OPPOSITION Nо B 3 121 498

 

Traxxas LP, 6250 Traxxas Way, 75070 McKinney, United States of America (opponent), represented by Carpmaels & Ransford (Ireland) LLP, Harcourt Centre, Block 4 Harcourt Road, Dublin D02 HW7, Ireland (professional representative) 

 

a g a i n s t

 

Toy Plus (Far East) Limited, Unit 09, 9/f, Houston Centre, 63 Mody Road, Tsimshatsui East, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Colbert Innovation Toulouse, 2ter Rue Gustave De Clausade Bp 30, 81800 Rabastens, France (professional representative).

On 07/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 121 498 is rejected in its entirety.

 

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

 

REASONS

 

On 18/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 155 807 (figurative mark). The opposition is based on the following international trade mark registrations, each designating the European Union: No 865 421 MAXX (word mark), No 1 293 330, XMAXX (word mark), No 1 443 555 T-MAXX (word mark), No 1 442 756, (figurative mark), No 1 294 597, (figurative mark), and No 1 294 596 (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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating the European Union: No 865 421 MAXX (word mark).

 

a) The goods

 

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

 

Class 28: Radio-controlled model vehicles and parts therefor.

The contested goods are the following:

Class 28: Toys; toy pistols; parlour games; scale model vehicles; scooters (toys); toy air pistols; toy vehicles; remote-controlled toy vehicles; toy robots; scale model kits (toys).

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.

Remote-controlled toy vehicles is identically included in both lists (albeit with the word ‘toy’ in the contested sign being ‘model’ in the earlier mark, and radio-controlled and remote-controlled being essentially the same in the context of these goods).

The contested toys; scale model vehicles; toy vehicles overlap with, or include as a broader category, the earlier radio-controlled model vehicles. The Office cannot dissect ex officio the broader categories of the relevant contested goods. Therefore, they are identical.

The contested toy pistols; parlour games; scooters (toys); toy air pistols; toy robots; scale model kits (toys) are at least similar to the opponent’s radio-controlled model vehicles because these goods have a similar nature, being toys or games and purpose, namely providing pleasure and amusement. These goods may be manufactured by the same companies and target the same consumers through the same distribution channels.

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 or at least similar are directed at the public at large for which the degree of attention, being toys and games, is average.

 

 

c) The signs

 

MAXX
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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Neither party to the proceedings filed any observations regarding the meaning of the verbal elements of the signs at issue.

The earlier mark comprises the word ‘MAXX’. Although this word has no obvious meaning as such in the languages of the European Union, the Opposition Division takes the view that the double ‘X’ thereof will not prevent it from being perceived by the relevant public as a variant or mis spelling of ‘MAX’, referring to ‘maximum,’ either because the word ‘maximum’ exists as such in the relevant languages (e.g. English, French) or the corresponding word is close to this word (e.g. ‘maximal’ in German, máximo/a in Spanish). Given that ‘maximum’ is laudatory of the said goods (as it promotes the fact that they are, for example the greatest), it follows that the word ‘MAXX’ will also be perceived as being a somewhat laudatory reference, but not directly descriptive reference owing to its particular spelling, to the goods and so it enjoys below average distinctive character.

The contested figurative mark consists of the slightly stylised word ‘FUZION’ (with a slightly larger-sized letter ‘Z’) above the stylized word ‘MAX’, both placed against a figurative device which does not convey any clear or concrete meaning although likely to be perceived as the depiction of an explosion, at least by the part for which the word ‘FUZION’ is meaningful.

For at least part of the relevant public the word ‘FUZION’ is likely to be perceived as a misspelling of the word ‘FUSION’ which, in English, means joining two or more things involves together to form one thing or, in physics, fusion is the process in which atomic particles combine and produce a large amount of nuclear energy (information extracted from Collins English Dictionary on 02/06/2021 at the website www.collinsdictionary.com/dictionary/english/fusion). The word ‘fusion’ exists as such in some languages of the European Union (e.g. Swedish, German and French) or has close equivalents in other languages of the European Union (e.g. ‘fusión’ in Spanish, ‘fuusio’ in Finnish and ‘fuzja’ in Polish). Due to its widespread use this word will most likely be known even for the part of the EU public in whose languages it does not exist as such (e.g. Lithuanian). For the remaining part of this public it will be meaningless. In any case, this word has no direct meaning for the relevant goods and is, therefore, normally distinctive.

