OPPOSITION No B 3 099 908

Rich Star Precision Industrial Co., Ltd, No. 16, Industry Park 7th Road, Taichung, Taiwan (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Yiwu Hairong E-Commerce Co. Ltd., No. 1, Building 11, Third Area, Xiawan Village, Jiangdong Street Yiwu, Zhejiang, People’s Republic of China (applicant), represented by Liu's Legal Solutions Ltd, Unit 6, 42-46 New City Road, Glasgow G4 9JT, United Kingdom (professional representative).

On 23/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 099 908 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 097 518 for the figurative mark . The opposition is based on European Union trade mark registration No 8 623 084 for the 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.

1. The goods

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

Class 7: Painting machines, painting spray guns and parts therefor; air compressors (machines); electrically, hydraulically and pneumatically operated hand tools and parts therefor; painting machines of static electricity; hydraulic pressure pumps (machines).

The contested goods are the following:

Class 7: Printing presses; Drilling heads [parts of machines]; Bearings [parts of machines]; Valves [parts of machines]; Metalworking machines; Hand-held tools, other than hand-operated; Electric hand drills; Cutting machines; Saw blades [parts of machines]; Agricultural machines; Blades [parts of machines]; Chain saws; Saws [machines]; Dynamos; Pumps [machines]; Chisels for machines; Packing machines.

Class 8: Garden tools, hand-operated; Frames for handsaws; Spanners [hand tools]; Bits [parts of hand tools]; Saw blades [parts of hand tools]; Picks [hand tools]; Sickles; Pliers; Irons [non-electric hand tools]; Tweezers; Scissors; Hammers [hand tools]; Abrading instruments [hand instruments]; Hand tools, hand-operated; Shovels [hand tools]; Agricultural implements, hand-operated; Riveters [hand tools]; Graving tools [hand tools]; Handles for hand-operated hand tools.

Some of the contested goods are identical (e.g. pumps [machines]) or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and specialised nature of the goods purchased.

3. 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 earlier mark is a figurative mark composed of the word ‘Star’ in a stylised script.

The contested sign is a figurative mark composed of the words ‘EPICA STAR’. The word ‘EPICA’ is written in bold black standard upper case letters, which show a creative unfinished line in the letters ‘E’ and ‘A’. It is followed by the word ‘STAR’ in thin black standard upper case letters in a significantly smaller size.

The word ‘Star’ is a basic English word, meaning, inter alia, ‘a fixed luminous point in the night sky which is a large, remote incandescent body like the sun’ and ‘[a]n outstandingly successful person or thing in a group’ (information extracted from Oxford Lexico Dictionary on 07/10/2020 at https://www.lexico.com/definition/star). The General Court has on various occasions found that this word is generally understood by a large part of the public in the European Union, including in non‑English-speaking territories, as a laudatory term emphasising the quality of all goods (10/09/2014, T-199/13, STAR, EU:T:2014:761, § 61; 11/05/2010, T‑492/08, Star foods, EU:T:2010:186, § 52). Therefore, it must be considered that the average consumer in the relevant territory will perceive this element in both signs as a laudatory term that is, as such, of limited distinctiveness.

The word ‘EPICA’ is the feminine form of the Spanish and Italian word ‘épico’ and will be immediately associated by the Spanish and Italian-speaking public as well as by another part of the relevant public to the same meaning as the English word ‘epic’ due to their similarities, (‘epic' in English, ‘épico’ in Portuguese, ‘épique’ in French, etc.). This word will therefore be understood as 1) a long poem, typically one derived from ancient oral tradition, narrating the deeds and adventures of heroic or legendary figures or the past history of a nation, 2) an exceptionally long and arduous task or activity (information extracted from Oxford Lexico Dictionary on 07/10/2020 at https://www.lexico.com/definition/epic). Since it has no specific meaning in relation to the relevant goods, it is considered to be distinctive. For the part of the relevant public for which this element is meaningless, it also has an average degree of distinctiveness.

