OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 109 588
Optimus-Comunicações S.A., Lugar do Espido, Via Norte, 4470-901 Maia, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14,1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Brady Corporation Ltd., Wildmere Industrial Estate, Banbury, Oxfordshire 0X16 3JU, United Kingdom (applicant), represented by Eversheds LLP, Eversheds House 70 Great Bridgewater Street, Manchester M1 5ES, United Kingdom (professional representative).
On 07/03/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of Community trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods and services
The goods on which the opposition is based are the following:
Class 16: Publications, printed matter, books, magazines and manuals.
The contested goods and services are the following:
Class 16: Printed matter, wall charts, posters, labels (not of textile), non-luminous signs of paper, cardboard or plastics sheet, and instructional material; all included in Class 16.
Class 35: The retail of printed matter, posters, labels (not of textile).
Some of the contested goods are identical to goods on which the opposition is based and some of the contested services are similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark and all the contested services were similar to the goods on which the opposition is based.
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 assumed to be identical or similar are directed mainly at the public at large. However, some of the goods and services at issue are specialised goods and services (e.g. non-luminous signs of paper) that are directed, essentially, at business customers with specific professional knowledge or expertise. The degree of attention is considered average.
Earlier trade mark
The relevant territory is Portugal.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
Both signs are word marks. The earlier mark contains the verbal elements ‘OPTIMUS’ and ‘TAG’.
The contested sign consists of the verbal element ‘SCAFFTAG’.
The element ‘OPTIMUS’ in the earlier sign is a Latin word and refers to ‘one of the best, noble’. Although this word does not exist as such in Portuguese, a part of the relevant public may associate it with the superlative of the word ‘good’, that is, ‘very good, excellent’, on account of its similarity to the equivalent Portuguese word, ‘óptimo’ (information extracted from Infopédia Dicionário Porto Editora at http://www.infopedia.pt/). Therefore, for this part of the public, the distinctiveness of this element is weak, as it relates to the quality of the relevant goods. For the part of the public that does not associate the element ‘OPTIMUS’ with any meaning, the distinctiveness of this element is normal.
The verbal element ‘TAG’ of the earlier mark has no semantic connotation for the public in the relevant territory. Therefore, its distinctiveness is normal in relation to the goods in question.
As regards the contested sign, it is composed of the sole verbal element ‘SCAFFTAG’, which has no meaning for the relevant public and with regard to the goods and services at issue. Therefore, its distinctiveness is considered normal.
The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘TAG’. However, they differ in all other aspects, specifically in the additional word ‘OPTIMUS’ of the earlier mark, the additional letters ‘SCAFF’ of the contested sign and the lengths and structures of the signs – the earlier mark has two words totalling ten letters and the contested sign has one word of eight letters.
Therefore, the signs are similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TAG’, present identically in both signs. The pronunciation differs in the sound of the letters ‘O’, P’, ‘T’, ‘I’, ‘M’, ‘U’, ‘S’ of the earlier mark and ‘S’, ‘C’, ‘A’, ‘F’, ‘F’, of the contested sign. They also clearly differ in their aural lengths and structures, as the earlier mark is pronounced as four syllables (OP/TI/MUS/TAG), whereas the contested sign is pronounced as only two syllables (SCAFF/TAG).
Therefore, the signs are similar to a low degree.
Conceptually, as explained above, the words ‘TAG’ of the earlier mark and ‘SCAFFTAG’ of the contested sign are meaningless and they will not be associated with any concept by the relevant public. As seen above, their distinctiveness in relation to the goods and services in question is normal.
The verbal element ‘OPTIMUS’ of the earlier sign will be associated by part of the relevant public with the meaning ‘very good, excellent’, and, thus, its distinctiveness is weak for the relevant goods. Therefore, for this part of the public, as the contested sign will not be associated with any concept, the signs are not conceptually similar.
For the remaining part of the public, neither of the signs will convey any meaning. Therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar to a certain degree in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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, for a part of the relevant public, of a weak element in the mark as stated above in section c) of this decision.
Global assessment, other arguments and conclusion
The goods and services have been assumed to be identical or similar. Similarities and dissimilarities between the signs have been established.
The signs are visually and aurally similar only to a low degree, insofar as ‘TAG’, which is the second word of the earlier mark, is included in the contested sign, ‘SCAFFTAG’.
However, contrary to the opponent’s view, the signs also have obvious differences that offset these similarities. The earlier mark is composed of two words, ‘OPTIMUS TAG’, whereas the contested sign consists of the eight-letter word ‘SCAFFTAG’; the differing letters, ‘SCAFF’, create a different overall impression and clearly differentiate the marks.
Moreover, the letters ‘SCAFF’ are placed at the beginning of the contested sign, which is of particular importance given that, normally, consumers’ attention is focused on the beginning of a sign. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
The pronunciation of the beginnings of the signs is also noticeably different, as are their overall structures and rhythms (i.e. four syllables versus two syllables); these aspects are also important with regard to the overall impressions conveyed by the marks. These differences are sufficient to justify the conclusion that consumers are unlikely to confuse the signs in question, even in relation to identical goods or similar services.
Furthermore, it is established case law that consumers are not in the habit of artificially dissecting a trade mark and analysing its individual parts (and even less so if those parts have no meaning); rather, they see and perceive the mark in its entirety. In view of this, there is no reason why Portuguese consumers would mentally break down the contested sign, ‘SCAFFTAG’, into the elements ‘SCAFF’ and ‘TAG’, as neither of these elements has a meaning for them; consequently, consumers will simply perceive the contested sign as a whole as an invented/fanciful term.
A complex trade mark cannot be regarded as being similar to another trade mark which is similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case only where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 33).
As stated above, neither mark has any element that could be considered more dominant than other elements. The sequence of letters ‘TAG’, which the signs have in common, does not form an independent element in the contested sign and, as explained above, the public will not artificially dissect the mark and thus perceive this element separately. Furthermore, the differences resulting from the first verbal element, ‘OPTIMUS’, of the earlier mark and the first five letters, ‘SCAFF’, of the contested sign are very obvious.
Therefore, based on a global assessment of all the relevant factors, it must be concluded that the differing elements of the marks are clearly perceptible and safely counteract the similarities between the signs, resulting in different overall impressions of the marks.
Considering all the above, even assuming that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.