OPPOSITION No B 3 121 797

The Paper & Office Equipment Spain ASS, S.A. Poessa, Polígono Industrial Bakiola Nave 1, 48498 Arrankudiaga, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Klaus Cichon, Hochstraße 124, 90522 Oberasbach, Germany (applicant), represented by Heimler Rechtsanwälte, Hans-bornkessel Str. 3, 90763 Fürth, Germany (professional representative).

On 28/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 797 is rejected in its entirety.

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

REASONS

On 19/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 190 309 (figurative mark), namely against all the goods in Class 16. The opposition is based on European Union trade mark registration No 14 536 726 (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.

a) The goods and services

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

Class 16: Writing or drawing books; school writing books; files [office requisites]; binders; document files [stationery]; file covers; paper folders; index files; printed matter, namely steel letters, printing blocks, printers’ type, composing frames [printing], numbers [type], letters [type], letters [type], printers’ blankets, not of textile, address plates for addressing machines, greeting cards, musical greeting cards, flags of paper; binding articles; photographs; stationery, namely rollers for typewriters, typewriter ribbons, inking ribbons for computer printers, ink cartridges, adhesive tape dispensers (stationery), stapling presses (stationery), bookends, document files (stationery), pencils, loose-leaf binders, gummed tape (stationery), pads (stationery), drawing pins, writing or drawing books, index cards (stationery), paper sheets (stationery), folders for papers, letter trays, french curves, covers for books or for writing or drawing books (stationery), envelopes (stationery), nibs, rubber erasers, bookmarks, balls for ball-point pens, transparencies (stationery), gluten (glue) for stationery or household purposes, adhesive tapes for stationery or household purposes, starch paste (adhesive) for stationery or household purposes, self-adhesive tapes for stationery or household purposes, wood pulp board (stationery), stands for pens and pencils, announcement cards (stationery), writing cases (stationery), isinglass for stationery or household purposes, copying paper (stationery), writing brushes, marking pens (stationery), document holders (stationery); glue for stationery or household purposes; artists’ materials, namely watercolours, sketch pads, painters’ brushes, painters’ easels, compasses for drawing, drawing boards, tracing needles for drawing purposes, drawing pens, modelling paste, palettes for painters, pantographs [drawing instruments], pastel crayons, canvas for painting, drafting rulers, vignetting apparatus, paint brushes, paint brushes, squares for drawing, t-squares for drawing, paint trays; typewriters and office requisites (except furniture), namely, staples for offices, staples for offices, pencil sharpening machines, electric or non-electric, sealing machines for offices, finger-stalls [office requisites], files [office requisites], office perforators, correcting fluids [office requisites], paper clasps, envelope sealing machines, for offices, ledgers [books], indexes, forms, printed, scrapers [erasers] for offices, printed timetables, printing sets, portable [office requisites], folders [stationery], pens [office requisites], calendars, elastic bands for offices, paper shredders for office use, stationery (cabinets for -) [office requisites], stationery (cabinets for -) [office requisites], paper knives [office requisites], paper knives [office requisites], paper knives [office requisites], pencil sharpeners, electric or non-electric, bookbinding apparatus and machines [office equipment], checkbook covers, clipboards, correcting tapes [office requisites]; instructional and teaching material (except apparatus); plastic material for packaging (not included in other classes); printers’ type; printing blocks; namely paper, paper boxes, advertisement boards of paper, silver paper, blotters, tracing paper, carbon paper, paper for recording machines, hygienic paper, wrapping paper, electrocardiograph paper, notepaper, luminous paper, papier mâché, manifolds [stationery], rice paper, parchment paper, radiograms (paper for -), paper ribbons, wood pulp paper, placards of paper, paper signboards, waxed paper, waxed paper, drawer liners of paper, perfumed or not, xuan paper for chinese painting and calligraphy; cardboard, namely papier mâché, wood pulp board [stationery], advertisement boards of cardboard, cardboard boxes, placards of cardboard, cardboard signboards.

Class 35: Advertising; supplying services for others (purchase of goods and services for other enterprise); import, export and sole agencies; management assistance for franchised businesses; retailing in shops, via electronic means or via global computer networks of writing or drawing books, files, folders, paper, cardboard and office requisites.

