OPPOSITION Nо B 3 095 947

 

Maria del Pilar Salas Sánchez, C/ Juan Guerrero Ruíz, 2, 30005 Murcia, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Gifts & Concepts B.V., Oudlandsedijk 10, 4731 Oudenbosch, The Netherlands (applicant), represented by Laura de Wit, De Ruif 1, 4751 Xh Oud Gastel, The Netherlands (employee representative).

On 02/03/2021, the Opposition Division takes the following

DECISION:

 

1.	Opposition No B 3 095 947 is partially upheld, namely for the following contested goods and services:

  

Class 30: Coffee, teas and cocoa and substitutes therefor; cocoa and cocoa-based preparations; chocolate; chocolates; chocolate bars; chocolate based products; chocolate-coated products; products containing chocolate; chocolate-based snacks; imitation chocolate; drinking chocolate; confectionery; sweetmeats [candy]; sweets (candy); nut confectionery; sweetmeats, candy bars; chewing gum, not for medical purposes; bubble gum; liquorice [confectionery]; caramel; caramel-based products; marzipan; truffles; nougat; pralines; bonbons made of sugar; toffee; bakery goods; bread and pastry products; cakes, cakes, biscuits, cookies; waffles; puddings; crackers; edible ices; bee products, including honey and honey substitutes, and treacle; syrups and treacles; cereal bars and energy bars; snack bars containing cereal grains and nuts; cereal-based savoury snacks; ice creams, frozen yogurts and sorbets; cereal-based snack food; preparations made from cereals; snack foods and snack products based on pasta, cereals and/or rice.

Class 35: Wholesaling relating to the purchase and sale of foodstuffs; the bringing together, for the benefit of others, of a wide variety of foodstuffs.

2.	European Union trade mark application No 18 056 212 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 056 212 ‘TOYCO’ (word mark), namely against all the goods and services in Classes 28, 30 and 35. The opposition is based on, inter alia, European Union trade mark registration No 11 526 217 (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.

 

The opposition is based on two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 526 217, as it covers a broader list of goods.

a)  The goods and services

 

The goods on which the opposition is based are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; fresh fruits and vegetables; seeds; natural plants and flowers; malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 28: Toys; games and playthings; gymnastic and sporting articles (included in class 28); decorations for Christmas trees (except lights and confectionery); toy animals; bath toys; swimming pool toys; balls; Christmas stockings; collectable toy figures; inflatable toys; puzzles; musical toys; party favours in the form of small toys; party games; parlour games; board games; card games; card games; skill and action games; spinning tops [toys]; squeeze toys; toy action figurines; toy bucket and spade sets; vehicle toys; toy cars; toy figurines; toys incorporating money boxes; toy lorries; toy clocks and watches; spinning discs incorporating string which rewinds and returns the disc to the hand when thrown; party hats of paper.

Class 30: Coffee, teas and cocoa and substitutes therefor; cocoa and cocoa-based preparations; chocolate; chocolates; chocolate bars; chocolate based products; chocolate-coated products; products containing chocolate; chocolate-based snacks; imitation chocolate; drinking chocolate; confectionery; sweetmeats [candy]; sweets (candy); sugar; sweeteners (natural -); nut confectionery; sweetmeats, candy bars; chewing gum, not for medical purposes; bubble gum; liquorice [confectionery]; caramel; caramel-based products; marzipan; truffles; nougat; pralines; bonbons made of sugar; toffee; bakery goods; flour and preparations made from cereals; bread and pastry products; cakes, cakes, biscuits, cookies; waffles; puddings; crackers; edible ices; sugar, natural sweeteners, bee products, including honey and honey substitutes, and treacle; syrups and treacles; cereal bars and energy bars; snack bars containing cereal grains and nuts; cereal-based savoury snacks; ice, ice creams, frozen yogurts and sorbets; cereal-based snack food; snack foods and snack products based on pasta, cereals and/or rice.

