DECISION

of the First Board of Appeal

of 14 September 2017

In Case R 1776/2016-1

Entertainment One UK Limited Astley Baker Davies Ltd
45 Warren Street London W1T 6AG United Kingdom	Invalidity Applicants / Appellants

represented by Niall Trainor, 45 Warren Street, London W1T 6AG, United Kingdom

v

Pan Xianhao
Via Principe Amedeo, 180 00185 Roma Italy	EUTM Proprietor / Respondent

represented by Maurizio Oliva, via Cicerone n. 62, 00193 Roma, Italy

APPEAL relating to Cancellation Proceedings No 10 686 C (European Union trade mark registration No 11 775 509)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. Von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 27 April 2013, Pan Xianhao (‘the EUTM proprietor’) sought to register the figurative mark

for the following list of goods:

Class 25 – Clothing, footwear, headgear.

The EUTM proprietor claimed the colours:

Yellow, light blue, pink, red, green, white, black.

2. The application was published on 6 June 2013 and the mark was registered on 13 September 2013.

3. On 2 April 2015, Entertainment One UK Limited and Astley Baker Davies Ltd (‘the invalidity applicants’) filed a request for a declaration of invalidity of the registered mark for all the above goods.

4. The grounds of the request for a declaration of invalidity were those laid down in Articles 53(1) EUTMR in relation to Article 8(1)(b) EUTMR, namely a likelihood of confusion with an earlier trade mark and Article 53(2) EUTMR, namely a conflict with an earlier copyright.

5. The request for declared the invalidity of was based on the following earlier rights:

• As regards Article 53(1), in relation to Article 8(1)(b), EUTMR, a likelihood of confusion with an earlier trade mark: European Union trade mark No 10 186 261

filed on 9 August 2011 and registered on 23 February 2012 for the following goods:

Class 25 – Clothing, footwear, headgear.

• As regards Article 52(2) EUTMR, namely a conflict with an earlier copyright, the following sign:

6. The Cancellation Division asked the invalidity applicants to identify the earlier copyright on which the application was based. On 26 May 2015, the invalidity applicants submitted their arguments to identify their earlier copyright.

7. In their arguments, the invalidity applicants made reference to USA copyright registration No VA 1 329 059, registered on 19 August 2005 and Chinese copyright registration No 113 418 registered on 4 June 2014. The invalidity applicants also submitted the following documents:

• Chinese certificate No 113 418, not translated into English, for the following signs:

• A document entitled ‘Affidavit of Chain of Title for Peppa Pig’ signed by Nicholas Gawne and stating the particulars of the creation in May 2000 of a story board for the programme entitled ‘Peppa Pig’ and a series of exhibits explaining the assignment of copyright of the key characters identified as ‘Peppa Pig, George Pig, Mummy Pig and Daddy Pig’. The exhibits also included a co-production agreement and the assignment of derived rights. No further reasoning regarding the extent of the rights or their origin was submitted.

8. The EUTM proprietor submitted his arguments in reply on 24 September 2015. His reasoning can be summarized as follows:

• There is no similarity between the signs, because the two characters depicted are significantly different and the names contained in the two trade marks are not comparable.

• There is no similarity between the two products that would create confusion as regards consumers.

• The similar, but not identical, features of the two faces or noses, remain a physical and natural feature of the two animals (a ‘tapir’ in the case of the contested EUTM and a ‘pig’ in the earlier EUTM, the basis of the request for declared the invalidity of), while the verbal component ‘TOBBIA’ has nothing to do with the verbal component ‘PEPPA PIG’.

9. The invalidity applicants submitted their arguments in reply on 4 December 2015, which can be summarized as follows:

• The trade mark under attack is a rip-off of the invalidity applicants’ rights, as becomes apparent when comparing the signs side-by-side.

• The characteristic features of the earlier EUTM are very unusual, and were clearly taken over in identical form by the contested EUTM, including specific features such as the mouth, eyes, ears and the large dot on the cheek.

10. On 16 March 2016 the EUTM proprietor submitted his observations, restating the same arguments as above.

11. By decision of 28 July 2016 (‘the contested decision’), the Cancellation Division rejected the application for a declaration of invalidity of the contested EUTM. It gave, in particular, the following grounds for its decision:

Likelihood of confusion – Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR

• As regards the goods, they are identical, and they target the public at large, who will have an average degree of attention.