The contested goods are the following:

Class 16: Placards of paper or cardboard; advertising pamphlets; printed advertising boards of cardboard; signboards of paper or cardboard; printed promotional material; promotional publications; promotional publications; printed calendars.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the opponent’s list of goods in Class 16 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. Although it is not clear to which broader category the last part namely paper, paper boxes, advertisement boards of paper, silver paper, blotters, tracing paper, carbon paper, paper for recording machines, hygienic paper, wrapping paper, electrocardiograph paper, notepaper, luminous paper, papier mâché, manifolds [stationery], rice paper, parchment paper, radiograms (paper for -), paper ribbons, wood pulp paper, placards of paper, paper signboards, waxed paper, waxed paper, drawer liners of paper, perfumed or not, xuan paper for chinese painting and calligraphy; cardboard, namely papier mâché, wood pulp board [stationery], advertisement boards of cardboard, cardboard boxes, placards of cardboard, cardboard signboards, indicated after the semicolon in Class 16 of the opponent’s goods refers, following the above indicated approach, it is considered that the scope of protection is limited to these specifically listed goods.

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 contested placards of paper or cardboard; printed advertising boards of cardboard; signboards of paper or cardboard are identical to the opponent’s placards of paper, paper signboards, advertisement boards of cardboard, placards of cardboard, cardboard signboards either because they are identically contained in both lists or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested advertising pamphlets; printed promotional material; promotional publications; promotional publications; printed calendars are at least similar to the opponent’s printed matter, namely, greeting cards, flags of paper, as all these goods are various printed items, which belong to the broad category of printed matter, and have the same nature and methods of use and may share the same purpose. Furthermore, they can have the same distribution channels, target the same relevant public and be produced by the same undertakings.

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 mainly at the public at large. The degree of attention is considered to be average.

c) 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 containing the verbal element ‘GOLDEN’ depicted in standard upper-case letters and a figurative element of an apple. The contested sign is a figurative mark containing a figurative element depicting a golden dragon in the middle with two black banners above and below it. The verbal elements ‘Golden’ and ‘Drakes’ are written in stylised gold letters on the upper banner and the sign also contains a depiction of a black shield with the letters ‘MC’ in gold, next to its figurative element.

The coinciding verbal element ‘GOLDEN’ will be perceived by at least part of the public having a basic knowledge of English as referring to ‘of the colour of gold; of a bright, metallic, yellow colour; made (wholly or partly) of gold; consisting of gold’ (information extracted from Oxford English Dictionary on 10/06/2021 at https://www.oed.com/). The word ‘GOLDEN’ is also often used figuratively with allusion to the brilliance, beauty and precision of the metal gold and to that extent it contains the laudatory message that something is valued as the finest of its kind (19/05/2010, T‑163/08, Golden Toast, EU:T:2010:208, § 25; 08/01/2018, R 1106/2017‑5, gold; 14/04/2014, R 2320/2013‑4, GOLDEN SPEZIAL; 03/09/2012, R 1629/2011‑4, GOLD EDITION; 03/05/2012, R 1710/2011‑2, GOLD LABEL RESERVE; 23/10/2008, R 1457/2007‑1, GOLD). In the context of the goods at issue, the verbal element ‘GOLDEN’ may therefore be perceived either as indicating some of their characteristics, such as the colour or as highlighting their superior qualities. Therefore, the distinctiveness of this element is low for this part of the public. For the part of the public who will perceive the verbal element ‘GOLDEN’ as a meaningless word, it has an average degree of inherent distinctiveness.

The verbal element ‘Drakes’ of the contested sign may be perceived by the English-speaking part of the public either as referring to ‘the male of the duck, and of birds of the duck kind’ or as a ‘dragon’ (information extracted from Oxford English Dictionary on 10/06/2021 at https://www.oed.com/). As the figurative element of the contested sign depicts a dragon, the verbal element ‘Drakes’ may be associated with the meaning of ‘dragon’ by a substantial part of the relevant public, considering its close proximity to the equivalent word in respective languages, for example, ‘drak’ in Czech and Slovak, ‘dragon’ in French, ‘drache’ in German, ‘drago’ in Italian, ‘drakonas’ in Lithuanian and ‘dragón’ in Spanish. However, part of the public may perceive it as a meaningless word. Regardless of the perception, the verbal element ‘Drakes’ has an average degree of distinctiveness as it does not refer to any characteristics of the goods in question.

The opponent claims that the verbal elements are the dominant elements in both marks and the figurative elements should be considered as merely decorative. However, 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. Although, as pointed out by the opponent, the verbal elements appear in first or top position in both marks, this is not sufficient to make them dominant. Since the figurative and verbal elements in both signs are of similar sizes, neither of the marks has any element that could be considered clearly more dominant than other elements. Nevertheless, it is very likely that the figurative element depicting a dragon will be the first element noticed by the relevant consumers in the contested sign, considering its central position and because the verbal elements ‘Golden’ and ‘Drakes’ are placed on one of the banners framing this figurative element.

