OPPOSITION No B 2 684 739

Ardistel, S.L., Calle Caravis, 18-20-22, Plataforma Logística Plaza, 50197 Zaragoza, Spain (opponent), represented by ZBM Patents, Pl. Catalunya, 1, 08002 Barcelona, Spain (professional representative)

a g a i n s t

ADC Blackfire Entertainment s. r. o., Novozámecká č.p. 495, 19800 Praha 9, Czech Republic (applicant), represented by Lukáš Jansa, Sokola Tůmy 16, 709 00 Ostrava, Czech Republic (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 684 739 is partially upheld, namely for the following contested goods and services:

Class 16:	Printed matter; books; albums; cards of plastic; collectable cards.
Class 28:	Toy characters; construction toys; craft toys; rattles [playthings]; toys for babies; inflatable toys; jigsaws, puzzles; toys adapted for educational purposes; toys made of plastics; toys made of plastics; toy animals; stuffed toys; blocks (building -) [toys]; wind-up toys; electronic toys; talking toys; bendable toys; drones [toys]; model buildings; bathtub toys; fabric toys; toy flowers; dolls; pull toys; wind-up walking toys; scale model vehicles; toy whistles; water toys; play tents; card games; trading cards [card game]; fancy dress outfits being children’s playthings; costumes being childrens playthings; doll costumes; toy model kits; games; toys, including plush toys, cloth toys and mechanical toys.
Class 35:	Wholesaling and retailing relating to products, articles, equipment and toys for children; business brokerage relating to products, articles, equipment and toys for children; internet trade (online shopping) of products, articles, equipment and toys for children; advertising and business information via the internet for business purposes, relating to products, articles, equipment and toys for children; on-line advertising on a computer network; distribution of samples; publicity; marketing; advertising; business promotion; franchising; business management; business administration; consultancy relating to wholesaling and retailing in connection with products, articles, equipment and toys for children; mediation of trade business for third parties.

2. European Union trade mark application No 14 884 514 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 884 514. The opposition is based on European Union trade mark registration No 10 908 259. 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

The goods and services on which the opposition is based are the following:

Class 9:	Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 28:	Games and playthings.
Class 35:	Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 16:	Printed matter; bookbinding material; photographs; stationery; books; pamphlets; magazines [periodicals]; posters; tickets; newsletters; catalogues; printed matter; albums; prospectuses; advertising and information material of paper or plastic; cards of plastic; collectable cards.
Class 28:	Toy characters; construction toys; craft toys; rattles [playthings]; toys for babies; inflatable toys; jigsaws, puzzles; toys adapted for educational purposes; toys made of plastics; toys made of plastics; toy animals; stuffed toys; blocks (building -) [toys]; wind-up toys; electronic toys; talking toys; bendable toys; drones [toys]; model buildings; bathtub toys; fabric toys; toy flowers; dolls; pull toys; wind-up walking toys; scale model vehicles; toy whistles; water toys; play tents; card games; trading cards [card game]; fancy dress outfits being children’s playthings; costumes being childrens playthings; doll costumes; toy model kits; games; toys, including plush toys, cloth toys and mechanical toys.
Class 35:	Wholesaling and retailing relating to products, articles, equipment and toys for children; business brokerage relating to products, articles, equipment and toys for children; internet trade (online shopping) of products, articles, equipment and toys for children; advertising and business information via the internet for business purposes, relating to products, articles, equipment and toys for children; on-line advertising on a computer network; distribution of samples; publicity; marketing; advertising; business promotion; franchising; business management; business administration; consultancy relating to wholesaling and retailing in connection with products, articles, equipment and toys for children; mediation of trade business for third parties.

An interpretation of the wording of the list of goods and services is required to determine their scope of protection.

The term ‘including’, 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, EU:T:2003:107).

However, the terms ‘relating to’ and ‘in connection with’, used in the applicant’s list of services to show the relationship of individual services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Class 16

The opponent’s games and playthings in Class 28 can have the same nature, purpose (recreational or educational), consumers and points of sale as the contested printed matter (listed twice), books, albums, cards of plastic and collectable cards. In particular, certain books and albums are also types of games, such as colouring books, activity books and albums for collectable cardboard or plastic cards. Therefore, the goods are similar.