• Visually, the signs are similar to a low degree, as they have a certain link in their figurative elements.

• The marks are aurally and conceptually dissimilar.

• The invalidity applicants did not explicitly claim that their mark is particularly distinctive by virtue of intensive use or reputation. Therefore, for the assessment of the earlier mark’s distinctiveness, its distinctiveness has been considered normal.

• Taking into account that the signs are similar to a low degree from the visual point of view and dissimilar from the aural and conceptual comparisons, the Cancellation Division must conclude that, in spite of the identity between the goods, consumers will not think that the goods originate from the same company or undertakings with economic ties.

Earlier copyright – Article 53(2)(c) EUTMR

• Regarding the earlier copyright, the invalidity applicants based their action on the copyright protected under the laws of the United Kingdom [sic].

• The invalidity applicants had the burden of providing the necessary international and national legislation in force, and of putting forward a coherent line of argument as to why it would succeed under specific national law in preventing the use of the contested EUTM.

• The invalidity applicants filed a number of documents, and ‘mentions’ [sic] the ‘UK Copyright Designs and Patents Act 1988’, but have not provided the Office with the content, let alone the original text of this Act. Under these circumstances the application filed under Article 53(2)(c) EUTMR must fail.

• The application for a declaration of invalidity is rejected in its entirety.

Submissions and arguments of the parties

12. On 27 September 2016, the invalidity applicants filed an appeal against the contested decision, requesting that the decision be set aside. Their arguments raised in the statement of grounds, received on 28 November 2016, may be summarised as follows:

Copyright – Article 53(2)(c) EUTMR

• According to the UK Copyright, Designs and Patents Act of 1988 (hereinafter, ‘CDPA’), the copyright registrations filed in the United States of America, the basis of the request for a declaration of invalidity, constitute an ‘artistic work’ created in May 2000. Moreover, the invalidity applicants are the owners by assignment of the copyright in the logo.

• According to Section 16(3) CDPA, the application and registration of an EUTM can infringe a copyright in the UK where it constitutes ‘a copy of substantial parts of the work’. The purpose of an examination in a copyright infringement action it is not to see whether the overall appearance of the two designs is similar, but to judge whether the similarities relied on are sufficiently close, numerous or extensive to be more likely the result of copying than of coincidence.

• The invalidity applicants submit that the contested EUTM must be considered a copy of a substantial part of the invalidity applicants’ protected copyright work, as the EUTM proprietor was clearly aware of the existence of the invalidity applicants’ sign. The contested EUTM is clearly confusingly similar or identical to the earlier copyright in practically all aspects, including the shape and direction of the head, the positioning and shape of the ears, eyes, nose, smile and cheek spot.

• The invalidity applicants submit that the requirements set out in the CDPA have been met and copying has occurred, and the contested EUTM must be declared invalid since its use may be prohibited under Section 16(3) CDPA, which applies by virtue of Article 53(2)(c) EUTMR.

Bad faith – Article 52(1)(b) EUTMR

• The invalidity applicants believe that the EUTM proprietor deliberately filed the contested EUTM, knowing of the high graphic similarity to the earlier EUTM; he, therefore, acted in bad faith on the filing date.

• The EUTM proprietor’s claim that there was no intention to file the contested EUTM in bad faith does not carry weight when one looks at similar applications filed by the EUTM proprietor during the period prior to the filing date. In total, the EUTM proprietor filed 15 figurative EUTM applications in Class 25 between 9 February 2010 and the filing date, which were clearly filed in bad faith in order to infringe the rights of other brand holders.

• While mere knowledge of the existence of the rights of competitors does not constitute bad faith, it is undisputed, and material, that the EUTM proprietor knew about these previous rights, and it can be inferred that given the EUTM proprietor had filed 15 previous EUTM applications that bore a striking resemblance to other children’s brands, that he was acutely aware of the existence of these brands and related EUTMs.

• The invalidity applicants submit that bad faith is proven by the fact that the EUTM proprietor applied to register the opposed mark when he was indeed fully aware of the invalidity applicants’ EUTM and copyright.

