DECISION

of the First Board of Appeal

of 30 June 2016

In Case R 48/2016-1

LEDO d.d.
Čavićeva 9 10000 Zagreb Croatia	Opponent / Appellant

represented by Ivan Kos, Jurkovićeva 3/III, 10000 Zagreb, Croatia

v

Nappo & Moritz GmbH
Heinrich-Horten-Str. 26-30 DE-47906 Kempen Germany	Applicant / Respondent

represented by PATENTANWÄLTE DR. STARK & PARTNER, Moerser Str. 140, 47803 Krefeld, Germany

APPEAL relating to Opposition Proceedings No B 2 441 411 (European Union trade mark application No 13 083 324)

The First Board of Appeal

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

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 15 July 2014, Nappo & Moritz GmbH (‘the applicant’) sought to register the figurative entirely

for the following list of goods:

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.

The applicant claimed the colours:

‘Blau; Hellblau; Weiß; Schwarz; Braun; Rosa; Rot’ (blue; light blue; white; black; brown; pink; red). .

2. The application was published on 1 September 2014.

3. On 1 December 2014, LEDO d.d. (‘the opponent’) filed an opposition against the registration of the published trade mark application for entirely goods on the grounds of Article 8(1)(b) EUTMR (likelihood of confusion).

4. The opposition was based on International Registration No 1 181 183, designating inter alia the European Union, for the following figurative mark:

The earlier right was filed and registered on 2 July 2013 for the following goods:

Class 30 ‒ Pastry and confectionery; ice cream; ice cream products; biscuits.

The earlier right claims the colours:

White; black; red; grey.

5. By decision of 11 November 2015 (‘the contested decision’), the Opposition Division rejected the entirely in its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The conflicting goods are identical.

• The signs are overall similar to the extent that they represent a depiction of a bear but differ in the different position, colours and details of these bears.

• 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.

• As both signs are purely figurative, it is not possible to compare them aurally.

• The two figurative elements will be perceived as referring to a similar concept inasmuch as they both depict a bear.

• The graphic representation of an object cannot be the subject of exclusive trade mark rights. 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 suffice to exclude likelihood of confusion.

• 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 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.

• 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.

Submissions and arguments of the parties

6. On 11 January 2016, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The arguments raised in the statement of grounds of the appeal received on 11 March 2016 may be summarised as follows:

• Visually the marks are similar as they both represent a cartoon-like image of a polar bear giving an impression of a friendly and happy creature. This similarity is rather striking between the conflicting signs. The differences between the signs are not sufficient to outweigh the similarities, especially as the consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

• It is the same type of bear, represented in the same cartoon-like fashion and shading, with the same friendly, happy face, round eyes, body, etc.

• The addition of a snowboard and consequently a different activity of the bear in the mark applied for does not constitute determining differences.

• The commercial origin of the identical goods of both signs will be related to the same or economically-linked undertaking and therefore there is a likelihood of confusion on the part of the relevant public.

7. In its observations in reply received on 13 May 2016, the applicant requests that the appeal be dismissed. The arguments raised in reply to the appeal may be summarised as follows:

• Although both signs comprise an image of a polar bear, there are quite relevant visual differences between these images.

• On the one hand the contested mark shows a very detailed, almost photorealistic white furred bear.

• The brown eyes and the red tongue together with the pink pads of the paws and the purple shiny nose give a very lively and ‘human’ impression which resembles a photograph or a CGI-Design. This effect is strengthened by the sporty activity of doing a snowboard jump which creates a very speedy and sporty lifestyle impression. The human touch of the bear is furthermore illustrated by a bright blue snowboard and a colour-matching bandana around the neck of the bear.

• The opponent’s mark shows a totally different image. This polar bear is depicted in a low-detailed, fuzzy image in grey shades and comprises a walking white ‘plush bear’ having no fur at all but a very consistent textile surface like felt or velvet. This bear is wearing a red bow tie which catches the attention as it is the only coloured part in this otherwise completely grey picture.

• The contested mark shows a lively humanlike, photorealistic bear with lots of details, while the earlier mark shows a low resolution picture of a static plush toy.

