OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 441 411
LEDO d.d., Čavićeva 9, Zagreb 10000, Croatia (opponent), represented by Ivan Kos, Jurkovićeva 3/III, Zagreb 10000, Croatia (professional representative)
a g a i n s t
Nappo & Moritz GmbH, Heinrich-Horten-Str. 26-30, 47906 Kempen, Germany (applicant), represented by Patentanwälte Dr. Stark & Partner, Moerser Str. 140, 47803 Krefeld, Germany (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods 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 on which the opposition is based are the following:
Class 30: Pastry and confectionery; ice cream; ice cream products; biscuits.
The contested goods are the following:
Class 30: Confectionery, in particular confectionery that has a cooling effect on the tongue (in particular ice confectionery), ice confectionery containing components of sherbet powder; Sugar confectionery, chocolate, chocolate bars.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods 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’).
Contested goods in Class 30
The contested confectionery, in particular confectionery that has a cooling effect on the tongue (in particular ice confectionery), ice confectionery containing components of sherbet powder; sugar confectionery; chocolate; chocolate bars are included in the broad category of the opponent’s confectionery. Therefore, they are considered identical.
Earlier trade mark
The relevant territory is the European Union.
Visually, the signs are similar to the extent that they represent a depiction of a bear.
However, while the earlier mark represents a greyish/blueish bear, the contested mark consists of a picture of a white bear. The bear in the earlier mark wears a red bow tie and seems to be walking. Its arms are spread open. The body and the head of the bear are slightly directed to the left. The bear in the contested mark is more stylised with regard to its shape, colours and details. It wears a blue bandana and is captured as if it was carrying out a snowboard jump and grabbing the edge of a blue snowboard with one hand. The body and the head of the bear in the contested mark are slightly directed to the right. It seems to be furrier and fuzzier then the bear from the earlier sign. Due to the colours used, its eyes, tongue and pads of paws are clearly visible.
Thus, the signs are only similar in the overall representation of a bear but differ in different position, colours and details of those bears.
Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, while the earlier sign reproduces a bear that is walking, the contested one reproduces a bear carrying out a snowboard jump.
Signs are conceptually identical or similar when the two signs are perceived as having the same or a similar semantic content.
The Opposition Division considers that the two figurative elements would be perceived as referring to a similar concept inasmuch as they both depict a bear.
Taking into account the abovementioned visual and conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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. As the relevant goods are mass consumption goods, usually cheap and easily available, the degree of attention will vary from low to average.
Global assessment, other arguments and conclusion
It has been established in the previous sections of the decision that the contested goods are identical to the opponent’s goods. The signs are visually similar in the overall representation of a bear, and will be perceived as referring to a similar concept of a bear. The earlier mark has normal distinctiveness.
However, the common association between two images in semantic terms is not sufficient. In circumstances such as those at issue, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion (see the judgment of 11/11/1997, C‑251/95, ‘Sabel’).
It should be further clarified that the graphic representation of an object cannot be the subject of exclusive trade mark rights. Clearly, an object can be represented in a range of ways, and it cannot be assumed that there may be a likelihood of confusion just because the same object is represented in conflicting marks. The representation of an object cannot be the subject of automatic broad protection and must be analysed on the basis of the similarities and differences between the conflicting signs that extend beyond the mere conceptual link. This means that differences in the graphic representation of common elements and symbols will usually (and in the absence of reputation or enhanced distinctiveness of the earlier mark) suffice to exclude likelihood of confusion.
In the present case, the Opposition Division is of the opinion that notwithstanding certain visual similarities between the signs, this will not cause consumers to confuse the two signs. Although both signs are composed of the device of a bear, these devices contain significant visual differences as explained in part b) of the decision. As a whole, the signs are distinguishable since there are noticeable differences in the shape, colours, details and stylisation of the animals depicted in the signs. The devices in each of the marks have many differences and the minor visual similarities are not strong enough to induce the public to believe that the goods that are sold or provided under the signs come from the same or from economically-linked companies.
Bearing in mind the foregoing, even for identical goods, a likelihood of confusion does not exist, since the overall impressions created by the signs are sufficiently different and it is highly unlikely that in case of the average consumer with a low or normal level of attentiveness, the contested sign would bring to mind the earlier mark.
Considering all the above, 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.