OPPOSITION No B 2 140 450

Heinrich Bauer Verlag KG, Burchardstraße 11, 20095 Hamburg, Germany (opponent), represented by Dla Piper Uk LLp, Jungfernstieg 7, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Jinsong Chen, Hansavägen 4, 29831 Tollarp, Sweden (applicant).

On 11/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 140 450 is partially upheld, namely for the following contested goods:

Class 9: Teaching apparatus and instruments; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software.

2. European Union trade mark application No 11 428 604 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 428 604. The opposition is based on the following registrations:

European Union registration No 10 065 126

European Union registration No 10 065 019

European Union registration No 5 529 425 ENJOY

International Registration designating the EU, No 1 100 044

The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union registration No 10 065 126 .

1. The goods and services

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

Class 9 Computer games (Programs for -) and Mobile terminals; Video games adapted for use with external screens or monitors only; Magnetic cards and chip cards, in particular in the form of customer cards and bonus cards (included in class 9); Programs; Electronic games; Video and audio goods (included in class 9); Screen savers; Spectacles, sunglasses; Electric entertainment apparatus (included in class 9); Electronic publications (downloadable); Computer programs (recorded), computer programs (downloadable); Electric applications, application software for mobile terminals.

Class 16 Printed matter; Customer cards and bonus cards of paper or plastic.

Class 35 Advertising and marketing, in particular by means of customer loyalty and bonus schemes; development, Coordination and administration of customer loyalty and bonus schemes; Issuing of data carriers for the booking of customer loyalty and bonus transactions, in particular customer cards and bonus cards; Attracting customers and customer care by means of customer loyalty and bonus schemes; Sales promotion and other activities to promote sales by creating and providing customer loyalty and bonus schemes, including the issuing of customer cards (bonus schemes);Award ceremonies for advertising purposes; Publication of printed matter (including in electronic form), for advertising purposes; Grouping together, Updating and maintenance of data in computer databases.

Class 38 Telecommunications; Broadcasting and transmission of information via wireless or cable networks; Broadcasting and transmission of text, messages, information, sound, images and data; Providing access to search engines and portals for accessing data and information via global networks; Forums [chat rooms] for social networking; Electronic exchange of messages via chat lines, chat rooms and Internet forums; Interactive forums; Providing access to databases for information purposes, rental and arranging access to databases, in particular online databases; Electronic transmission of messages, information and data in the field of customer loyalty and bonus schemes; Providing access to computer databases and computer networks; Providing access time to websites reproducing multimedia materials; Providing of digital music, video and other multimedia works by means of telecommunications; Broadcasting and transmission of information by electronic means; Electronic transmission of real-time and downloadable audio and video files by computer and via other communications networks; Providing of videos, recorded videos containing music and entertainment, films, messages, games, sport, cultural events and entertainment-related programmes of all kinds, via global computer networks; Wireless telecommunications, in particular transmission of data, information, messages, news alerts, webcasts, images, logos and mobile phones, PDAs, pocket PCs and wireless communications devices; Providing telecommunications capabilities and access to web-based computer networks and databases for downloading audio and video data, films, radio and television programmes, webcasts, images, information and news, in particular as video and audio podcasts; Dissemination of a webzine via the Internet; Electronic transmission of downloadable video and audio podcasts and vodcasts via the Internet; The aforesaid services solely in connection with the publication of printed matter bearing the magazine logo "JOY".

Class 41 Education; Providing of training; Entertainment; Sporting and cultural activities; Organisation of competitions (education or entertainment), Award ceremonies (entertainment); Issuing prizes for cultural, sporting or educational services; Entertainment provided via the internet; Providing on-line electronic publications, not downloadable, not downladable, Including in electronic databases with integration options for users; Entertainment, namely, providing online games via global computer networks (Internet); Publishing printed matter (except publicity texts), Also in electronic form, Also on the Internet; All the aforesaid services solely in connection with the publication of printed matter bearing the magazine logo "JOY".

The contested goods are the following:

Class 9 Scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 25 Clothing, footwear, headgear.

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 ‘in particular’, 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 (see the judgment of 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 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

Contested goods in class 9

The contested scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments have no relevant points of contact with the earlier goods and services, such as computer games and programs and video and audio goods in Class 9 and telecommunications services in class 38 and entertainment in class 41. The goods have a different nature, a different purpose and different method of use. They are not complementary, nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to all earlier goods and services.

The contested teaching apparatus and instruments are identical to the earlier video and audio goods as these goods overlap because they can be used for educational purposes.

The contested Magnetic data carriers and other digital recording media overlap with the opponent’s Magnetic cards and chip cards, in particular in the form of customer cards and bonus cards (included in class 9). They are all data carriers meant to store, carry and reproduce data. Therefore, they are identical.

The contested recording discs; Compact discs, DVDs are disc shaped data carriers and are able to store and reproduce sound and images. They are included in the opponent’s broader category video and audio goods. Therefore these goods under comparison are identical.

