OPPOSITION Nо B 3 098 252

 

Coin S.p.A., Via Maderna 11, Frazione Mestre, 30174 Venezia VE, Italy (opponent), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative) 

 

a g a i n s t

 

HBO Nordic AB, Kungsgatan 12, 111 35 Stockholm, Sweden (applicant), represented by Baker & McKenzie, Calle de José Ortega y Gasset, 29, 28006 Madrid, Spain (professional representative).

On 10/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 098 252 is upheld for all the contested goods, namely

 

	Class 25: Clothing; shirts, tank tops, sweat shirts, sweat pants, t-shirts, loungewear, pants, jackets, sleepwear, robes, coats, hooded pullovers, hooded sweat shirts; headwear; hats and caps; footwear; Halloween and masquerade costumes; exclusively linked to the TV series "30 COINS" or "HBO".
2.	European Union trade mark application No 18 069 518 is rejected for all the contested goods. It may proceed for the remaining goods and services.

 

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

REASONS

 

On 14/10/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 069 518 '30 COINS' (word mark), namely against all the goods in Class 25. The opposition is based on European Union trade mark registrations No 12 472 205 'COIN' (word mark) and No 109 827, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK REGARDING PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

Furthermore, Article 10(1) EUTMDR provides that a request for proof of use of an earlier mark pursuant to Article 47(2) or (3) of Regulation (EU) 2017/1001 shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) of this Regulation.

In its submissions of 01/02/2021, the applicant disputed the use of ‘the prior sign’ in the market ‘in connection with the specific goods for which protection is being claimed’ and requested ‘proof of use of the prior trademark for such goods’.

In this regard, the Opposition Division notes first that the applicant does not specify in its submissions the earlier trade mark(s) in relation with which it requests proof of use. As stated above, the opposition is based on two earlier rights, namely, European Union trade marks No 109 827, registered on 26/10/1998, and No 12 472 205, with a registration date of 01/08/2014. Since European Union trade mark No 12 472 205 had not been registered for at least five years at the date of filing of the contested trade mark (20/05/2019) it is not subject to the use obligation.

Furthermore, even if the Opposition Division where to interpret the above cited statement as a sufficiently explicit request for proof of use of the earlier European Union trade mark No 109 827, since the request has not been submitted by way of a separate document as required by Article 10(1) EUTMDR, it is inadmissible and must therefore be dismissed.

In view of the above, the request for proof of use is inadmissible in relation to the two earlier trade marks, so the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

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 12 472 205.

a) The goods

 

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

Class 25: Clothing for men, women, children, infants and toddlers; Underwear, nightwear, beachwear, leisurewear, swimwear and sportswear for men, women and children; Babies' undergarments; Baby sleep suits; Layettes; Babies' pants [clothing]; Maternity clothing; Cloth bibs; Clothing accessories, in particular scarves, head scarves, shawls, mantillas, boas, fur stoles, cloaks and pelerines, ponchos, capes, gloves, fingerless gloves, ski gloves, mittens, muffs, ear muffs, neckerchiefs, pocket squares, belts of leather, textile or imitations of leather; Money belts, stockings, socks, tights, leotards, leggings, leg warmers, garters, stocking suspenders, sock suspenders, spats, sweatbands, wrist sweatbands, ties, bow ties, ascots, bandanas, headbands, suspenders, detachable collars, sleep masks, dressing gowns; Men's, women's, children's and infant's footwear; Headgear, in particular caps, hats, sun hats, rain hats, hoods, balaclavas, turbans, shower caps.

The contested goods are the following:

Class 25: Clothing; shirts, tank tops, sweat shirts, sweat pants, t-shirts, loungewear, pants, jackets, sleepwear, robes, coats, hooded pullovers, hooded sweat shirts; headwear; hats and caps; footwear; Halloween and masquerade costumes; exclusively linked to the TV series "30 COINS" or "HBO".

 

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).

 

Concerning the restriction of the contested goods as being ‘exclusively linked to the TV series "30 COINS" or "HBO"’, it should be underlined that, contrary to the applicant’s claim, despite this limitation still the goods under comparison have the same nature. The earlier goods are broad categories which overlap with those of the applicant, with or without limitation.

Furthermore, in its observations, the applicant refers to the actual and/or intended use of the goods and the different business sectors of the parties. In this regard it must be noted that, the examination of likelihood of confusion is a prospective examination and it is carried out in a more abstract manner. It is the ‘usual’ circumstances in which the goods and services covered by the marks are marketed (or may be distributed) that must be taken as a benchmark, that is, those which it is usual to expect for the category of goods covered by the marks. The particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Therefore, this argument of the applicant cannot change the findings reached below in the comparison of the goods and must be set aside.