Class 35: Wholesaling relating to the purchase and sale of toys, play articles, party articles, sporting articles and/or foodstuffs; the bringing together, for the benefit of others, of a wide variety of toys, play articles, party articles, sporting articles and foodstuffs; providing of product information to others; presentation and promotion of goods on communications media of all kinds, for sales purposes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 term ‘including’, used in the applicant’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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The opponent’s goods are various foodstuffs in Class 29, grains and various types of agricultural, horticultural and forestry products in Class 31, as well as beer, non-alcoholic beverages, syrups and other preparations for making beverages in Class 32. Most of them are intended for consumption or can be used to prepare food or beverages.

Contested goods in Class 28

The contested goods in Class 28, namely toys; games and playthings; gymnastic and sporting articles (included in class 28); decorations for Christmas trees (except lights and confectionery); toy animals; bath toys; swimming pool toys; balls; Christmas stockings; collectable toy figures; inflatable toys; puzzles; musical toys; party favours in the form of small toys; party games; parlour games; board games; card games; card games; skill and action games; spinning tops [toys]; squeeze toys; toy action figurines; toy bucket and spade sets; vehicle toys; toy cars; toy figurines; toys incorporating money boxes; toy lorries; toy clocks and watches; spinning discs incorporating string which rewinds and returns the disc to the hand when thrown; party hats of paper have nothing in common with the opponent’s goods in Classes 29, 31 and 32. These goods are not destined for human consumption or agricultural, horticultural or forestry products, like the opponent´s goods are, but their purpose is rather to entertain and amuse. They differ not only in their nature and purpose, but also in their distribution channels, sales outlets, producers and method of use. Furthermore, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 30

The contested edible ices; ice creams, frozen yogurts and sorbets are highly similar to the opponent’s milk products. They have the same nature and purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested coffee, teas and cocoa and substitutes therefor; cocoa and cocoa-based preparations; drinking chocolate; confectionery are similar to the opponent’s milk products. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested bee products, including honey and honey substitutes; treacle; syrups and treacles are similar to the opponent’s jams. They have the same purpose. They usually coincide in relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested chocolate; chocolates; chocolate bars; chocolate based products; chocolate-coated products; products containing chocolate; chocolate-based snacks; imitation chocolate; sweetmeats [candy]; sweets (candy); nut confectionery; sweetmeats, candy bars; chewing gum, not for medical purposes; bubble gum; liquorice [confectionery]; caramel; caramel-based products; marzipan; truffles; nougat; pralines; bonbons made of sugar; toffee; bakery goods; bread and pastry products; cakes, cakes, biscuits, cookies; waffles; puddings; crackers; cereal bars and energy bars; snack bars containing cereal grains and nuts; cereal-based savoury snacks; cereal-based snack food; preparations made from cereals; snack foods and snack products based on pasta, cereals and/or rice are similar to at least a low degree to the opponent’s dried fruits. They usually coincide in producer, relevant public and distribution channels.

The contested sugar; sweeteners (natural -); flour; sugar, natural sweeteners; ice are dissimilar to the opponent’s goods in Classes 29 and 31 which are also various types of foodstuffs. They are also dissimilar to the goods in Class 32 which are beverages or goods used to prepare beverages. They are, however, different in their method of use, producers and distribution channels (they can be found on different shelves or in different sections of the supermarkets). Furthermore, they are neither in competition with each other nor complementary to each other.

Contested services in Class 35

The contested wholesaling relating to the purchase and sale of foodstuffs; the bringing together, for the benefit of others, of a wide variety of foodstuffs share some points in common with the opponent’s goods in Class 29 which are various types of foodstuffs. Retail/wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the aforesaid contested services are similar to the opponent’s goods mentioned above.

The contested wholesaling relating to the purchase and sale of toys, play articles, party articles, sporting articles; the bringing together, for the benefit of others, of a wide variety of toys, play articles, party articles, sporting articles; providing of product information to others; presentation and promotion of goods on communications media of all kinds, for sales purposes have nothing in common with the opponent’s goods in Classes 29, 31 and 32. Therefore, they are dissimilar. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51), since the goods sold at retail are dissimilar to the other goods. Furthermore, these goods and services are different in nature, since services are intangible whereas goods are tangible. They also serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor 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 and services found to be similar (to varying degrees) are directed at the public at large and, to some extent, at business customers with specific professional knowledge or expertise (i.e. wholesaling relating to the purchase and sale of foodstuffs). The degree of attention is average.

