OPPOSITION No B 2 079 955

Fun Belgium N.V., Koning Albert I-laan, 244, 8200, Brugge, Belgium (opponent), represented by Bernard Maria Gustave Gravez, Victor Braeckmanlaan 107, 9040, Gent, Belgium (professional representative)

a g a i n s t

Outfit7 Limited, 1st Floor Sackville House, 143-149 Fenchurch Street, EC3M 6BN London, United Kingdom (applicant)

On 10/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 079 955 is partially upheld, namely for the following contested goods and services:

Class 9: Computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; computer games; downloadable computer game software via a global computer network and wireless POS (point of service) devices; downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games; software for electronic apparatus using its interactive and multimedia functions; interactive multimedia software programs; software for enabling video computer and on-line games to be run on multiple platforms; software for playing video, computer and on-line games; video and audio games.

Class 28: Toys, games and playthings; plush toys; computer game character dolls; interactive audio visual games on computer hardware platforms (not for use with television receivers), handheld computer games equipment, home video game machines and hand-held video game machines; talking toys; toy figures; talking toy figures; playthings featuring computer game characters.

Class 41: Entertainment in the nature of competitions in the field of computer and video games; entertainment provided via mobile or cellular telephone and/or other wireless devices; entertainment provided via the Internet or other computer network; on-line gaming services; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; providing downloadable audio and video files in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games; providing touch and voice driven games for electronic digital mobile devices; providing games for use on mobile devices; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing online entertainment in the nature of multiplayer tournaments.

2. European Union trade mark application No 10 062 206 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 10 062 206 for the word mark ‘Fun Network’. The opposition is based on:

1. European Union trade mark registration No 2 512 317 of the figurative mark ,

2. Benelux trade mark registration No 710 823 of the figurative mark ,

3. Benelux trade mark registration No 453 888 of the word mark ‘FUN’,

4. Benelux trade mark registration No 793 254 of the word mark ‘FUN CITY’,

5. Benelux trade mark registration No 824 890 of the figurative mark .

The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T 191/04, Metro, EU:T:2006:254, § 33-36).

On 20/09/2012, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, Benelux trade mark registration No 453 888, Benelux trade mark registration No 793 254 and Benelux trade mark registration No 824 890.

On 01/10/2012 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 06/02/2013. After an extension and several joint requests for suspension this time limit finally expired on 04/02/2018.

On 02/02/2018 together with the observations in support of the opposition the opponent filed print outs from the Benelux Intellectual Property Office and the EUIPO register concerning the registration of earlier marks 1-5 in order to prove the existence, validity and scope of protection of the earlier trade marks.

According to the registration certificates submitted, Benelux trade mark registration No 793 254 and Benelux trade mark registration No 824 890 had as expiration dates 26/04/2015 and 31/05/2017 respectively and thus had already expired at the moment of substantiation. This was also admitted by the opponent in its submissions. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these two earlier marks.

Moreover, on 05/10/2018 the Office requested the opponent to submit evidence of the renewal of the Benelux trade mark registration No 453 888 by 05/11/2018, since the evidence submitted on 02/02/2018 indicated that the mark was only valid till 10/08/2018. The Office moreover specified that this evidence must provide all the data that determines the scope of protection of this mark and be duly accompanied by a translation into the language of the proceedings. In case such evidence is not submitted the earlier mark will be rejected as non-substantiated.

On 15/10/2018 the opponent submitted a copy of Benelux trade mark registration No 453 888 showing a new validity date of 10/08/2028.

However, this document was not accompanied by a translation into the language of proceedings, as required by Article 7(4) EUTMDR.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits will not be taken into account. Furthermore, according to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 97(1)(b) EUTDR and Articles 7 and 8 EUTDMR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore also be rejected as unfounded, as far as it is based on this earlier mark. It will not continue now with the examination of the remaining earlier marks 1 and 2.

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 earlier mark 1.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed and embossed matter; bookbinding material; photographs; posters, self-adhesive labels, calendars, stationery; adhesives for office or domestic use; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printing fonts; printing blocks.

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

Class 35: Publicity and promotion; business mediation in respect of the commercialisation of the goods named in classes 16, 20 and 28; business organisation and administration of a gaming club the members of which enjoy special rates; franchising; market prospecting; distribution of advertising materials; arranging trade fairs; business mediation in respect of the commercialisation of the goods named in class 20 and 28 by providing club members with catalogues and brochures; clerical processing of mail orders as part of services provided by a mail order company.