The contested Mechanisms for coin-operated apparatus are parts of vending machines or other machines that are activated by inserting a coin. The contested have no relevant points of contact with the earlier goods and services, such as computer games and programs and video and audio goods in Class 9 and telecommunications services in class 38 and entertainment in class 41. The goods have a different nature, a different purpose and different method of use. They are not complementary, nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to all earlier goods and services

The contested Cash registers are mechanical or electronic devices for calculating and recording sales transactions, with a cash drawer attached for storing cash. Modern cash registers operate with the help of software such as the opponent’s application software for mobile terminals. They also can accept and process payments done with coded cards such as the opponent’s Magnetic cards and chip cards. The goods under comparison are complimentary, are directed at the same customer and distributed through the same trade channels. Therefore, these goods are similar.

The contested calculating machines are devices capable of performing complex mathematical operations, they are designed to process software data such as the opponent’s application software for mobile terminals. These goods under comparison are therefore complimentary, can be produced and distributed by the same company and are targeted at the same end consumer. Therefore, these goods are similar.

The contested data processing equipment, computers process software data and are capable of producing sound and images, including for entertainment purposes. They overlap with the opponent’s Video and audio goods (included in class 9). These goods are therefore identical.

The contested Computer software is identically contained (including synonyms) in the list of the earlier goods.

The contested Fire-extinguishing apparatus are devices used to extinguish or control fires and have no relevant points of contact with any of the earlier goods and services. The goods have a different nature, a different purpose and different method of use. They are not complementary, nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to all earlier goods and services.

Contested goods in class 18

The contested Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery have no relevant points of contact with any of the earlier goods and services. The goods have a different nature, a different purpose and different method of use. They are not complementary, nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to all earlier goods and services.

Contested goods in class 25

For the same reasons as mentioned above with the contested goods in class 18, the contested Clothing, footwear, headgear are also dissimilar to all earlier goods and services.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise for more specialised goods. The degree of attention will therefore vary between average and higher than average depending on their particularities, price, the frequency of their purchase, etc.).

3. The signs

	iEnjoy
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 with the letters i-JOY depicted in a grey slightly stylised bold typeface.

The contested sign is a word mark.

The element ‘i-‘ in both signs will be associated with ‘internet-’, widely used in today’s language as referring to something produced or provided or functioning via the world wide web as may be the case with the goods in conflict. It may also be associated with the pronoun for referring to self.

For the earlier sign the second element JOY and for the contested application the second element ENJOY have no meaning for the relevant, non-English speaking public (such as the Spanish, Portuguese and Italian public). For the English speaking public the word JOY means A feeling of great pleasure and happiness and the word ENJOY means take delight or pleasure in an activity or occasion (source: Oxford English Dictionary). For the English speaking public the elements JOY and ENJOY share an allusive reference to something of pleasure. However, neither of these definitions is meaningful in relation to the goods and therefore, these elements are distinctive. The ‘i-‘ is non-distinctive in relation to the IT goods in question, since it indicates that they work via or in connection with the internet. Therefore the distinctiveness of the element ‘i‑‘ is lower than that of the elements JOY and ENJOY.

None of the marks have elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letter ‘i’ and the last three letters ‘JOY’. They differ in the presence of the hyphen of the earlier mark and the letters EN in the contested application. They also differ in the stylised typeface of the earlier mark where the contested application is a word only mark.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). They have the same beginnings: ‘i’ and endings ‘JOY’ which gives them an overall similar impression.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the first letter ‘I’ and the syllable JOY. The pronunciation differs in the sound of the syllable ‘EN’ of the contested application, which has no counterpart in the contested mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, for the English speaking public the signs are similar to a high degree because they both refer to the internet or a first person singular pronoun and pleasure and for the non-English speaking part they are similar to a low degree since they both refer to the a characteristic of the goods namely that they work via or in connection with the internet.

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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. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The compared goods are identical, similar and not similar.

The letters in the earlier mark are encompassed entirely in the contested sign. The only difference is the letter combination EN in the contested application and the stylised typeface of the earlier mark. These differences are insufficient to exclude a likelihood of confusion. Although it was concluded that ‘I’ is non-distinctive and that the public may not pay too much attention to this element the overall impression of similarity overcomes this difference. The visual similarity is reinforced by a considerable aural similarity between the signs. In the present case, the relevant public for the marks at issue will be influenced decisively by the presence of the combination i-JOY which is repeated in the same order in the combination i-En-joy of the contested application.

Account is taken of the fact 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).

It is therefore considered that the established similarities between the signs are sufficient to cause the relevant public to believe that the conflicting goods, found to be identical and similar, could come from the same undertaking or economically-linked undertakings due to the close similarity of the signs.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trademarks:

European Union registration No 10 065 019

European Union registration No 5 529 425 ENJOY

International Registration designating the EU, No 1 100 044

The European Union registration No 5 529 425 ENJOY is even more similar to the contested application but covers a same or narrower scope of services from which the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

European Union registration No 10 065 019 covers the same scope of goods and services as the already examined earlier sign. Therefore the outcome cannot be different with respect to goods for which the opposition has already been rejected.

International Registration designating the EU, No 1 100 044 is less similar to the contested application. This is because it only consists of the three-letter word JOY in a stylised typeface and is sufficiently removed from the contested application’s six-letter word ‘eEnjoy’ where the syllable ‘joy’ does not stand out as an independent and distinctive element. Moreover, it covers the same or a narrower scope of goods and services. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Adriana VAN ROODEN

Steven Charles STAM

Janja FELC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.