Moreover, contrary to the opponent’s assertions, the figurative elements depicting an apple in the earlier mark and a dragon in the contested sign are not decorative, but distinctive to an average degree, as neither of them relates in any way to the goods in question. The same applies to the letters ‘MC’ of the contested sign. The figurative elements depicting banners and shield in the contested sign, however, play a rather decorative role, as such elements are commonly used in trade marks to serve as a frame or background for the verbal elements and the relevant public will not attribute much significance to them.

It follows that the only elements which retain a normal degree of distinctiveness for the whole relevant public in the relevant territory are the figurative element depicting an apple in the earlier mark, the figurative element depicting a dragon in the contested sign and the verbal elements ‘Drakes’ and ‘MC’ of the contested sign. The distinctiveness of the coinciding verbal element ‘GOLDEN’ varies depending on whether it is perceived as meaningful or meaningless.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘Golden’, which is the sole verbal element in the earlier mark and the first verbal element in the contested sign. However, the signs differ in all other aspects, namely, in the figurative elements of both signs, in the additional verbal elements ‘Drakes’ and ‘MC’ of the contested sign, as well as in the colours, stylisation and overall composition of the contested sign.

The opponent emphasises that the verbal element of the earlier mark is fully included in the contested sign, and this creates a high degree of visual similarity between the signs. According to the opponent, the verbal elements prevail over the figurative elements, which play an ornamental role. To support its arguments the opponent referred to a number of judgments (26/06/2018, T‑71/17, FRANCE.COM (fig.) / France (fig.), EU:T:2018:381; 31/01/2012, T‑205/10, La victoria de Mexico, EU:T:2012:36; 15/12/2010, T‑188/10, Solaria, EU:T:2010:524; 29/01/2019, T‑336/17, YATEKOMO / YA TE COMERE EL VACIO QUE TE LLENA (fig.), EU:T:2019:36).

The Opposition Division agrees with the opponent 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). However, the assessment of the similarity between two marks means more than taking just one verbal component of a composite mark and comparing it with the verbal component of another composite mark.

Moreover, the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37). As already explained above, the Opposition Division does not consider the verbal elements to be dominant in either of the marks. Moreover, the figurative element depicting an apple in the earlier mark and the figurative element depicting a dragon in the contested sign have the same or even higher degree of distinctiveness than their coinciding verbal element ‘Golden’ (depending on the distinctiveness of this verbal element). Therefore, there is no objective reason, nor did the opponent provide one, why these figurative elements should be considered decorative or weak. On the contrary, considering the way the contested sign is depicted, both verbal and figurative elements will be attributed equal weight and are equally important in its overall composition.

Furthermore, it is true that, as the opponent contends, consumers generally pay greater attention to the beginning of the mark. However, that consideration cannot apply in all cases and may not call into question the principle that the examination of the similarity of the marks must take account of the overall impression given by those marks (05/02/2016, T‑135/14, kicktipp / KICKERS et al., EU:T:2016:69, § 142; 21/01/2016, T‑802/14, Lenah.C / LEMA, EU:T:2016:25, § 29; 23/04/2008, T‑35/07, Celia, EU:T:2008:125, § 37; 09/09/2008, T‑363/06, Magic seat, EU:T:2008:319, § 38; 23/09/2011, T‑501/08, See more, EU:T:2011:527, § 38).

In the present case, the coinciding verbal element ‘Golden’ is only one of many verbal and figurative elements of which the contested sign is composed. The whole composition of the contested sign is made up in such a way that everything evolves around the distinctive figurative element of a dragon in the middle position, which is surrounded by banners and a shield with verbal elements or without. Although the upper banner contains the verbal elements ‘Golden’ and ‘Drakes’, only one of which coincides with the contested sign, this will not undermine the importance and impact of, nor distract the consumer’s attention from, the remaining elements or the whole composition of the contested sign. Therefore, contrary to the opponent’s assertions, there is no reason to consider that the relevant consumers will disregard all the remaining differing elements of the contested sign and focus their attention solely on one verbal element. Moreover, the coincidence in the verbal element ‘Golden’ will have only minimal impact, if at all, for the part of the public for who distinctiveness of this element is low (for the reasons explained above).

As regards the case-law referred to by the opponent, the Opposition Division notes that it duly takes into account all the relevant trade-mark principles elaborated by the Court and the relevant case-law. However, the particular examples quoted by the opponent are not comparable to the case at issue, as they concern cases related to different signs and different factual circumstances. Therefore, the opponent’s arguments have to be set aside.