Likelihood of confusion – Article 8(1)(b) EUTMR

• In the first-instance decision, the Cancellation Division held that the ‘signs are not completely dissimilar’ but ultimately determined that ‘as there is no likelihood of confusion […] the cancellation application must be rejected’. The invalidity applicants consider that the Cancellation Division erred in reaching this decision.

• The invalidity applicants have provided an email from the Italian Customs Agency (‘ICA’) informing them of the seizure of 2 048 pieces of clothing bearing the ‘PEPPA PIG’ trade mark, marked as ‘TOBBIA’, stating that it was an infringement of the invalidity applicants’ earlier rights (the earlier EUTM, the basis of the request for a declaration of invalidity).

• Accordingly, the invalidity applicants consider that the contested EUTM is clearly confusingly similar to the earlier EUTM, as the ICA urgently contacted the invalidity applicants to notify what it stated was a criminal act of IP infringement.

13. The invalidity applicants also submitted, among others, the following documents to support their allegations:

• Selected articles and sections of the UK Copyright, Designs and Patents Act 1988.

• Certificate of registration of the United States Copyright Office with No VA 1 329 059 dated 19 August 2005, for the following sign:

14. In its observations in reply received on 1 February 2017, the EUTM proprietor requests that the appeal be dismissed. The arguments raised in reply to the appeal may be summarised as follows:

• The facts, documents and images produced by the invalidity applicants during the appeal proceedings were never submitted to the Cancellation Division and have never been the subject of the contested decision.

• The contested EUTM draws inspiration from a tapir and not a pig. The sign’s figurative image draws traces from the ‘golden tapir’ figurine as in the ‘Striscia la Notizia’ television broadcast. The similarities between the signs are limited to the fact that each one of them represents an animal, which by their nature, have a protuberance. Nevertheless, the drawings are totally different and cannot be the subject of confusion.

• The component ‘TOBBIA’ has nothing to do with the component ‘PEPPA PIG’ from the aural, visual or conceptual points of view, and consequently, this precludes any possibility of confusion between the two signs.

Reasons

Regarding the likelihood of confusion with the earlier EUTM – Article 53(1)(a EUTMR) in conjunction with Article 8(1)(b) EUTMR

15. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

16. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

17. The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public

18. In order to carry out a global assessment of a likelihood of confusion, the relevant territory and the relevant public therein have to be established.

19. The relevant territory is the European Union, as both signs, the contested mark and the trade mark claimed as a basis for the action, namely EUTM No 10 186 261, are European Union trade marks.

20. The consumer’s level of attention is likely to vary according to the category of goods or services involved (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein).

21. The relevant goods in Class 25 are everyday goods for the public. The relevant public of those goods is the average consumer with an average level of attention.

Comparison of the goods

22. The goods covered by both signs are ‘clothing, footwear, headgear’. Therefore, the goods are identical.

Comparison of the signs

23. The signs to be compared are:

    Earlier mark	Contested sign

24. The earlier mark is a figurative sign, composed of a figurative element depicting an anthropomorphic animal with a large round head and a cylindrical snout. The graphic of the animal includes ears, eyes, nostrils, a round shape on the cheek and a smiley mouth. It wears a dress and the drawing includes two arms, two legs and a tail. The sign includes the words ‘Peppa Pig’ in infantile letters below the graphic element. All the elements of the sign are depicted in black.

25. The contested mark is a figurative sign, including a figurative element depicting an anthropomorphic animal with a large round head and a cylindrical snout. The representation includes ears, eyes, cheeks, nostrils and a smiley mouth. The cheeks and mouth are in red while the eyes are blue. The animal wears a yellow jumper, blue trousers and black shoes and its left arm is raised. The sign includes the word ‘TOBBIA’ in black upper-case letters.

26. From a visual point of view, the signs are similar to the extent that they share a graphic depicting an anthropomorphic animal, which appears to be a humoristic representation of a pig, with a round head and a cylindrical nose. It should be noted that the shape of the head and snout is almost identical in both signs, with the only difference being that in the earlier mark the animal is looking to its left and in the contested mark it is looking towards its right side. Moreover, the elements of the drawing are extremely similar in both signs: the figures of the animals share the shape of their heads and display the same elements in the same way, namely the ears, the position of both eyes on the same side of the face, the cheeks represented as a circular shape, the mouth with the same smiley shape and the nostrils. However the signs also present some differences, namely the clothes that both animals are wearing, the colours of the contested mark and the word elements below the signs.

