OPPOSITION No B 2 582 172

Supersolid Ltd, Suite 528, 10 Great Russell Street, London WC1B 3BQ, United Kingdom (opponent), represented by Briffa, Business Design Centre 52 Upper Street, Islington, London N1 0QH, United Kingdom (professional representative)

a g a i n s t

Fjærå Holding ApS, Kurlandsgade 20, 4. th., 2300 København S, Denmark (applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., 1100 Copenhagen K, Denmark (professional representative).

On 09/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 582 172 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 961 214 for the word mark ‘Raw Penguins’. The opposition is based on European Union trade mark registration No 13 221 577 for the word mark ‘SUPER PENGUINS’. The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods and services

After a limitation accepted by the Office, the goods and services on which the opposition is based are the following:

Class 9: Computer games programs [software] featuring animated penguin characters; games programs featuring animated penguin characters for mobile telephones and handheld electronic devices [software].

Class 28: Games and playthings featuring cartoon penguin characters; toys featuring cartoon penguin characters; handheld video games featuring animated penguin characters.

Class 41: Provision of online computer games featuring animated penguin characters.

After a limitation accepted by the Office and the final decision in opposition proceedings B 2 580 978, the contested goods are the following:

Class 8: Cutlery.

Class 9: 3D spectacles; batteries, electric; battery chargers; spectacles [optics]; cameras [photography]; cell phones; cell phone straps; sunglasses; sports glasses.

Class 14: Jewellery, including (but not limited to) bracelets, chains, rings, pearls and earrings; clocks; watch cases; watch bands; watch fobs; egg-timers.

Class 16: Paper table covers; table napkins of paper; coasters for beer glasses.

Class 21: Drinking glasses; mugs; coasters, not of paper and textiles; pepper mills, hand-operated; salt shakers; egg cups; cutting boards for the kitchen; potholders; pitchers; watering cans; coffeepots, non-electric; cookie jars; cake moulds; knife blocks.

Class 28: Sporting articles, including (but not limited to) apparatus for games; rackets; protective paddings [parts of sports suits]; bob-sleighs; body boards; punching bags; balls for games; ball wooden tables for table tennis; tables for indoor football; table football tables; bows for archery; archery implements; hang gliders; kites; electronic targets; paintballs (ammunition for paintball guns); fishing equipment; fish hooks; gut for fishing; rods for fishing; harpoon guns [sports articles]; harpoon guns (sports articles); reels for fishing; paintball guns [sports apparatus]; skateboards; skis; targets; sling shots (sports articles); sleighs (sport articles); lines for fishing.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Classes 8, 14, 16 and 21

The contested goods are, in Class 8, cutting instruments such as kitchen knives, in Class 14, articles for personal adornment including time instruments and their accessories, in Class 16, disposable paper (or cardboard) products and, in Class 21, tableware, cookware and containers and gardening articles. These goods have no sufficient connection with the opponent’s goods and services which are essentially specific software in Class 9, games, playthings and toys in Class 28 and entertainment services in Class 41. They do coincide in nature, purpose and method of use. Their commercial origins and distribution channels are different. Moreover, they are neither complementary nor in competition. Therefore, these goods and services are dissimilar.

Contested goods in Class 9

The contested 3D spectacles are similar to the opponent’s games programs featuring animated penguin characters for […] handheld electronic devices [software]. Consumers may find on the market smart glasses with 3D optical head-mounted display and spatial sound developed. These goods may be sold together with games programs. There is a certain link of complementary between them and they main coincide in producers, distribution channels and end users.

The contested cell phones are similar to the earlier games programs featuring animated penguin characters for mobile telephones […] [software] for the same reasons as in the previous comparison.

The contested batteries, electric; battery chargers; spectacles [optics]; cameras [photography]; cell phone straps; sunglasses; sports glasses are dissimilar to all goods & services covered by the earlier right because they have nothing in common. They do not coincide in nature, purpose and method of use. Their commercial original and distribution channel are different. Moreover, they are neither complementary nor in competition.

