CANCELLATION No 10 686 C (INVALIDITY)
Entertainment One UK Limited, 45 Warren Street, London W1T 6AG, United Kingdom (applicant), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10a, 80331 Munich, Germany (professional representative)
a g a i n s t
Pan Xianhao, Via Principe Amedeo, 180, 00185 Rome, Italy (EUTM proprietor).
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs.
The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 775 509. The application is based on European Union trade mark No 10 186 261 and a copyright protected by the laws of the United Kingdom for the sign . The applicant invoked Article 53(1)(a) EUTMR in conjunction with Articles 8(1)(b) and 53(2)(c) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that it owns copyrights to the Peppa Pig characters, which were registered in the United States and China and are valid for 70 and 50 years, respectively. These figures were created in May 2000, and the first broadcast of the programme ‘Peppa Pig’ took place in 2004. In support of its observations, the applicant filed several documents, such as two registration certificates, two certificates attesting to changes of names, licence and development agreements, and an affidavit signed by Nicholas Gawne, Finance Director of eOne Family, a division of Entertainments One UK Limited.
The applicant further contends that the representations of the confronted marks (and the copyright) are very close in their figurative element, and refers to the judgment in La Española (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302).
The EUTM proprietor argues that both the figurative and the word elements of the confronted rights are different, and therefore confusion among the consumers is excluded completely.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 on which the application is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing, footwear, headgear.
The goods are identical.
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 are directed at the public at large. The degree of attention is average.
Earlier trade mark
Contested trade mark
Both marks are figurative. The earlier mark was filed in black and white and consists of a graphic figure in the form of what seems to be a pig with a prominent nose, wearing a dress. Underneath this figure and surrounding it, the denomination ‘Peppa Pig’ is written. The EUTM proprietor argues that the figure contained in the contested mark is clearly a tapir, and will be perceived as such by consumers. The Cancellation Division is of the opinion, however, that irrespective of how attentive consumers might be, the most feasible perception of the animal contained in the contested mark will be that of a pig, wearing a jumper and trousers. This figure appears in yellow, blue, pink, red, green, black and white. The mark shows the denomination ‘TOBBIA’ in a far smaller size, depicted in black.
The earlier mark has no dominant elements and, in relation to their distinctiveness, attention must be drawn to the fact that 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). Therefore, the denomination ‘Peppa Pig’ has a stronger impact than the drawing of the pig. As for the contested mark, the figurative element is dominant and, in relation to the distinctiveness of the elements, what has been said above applies.
Visually, the signs have a certain link in their figurative elements. However, whereas the drawing in the earlier mark is looking to the right of the image and depicts a female pig wearing a dress, showing the typical tail of this kind of animal, the figure in the contested mark clearly shows a male pig that is looking to the left, with no sign of a tail. Furthermore, the image in the earlier mark shows both arms whereas in the contested mark the drawing is hiding its left arm behind its back and its right arm is up in the air. The mouths, eyes and ears of the animals present further differences and, to conclude, whereas the earlier mark has been depicted in black and white, the contested trade mark is in the colours mentioned above.
The denominations of the marks clearly differ, as ‘Peppa Pig’ appears in the earlier right, whereas ‘TOBBIA’ is the word found in the contested mark.
Taking into account that the elements with the strongest impact of the marks are the denominations and that the figures of the animals are dominant in a different degree, the marks are, on the whole, visually similar to a low degree.
Taking into account that the figurative elements of marks are not pronounced, the marks are aurally dissimilar.
Conceptually, the graphic figures of the marks depict a pig. However, as expressed above, it is clear from the way it has been depicted that this is a female animal in the earlier trade mark, and this concept will be reinforced by the denomination, which will be perceived as the female name of the animal, namely ‘Peppa Pig’. In the contested mark the way the animal has been depicted, together with the name found below will make consumers reach the conclusion that the animal is a male pig called ‘TOBBIA’. Taking this into account the marks are, on the whole, conceptually not similar.
As the signs are not completely dissimilar, the evaluation of the invalidity action will continue.
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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, 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 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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
In the case at issue the goods have been found identical, and they target the public at large, who will have an average degree of attention.
As for the signs, it has been pointed out that they show a certain link inasmuch as they both contain the figure of a stylised pig. However, as has already been mentioned, consumers will refer to the marks by their denominations, which have nothing in common, and which make the marks aurally dissimilar and conceptually not similar, inasmuch as the earlier mark refers to a female pig called ‘Peppa Pig’ and the contested trade mark to a male pig called ‘TOBBIA’. Taking into account these facts and the fact that the marks are visually only similar to a low degree due to the weight that must be given to the distinctive and dominant elements, the Cancellation Division must conclude that, in spite of the identity of the goods, the consumers will not think that the goods originate from the same company or undertakings with economic ties.
As there is no likelihood of confusion on the part of the public the cancellation application brought under Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be rejected.
In support of its allegations the applicant refers to the judgment in La Española (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302). The Cancellation Division considers, however, that this judgment cannot be applied by analogy to the case at issue, since aside from other considerations in the case of the proceedings cited, the images were dominant in both figurative marks. Therefore, this claim must be set aside.
EARLIER COPYRIGHT — ARTICLE 53(2)(c) EUTMR
According to Article 53(2)(c) EUTMR, an EU trade mark will be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular a copyright.
Pursuant to Rule 37 EUTMIR, the application for a declaration of invalidity must contain
particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) EUTMR or
that it is entitled under the national law applicable to claim that right.
In the present case, the applicant based its action on the copyright protected under the laws of the United Kingdom.
Although the European Union legislator has harmonised certain aspects of copyright protection (see Directive 2001/29/EC of the European Parliament and of the Council of 22/05/2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22/06/2001, pages 10-19), so far there is no full-scale harmonisation of the copyright laws of the Member States, nor is there a uniform European Union copyright.
Therefore, the invalidity applicant had the burden of providing the necessary international and national legislation in force, and of putting forward a cogent line of argument as to why it would succeed under specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011, C‑263/09, Elio Fiorucci, ECLI:EU:C:2011:452).
The applicant filed a number of documents, inter alia, two registration certificates (one concerning the United States of America and the other concerning the People’s Republic of China), an affidavit and several licence agreements. In relation to the laws governing the adduced copyright in the United Kingdom, the applicant merely mentions the ‘UK Copyright Designs and Patents Act 1988’, but has not provided the Office with the contents, let alone the original text of this Act. Under these circumstances the application filed under Article 53(2)(c) EUTMR must fail.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the EUTM proprietor did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore it did not incur representation costs.
The Cancellation Division
María Belén IBARRA
Pedro JURADO MONTEJANO
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.