The element ‘EPICA’ in the contested sign is the dominant element as, due to its size and position, it is the most eye-catching, contrary to what the opponent states in its allegations. The word ‘STAR’ has the meaning explained above and its distinctiveness is limited and is, also due to its size, a secondary element of the sign.

Visually, the signs coincide in the word ‘Star’, which is the sole element of the earlier mark but which has limited distinctiveness and is present at the end of the contested sign as a secondary element as explained above. Furthermore, the signs differ in the initial word ‘EPICA’, which is the dominant and most distinctive element of the contested sign. In addition, the signs differ in the different stylisation of the words, and in the length of the signs, being the contested sign considerably longer.

Moreover, 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. In this case the beginnings of the signs are completely different.

Therefore, the signs are visually similar to a very low 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 word ‘Star’, present identically in both signs, which is the earlier mark’s sole element but which is of limited distinctiveness and the contested sign’s secondary element. The pronunciation differs in the sound of the distinctive word ‘EPICA’, which is both longer and present at the beginning of the contested sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public which associates the word ‘EPICA’ with a meaning, the word element ‘STAR’ in common overlaps and its impact conceptually, is limited due to the weak distinctiveness of the word. The differentiating element in the contested sign is distinctive which has thus more weight and clearly distinguishes the marks. The signs are, therefore, conceptually similar to a very low degree for this part of the public.

For the part of the relevant public for which ‘EPICA’ is meaningless, in as much as the signs have the word element ‘Star’ in common, the impact of this overlap, conceptually, is limited due to the weak distinctiveness of that word. The differentiating element, ‘EPICA’, in the contested sign is distinctive and the element on which consumers will primarily focus their attention. The signs are, therefore, still conceptually similar only to a low degree for this part of the public.

The opponent argues that 'EPICA' will be perceived by consumers as characterising the subsequent word 'STAR', and that this word has therefore a more conceptual importance in the overall impression produced by the contested sign. However, even if the first word 'EPICA' is associated with the meaning of 'epic' as explained above, the Opposition Division does not consider that the contested sign will be perceived by this part of the public as a conceptual unit with conveying the idea of an 'epic star'. This is because the additional word 'STAR' is depicted in much smaller size as a secondary element to the initial word 'EPICA' and will be perceived primarily as a laudatory claim referring to the quality of the goods concerned. Therefore, these allegations of the opponent cannot change the findings reached above, namely that for the part of the public that perceives the concepts conveyed by both 'EPICA' and 'STAR', the signs will be perceived as conceptually similar only to a very low degree overall to the extent that they both share a term that highlights the quality of the goods concerned.

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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low. However, the earlier mark should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. In proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question (24/05/2012 C 196/11 P, F1-Live, EU:C:2012:314, § 40-41). This applies equally to earlier European Union trade mark registrations.

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, and 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).

The goods have been assumed to be identical, the relevant public’s degree of attention may vary from average to high, and the earlier mark’s distinctiveness is low.

The signs are visually, aurally and conceptually similar to a (very) low degree. The signs coincide in the word ‘Star’ which is the sole element of the earlier mark, but which has limited distinctiveness as such. It is of crucial importance that the similarity of the signs is confined to an element of limited distinctiveness. The first element of the contested sign is distinctive, it is the sign’s dominant element and has a distinctive meaning for a part of the relevant public. Furthermore, the additional, much smaller, word 'STAR' in the contested sign will not be perceived as playing an independent distinctive role in the contested sign but will rather be perceived as a secondary element highlighting the quality of the goods concerned with that mark. The differences between the signs have thus a sufficiently strong impact to allow the relevant public to distinguish between them, even if all the goods concerned were identical as assumed.

Assessment of the similarity between two signs involves more than taking just one component of a composite trade mark and comparing it with another mark. The general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35).

The opponent refers to the principle of interdependence, however the (very) low degree of similarity between the signs, for the reasons set out in detail in section c) of this decision and as also explained above, cannot be offset by the identity of the goods in this case. Therefore, there is no likelihood of confusion on the part of the public throughout the European Union within the meaning of Article 8(1)(b) EUTMR.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.