27. Taking this into account, the signs are considered similar from a visual point of view.

28. From an aural point of view, it should be noted that there is certain correlation between the element ‘Peppa’ of the earlier sign and the element ‘Tobbia’ of the contested mark, namely, both are disyllabic words and both have the repetition of a strong consonant, namely ‘PP’ in the earlier mark and ‘BB’ in the contested mark.

29. From a conceptual point of view, the Board considers that the graphic element depicting an animal will be immediately associated by the public with a pig. This association is especially strong in the earlier mark, as it includes the word element ‘Pig’.

30. The EUTM proprietor argues that the figure contained in the contested mark will be associated with a tapir. However, the Board doubts that the public will make this association, as a tapir is not a well-known animal. Moreover, the elements of the sign clearly refer to a pig, namely the representation of the head, snout and nostrils include elements that the public will associate with this animal. In any case, if the public were to identify the contested mark with a tapir, the Board is of the opinion that, due to the similarities in the graphic elements of both signs, the earlier trade mark would also be associated with this animal.

31. Regarding the word elements of both signs, the public will identify the element ‘Peppa’ of the earlier mark with a given name, and the element ‘Tobbia’ of the contested mark will also be identified as a given name.

32. The signs are considered similar to an average degree from a conceptual point of view.

Overall assessment

33. The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or 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; 14/12/2006, T‑81/03, T-82/03 & T-103/03, Venado, EU:T:2006:397, § 74).

34. In view of the identity between the Class 25 goods and the visual and conceptual similarities between the trade marks, it should be held that the differences are not sufficient to dispel a likelihood of confusion for reasonably attentive consumers.

35. It should be noted that in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed.

36. In a sector such as the clothing sector, in which the goods covered by the signs at issue are usually sold in self-service stores where consumer choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important than the phonetic and conceptual similarities (06/10/2004, T-117/03 – T-119/03, T-171/03, NL, EU:T:2004:293, § 49; 07/05/2009, T‑414/05, LA Kings, EU:T:2009:145, § 69; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 78). In the present case, the figurative elements of the signs are extremely similar and, due to their position and size in both signs, they will not be overlooked by consumers.

37. It should also be taken into account that, although the verbal elements of both signs are not considered similar, there is some correlation in their structure and in both cases they are composed by a given name. This circumstance may lead some consumers to consider them related, given the fact that they contain extremely similar graphic elements. Therefore, consumers may associate them, considering that the goods protected by the signs are offered under the control of a single undertaking or economically-linked undertakings. In the case in point, even if the relevant public were able to distinguish between the marks at issue, they could however be led to believe that, since they cover identical goods, these trade marks originate from the same undertaking or, as the case may be, from economically-linked undertakings, identified by the shape of the pig.

38. The application of the principle of the interdependence of the various factors to be taken into account, which is necessarily involved in the global assessment of the likelihood of confusion, confirms that conclusion. There may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 21). In this case, as has already been found, the goods designated by the contested mark and those covered by the earlier mark in Class 25 are identical. As a consequence of that identity any differences between the signs in question are attenuated.

39. It follows from all the foregoing considerations that there is likelihood of confusion between the signs at issue.

Costs

40. The EUTM proprietor, being the losing party within the meaning of Article 85 EUTMR, shall be ordered to reimburse the costs and the fees to the invalidity applicants in the cancellation and appeal proceedings, namely EUR 700 and EUR 720 corresponding to the cancellation and appeal fees, respectively, and EUR 450 for the costs for professional representation in the cancellation proceedings (Rule 94 CTMIR).

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Declares the invalidity of the contested EUTM for all its goods;

3. Orders the EUTM proprietor to reimburse the invalidity applicants the sum of EUR 1 870.

Signed Th. M. Margellos

Signed C. Rusconi

Signed Ph. von Kapff

Registrar: Signed H. Dijkema