OPPOSITION Nо B 3 126 166

 

Markant Services International GmbH, Hanns-Martin-Schleyer-Str. 2, 77656 Offenburg, Germany (opponent), represented by Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Richard-Strauss-Str. 80, 81679 München, Germany (professional representative) 

 

a g a i n s t

 

Shenzhen Xiangmang Technology Co., Ltd., 306, No. 17, Chuangye 2nd Road, Zhangbei Community, Longcheng Street, Longgang District, 518116 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Mon Yin Lin, Gloria Fuertes 1, 2º D, 28340 Valdemoro, Spain (professional representative).

On 11/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 126 166 is upheld for all the contested goods.
2.	European Union trade mark application No 18 210 917 is rejected in its entirety.

 

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

REASONS

 

On 16/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 210 917 ‘kizdream’ (word mark). The opposition is based on German national trade mark registration Nos. 302 008 018 773, (figurative mark) and No 30 527 372, (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 right. The Opposition Division considers it appropriate to examine first the opposition with respect to the opponent’s German national trade mark registration No 30 527 372, in Class 28.

a) The goods and services

 

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

 

For German national trade mark registration No 30 527 372:

Class 28: Games, playthings, electronic games (including video games); except those adapted for use with television receivers; automatic games (except those adapted for use with television receivers); amusement games; parlour games; playing cards; plush toys, plush animals; plastic toys; dolls; figurines for playing; toy vehicles; model cars.

The contested goods are the following:

Class 28: Apparatus for games; butterfly nets; toy binoculars; drones [toys]; toy vehicles; remote-controlled toy vehicles; controllers for toys; gyroscopes and flight stabilizers for model aircraft; scale model vehicles; scale model kits [toys].

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 terms ‘especially’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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).

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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.

Unless indicated otherwise, each of the comparisons below concern Earlier mark 2.

Toy vehicles are identically contained in both lists of goods.

The contested apparatus for games and drones [toys]; scale model kits [toys] respectively are included within the broader categories of the opponent’s games and playthings respectively. Therefore, they are identical.

The contested toy binoculars, which include such toys made of plastic, overlap with the opponent’s plastic toys. Therefore, they are identical.

The contested remote-controlled toy vehicles are included within the broader category of the opponent’s toy vehicles. Therefore, they are identical.

The contested scale model vehicles overlap with the opponent’s toy vehicles. Therefore, they are identical.

The contested butterfly nets, include both toy butterfly nets as well as regular butterfly nets for sports/hunting, and so they must be held to overlap with the opponent’s games and playthings. Therefore, they are identical.

The contested controllers for toys; gyroscopes and flight stabilizers for model aircraft are similar to the opponent’s toy vehicles as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

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 similar are directed at the public at large for which the degree of attention – being toys and related goods in Class 28 - is average.

 

  

c) The signs

 

	Kizdream
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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 figurative mark comprises the slightly stylised words ‘Kids’ and ‘dreams’ placed one above the other as well as a figurative element featuring a child’s face surrounded by - in clock wise - a model car, a teddy bear, a fruit drink carton, hard rock candy, and a lollipop. The said stylisation will be regarded as being primarily decorative in nature and so not play a substantial role in the trade mark perception of the earlier mark.

The word ‘Kids’ is a basic English term and, in the context of the goods in question, its meaning is likely to be understood by the relevant public in Germany. As toys are generally directed at children, this word is weakly distinctive of the goods in question as it merely refers to the intended end users. For the part of the relevant public with a knowledge of English, the meaning of the word ‘dreams’ will also be understood. Although the word ‘dreams’ might be said to be vaguely allusive of the purpose of toys, games or playthings, the Opposition Division takes the view that it cannot correctly be held to bear any direct reference to them because the link between ‘dreams’ and goods such as toys, games or playthings is insufficiently precise to be considered descriptive. It follows that this word is normally distinctive of the opponent’s goods, and is so for all of the relevant public.

For the English-speaking part of the relevant public, the word combination ‘Kids dreams’ has a unitary meaning – referring to the dreams of children – which, in light of the above findings, must be held to be normally distinctive, as a whole, of the goods in question.

The Opposition Division takes the view that the non-verbal elements of the earlier mark will not be examined in any detail but, instead, will be perceived as conveying items such as toys of interest to a child, they are, at best, weakly distinctive of the goods in question. In any event, 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 non-verbal elements are likely to be perceived, as a whole, as being essentially a collection of items of interest to a child.

The contested sign comprises the word combination ‘kizdream’. Although it is composed of one verbal element, at least the English-speaking part of the relevant public, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58), namely the component ‘Kiz’ and ‘dream’, the latter having the meaning and distinctiveness as explained already above. In the context of the goods in Class 28, this part of the relevant public will have little difficulty in perceiving the component ‘Kiz’ as a variant of the basic English word ‘Kids’, taking into account the fact that this word is frequently spelled ‘Kidz’ and this is so also for the contested butterfly nets, which, while not being exclusively confined to toys as such, are frequently associated with childhood play.

Given that English is widely understood in Germany, the Opposition Division shall focus its comparison on this part of the relevant public.

None of the elements of the earlier mark is dominant in the sense of being visually outstanding.

Visually, the signs coincide in the letters ‘Ki’ and ‘dream’, differing in the letters ‘ds’/’z’ of the signs respectively, the final letter ‘s’ of the word ‘dreams’ of the earlier mark, as well as the figurative/stylized elements of the earlier mark, which have less impact than the verbal elements as set out above. On this basis, the signs are considered to be visually similar to a below-average degree.

Aurally, given the near identity of the sound of the letters ‘ds’/’z’, at third and fourth position of the earlier marks and at third position of the contested sign, it must be held that the marks at issue are phonetically similar to a high degree, taking into account the reduced impact of letter ‘s’ at the end of the word ‘dreams’ of the earlier mark due to its final position.

Conceptually, for the public under analysis, the signs coincide in the meaning of their verbal elements, differing in the concepts of the figurative elements of the earlier mark, which do not however detract from the said verbal coincidence given that they convey concepts of toys and childhood which tend to reinforce the said verbal coincidence. On this basis, they are conceptually similar to a high 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 their 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 some weak elements in the mark, as stated above in section c) of this decision.

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).

 

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.

The goods have been found to be partly identical and partly similar. For the public under analysis, the signs are visually similar to a below average degree, and aurally and conceptually highly similar. The earlier mark as a whole is normally distinctive and the degree of attention of the relevant public is average.

Taking the relevant factors into consideration the Opposition Division considers that the similarities between the signs – concerning near coincidence in their verbal elements which, as a whole, are normally distinctive - are not counteracted by the differences. Such differences pertain to a small number of letter differences between the signs’ verbal elements, set out at section c) above, which do not however change their coinciding semantic meaning, and differing also as to the figurative/stylized elements of the earlier mark, having less impact than the near coinciding verbal elements.

Indeed, it is quite conceivable that the relevant consumer will perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates (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 public under analysis, namely the English-speaking part of the relevant public in Germany and, therefore, the opposition is well founded on the basis of the opponent’s German national trade mark registration. In that regard, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69).

It follows that the contested sign must be rejected for all the contested goods.

As the earlier German trade mark registration No 30 527 372 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 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

 

 

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.