c)  The signs

 

	TOYCO
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 earlier mark is a figurative sign composed of the verbal element ‘TOÏCO’, depicted in stylized characters, and some figurative elements resembling three leaves. The last letter ‘O’ can be perceived as a fruit with a stone inside, and a petiole and a leave outside. Two dots over the letter ‘I’ in the earlier mark can be seen as either fruits or the letter ‘Ï’. The letter ‘Ï’ is a symbol used in various languages written with the Latin alphabet; it can be read as the letter ‘I’ with diaeresis or ‘I’-umlaut. It appears, inter alia, in Dutch, French, and occasionally English; ‘ï’ is used when ‘I’ follows another vowel (it indicates that the two vowels are pronounced in separate syllables, rather than together).

The verbal element ‘TOÏCO’ of the contested sign has no meaning and is, therefore, distinctive. The figurative elements of the earlier mark will be associated with fruits, leaves and a petiole. Bearing in mind that the relevant goods and services are foodstuff-related, these elements are weak for these goods and services. The stylization of the letters in the earlier mark plays a secondary role in the comparison. It should 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).

The verbal element ‘TOYCO’ has no meaning as a whole for the goods and services in question. Therefore, it is distinctive.

The element ‘TOÏCO’ in the earlier mark is the dominant element as it is the most eye-catching.

 

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 signs coincide in the sequence of letters ‘TO*CO’. However, they differ in their middle letters, namely ‘**Ï**’ of the earlier mark and ‘**Y**’ of the contested sign. The signs differ also in the figurative elements of the earlier mark, as described above, and the stylization of the latter.

 

Therefore, the signs are visually similar to an above average 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 ‛TO*CO’, present identically in both signs. The pronunciation differs in the sound of their middle letters, namely ‘**Ï**’ of the earlier mark and ‛**Y**’ of the contested sign. However, the pronunciation of these letters can be very similar or even identical in most of the languages of the EU.

 

Therefore, the signs are aurally highly similar or identical, depending on the language of the European Union.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but the evidence filed is insufficient to prove such a claim (i.e. some invoices and two pictures of a leaflet). The evidence could serve to prove use of the earlier mark only.

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 and services 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 some weak elements in the mark as stated above in
section c) of this decision.

e)  Global assessment, other arguments and conclusion

 

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 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 goods and services are partly similar (to varying degrees) and partly dissimilar. They are directed at the public at large and, to some extent, at the professional public. The degree of attention is average. The signs are visually and conceptually similar, aurally they are highly similar or identical. The earlier mark’s distinctiveness is normal.

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).

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).

The contested sign shares the first two and the last two letters (out of five) of the sole verbal part of the earlier mark, that is, ‘TO*CO’. They differ in their middle letters, namely ‘**Ï**’ of the earlier mark and ‛**Y**’ of the contested sign. As indicated above, they can be pronounced even identically by a significant part of the public. Furthermore, the signs differ in the figurative elements and the stylization of the letters in the earlier mark. Accordingly, the Opposition Division finds that the differences between the signs are not sufficient to outweigh the similarities between the signs.

It constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration No 11 526 217 .

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar (to varying degrees) to those of the earlier trade mark.

 

The rest of the contested goods and services 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 and services cannot be successful.

 

The opponent has also based its opposition on Spanish trade mark
registration No 2 681 212 for the figurative mark .

This mark is identical to the one which has been compared (except for the absence of colours). This other earlier right invoked by the opponent covers less goods as the other earlier mark which are the same, namely agricultural, horticol, forest and grain products, not included in other classes; live animals; fresh fruits and vegetables; seeds, plants and natural flowers; foods for animals; malt. Only live animals does not appear in the list of goods in the other earlier mark.

Bearing in mind the above criteria given in point a) of this decision, the goods such as live animals are clearly different to the goods and services applied for in the contested trade mark, in relation to which the opposition has not succeeded according to the explanations above. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Helen Louise MOSBACK

Michal KRUK

Marta GARCÍA COLLADO

 

 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.