Contested goods in Class 28

The contested goods in Class 28 sporting articles, including (but not limited to) apparatus for games; rackets; protective paddings [parts of sports suits]; bob-sleighs; body boards; punching bags; balls for games; ball wooden tables for table tennis; tables for indoor football; table football tables; bows for archery; archery implements; hang gliders; kites; electronic targets; paintballs (ammunition for paintball guns); fishing equipment; fish hooks; gut for fishing; rods for fishing; harpoon guns [sports articles]; harpoon guns (sports articles); reels for fishing; paintball guns [sports apparatus]; skateboards; skis; targets; sling shots (sports articles); sleighs (sport articles); lines for fishing are sporting articles and/or playthings and some of their parts, fittings and accessories. These goods are, at least, similar to a low degree to the earlier playthings featuring cartoon penguin characters.

2. 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 similar to different degrees are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

SUPER PENGUINS	Raw Penguins
Earlier trade mark	Contested sign

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 English word ‘PENGUINS’ present in both signs will be understood by the relevant public as referring to ‘a type of large black and white sea bird found mainly in the Antarctic’ (Extracted on 24/09/2019 from Collins English Dictionary online at www.collinsdictionary.com). The whole public will understand it because it is very close to so many close equivalent words in official languages in the relevant territory, such as ‘pinguïns’ in Dutch, ‘Pinguine’ in German, ‘pinguins’ in Portuguese, ‘pingüinos’ in Spanish, ‘pinguini’ in Italian, ‘pingouins’ in French, ‘pinguin’ in Slovak, etc. As regards the contested sign, the distinctiveness of this element is limited in relation to the relevant goods in Class 9 and, at least, for part of the goods in Class 28 for which it can be seen as providing information about their content (e.g. the theme of the games or of the playthings). This is more evident as regards the earlier mark because the opponent’s goods and services have been explicitly limited with the phrases ‘featuring animated penguin characters’ or ‘featuring cartoon penguin characters’. Therefore, the word ‘PENGUINS’ has only a minimum degree of distinctiveness as regards the earlier mark.

In each sign, this word is accompanied by an adjective. In the earlier mark, the word ‘SUPER’ qualifies the word ‘PENGUINS’ with the meaning that these penguins are fantastic. The term ‘SUPER’ is often used in the trade of course with the meaning of larger, better, or more advanced. It is as a laudatory element with a very low degree of distinctiveness.

The word ‘RAW’ of the contested sign is an English adjective, referring to something in its natural state or unprocessed. It has no meaning in relation to the relevant goods and is therefore distinctive. The contested sign as a whole will be perceived as ‘penguins in their natural habitat’. It is also distinctive for the non-English speaking public as it has no meaning and therefore does not describe any characteristic of the goods.

The marks are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant for the comparison whether a word mark is depicted in lower or upper case letters.

Visually and aurally, the signs coincide in the word ‘PENGUINS’ and its sounds present in both marks. They differ in their first verbal elements and their sounds, respectively the weak element ‘SUPER’ and the distinctive word ‘RAW’, each placed at the beginning of the signs. Taking into account that the word ‘PENGUINS’ has only a minimum degree of distinctiveness in the earlier mark, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Taking into account that the common element is very weak in the earlier mark, the signs are considered conceptually similar but only to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as minimum for all the goods and services in question.

5. Global assessment, other arguments and conclusion

The goods found to be similar to different degrees are directed at the public at large whose degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs are similar to a low degree on all levels of the comparison to the extent that they coincide in the element ‘PENGUINS’ which has only a minimum of distinctiveness in the earlier mark and is weak in the contested sign. The distinctiveness of the earlier mark must be seen as minimum for all the relevant goods.

Therefore, the additional elements of the signs, in particular the distinctive element ‘RAW’ of the contested sign, are sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Angela DI BLASIO

Benoit VLEMINCQ

Martina GALLE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.