The contested goods and services are the following:

Class 9: Computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; computer games; application development tool programs for personal computers and/or mobile digital electronic devices and/or hand held computers and/or mobile telephones; computer software featuring music and motion picture soundtrack, animated cartoons on any medium; downloadable computer game software via a global computer network and wireless POS (point of service) devices; downloadable software featuring touch and voice control; downloadable software for developing, designing, modifying, recording and customizing sound and speech; downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games; software for electronic apparatus using its interactive and multimedia functions; interactive multimedia software programs; computer programs including one or more following features: character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity; software for enabling video computer and on-line games to be run on multiple platforms; software for playing video, computer and on-line games; speech recognition software; touch and voice driven interactive software; video and audio games.

Class 28: Toys, games and playthings; plush toys; computer game character dolls; interactive audio visual games on computer hardware platforms (not for use with television receivers), handheld computer games equipment, home video game machines and hand-held video game machines; talking toys; toy figures; talking toy figures; playthings featuring computer game characters.

Class 41: Entertainment in the nature of competitions in the field of computer and video games; entertainment provided via mobile or cellular telephone and/or other wireless devices; entertainment provided via the Internet or other computer network; on-line gaming services; production and distribution of short video or audio recordings; providing a web site featuring musical performances, musical videos, film clips, photographs and other multimedia entertainment; providing a web site featuring video and audio recordings made within computer games; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; providing continuing shows distributed over electronic media, including global and local area computer networks; providing downloadable audio and video files in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games; providing touch and voice driven games for electronic digital mobile devices; providing games for use on mobile devices; providing news and information in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing online entertainment in the nature of multiplayer tournaments; the creation, production and distribution of films, videos, animation, and computer generated images.

Class 42: Development, consultancy on and designing of computer software; computer programming; computer systems analysis; conversion of data from physical to electronic media; design of computer systems; development, consultancy on and designing of touch and voice driven computer software for electronic digital mobile devices; engineering and expert services in the field of computer science; providing computer software that may be downloaded from a global computer network; services of assembling, maintenance and servicing of computer software; updating and maintenance of computer software, including touch and voice driven computer software for electronic digital mobile devices; hosting a web site featuring user generated content; providing programming in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks.

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.

Preliminary remark

The applicant puts forward that the opponent is a wholesale company offering toys of other brands through independent retail and department stores and uses its own trademarks merely in relation to its webshop, giftcards and spiral notebooks. Therefore the ‘FUN’ trademarks are used to represent a brand for a wholesale company and as such the opponent does not use them for its own goods and services. However, the actual use of the competing services on the market is irrelevant and therefore the applicant’s arguments on that point must be rejected. In the framework of opposition proceedings the Opposition Division can only take into account the goods or services for which both marks are registered and not the goods or services for which the marks are actually used (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71, 29/03/2017, T-389/15; J & Joy SA v EUIPO; EU:T:2017:231, § 30-35, 29/03/2017, T 387/15; J & Joy SA v EUIPO; EU:T:2017:233, § 30-35, 29/03/2017, T-388/15 and J & Joy SA v EUIPO, EU:T:2017:232, § 30-35).

Contested goods in Class 9

The contested computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; downloadable computer game software via a global computer network and wireless POS (point of service) devices; downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games; software for electronic apparatus using its interactive and multimedia functions; interactive multimedia software programs; software for enabling video computer and on-line games to be run on multiple platforms; software for playing video, computer and on-line games are all included in the category of gaming software/programs. They are complementary to the opponent’s games in Class 28 inasmuch as the software in Class 9 is essential for the functioning of the games. Furthermore, the nature and purpose of this software is the same as that of games. Consequently, they target the same consumers and they may have the same distribution and manufacturing channels. Therefore, they are similar.

The contested computer games; video and audio games in Class 9 are amusement apparatus adapted for use with television receivers. The opponent’s games in Class 28 is a broad category of goods that includes, for example, toy computers and interactive games. Therefore, both categories of goods share the same purpose, and target the same public interested in playing games. In that sense, they can also substitute each other and, thus, are in competition with each other. Moreover, they are sold in the same establishments and can be produced by the same undertakings. Therefore, these goods are highly similar.

However, the remaining contested goods in Class 9 namely application development tool programs for personal computers and/or mobile digital electronic devices and/or hand held computers and/or mobile telephones; computer software featuring music and motion picture soundtrack, animated cartoons on any medium; downloadable software featuring touch and voice control; downloadable software for developing, designing, modifying, recording and customizing sound and speech; computer programs including one or more following features: character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity; speech recognition software; touch and voice driven interactive software do not have such links with the opponent’s goods and services. Since this software is not used for playing games, it is neither complementary to, nor has the same purpose as the opponent’s games. As a consequence, they also do not coincide in their common origin or distribution channels. They clearly have no link with the opponent’s goods in Class 16 and the services in Class 35 either which have nothing to do with playing games and therefore, do not share any of the other Canon criteria either. The mere fact that some of the services in Class 35 have the commercialisation of goods in Class 28 as their subject does not make them similar, since the consumers would not expect the business consultants or advertising agencies that offer these services to also manufacture the games. Therefore, they are dissimilar.

