OPPOSITION No B 2 177 247
Veikkaus Oy, Karhunkierros 4, 01009 Veikkaus, Republic of Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100, Helsinki, Republic of Finland (professional representative)
a g a i n s t
Leineweber GmbH & Co. KG, Wittekindstr. 16-18, 32051 Herford, Germany (applicant), represented by Ruttensperger Lachnit Trossin Gomoll Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Arnulfstrasse 58, 80335 München, Germany (professional representative).
On 18/05/2016, 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 European Union trade mark application No
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewrites and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
The contested goods and services are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or images; Phonograph records; Compact discs, DVDs and other digital recording media; Computers; Computer software; Portable telephones.
Class 16: Printed matter; Catalogues; Periodicals; Books; Calendars; Address books; Note books; Stationery; Postcards; Booklets; Writing paper; Pamphlets; Tag labels; Placards of paper or cardboard; Prospectuses; Photographs; Patterns for making clothes; Paper; Cardboard; Adhesives stickers; Embroidery designs [patterns]; Tailors’ chalk; Pads (stationery); Boxes of cardboard or paper; Writing instruments; Cards/passes.
Class 25: Clothing; Clothes for sports; Articles of clothing for leisure wear; Cyclists’ clothing; Clothing of imitations of leather; Clothing of leather; Brassieres; Dresses; Footwear; Boots for sports; Gloves (clothing); Shirts; Blouses; Jackets [clothing]; Sports jackets; Windbreakers; Blazers; Trousers; Shorts; Pockets for clothing; Ready-made clothing; Underwear; Body linen (garments); Dressing gowns; Pyjamas; Sleep masks; Swimsuits; Bathing trunks; Bath robes; Bathing caps; Bath sandals; Bath slippers; Suspenders; Stockings; Collar protectors; head wraps; Scarfs; Pocket squares; Neckties; Ascots; Coats; Pelisses; Pullovers; Slipovers; Vests; Furs [clothing]; Waterproof clothing; Skirts; Sandals; Saris; Collar protectors; Veils [clothing]; Breeches for wear; Ski boots; Underpants; Socks; Sock suspenders; Boots; Headbands [clothing]; Shawls; Fur stoles; Sweaters; Knitwear [clothing]; Tee-shirts; Polos; Belts; Headgear for wear; Caps [headwear]; Hats; Suits; Belts of leather.
Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Skis; Snowboards; Golf clubs; Tennis rackets; Ski pole shafts; Ski bindings; Stationary exercise bicycles; Games; Parlor games; Playing cards; Balls for games; Playing balls; Toys; Golf bags; Golf gloves; Decorations for Christmas trees.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For example:
Apparatus for recording, transmission or reproduction of sound or images is identically contained in Class 9 of both lists.
Printed matter is identically contained in Class 16 of both lists.
Clothing is identically contained in Class 25 of both lists.
Games and playthings are identically contained in Class 28 of both lists.
Education; providing of training; entertainment; sporting and cultural activities are identically contained in Class 41 of both lists.
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 and services were identical to those of the earlier mark.
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, some of the goods and services assumed to be identical are directed at the public at large and some are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average, depending on the nature, price and frequency of purchase of the goods.
Earlier trade mark
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 depicting a stylised letter ‘X’ with sharp points. The letter is depicted in different shades of grey (from light grey on the left to dark grey on the right), creating an impression of three-dimensionality.
The contested sign is a figurative mark consisting of three curved lines that are at their thickest in the centre of the mark and gradually become thinner as they extend outwards, ending in a point. The line that extends from the bottom right to the top left is met in the centre by another line that extends upwards to the top right-hand direction from the bottom left. There is a gap at the intersection point and another short curved line is depicted extending upwards to the top right. How this sign will be perceived is open to interpretation. It could be seen as a very simple stylised sketch of a figure in motion, viewed from the side, where the shorter line forms the head pointing to the right and the other lines form the arms and upper body. It could even be seen as depicting the upper body of a swimmer doing the front crawl.
Neither of the signs has any elements that could be considered clearly more distinctive or more dominant (visually eye‑catching) than other elements.
Visually, the earlier mark, as stated above, may be perceived as a stylised ‘X’. The contested sign is likely be perceived, by the majority of the relevant public, as a very simple stylised sketch of a figure in motion. It cannot be excluded that a small part of the relevant public will perceive the contested sign as a stylised letter ‘X’. In case of both signs could be perceived as a letter ‘X’, it should be noted that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
In the present case, for the majority of the public, the signs do not visually coincide in any element, and, therefore, it is concluded that the signs are not visually similar for the majority of the public. For a small part of the public, the part that perceives the contested sign as a letter ‘X’, the signs are visually similar to a low degree.
Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative for the majority of the public, it is not possible to compare them aurally.
For the small part of the public that perceives the contested sign as a letter ‘X’, the signs are aurally identical, irrespective of the different pronunciation rules in different parts of the relevant territory, since the pronunciation of the signs coincides in the sound of the letter ‘X’, present, for this small part of the public, identically in both signs.
Conceptually, while the majority of the public in the relevant territory will perceive the earlier mark as a letter ‘X’, the other sign will lack any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the small part of the public in the relevant territory that will perceive both marks as depictions of the letter ‘X’, the signs are conceptually identical.
As the signs have been found similar 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 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.
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, and the degree of similarity between the marks and between the goods or services identified (recital 8 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).
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).
The goods and services are assumed to be identical and they target the public at large and business customers with specific professional knowledge or expertise; the degree of attention may vary from average to higher than average.
As stated above, the contested sign will be perceived by the majority of the public as a purely figurative sign. For the part of the public that considers this sign purely figurative, the signs have no elements in common and, therefore, no likelihood of confusion can be established.
For the small part of the public that perceives the contested sign as a letter ‘X’, the signs are visually similar to a low degree and aurally and conceptually identical.
The Court has made it clear that the fact that two trade marks consisting of the same letter are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of likelihood of confusion. In such cases, it is only when the later mark conveys a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (10/05/2011, T‑187/10, G, EU:T:2011:202, § 60).
Taking this into account, the way in which the letter is depicted in each sign is determinant, and in the present case the differences will be easily perceived. The signs are depicted in very different ways. The contested sign depicts a two-dimensional figure, and gives an impression of horizontality. The consumer will perceive wavy lines and a gap in one of the lines. The ‘X’ of the earlier mark, however, is thicker, arranged vertically and creates an impression of three-dimensionality. Therefore, the Opposition Division concludes that the two signs create considerably different overall impressions.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected. The differences between the signs are therefore sufficient to exclude any likelihood of confusion on the part of the public, including the risk that consumers might believe that the goods come from the same undertaking or from economically linked undertakings.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.