The contested clothing; shirts, tank tops, sweat shirts, sweat pants, t-shirts, loungewear, pants, jackets, sleepwear, robes, coats, hooded pullovers, hooded sweat shirts; Halloween and masquerade costumes; exclusively linked to the TV series "30 COINS" or "HBO" are included in the broad category of the opponent’s clothing for men, women, children, infants and toddlers. Therefore, they are identical.

 

The contested headwear; hats and caps; exclusively linked to the TV series "30 COINS" or "HBO" are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested footwear; exclusively linked to the TV series "30 COINS" or "HBO" is included in the broad category of the opponent’s men's, women's, children's and infant's footwear. Therefore, they are identical.

 

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 (i.e. goods being or pertaining to the categories of clothing, footwear and headgear), are directed at the public at large. Therefore, contrary to the applicant’s arguments, the degree of attention is considered to be average.

c) The signs

COIN	30 COINS
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 word ‘COIN’ of the earlier mark will be understood by the English-speaking public, as a noun meaning ‘a small piece of metal which is used as money; metal currency’. Given that the meaning of this word is not connected to, nor descriptive of, the relevant goods, it has a normal distinctive character. As the applicant observes, ‘COIN’ (to coin) is also an English transitive verb meaning, inter alia, ‘to fabricate or invent (words, etc)’. However, this other meaning is likewise not related to or descriptive of the relevant goods and it does not imply that the English-speaking public will fail to take into consideration its meaning as a noun.

The word ‘COINS’, present in the contested sign, is the plural form of the English noun ‘COIN’. This coincidence introduces a relevant point of conceptual similarity between the signs, which contributes to the likelihood of confusion. For this reason, the Opposition Division finds it appropriate to concentrate the assessment of likelihood of confusion on the English-speaking public, which includes the public in the Member States in which English is the official language, i.e. Ireland and Malta, as well as the public in other Member States where a significant part of the public has sufficient knowledge of English as a foreign language. For example, the Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23).

The numeral ‘30’, placed at the beginning of the contested sign, has the concept of the cardinal number it represents. This element does not contain direct descriptive or allusive information as regards the relevant goods and is, therefore, considered distinctive to a normal degree. However, due to its nature, it will be perceived as an indication which qualifies quantitatively the element it follows, ‘COINS’. Therefore, it is somewhat subordinate to the word ‘COINS’.

As far as dominant elements are concerned, according to established practice, the notion of dominance relates only to the visual impact of the elements of a sign; that is, ‘dominant’ is used exclusively to mean ‘visually outstanding’. Consequently, the dominant element of a sign is mainly determined by its position, size and/or colour. Moreover, according to the Office’s practice, word marks have no dominant elements, since they are written in standard typefaces and have no elements that could be considered visually outstanding in the overall composition of the marks.

Visually and aurally, the signs coincide in that they both contain the string of letters ‘COIN’, pronounced identically and forming a meaningful distinctive term, which is the only element of the earlier mark and is entirely contained in the contested sign. The signs differ, both visually and aurally, in the final letter, ‘S’, of the contested sign and in the cardinal number '30' of the same, preceding the letters that the signs have in common. As regards the final letter ‘S’, it must be noted that it is placed in a less conspicuous part of the contested sign, namely its ending; furthermore, as this final letter is used to form the plural of words, it is seen as a rather common feature at the end of a verbal element and does not attract particularly the public’s attention. Moreover, as explained above, the cardinal number ‘30’ will be naturally perceived as a quantitative indication referring to the element ‘COINS’. In view of the above, it is considered that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will be associated with the same concept, albeit with a single (earlier mark) and thirty (contested sign) units, still the main concept remains unaffected and, therefore, the signs are conceptually highly similar.

The applicant argues that the contested sign, as a whole, has a ‘strong etymological charge, having a distinctive biblical meaning’ it stresses that ‘according to the Gospel of Matthew in the Christian New Testament, thirty pieces of silver were paid to Judas Iscariot to betray Jesus of Nazareth’ and that, ‘the betrayal of Judas Iscariot to Jesus Christ, is not only known among Christian people but widely acknowledged by the vast majority of the public’. The Opposition Division does not agree with this assertion. First, as the applicant and the opponent point out, the referenced Biblical passage refers to ‘thirty pieces of silver’ and not to ’30 COINS’. Furthermore, also considering the relevant goods, relating ’30 COINS’ (even by Christian people knowing the biblical passage) with the price for which Judas Iscariot betrayed Jesus requires too many mental steps.