• As the overall impression as well as the customer’s recollection of the conflicting signs is not similar, a potential similarity of the goods does not have any relevant influence and there will be no likelihood of confusion.

Reasons

8. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

9. The appeal is also well founded and the contested decision has to be annulled, since because of the similarity of the earlier trade mark with the one being applied for and the identity or similarity of the goods covered by the marks a likelihood of confusion on the part of the public in accordance with Article 8(1)(b) EUTMR exists.

Article 8(1)(b) EUTMR

Relevant public

10. With regard to the relevant public, the Court of Justice has held that a likelihood of confusion exists if there is a 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). According to the Court it is the perception of marks in the mind of the relevant public of the goods or services in question that plays a decisive role in the global assessment of the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

11. As the earlier right is an International Registration designating the European Union, the relevant public is the one living in the European Union.

12. The consumer’s level of attention is likely to vary according to the category of goods involved, and it normally perceives a mark as a whole and does not proceed to analyse its details. In relation to the conflicting confectionery goods, the general public has to be referred to. Such a consumer is less attentive when choosing the goods in self-service supermarkets or grocery stores.

Comparison of the goods

13. The contested goods of the mark applied for

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

are included in the opponent’s

Class 30 - Pastry and confectionery; ice cream; ice cream products; biscuits.

Therefore, the conflicting goods are considered to be identical.

Comparison of the two signs and

14. Conflicting trade marks have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

15. According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (12/06/2007, C-334/05 P, ECR, EU:C:2007:333, § 35).

16. Both marks are purely figurative and show an image of a white (young) polar bear with a friendly and happy face, as would be illustrated in a comic or a book for children, creating from its facial expression and its movements an impression which is more human-like rather than one of an animal.

17. The applicants mark shows a (young) smiling polar bear with a round head, round ears, big, wide open, comic-style dark eyes, a black, shiny nose and an open mouth with a red tongue. The polar bear is standing with two legs on a blue snowboard rather like a human and seems to be doing a snowboard jump; one ‘hand’ is directed backwards and the other one is holding the top of the snowboard from underneath. While the paws on the snowboard tend to look like a polar bears foot with pink pads, the other paws look rather like a human hand with fingers. Also like a human, the bear is wearing a light blue bandana around its neck.

18. The opponent’s mark shows a (young) smiling polar bear with a round head, round ears, big, wide open, comic-style dark eyes, a black, shiny nose and an open mouth. The polar bear is standing like a human on two legs. Its ‘arms’ and ‘hands’ open with a welcoming or ‘balancing’ gesture outstretched to the front look equally human. The position of the arms and the legs give the impression that the bear is moving forward, either walking or dancing. Also like a human, the bear is wearing a red bow tie around its neck.

Visual comparison

19. The similarity between the two marks goes far beyond the coincidence in the representation of a polar bear. It is true that the applicant’s polar bear is slightly more detailed in respect of its fur and its paws than the opponent’s polar bear . Moreover, both bears differ in their movement – one is walking the other snowboarding.

20. However, both have the same comic-like ‘humanized’ representation of a polar bear, standing or walking on two legs, with human hands, a human smile and human gestures and attitudes. Both bears are depicted in motion, involving a similar position of the arms and legs. Both have a similar face, with big round ears, big wide eyes with black pupils, and an open mouth. Both have neck-wear, the applicant’s bear a blue neckerchief or bandana, the opponent’s bear a red bow tie. As to the colour scheme, both polar bears not only coincide in their colour, but also in the way a shadow is made by the light shining from above. Moreover, the red of the opponent’s bear’s bow-tie corresponds to the red of the applicant’s bear’s tongue in a similar position.

21. Even though the applicant’s mark shows an additional snowboard the impression of a comic-like bear remains, with the only difference being that they are making different movements.

22. The two signs therefore are visually highly similar.

Aural comparison

23. Contrary to the Opposition Division’s findings the two signs can also be compared aurally.

24. Aurally, where a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, they will use that word to refer to the mark (07/05/2015, T‑599/13, GELENKGOLD / FORM EINES TIGERS et al., EU:T:2015:262, § 53-64; 09/07/2015, R 863/2011-G, Malta Cross + International + Foundation (fig.) / Malteserkreuz (fig.), § 49).

