OPPOSITION No B 2 702 226

Gilmar S.P.A., Via Malpasso, 723/725, 47842, S. Giovanni in Marignano (Province of Rimini), Italy (opponent), represented by Perani & Partners SPA, Piazza Armando Diaz, 7, 20123, Milano, Italy (professional representative)

a g a i n s t

POB Production Oy, Anjankuja 2 F 40, 02230, Espoo, Finland (applicant).

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 702 226 is partially upheld, namely for the following contested goods:

Class 16: Paper, cardboard; paper bags; paper packaging; printed matters; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); books; colouring books; pottering books; boxes for pens; pencil sharpeners; pens (office requisites); pencils; felt pens; crayons; rubber erasers; bookmarkers; albums; boxes of cardboard or paper; writing cases (stationery); writing cases (sets); bags made of plastic; invitation cards; desk mats; folders of paper and plastic; figurines of paper, cardboard or papier māché.

Class 25: Clothing, footwear, headgear; playsuits (clothing); clothing for children; underwear; nightwear; outer clothing; rain suits; clothing for gymnastics; ties, ascots, scarves, shawls; gloves; swimming costumes; socks; leotards; shoes, boots, slippers, sandals, deck shoes; hats, caps; sweaters; t-shirts; bodies for babies and small children; dresses; pants; leggings (trousers); shorts; skirts; belts (clothing); costumes for use in children's dress up play.

2. European Union trade mark application No 17 860 107 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 142 111 for the word mark ‘ICEBREAKER SNOW’, namely against all the goods in Classes 16 and 25. The opposition is based on international trade mark registration No 1 062 396 designating the European Union for the figurative mark and European Union trade mark registration No 9 434 457 for the figurative mark . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 062 396 designating the European Union.

1. The goods

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

Class 16: Pens, ballpoint pens, pencils, diaries, address books, notebooks; paper and paper articles, namely writing stationery and stationery adhesives; cardboard and cardboard articles, namely containers, desk pads and floor display units for merchandising products; artists' materials, namely paint brushes.

Class 25: Clothing, headgear.

The contested goods are the following:

Class 16: Paper, cardboard; paper bags; paper packaging; printed matters; periodicals; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); books; colouring books; pottering books; boxes for pens; pencil sharpeners; stickers (decalcomanias); pens (office requisites); pencils; felt pens; crayons; rubber erasers; postcards; bookmarkers; albums; boxes of cardboard or paper; writing cases (stationery); writing cases (sets); table napkins of paper; coasters of paper; posters; paper bunting; bags made of plastic; invitation cards; desk mats; folders of paper and plastic; figurines of paper, cardboard or papier māché.

Class 25: Clothing, footwear, headgear; playsuits (clothing); clothing for children; underwear; nightwear; outer clothing; rain suits; clothing for gymnastics; ties, ascots, scarves, shawls; gloves; swimming costumes; socks; leotards; shoes, boots, slippers, sandals, deck shoes; hats, caps; sweaters; t-shirts; bodies for babies and small children; dresses; pants; leggings (trousers); shorts; skirts; belts (clothing); costumes for use in children's dress up play.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

In its observations the applicant claims that the contested goods in Classes 16 and 25 are included in the application only for the merchandising of the name and logo of the main character of a series of children books.

However, the Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s argument in this regard must be set aside.

Contested goods in Class 16

Pencils; desk mats are identically contained in both lists of goods (including synonyms and despite minor differences in their wording).

The contested paper, adhesives for stationery purposes overlap with the opponent’s paper and paper articles, namely writing stationery and stationery adhesives. Therefore, they are identical.

The contested printed matters includes, as a broader category the opponent’s diaries. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested stationery includes, as a broader category the opponent’s paper and paper articles, namely writing stationery. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested paint brushes are identically contained in both lists of goods and the contested artists' material include, as a broader category the opponent’s artists' materials, namely paint brushes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested crayons are small sticks or pencils of charcoal, wax, clay, or chalk mixed with coloured pigment. The opponent's pencils are objects that consist of a thin piece of wood with a rod of a black or coloured substance through the middle. Therefore, the goods at issue overlap and are considered identical.

The contested pens (office requisites); felt pens are included in the broad category of the opponent's pens. Therefore, they are identical.

The contested cardboard; adhesives for household purposes are highly similar to the opponent’s paper and paper articles, namely writing stationery and stationery adhesives. The goods have the same nature and purpose, target the same relevant public and are produced by the same companies.

The contested paper bags; paper packaging; plastic materials for packaging (not included in other classes); boxes of cardboard or paper; bags made of plastic are at least similar to the opponent’s cardboard and cardboard articles, namely containers, as the goods may have the same purpose, to contain or transport goods, target the same relevant public and can be produced by the same companies.

The contested books are similar to the opponent’s diaries, as the latter are books for keeping record of personal daily events. Therefore, they coincide in their nature and purpose, are often marketed through the same distribution channels and are directed to the same users.

The contested colouring books; pottering books are similar to the opponent’s notebooks and the contested invitation cards are similar to the opponent’s address books. Indeed, the goods coincide in nature, producers, distribution channels and they target the same public.