Contested goods in Class 28

The contested toys, games and playthings; plush toys; computer game character dolls; interactive audio visual games on computer hardware platforms (not for use with television receivers), handheld computer games equipment, home video game machines and hand-held video game machines; talking toys; toy figures; talking toy figures; playthings featuring computer game characters are included in the broad category of, or overlap with, the opponent’s games and playthings. Therefore, they are identical.

Contested services in Class 41

The contested entertainment in the nature of competitions in the field of computer and video games; entertainment provided via mobile or cellular telephone and/or other wireless devices; entertainment provided via the Internet or other computer network; on-line gaming services; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; providing downloadable audio and video files in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games; providing touch and voice driven games for electronic digital mobile devices; providing games for use on mobile devices; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing online entertainment in the nature of multiplayer tournaments are or can include ‘online gaming services’ which have some connections with the opponent's games in Class 28. These goods and services may be of a complementary nature to the extent that the gaming services require the use of the opponent’s goods in order to make use of them and, therefore, their use is so interconnected that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Although they differ in nature, these goods and services have the same purpose of amusement and they target the same consumers. They can have the same origins and distribution channels, since it is not unlikely that producers will manufacture and sell a wide range of amusement products and provide entertainment services. Therefore, the opponent's goods and the contested services are similar to a low degree (Decision of the Boards of Appeal of 08/02/2016 - R 2302/2011-2 - OutDoor (fig.) / OUTDOOR PRO et al., § 58).

However, the contested production and distribution of short video or audio recordings; providing a web site featuring musical performances, musical videos, film clips, photographs and other multimedia entertainment; providing a web site featuring video and audio recordings made within computer games; providing continuing shows distributed over electronic media, including global and local area computer networks; providing news and information in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks; the creation, production and distribution of films, videos, animation, and computer generated images are not complimentary to the opponent’s games, since the latter are not indispensable for rendering the services. The services applied for have a different nature, purpose and method of use, being aimed at providing information, advice or consultation or the production of films, videos, animation, and computer generated images, while the opponent’s games are used for playing purposes. Their distribution channels and providers are different, even when the contested services are related to gaming. They clearly have no link with the opponent’s goods in Class 16 and the services in Class 35 either, which serve completely different purposes and, therefore, do not share any of the other Canon criteria either. Therefore, they are dissimilar to all the opponent’s goods and services.

Contested services in class 42

The same line of reasoning applies when comparing the contested development, consultancy on and designing of computer software; computer programming; computer systems analysis; conversion of data from physical to electronic media; design of computer systems; development, consultancy on and designing of touch and voice driven computer software for electronic digital mobile devices; engineering and expert services in the field of computer science; providing computer software that may be downloaded from a global computer network; services of assembling, maintenance and servicing of computer software; updating and maintenance of computer software, including touch and voice driven computer software for electronic digital mobile devices; hosting a web site featuring user generated content; providing programming in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks with all the goods and services of the earlier right. The mere fact hat the contested IT services concern the development and maintenance of software that may be used for gaming purposes does not make them similar to the opponent’s games. They are not complementary in the sense that the opponent’s goods need the applicant’s services to function or vice versa. Moreover, it is not common on the market that manufacturers of games and playthings provide general IT services. The same is also true with respect to the other earlier goods and services. Therefore, they are dissimilar.

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 and services found to be identical or similar to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

	Fun Network
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 applicant argues that the word ‘fun’ is not distinctive since there are 896 different trademarks consisting of the word ‘fun’ in the Benelux trademarks register only and the same word has plenty of different meanings as noun, adjective or verb according to a dictionary search. In support of this claim the applicant submitted excerpts from the Benelux trademarks register and an extract from an English dictionary.

However, these arguments must be set aside. The existence of several trade mark registrations is not per se particularly conclusive as regard the word’s distinctive character, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘fun’.

As regards the reference to the various meanings of the word ‘fun’, it is true that the word that both marks have in common is of a limited distinctiveness for the English-speaking part of the public, since they will perceive it as a clear reference to the purpose of the goods and services in question, namely to have fun. On the other hand, for the rest of the EU-public, that does not speak English this word has no meaning in relation to the goods and services and, therefore, serves as an indicator of origin. Therefore, also the applicant’s claim that the common element ‘fun’ is non-distinctive cannot be upheld as this is only true for part of the public.

