OPPOSITION Nо B 3 103 391

 

Sesame Workshop, One Lincoln Plaza, 10023 New York, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Alejandro Sánchez Simón, C/ Sant Jordi 8, 03203 Elche, Spain (applicant), represented by Baylos, C/ José Lázaro Galdiano, 6, 28036 Madrid, Spain (professional representative).

 

On 28/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 103 391 is partially upheld, namely for the following contested goods and services: Class 25: Clothing, footwear and headwear for babies and children; baby bibs [not of paper]; costumes for use in children's dress up play. Class 28: Rattles [playthings]; toys for babies and children. Class 35: Sale via global computer networks of clothing, footwear and headwear for babies and children, babies' bibs (other than of paper), costumes for children, rattles (playthings), toys for babies and children.

 

2.	European Union trade mark application No 18 081 423 is rejected for all the above goods and services. It may proceed for the remaining 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 18 081 423  (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 9 445 991, ‘SESAME’ (word 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 9 445 991.

 

a) The goods and services

 

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

 

Class 25: Clothing, footwear and headgear.

Class 28: Games and playthings; gymnastic and sporting articles and equipment, not included in other classes; decorations for Christmas trees.

The contested goods and services are the following:

Class 25: Clothing, footwear and headwear for babies and children; baby bibs [not of paper]; costumes for use in children's dress up play.

Class 28: Rattles [playthings]; toys for babies and children.

Class 35: Publicity and sales promotion services; business management; business administration; import and export; sale via global computer networks of clothing, footwear and headwear for babies and children, babies' bibs (other than of paper), costumes for children, rattles (playthings), toys for babies and children.

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 25

The contested footwear and headwear for babies and children are included in the broad category of the opponent’s footwear and headgear. Therefore, they are identical.

The contested clothing, for babies and children; baby bibs [not of paper]; costumes for use in children's dress up play are included in the broad category of, or overlap with, the opponent’s clothing. Therefore, they are identical.

Contested goods in Class 28

The contested rattles [playthings]; toys for babies and children are included in the broad category of the opponent’s playthings. Therefore, they are identical.

Contested services in Class 35

Retail 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 contested sale via global computer networks of clothing, footwear and headwear for babies and children, babies' bibs (other than of paper), costumes for children, rattles (playthings), toys for babies and children are similar to the opponent’s clothing, footwear and headgear in Class 25 and playthings in Class 28.

The contested publicity and sales promotion services; business management; business administration are intended to help other commercial or industrial undertakings and other organisations to run and improve their business. These services are dissimilar to all goods covered by the earlier right. Fundamentally different by natures and purposes, these goods and services originate from completely different industries, i.e. textile and toys factories and retailers on the one hand, and advertising agencies, business consultants, business intermediaries etc. on the other hand. The expertise and technical equipment involved in the production or provision of these goods and services are very distinct. They are distributed through highly diverging commercial channels. Furthermore, they are neither complementary nor in competition.

With respect to the contested import-export, it has to be pointed out that they are not considered to be a sales service. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods, they do not relate to the actual retail of the goods. For these reasons, the opponent’s goods are to be considered dissimilar to the contested import and export services, even if they related to the same goods, because the fact that the subject matter of the import/export services and the goods in question can be the same is not a relevant factor for finding similarity.

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 identical or similar are directed at the public at large. The degree of attention is average.

 

c) The signs

 

SESAME
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 common element ‘SESAME’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland and Malta.

 

The common element ‘SESAME’ will be understood by the relevant public as ‘a tall annual herbaceous plant of tropical and subtropical areas of the Old World, cultivated for its oil-rich seeds’ (information extracted from Oxford Dictionaries on 28/10/2020 at https://www.lexico.com/en/definition/sesame).  

 

The element ‘CORNER’ of the contested sign will be associated with, inter alia, ‘a position in which one dominates the supply of a particular commodity’ (information extracted from Oxford Dictionaries on 28/10/2020 at https://www.lexico.com/en/definition/corner). In the context of the goods and services in question: clothing, footwear and headgear, and playthings and services related thereto, the term is weak as it denotes the place of origin of the aforesaid goods and services, namely a designated area or an aisle in a department store or a shop on the high street intended for the sale of clothing, footwear, headgear or playthings.

 

As far the stylisation of verbal elements of the contested mark, this will be merely perceived as a graphical means of bringing the verbal elements to the attention of the public and therefore, its impact on the comparison of the signs will be limited.

The element ‘SESAME’ in the contested sign is the dominant element as it is the most eye-catching.

 

Visually, the signs coincide in the verbal element ‘SESAME’, being the sole element of the earlier mark and the most distinctive and dominant element in the contested mark. However, they differ in the verbal element ‘CORNER’ (found to be weak) and the stylization of the contested mark, the later being of a limited impact as it is explained above. 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 and/or from top to bottom, which makes the part placed at the left/on the top of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an above-average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SESAME’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CORNER’ of the contested mark, which have no counterparts in the earlier mark. 

 

Therefore, the signs are aurally similar to an above-average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an above-average 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.

 

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

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical, while the services are partly similar and partly dissimilar to the opponent’s goods; they target the general public, who possesses an average degree of attention. 

The distinctiveness of the earlier mark must be seen as normal.

The signs are visually, aurally and conceptually similar to an above-average degree, due to the common element ‘SESAME’, placed at the beginning of the contested sign, and representing the most distinctive and dominant element in the sign. However, they differ in the verbal element ‘CORNER’ (found to be weak) and the stylisation of the contested mark with a limited impact.

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. 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). It is common today for companies to make small variations of their brands, for example, by altering their font or color, or by adding terms or elements, to name new product lines or create a modernized version of the brand. Indeed, in the present case it is very likely that consumers perceive the contested sign as a new version of the opponent’s brand, denoting special line or a chain of shops of clothes or playthings, given the fact that both signs contain the distinctive element 'SESAME'. (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 English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union No 9 445 991.  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 trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

 

The rest of the contested 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 services cannot be successful.

 

The opponent has also based its opposition on the following earlier EUTM registration No 15 370 125,  , registered for clothing, footwear and headgear; Halloween and masquerade costumes in Class 25 and toys, games and playthings; gymnastic and sporting articles; dolls, plush toys; handheld electronic games; play costume masks; air mattresses for recreational use, inflatable swimming pools, swimming aids, namely, pool rings, arm floats for recreational use, and swim floats for recreational use; playground sand boxes; party favours in the nature of small toys; party favours in the nature of crackers and noisemakers; Easter egg coloring kits; hobby needle craft kits comprised of needlework; paper party hats; decorations for Christmas trees in Class 28.

 

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional verbal elements such as ‘123’ and ‘STREET’, as well as further figurative elements, which are not present in the contested trade mark. Moreover, it covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services as these are also dissimilar with the opponent’s goods for the same reason mentioned in section b).

 

 

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

 

 

Tzvetelina IANTCHEVA

Francesca DRAGOSTIN

Maria SLAVOVA

 

 

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.