The contested boxes for pens; pencil sharpeners; rubber erasers; bookmarkers; writing cases (stationery); writing cases (sets); folders of paper and plastic are all stationery and educational supplies that are similar to the opponent’s pens because they share the same distribution channels, target the same relevant public and coincide in producers.

The contested albums are similar to the opponent’s diaries because they share the same distribution channels, target the same relevant public and coincide in producers.

The contested figurines of paper, cardboard or papier māché are similar to the earlier artists' materials, namely paint brushes because they coincide in distribution channels, target the same relevant public and are produced by the same companies.

The contested instructional and teaching material (except apparatus) are similar to a low degree to opponent’s goods such as pens because they share the distribution channels and target the same relevant public.

The contested periodicals; photographs; stickers (decalcomanias); postcards; table napkins of paper; coasters of paper; posters; paper bunting are dissimilar to all the opponent’s goods in Classes 16 and 25. These goods are different in purpose and they are marketed though different distribution channels and usually do not have the same commercial origin. Furthermore, there is no complementarity or interchangeability either.

Contested goods in Class 25

The contested clothing, headgear are identically contained in both lists of goods.

The contested hats, caps are included in the broad category of the opponent’s headgear. Therefore they are identical.

The contested playsuits (clothing); clothing for children; underwear; nightwear; outer clothing; rain suits; clothing for gymnastics; ties, ascots, scarves, shawls; gloves; swimming costumes; socks; leotards; sweaters; t-shirts; bodies for babies and small children; dresses; pants; leggings (trousers); shorts; skirts; belts (clothing); costumes for use in children's dress up play are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; shoes, boots, slippers, sandals, deck shoes are similar to the opponent’s clothing. The goods have the same purpose of protecting the body against climatic changes and target the same relevant public. Moreover, they are often manufactured by the same companies and commercialised through the same distribution channels.

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 identical or similar to varying degrees are directed at the public at large and the degree of attention is average.

3. The signs

	ICEBREAKER SNOW
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs are meaningful in those countries where English is understood. This affects the perception of the signs by the public in these territories and thus the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, namely the public in the United Kingdom, Ireland and Malta.

The earlier mark is the figurative mark ‘ICEBERG’ that will be perceived as referring to a large mass of ice floating in the sea, especially a mass that has broken off a polar glacier. On the other hand, the word ‘ICEBREAKER’ of the contested mark will be perceived as a vessel with a reinforced bow for breaking up the ice in bodies of water to keep channels open for navigation.

The earlier mark, ‘ICEBERG’, and the word ‘ICEBREAKER’, of the contested sign, are not related to the relevant goods in a way that it would undermine their distinctiveness in any clear way and are, therefore, considered to be distinctive to an average degree.

However, the word ‘SNOW’ of the contested sign, in relation to the goods in Class 25 indicates that the goods, clothing, footwear and headgear are designed for winter sports and/or cold weather. Therefore, it distinctiveness is lower than average. For the remaining goods in Class 16, it is considered distinctive to an average degree as it has no connection to them or any of their essential characteristics.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘ICEB’ and differ in the sequence of letters/sounds ‘ERG’ versus ‘REAKER’ and the less distinctive word ‘SNOW’ for part of the goods of the contested sign. The signs share four letters placed at the beginning and the letters ‘E’ and ‘R’, respectively in fifth and sixth position of the earlier mark, are also in fifth and sixth position of the contested sign, although in reverse order. Furthermore, the earlier mark and the first word of the contested sign have six letters in common.

Therefore it is considered that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To a certain extent, the words ‘ICEBERG’ and ‘ICEBREAKER’ differ in that one refers to ice and the other to a boat designed to break ice. However, for part of the public the signs are similar on a conceptual level because an icebreaker is necessary during extreme weather, if there is a lot of ice, from which icebergs are formed. In that case, there is a connection between the word ‘ICEBERG’ in so far as it relates to drift ice from the North Atlantic waters in winter and the word ‘ICEBREAKER’, which refers to a vessel designed to protect commercial boats from icebergs and other dangers. The additional word ‘SNOW’ of the contested sign reinforces this link. Therefore, whether there is a common or different concept will thus vary in accordance with the people’s perception. It is thus safer to conclude that the conceptual comparison is not decisive and does not affect the visual and phonetic similarities or differences of the signs (08/09/2010, T-112/09, Icebreaker, EU:T:2010:361, § 33).

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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

The earlier mark has a normal degree of distinctiveness for the relevant public, which is composed of the public at large displaying an average degree of attention.

In the present case, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. The signs are visually and aurally similar to an average degree and the conceptual comparison is not decisive, on account of the coinciding letters ‘ICEB’, present at the beginning of the signs, and that the earlier mark and the first word of the contested sign have six letters in common. The marks differ in the remaining letters and the additional verbal element of the contested sign.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may 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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word ‘ICE’ in Classes 16 and 25. In support of its argument the applicant refers to several European Union trade mark registrations.

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 register data 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 ‘ICE’. 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 found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 9 434 457 for the figurative mark .

The European Union trade mark covers only ‘footwear’ in class 25 which is clearly different to the goods for which the opposition has already been rejected, for the same reasons as explained above in respect of the remaining goods of the opponent´s in Classes 16 and 25. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Jorge ZARAGOZA GOMEZ

Anna BAKALARZ

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.