The same cannot apply to the remaining contested goods, which are mainly stationery, paper and other printed matter that are not types of games or playthings like the opponent’s goods in Class 28. The natures, purposes and methods of use of the conflicting goods are different. They are not complementary or in competition. Moreover, they are usually not manufactured by the same undertaking. Therefore they are dissimilar to the opponent’s goods in Class 28.

As regards the opponent’s goods in Class 9 that contain blank data carriers (magnetic, digital and optical), the same reasoning applies. However, the fact remains that, in the marketplace, blank recording media and media that contain recorded data are very distinct products. There is no similarity between blank data carriers (of any kind) and the remaining contested goods, for instance catalogues, photographs or magazines, merely on the basis that the latter can be stored or saved electronically on data carriers, as the latter are merely ancillary goods in this situation. The opponent’s remaining goods in Class 9 are also dissimilar (computers and technical and purpose-specific apparatus and instruments).

Finally, as regards the opponent’s services in Class 35, first, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong interdependent, complementary relationship, this is not so in the present case given that the opponent’s services concern advertising, business management and office functions. The fact that such services may make use of, for instance, stationery or advertising material is too tenuous a link to result in any degree of similarity.

In view of the above, the contested goods, namely bookbinding material; photographs; stationery; pamphlets; magazines [periodicals]; posters; tickets; newsletters; catalogues; prospectuses; advertising and information material of paper or plastic and the opponent’s goods in Classes 9 and 28 and services in Class 35 have different natures and are used for different purposes. They are not available through the same distribution channels and are not manufactured/rendered by the same producers/providers. There is no link of complementarity or competition between them. In addition, goods are tangible, whereas services are intangible. Consequently, these contested goods are dissimilar to all of the opponent’s goods and services.

Contested goods in Class 28

The contested toy characters; construction toys; craft toys; rattles [playthings]; toys for babies; inflatable toys; jigsaws, puzzles; toys adapted for educational purposes; toys made of plastics; toys made of plastics; toy animals; stuffed toys; blocks (building -) [toys]; wind-up toys; electronic toys; talking toys; bendable toys; drones [toys]; model buildings; bathtub toys; fabric toys; toy flowers; dolls; pull toys; wind-up walking toys; scale model vehicles; toy whistles; water toys; play tents; card games; trading cards [card game]; fancy dress outfits being children’s playthings; costumes being childrens playthings; doll costumes; toy model kits; games; toys, including plush toys, cloth toys and mechanical toys are included in the broad category of the opponent’s games and playthings. Therefore, they are identical.

Contested services in Class 35

Advertising; business management; business administration are identically contained in both lists of services (including synonyms).

The contested advertising and business information via the internet for business purposes, relating to products, articles, equipment and toys for children; on-line advertising on a computer network; distribution of samples; marketing; publicity; business promotion are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The opponent’s business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Business brokers or mediators are professionals who assist in the buying and selling of businesses or products and play the role of an intermediary or middleman. Therefore, the opponent’s business management and the contested business brokerage relating to products, articles, equipment and toys for children; mediation of trade business for third parties; franchising; consultancy relating to wholesaling and retailing in connection with products, articles, equipment and toys for children both concern assistance in business. These services employ the same business skills and can, therefore, originate from the same companies or experts. They also have the same nature and end users. Therefore, they are similar.

Wholesaling and retailing relating to products, articles, equipment and toys for children; internet trade (online shopping) of products, articles, equipment and toys for children services are similar to a low degree to the opponent’s games and playthings in Class 28. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public (05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33).

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 and services found to be identical or similar to various degrees are directed at the public at large, and some of the services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and/or specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘BLACK’, ‘FIRE’ and ‘ENTERTAINMENT’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English‑speaking part of the public, such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is figurative and is composed of the words ‘BLACK’ and ‘FIRE’ written in upper case letters using a slightly stylised black font. In the centre of the sign, separating the two words, is a figurative device depicting a flame in red and black. The earlier mark also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, it will not be taken into consideration for the purposes of the comparison.