In this respect it must be pointed out that llikelihood of confusion must not exist in all Member States and in all linguistic areas of the European Union. It is a result of the unitary character of the European Union trade mark, laid down in Article 1(2) EUTMR, that an earlier European Union trade mark has identical protection in all Member States. Earlier European Union trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Union. ‘A part’ of the European Union can consist of only one Member State (14/12/2006, T‑81/03, T‑82/03 and T‑103/03, ‘Venado’, EU:T:2006:397, § 76 and 83).

Considering that for the non-English speaking part of the public the common word ‘fun’ is distinctive, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

Having said this, the opponent’s claim that the word ‘network’ of the contested sign has a low degree of distinctive character must be dismissed. Considering that the goods and services target the general public and that the word network is very different in other languages, e.g. ‘red’ in Spanish, ‘sieć’ in Polish and ‘réseau’ in French, it cannot be assumed that the average consumer of online games (software) services is aware of the meaning of this word. Therefore, also this word must be considered distinctive.

Visually, it must be observed that the signs coincide in the distinctive verbal element ‘Fun’ which is the sole verbal element of the earlier mark and the first distinctive verbal element of the contested sign. The marks differ in the second word of the contested sign, ‘Network’ and the earlier marks’ figurative aspects. However, the figurative element has less impact than the verbal element ‘Fun’. Indeed, it should be borne in mind that, where a trade mark is composed of verbal and figurative elements, the former have, in principle, more impact than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark. This applies all the more so where, as in this case, the figurative element consisting of a small figure with a crown on its head is not bigger and, therefore, not more eye-catching than the verbal element. Moreover, it merely seems to refer to characteristics of the goods and services, e.g. a computer game character. Also the other figurative aspects, consisting of the verbal elements’ typeface and the orange background are not memorable, but will merely draw the consumers’ attention to the common verbal element ‘Fun’. Therefore, the consumers will rather focus on the verbal element and notice that the word ‘Fun’ forms the beginning of the contested mark which is generally the part that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign (25.03.2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). Hence, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the single syllable word ‘FUN’ and differ in the pronunciation of the two syllable word ‘NET-WORK’ in second position in the contested sign. Although this difference will not go unnoticed, the common word ‘FUN’ is audible as a separate element within this mark. Moreover, since the word ‘NETWORK’ comes after the word ‘FUN’, it will not receive the consumer’s immediate attention, which will fall on the mark’s first word ‘FUN’. Therefore, the pronunciation of ‘NETWORK’ cannot prevent the finding of an average degree of phonetic similarity.

Conceptually, as mentioned above the non-English speaking part of the public will perceive the marks’ verbal elements as meaningless. They will merely perceive the figurative element in the earlier mark as meaningful and to that extent the marks are conceptually not similar. It must be noted, however, that this figurative element has little impact conceptually, due to its limited distinctiveness. The small figure will be perceived as a reference to a characteristic of the goods and services, e.g. a computer game character, and the crown on its head as a laudatory symbol.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent mentioned the following (links) in its observations:

• The opponent has 30 stores operating under the ‘FUN’ brand. https://www.fun.be/winkels and one store operating under the ‘FUNDOO’ brand: http://www.fundoo.be/showroom.

• They furthermore have extensive online web stores: https://www.fun.be and http://www.fundoo.be.

• The opponent advertises intensively using advertising brochures (which can be consulted on https://www.fun.be/folders) and tv, radio and social media commercials:

  • https://www.youtube.com/watch?v=fWhp174kkGU

  • https://www.youtube.com/watch?v=RaQmYbmtsP0

  • https://www.youtube.com/watch?v=wLDcDbl7NuQ

  • https://www.youtube.com/watch?v=FEMfogAzmM4

  • https://www.youtube.com/watch?v=e_l1uJfSyfY

  • https://www.youtube.com/watch?v=fMH-dijp5T4

• They regularly feature in national news publications, e.g.:

  • Het Nieuwsblad, 2 December 2017, http://www.nieuwsblad.be/cnt/dmf20171201_03218687

  • De Tijd, 6 July 2017, www.tijd.be/ondernemen/retail/Speelgoedketen-Fun-verkleint-verlies/9911573

  • Het Nieuwsblad, 21 September 2016, https://www.fun.be/media/HNB_Dovy_speelgoedkeuken_20160921.pdf

  • Het Nieuwsblad, 18 November 2015, http://www.nieuwsblad.be/cnt/dmf20151117_01975312

  • Kanaal Z, 9 April 2015, https://www.youtube.com/watch?v=BmSEBZYRVHA

  • Gazet Van Antwerpen, 11 April 2015, https://www.fun.be/media/fun/indepers/Lokeren_GVAenHN.pdf