25. Therefore, in this case, the relevant public will refer to the mark applied for as well as to the earlier trade mark by pronouncing it respectively as ‘polar bear’ or ‘little polar bear’. Normally, figurative trade marks are referred to in a short description. It is less likely that the relevant public will go into the respective details of the signs with a less inherent distinctiveness, such as the snowboard, the bandana or the red bow tie, the respective depiction of movements etc. Therefore, the conflicting signs are phonetically identical.

Conceptual comparison

26. Two signs are identical or similar conceptually when they are perceived as having the same or analogous semantic content (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24).

27. As both marks depict a human looking active polar bear the signs are also conceptually identical.

28. Taking into account the abovementioned visual, phonetic and conceptual coincidences, it is considered that the signs under comparison are highly similar.

Distinctive and dominant elements of the signs

29. In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).

30. The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

31. The signs under comparison also do not have any elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Distinctive character of the earlier mark

32. The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

33. 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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Furthermore, the applicant has not demonstrated that human-like polar bears are common-place or descriptive of any characteristics of the products. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Likelihood of confusion

34. 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 Article 8(1)(b) EUTMR (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).

35. The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR).

36. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh recital 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).

37. Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

38. In the present case, the marks are claimed for identical goods. Both companies are direct competitors. Identical goods satisfy the same needs, are offered in the same places in supermarkets and grocery shops, and are interchangeable. Therefore, the rule has been established that for identical goods the trade marks should maintain sufficient distance from each other. This is particularly true if the goods are mass consumer goods like confectionery to which no particular attention is paid.

39. As held above, the goods covered by the two marks are identical.

40. Phonetically and conceptually the signs are identical, while they are visually similar to a high degree. The visual differences between the signs, in particular the slightly more detailed representation of the bear in the applicant’s mark compared to a slightly more plush bear representation in the earlier mark, the different movements or the blue bandana instead of a red bow tie, are not sufficient to avoid a likelihood of confusion between the signs. The same is relevant as regards the blue snowboard. In this respect the consumer will recall the particular image of the polar bear: a human-looking, smiling little comic-like ice bear, with big eyes and a shiny nose, wearing only a bandana, and practising a particular movement in the context of a sports activity.

41. Due to the high degree of elements that coincide, the relevant public will perceive the applicant’s bear as being identical to the opponent’s bear, but merely doing a different exercise.

42. It also has to be kept in mind that the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its details. Furthermore and according to settled case-law, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on the imperfect picture of them that he has retained in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 32).

43. Therefore, the relevant public will believe that the two signs are a variation of the same trade mark referring to the goods in question and coming from the same undertaking or, as the case may be, from an economically-linked undertaking. The consumer will not be able to distinguish between the two signs in the sense that it can relate the relevant products according to their origin to the respective undertaking.

44. It follows that there exists a likelihood of confusion on the part of the public between the earlier trade mark and the mark applied for.

45. Therefore, pursuant to Article 8(1)(b) EUTMR, the mark applied for is not eligible for registration and the decision of the Opposition Division must be annulled.

Costs

46. Since the opponent’s appeal is successful and the applicant is the losing party, it must bear the fees and costs of the opponent in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.

47. Pursuant to Article 85(6) EUTMR the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 93(1) EUTMR. Since the opponent’s appeal was successful, the costs of the opposition proceedings amount to the opposition fee of EUR 350 and the representation costs of EUR 300 and the costs of the appeal amount to the appeal fee of EUR 800 and the representation costs of EUR 550 as specified in Rule 94(3) and (7)(d) CTMIR, irrespective if they have actually been incurred. Any final decision fixing the amount of costs shall be enforceable pursuant to Article 86 EUTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision B 2 441 411 dated 11 November 2015;

2. Rejects the application No 13 083 324 for registration;

3. Orders the applicant to bear the fees of the appeal procedure as well as the costs of the opposition, which are fixed at EUR 2 000.

Signed Th. M. Margellos

Signed Ph. von Kapff

Signed C. Rusconi

Registrar: Signed H.Dijkema