For the reasons explained above, the stylized word ‘MAX’ of the contested sign will be understood as a laudatory reference to the relevant goods and so it is weakly distinctive of them.

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). This is so in the present case where the figurative device of the contested sign conveys no clear meaning for the public under analysis. Moreover, the stylization of the verbal elements of the contested sign will be regarded as being primarily decorative in nature and so not play a significant role in the trade mark perception of this sign.

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 from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. In the present case this means that the word ‘FUZION’ is likely to attract more attention than the word ‘MAX’ in the contested sign, given both its position and its slightly greater size.

None of the elements of the contested sign can be regarded as clearly dominant, in the sense of being visually outstanding.

Visually, the signs coincide in the letters ‘MAX’ differing in the final letter ‘X’ of the earlier mark, the word ‘FUZION’ of the contested sign along with its figurative/stylized elements.

Having due regard to the prominence and distinctiveness of the various elements of the signs, as set out above, the Opposition Division considers that the signs at issue are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the words ‘MAXX’ and ‘MAX’ of the earlier mark and contested sign respectively, differing in the sound of the word ‘FUZION’ of the contested sign. Taking into account that the differing word ‘FUZION’ comes at the start of the contested sign, where it is likely to attract more attention, as explained above, Opposition Division considers that the signs at issue are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public for which the word ‘FUZION’ of the contested sign is understood, the signs differ semantically with respect to this distinctive word, coinciding in the meaning of the elements ‘MAXX’/’MAX’ which enjoy, at best, below average distinctive character such as to generate, overall, merely a low degree of conceptual similarity.

For the rest of the relevant public, the said semantic coincidence in an element that possesses, at best, below average distinctive character generates, overall, a below average degree of conceptual similarity.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for the goods in question.

  

e) Global assessment, other arguments and conclusion

The goods have been found to be partly identical and partly at least similar. The signs at issue have been found to be visually similar to a low degree, aurally similar to a below-average degree and conceptually similar to, at best, a below-average degree. The earlier mark as a whole enjoys below-average inherent distinctive character and the degree of attention is average.

Although the signs coincide aurally in the element ‘MAXX’/’MAX’, there is no likelihood of confusion because there are additional elements which are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the said common element does not amount to a dominant element of the signs.

The goods themselves are fairly ordinary consumer products (toys and games) that are commonly purchased in supermarkets or establishments such as toy shops where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). It is relevant, therefore, that the degree of visual similarity between the signs in the present case is merely low.

Considering all the above, there is no likelihood of confusion on the part of the relevant public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks, each being an international trade mark registration designating the European Union and each protected in respect of radio-controlled model vehicles and parts therefor in Class 28: No 1 293 330, XMAXX (word mark), No 1 443 555 T-MAXX (word mark), No 1 442 756, (figurative mark), No 1 294 597, (figurative mark), and No 1 294 596 (figurative mark).

These other earlier rights invoked by the opponent are less similar to the contested mark because they contain a further, distinctive, verbal element as well as figurative elements, which are not present in the contested trade mark and, furthermore, the near coinciding element ‘MAXX’ remains of a below average distinctiveness. Moreover, they cover the same scope of goods.

It follows that even given the fact that each of these additional earlier marks is normally distinctive as a whole, which is not the case for the earlier mark compared above, this difference cannot negate the fact that these earlier marks are even less similar (both visually and aurally), and no more similar semantically, to the contested sign than the said earlier mark compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to the contested goods for any of these additional earlier marks.

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

 

 

Vít MAHELKA

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

 

 

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.