The applicant also argues that, alternatively, ‘the contested sign could bring to the average consumer mind the TV series "30 COINS" produced by HBO and directed by the well-known Spanish director, Álex de la Iglesia’ and that ‘this audio-visual production has gained increased popularity amongst the public since it was made available to the public late 2020’. The opponent has not filed any evidence supporting this claim and, in any case, it is relevant to point out that given the alleged recent premiere of the series it seems unlikely that it may have gained popularity so as to affirm that relevant consumers could make a conceptual association between the contested sign in Class 25 and the TV series.

Therefore, the applicant’s claims must be set aside.

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 claims that its earlier trade mark enjoys a high degree of inherent distinctiveness given that ‘COIN' does not describe or recall the relevant goods. As regards this argument, first of all, it should be noted that it is Office practice, that when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). Therefore, a mark does not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Thus, this claim must be set aside as unfounded.

The applicant argues that the earlier trade mark has a low distinctive character. In support of its argument the applicant refers to several European Union and national trade mark registrations in Class 25 (a total of eleven) which according to its opinion coexist peacefully with the earlier mark.

In this regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that such trade marks have been effectively used. It follows that the information filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘COIN’ in relation to the relevant goods in Class 25. Under these circumstances, the applicant’s claim must be set aside.

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 English-speaking part of 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).

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are identical, the distinctiveness of the earlier mark is normal. The level of attention of the public is average.

The earlier mark and the contested sign are aurally and visually similar to an average degree, on account of the common distinctive element ‘COIN’, which constitutes the earlier mark and is fully included and clearly perceptible in the contested sign. The signs differ in the numeral ‘30’ and the final letter ‘S’ of the contested sign. It is considered that these elements are not sufficient to safely exclude a likelihood of confusion between the marks in question, in relation to the identical goods at issue. Furthermore, the signs are conceptually highly similar since they both refer to the same concept of ‘coin(s)’.

The differences between the signs can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters (and concept) perceived by the public. The consideration that the consumers pay more attention to the beginning of the mark also cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

Furthermore, 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 consumers may legitimately believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark, considering that it will be applied to goods which are identical to those marketed under the ‘COIN’ brand (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

The applicant refers to the following previous decisions of the Office to support its arguments:

 Decision of the Second Board of Appeal of 30/11/2020 in case R 2844/2019-2 (‘I-run’ v. ‘ )

 Opposition Decision No B 3 103 685 of 04/12/2020, (‘FCN Esports’ v. ‘ ’)

 Decision of the First Board of Appeal of 28/04/2003 in case R 766/2002-1 (‘Telecom One’’v. ‘ ’)

 Opposition Decision No B 2 076 449 of 03/03/2014 ( v. )

 Opposition Decision No B 1 258 179 of 18/06/2010 (‘24 HORAS’, ‘24 HRS DUO’ v. ‘16 HORAS’).

 Decision of the First Board of Appeal of 15/10/2009 in case R 0342/2009-1 ( v. )

 Opposition Decision No B 3 076 423 of 31/08/2020 ( v. ).

However, as the applicant also points out in its observations, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

  

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings for different reasons, e.g.: they concern signs which are completely different to the ones compared in the case at hand, some of them being figurative (whereas in the present case both signs are word marks); some of the cases contain differing elements in both signs (whereas in the case at hand the earlier mark is completely reproduced in the contested sign); in most of them the common or similar verbal element was considered weak or non-distinctive. e.g. run, sports, telecom, club (whereas, in the present case, ‘COIN’ is distinctive to a normal degree).

The applicant also refers to the Judgment in Case T-255/09 (“ ” vs. “ ”). However, there is no valid reason to transpose the reasoning and outcome (absence of a likelihood of confusion) of this judgment of the General Court. These cases also have some essential differences: firstly, the similarity between the signs in the case cited concerns a word element held to be weakly distinctive (whereas the common element in the present case is distinctive to a normal degree); secondly, the difference in the case cited concerns a figurative element with a significant visual impact and a distinctive role (whereas in the present case both signs are word marks and the differing elements/components of the contested sign are, as explained above, insufficient to exclude a likelihood of confusion).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public as well as on the public with a basic understanding of English language. 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 12 472 205. It follows that the contested trade mark must be rejected for all the contested goods.

As the above cited earlier 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 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 European Union trade mark registrations No 12 472 205 109(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

 

 

Julia GARCÍA MURILLO

Helena GRANADO CARPENTER

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.