OPPOSITION No B 2 923 723

Lego Juris A/S, Koldingvej 2, 7190, Billund, Denmark (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001, Alicante, Spain (professional representative)

a g a i n s t

Shantou Chenghai Huaxin Plastic Mould Factory, Xingye West 2 Road, Laimei Industrial District, Chenghai District, Shantou, Guangdong, People’s Republic of China, (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3º izda, 48 011 Bilbao (Vizcaya), Spain (professional representative).

On 19/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 723 is upheld for all the contested goods.

2. European Union trade mark application No 15 492 309 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 492 309 . The opposition is based on, inter alia, European Union trade mark registration No 107 029 . The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 107 029 .

1. The goods

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

Class 28: Games and playthings, except construction toys; gymnastic and sporting articles (included in class 28); decorations for Christmas trees.

The contested goods are the following:

Class 28: Apparatus for games; chess games; balls for games; body-building apparatus; machines for physical exercises; ornaments for Christmas trees, except illumination articles and confectionery; fishing tackle.

The contested apparatus for games; chess games are included in the opponent’s broad category of games, except construction toys. Consequently, these goods are considered identical.

The contested balls for games; balls for games; body-building apparatus; machines for physical exercises; fishing tackle are included in the opponent’s broad category of sporting articles (included in class 28). Consequently, these goods are considered identical.

The contested ornaments for Christmas trees, except illumination articles and confectionery are included in the opponent’s broad category decorations for Christmas trees. Consequently, these goods are considered identical.

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 are directed at the public at large. The degree of attention of the public is likely to be average.

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 earlier trade mark is a three-dimensional shape mark consisting of a red brick. The contested sign is a figurative mark consisting of the word “Brick” and the figure of a brick in its upper part, as shown above.

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 element “BRICK” is 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.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements taking into account that they do not seek protection for construction toys, for instance.

The earlier mark has no elements which could be considered clearly more dominant (visually eye‑catching) than other elements. It is also the case of the contested sign where both the figurative and the verbal elements are co-dominant.

Visually, the signs coincide in the depiction of the shape of toy brick with cylindrical studs in their upper part. However, they differ in the contested sign’s depiction of the word “Brick” and in the red colour of the toy brick of the earlier mark versus a black, dark grey and white depiction of the elements in the contested sign.

The signs are visually similar to an average degree.

Purely figurative or purely 3D signs are not subject to a phonetic assessment. As the earlier sign does not contain any verbal elements, it is not possible to compare the signs aurally.

Conceptually, the public in the relevant territory will perceive the earlier sign as a toy brick. The contested mark will also be perceived as a toy brick which is furthermore reinforced by the word “Brick”.

The signs are conceptually identical.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 goods are identical.

The degree of distinctiveness of the earlier trade mark is average. In this context, as mentioned above, the Opposition Division notes that the earlier trade mark explicitly does not cover construction toys in Class 28.

The degree of attention of the relevant public is average.

The marks are visually similar to an average degree and they are conceptually identical.

Given that the goods are identical and that the earlier trade mark has an average degree of distinctiveness for the relevant goods, it is considered that the visual similarities and conceptual identity between the marks, as described above, will lead to a likelihood of confusion through association. The relevant consumers are likely to associate the marks and think that the identical goods bearing the marks in dispute come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 107 029 . It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the compared earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vita VORONECKAITE

Inés GARCIA LLEDO

Chantal VAN RIEL

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.