  • Het Nieuwsblad, 15 June 2011, http://www.nieuwsblad.be/cnt/dmf20110615_062

  • Het Nieuwsblad, 09 March 2011, http://www.nieuwsblad.be/cnt/blboz_20110309_001 Het Nieuwsblad, 16 June 2011, http://www.nieuwsblad.be/cnt/183bffa1 Het Laatste Nieuws, 2 March 2010, https://www.hln.be/geld/economie/fun-investeert-3- miljoen-in-distributiecentrum-oostkamp~afa2ba3c

  • De Standaard 24 January 2004, http://www.standaard.be/cnt/gmf3f0rv (mentioning Fun as the second biggest toy retailer).

• Opponent also has an extensive reach on Facebook (https://www.facebook.com/funbelgium/): 19.335 likes.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use as the Opposition Division is unable to effectively gauge the degree of exposure of the mark and any consequent recognition among relevant purchasers.

Firstly, it must be observed that the opponent merely listed several links to websites and newspaper articles. However, the opponent did not submit any print outs thereof.

In this respect it must be noted that the onus of providing evidence of enhanced distinctiveness is on the opponent and not on the Office. Mere web links do neither provide the Office with sufficient indications about the degree of awareness of the mark, nor with any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market. It is not up to the Office to go to the linked websites and make the case for the opponent. Moreover, web links are an unstable form of evidence. Quite often links do not work, for example, in case the original web page has been removed. Therefore, the submission of a mere web link where the Office itself must find further information is insufficient

Nevertheless, for the sake of completeness the Opposition Division examined the links and would like to point out that the evidence is not sufficient anyhow.

The reason is that the part of the links that leads to a webpage – some lead to a web page that cannot be found – mostly does not contain any references to the trade mark ‘Fun’ and insofar as they do, the word ‘Fun’ is used as a company name. For example, the information that can be found in the news paper articles namely that 1) the shop chain ‘Fun’ is selling certain national products, 2) is saving on costs and no longer merely selling toys in order to minimize its losses, 3) is no longer selling products of a particular toy supplier, 4) that its CEO is held responsible for the sale of hazardous toys, 5) that one of its shops is restyled or 6) that it collects used toys for a good cause, does not show any recognition among the public of the mark in relation to the goods in Classes 16 and 28 or the services in Class 35 for which the mark is registered, but rather use of the company name ‘Fun’ for a shop chain selling toys. The same is true for the rest of the evidence, that is, the references to the company’s websites, online shop, brochures, Facebook site and commercials. Morever, none of the links lead to pages where the mark is used in the form as registered.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

This means that 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eleventh recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528§ 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found partly identical, partly similar to various degrees and partly dissimilar. The public’s degree of attentiveness is average. The marks in dispute have been found to be visually and aurally similar to an average degree while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them.

Indeed, the only meaningful elements, i.e. the figurative element in the earlier mark, will not have much of an impact on the overall perception of the signs, since it will be perceived as a reference to a characteristic of the goods and services and not as an indicator of origin or element that could distinguish the signs conceptually. Hence, that difference can certainly not counteract the visual and aural similarity.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection the Opposition Division concludes that, the differences between the signs in question are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public, namely the part that does not speak English, could believe, for instance, that the goods and services designated by the conflicting signs distinguish different product/service lines coming from the same or related undertakings.

Having regard to the principle of interdependence, according to which a higher degree of similarity between the marks counteracts a lower degree of similarity between the conflicting goods and services and vice versa, it is reasonable to find that this also applies to the services found to be similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 512 317. 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 various degrees to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

The opponent has also based its opposition on the following Benelux trade mark registration No 710 823 of the figurative mark . Since this mark is practically identical to the one which has been compared and – merely differing in the colour of the oval background – and covers the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

This finding would still be valid even if even if the opponent could prove that it has a family of marks since this can merely enhance the similarity between the signs but not that of the goods and services. Therefore, this claim does not need to be assessed.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and/or the goods and services are obviously not identical.

Therefore, the Opposition Division will now proceed with the examination of the opposition on the grounds of Article 8(5) EUTMR in relation to the goods and services found to be dissimilar.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier European Union trade mark registration No 2 512 317 of the figurative mark , has already been examined above under the grounds of Article 8(1)(b) EUTMR. The same assessment applies to the earlier Benelux trade mark registration No 710 823 of the figurative mark which merely differs in the colour of its oval background. Further reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and 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. 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

Anna BAKALARZ

Adriana VAN ROODEN

Katarzyna ZANIECKA

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.