The opponent focuses its arguments mainly on the similarity between one verbal element, ‘Golden’, in both marks. However, the similarity must be assessed considering the marks as a whole and cannot arbitrarily be reduced to only one element of the signs being compared. As the overall visual impression created by the contested sign has clearly perceptible and significant differences from that created by the earlier mark, the visual similarity between the marks will vary from a very low degree to a low degree, depending on the distinctiveness of the coinciding verbal element ‘Golden’ (i.e. whether it is perceived as meaningful or meaningless by the relevant public).

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 verbal element ‘GOLDEN’, which is the sole verbal element of the earlier mark and the first verbal element of the contested sign. The pronunciation differs in the sound of the verbal element ‘Drakes’ and the letters ‘MC’ of the contested sign. Taking into account the distinctiveness of the differing verbal elements and that they make the contested sign twice as long as the earlier mark, the aural similarity between the signs will vary from a low degree to an average degree depending on the relevant public’s perception and the distinctiveness of the verbal element ‘Golden’ in both marks.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public who will perceive the coinciding verbal element ‘Golden’ as meaningless, the signs clearly differ in the concepts conveyed by their figurative elements and, in addition, in the concept conveyed by the verbal element ‘Drakes’ of the contested sign, for at least the part of the public who will associate it with the meanings described above. Therefore, the signs are conceptually not similar for this part of the public.

Although, for part of the public, the signs coincide in the meaning conveyed by ‘Golden’, this element has only a low degree of distinctiveness when perceived as meaningful. Moreover, bearing in mind that the relevant public usually perceives marks as a whole, overall, the earlier mark will be seen as conveying the concept of a ‘golden apple’, whereas the contested sign will be associated with the concept of a ‘golden dragon’, or a ‘golden duck’ and a ‘dragon’, depending on the part of the public. Therefore, contrary to the opponent’s arguments, when taken as a whole, the signs do not evoke identical concepts, but rather convey different meanings for this part of the public and are not similar conceptually.

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, despite the presence of an element with a low degree of distinctiveness for part of the public, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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, § 23). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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/or 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).

The contested goods are partly identical and partly at least similar to the opponent’s goods and services. The relevant goods mainly target the public at large whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The marks are similar insofar as they have the verbal element ‘Golden’ in common. However, as explained in section c), this commonality only leads to a very low or a low degree of visual similarity, since, when taken as a whole, the signs have clearly perceptible visual differences created by their remaining elements. Although the verbal element of the earlier mark is fully incorporated in the contested sign, for the part of the public for who the coinciding verbal element ‘Golden’ is meaningless and distinctive, the signs still differ in their additional figurative and, in the case of the contested sign, verbal elements, most of which are equally distinctive. For the remaining part of the public, the coincidence lies in the element which has only a low degree of distinctiveness, and the signs clearly differ in their distinctive elements.

Admittedly, the degree of aural similarity is average for the part of the public for who the coinciding verbal element ‘Golden’ is meaningless. However, this in itself is not sufficient to support a finding of a likelihood of confusion, since the goods at issue (which are in a broadest sense, printed matter) are fairly ordinary consumer products that are usually sold in stationery shops, book shops, special sections of department stores or are distributed as promotional material, and will be perceived by the relevant consumers visually prior to the purchase, as in establishments where goods are arranged on shelves 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). Moreover, the degree of aural similarity is low for the remaining part of the public, and a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to a likelihood of confusion.

The Opposition Division agrees with the opponent 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). However, in the absence of any conceptual link between the signs, the overall visual and aural similarity between them is clearly insufficient to assume that relevant consumers when encountering the contested sign in the absence of the earlier mark, using their general recollection of marks, would be likely to be confused and believe that the contested sign was the same as, or somehow related to, the earlier mark.

Therefore, even taking into account the abovementioned principle of interdependence and the fact that the goods are identical or at least similar, the differences between the marks clearly outweigh their similarities. Consequently, it can be safely assumed that the relevant consumers, even with an average degree of attention, will not confuse the marks in question nor be led to believe that the goods at issue come from the same or economically linked undertakings.

The opponent refers to a previous decision of the Office (28/01/2020, B 3 070 393, v ) to support its arguments. However, the decision quoted by the opponent is not comparable to the present case, since the contested sign has many more differences from the earlier mark than in the decision referred to by the opponent. As regards the opponent’s emphasis that the verbal element ‘Golden’ has a normal degree of distinctiveness for the part of the public who will not understand its meaning, this fact has already been taken into account by the Opposition Division.

Moreover, 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division involves the same earlier mark as in the present case, the outcome may not be the same.

Considering all the above, 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

Enrico D’ERRICO

Rasa BARAKAUSKIENĖ

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.