The words ‘BLACK’ and ‘FIRE’ will be understood by the relevant public as referring to the colour black and the hot, bright flames produced by things that are burning (information extracted from Collins Dictionary on 13/06/2017 at www.collinsdictionary.com). As these elements are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The figurative device of the flame will be understood by the relevant public as a depiction of a burning fire. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is also distinctive.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The contested mark is also figurative and is composed of the words ‘BLACKFIRE’ and ‘ENTERTAINMENT’, and also the letters ‘ADC’, all written in upper case letters in different sizes and/or colours. In the centre of the sign, behind the words, is a figurative device depicting overlapping waves in black.

Although the contested sign contains the single word ‘BLACKFIRE’, the relevant consumers, when perceiving it, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, they will break it down into the words ‘BLACK’ and ‘FIRE’, with the same meanings as indicated above, which have a normal degree of distinctiveness.

In contrast, the element ‘ENTERTAINMENT’ will be associated with performances of plays and films, and activities, such as reading and watching television, that give people pleasure (information extracted from Collins Dictionary on 13/06/2017 at www.collinsdictionary.com). Bearing in mind that all the relevant goods are closely related to the entertainment industry (toys, games and printed matter), and that some of the services are also related to the commercialisation of toys, this element is considered at least weak for all the relevant goods and those services, namely wholesaling and retailing relating to toys for children; internet trade (online shopping) of toys for children. For the rest of the relevant services, it has a normal degree of distinctiveness.

The remaining element, ‘ADC’, has no meaning for the relevant public, which will also perceive the figurative device of the overlapping black waves as having no particular meaning in relation to the relevant goods. Both are, therefore, distinctive.

As regards the contested sign, the word ‘BLACKFIRE’ and the figurative element of the waves overshadow the other elements of the mark by virtue of their central position and large size. They are visually co-dominant in the contested trade mark.

Before continuing with the comparison, it is important to note 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).

Visually, the signs coincide in the words ‘BLACK*FIRE’, present identically in both signs. In the contested sign, this coinciding element is the dominant element. The signs differ in the additional letters ‘ADC’ (significantly smaller) and word ‘ENTERTAINMENT’, present only in the contested sign. The latter element is weak for all the goods and some of the services. The signs also use different fonts to depict the words, and the figurative devices in the signs also have a remote resemblance, as the red flame in the earlier mark is not unlike the depiction of waves in the contested sign. Overall, both signs are also visually similar in the colours used, namely red, black and white.

Therefore, as the coinciding element is verbal, and consequently, as indicated above, has a greater impact, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words /BLACK FIRE/, present identically in both signs and being the most distinctive and dominant verbal element in the contested sign. The pronunciation differs in the sound of the letters /ADC/, if pronounced, and of the word /ENTERTAINMENT/ of the contested sign. The latter element is weak for all the relevant goods and some of the services, and has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived mainly as ‘BLACK‑FIRE’, with the subtle difference of the additional word ‘ENTERTAINMENT’ in the contested sign (‘ADC’ has no meaning), the signs are conceptually highly similar.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods and services are partly identical or similar to various degrees and partly dissimilar. The relevant public is both the general and a specialist public. The distinctiveness of the earlier mark is normal, as indicated in the previous section.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The signs are conceptually and aurally highly similar, and visually they also have an average degree of similarity. The coinciding element plays an independent distinctive role in both signs. It is a verbal element, which, as indicated, has greater impact than figurative elements, and in the contested sign it is also the co-dominant element. The differing elements are therefore confined to weak or secondary elements in terms of dominance or impact.

Indeed, it is highly conceivable that the relevant consumer, even the specialist consumer with a high degree of attentiveness, will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the existence of earlier trade marks in other registers (EU or national) shows that likelihood of confusion does not exist. This assertion is based on the fact that other trade marks that include the element ‘BLACKFIRE’ are registered for the same or similar goods and services. In support of its argument, the applicant refers to two trade mark registrations in the United Kingdom and France.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘BLACKFIRE’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark, even for those services found to be similar to a low degree.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michal KRUK

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.