waist packs; evening bags; gladstone bags; leather bags; leather credit card cases; key pouches; leather purses; leather credit card wallets; holdalls; athletic bags; beach bags.

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.

The contested school bags; back packs; attaché cases; handbags; travelling bags; briefcases; sports bags; key pouches; beach bags are identically contained in the opponents’ list of goods (including synonyms).

The contested pocket wallets; leather credit card wallets are included in the broad category of the opponents’ wallets. Therefore, they are identical.

The contested evening bags are included in the broad category of, or overlap with, the opponents’ handbags. Therefore, they are identical.

The contested leather bags overlap with the opponents’ travelling bags. Therefore, they are identical.

The contested leather credit card cases are included in the broad category of the opponents’ cases of leather or leatherboard. Therefore, they are identical.

The contested leather purses are included in the broad category of the opponents’ purses. Therefore, they are identical.

The contested athletic bags are included in the broad category of the opponents’ sports bags. Therefore, they are identical.

The contested cosmetic bags sold empty are similar to a high degree to the opponents’ vanity cases (not fitted) as they coincide in purpose, distribution channels, end user and producer. Furthermore, they are in competition.

The contested waist packs; holdalls are similar to a high degree to the opponents’ rucksacks as they coincide in nature, purpose, distribution channels, end user and producer.

The contested gladstone bags are similar to a high degree to the opponents’ handbags as they coincide in purpose, methods of use, distribution channels, end user 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 a high degree are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

	Mirakle
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 verbal elements of the signs are understood in English-speaking parts of the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the relevant public from Ireland and Malta.

The earlier mark is a figurative mark consisting of the verbal element ‘Miraculous’ depicted in a semi-circular arc in stylised black bold cursive title case letters. The letter ‘o’ is replaced by a red circle with five black dots and a thin black vertical line in a way that may, at least for part of the public under analysis, be reminiscent of a ladybird. The lower tip of the final letter ‘s’ is extended underneath the letters to the level of the letter ‘a’.

The contested sign is a word mark consisting of the verbal element ‘Mirakle’.

The verbal element ‘Miraculous’ is an adjective in English which will be understood by the public under analysis as ‘very effective or surprising, or difficult to believe’ (information extracted from Cambridge Dictionary on 27/04/2020 at https://dictionary.cambridge.org/dictionary/english/miraculous). As none of these meanings is related to any characteristics of the goods in question, ‘Miraculous’ has a normal degree of distinctiveness.

Regarding the stylisation and figurative aspects of the earlier mark, it is to be noted that 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). Although the letter ‘o’ in the verbal element of the earlier mark is stylised (and, for some consumers, reminiscent of a ladybird), this will essentially be perceived as a decorative or ornamental feature of the sign and thus, will not distract the public’s attention from the verbal element as such.

The verbal element ‘Mirakle’ of the contested sign will be perceived by the public under analysis as a misspelling of the word ‘miracle’ which means ‘an unusual and mysterious event that is thought to have been caused by a god because it does not follow the usual laws of nature; a very lucky event that is surprising and unexpected’ (information extracted from Cambridge Dictionary on 27/04/2020 at https://dictionary.cambridge.org/dictionary/english/miracle). This element is distinctive to a normal degree as it does not refer to any characteristic of the goods in question.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘Mira**l***’. However, they differ in their remaining letters, namely ‘****cu*ous’ of the earlier mark and ‘****k*e’ of the contested sign.

The signs also differ in the stylisation of the verbal element of the earlier mark, including the aforementioned decorative depiction of the letter ‘o’. However, this stylisation will not distract the consumer’s attention from the verbal element it embellishes, which, as mentioned above, has a stronger impact on the consumer.

It is important to note that the first four coinciding letters, ‘Mira’, are placed at the beginning of the signs, which consumers generally tend to focus on 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.

In view of the above, the signs are visually similar to an average degree.

Aurally, the public under analysis will pronounce the earlier mark as /mɪˈræk.jə.ləs/ and the contested sign as /ˈmɪr.ə.kəl/. It follows that the pronunciation of the signs coincides at least in the sound of the letters ‘Mirac(k)*l***’ and differs in the sound of the letters ‘*****u*ous’ of the earlier mark and ‘******e’ of the contested sign.

Therefore, 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.

Although the stylisation of the letter ‘o’ in the earlier mark may, at least for part of the public under analysis, evoke the concept of a ladybird, both signs will still be associated with an idea of something unbelievable, surprising and unexpected. Therefore, they 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.

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 opponents, 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 opponents 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 that 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).

Account must also be 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).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the relevant public in the relevant territory. The relevant public consists of the public at large, the degree of attention is average, and the earlier mark has an average degree of inherent distinctiveness for the relevant goods.

As concluded above, the contested goods are partly identical and partly similar to a high degree to the opponents’ goods.

The signs in dispute are visually and aurally similar to an average degree and conceptually similar to a high degree, as explained in detail in section c) of this decision.

The Opposition Division finds that the differences between the signs, as described in detail above, are insufficient to counteract their similarities. In particular, this is due to the fact that the differences lie at the end of the signs’ verbal elements, which consumers do not pay as much attention to as the beginning of the signs, as explained above. Furthermore, even though the letter ‘o’ in the earlier mark may be associated with the concept of a ladybird (which has no counterpart in the contested sign), by at least part of the public under analysis, for the reasons set out above this will primarily be perceived as a mere stylisation of this letter and will not distract the public’s attention from the verbal element as such. Finally, the verbal element of the earlier mark has greater impact on the relevant consumers for the reasons given above.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-speaking parts of the public in the relevant territory. Therefore, the opposition is well founded on the basis of the opponents’ European Union trade mark registration No 15 537 467. 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.

It follows from the above that the contested sign 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 as claimed by the opponents. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 15 537 467 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 opponents (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 opponents 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

Martin MITURA

Martin MITURA

Martin INGESSON

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.