OPPOSITION No B 2 813 114

Koh-I-Noor Hardtmuth a.s., F.A. Gerstnera 21/3, 371 30 České Budějovice, Czech Republic (opponent), represented by Korejzova Legal v.o.s., Korunní 810/104 E, 101 00 Praha 10, Czech Republic (professional representative)

a g a i n s t

Johann Froescheis Lyra-Bleistift-Fabrik GmbH & Co. KG, Willstätterstr. 54-56, 90449 Nürnberg, Germany (applicant), represented by Stippl Patentanwälte, Freiligrathstr. 7a, 90482 Nürnberg, Germany (professional representative).

On 30/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 813 114 is upheld for all the contested goods.

2. European Union trade mark application No 15 802 218 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 802 218 ‘REMBRANDT POLYCOLOR’ (word mark). The opposition was initially based on, inter alia, European Union trade mark application No 15 758 097 ‘Polycolor’ (word mark), which was registered on 23/02/2020 (i.e. during the course of the present opposition proceedings). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier mark.

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 15 758 097 ‘Polycolor’ (word mark).

a) The goods

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

Class 16: Coloured pens; pastel crayons; pencil leads; pencil lead refills; chalks for colouring; pencil lead holders; writing instruments; writing tablets; drawing pencils; drawing materials; drawing paper; easel pads.

The contested goods, following a limitation by the applicant on 08/08/2018, are the following:

Class 16: Goods for writing and drawing, in particular wood-cased pencils, colour pencils, lead pencils, pens, crayons, drawing pencils; wax crayons; wood-cased pens for artists; wood-cased pencils for artists; wood-cased coloured pencils for artists; wood-cased lead pencils for artists.

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

The term ‘in particular’, 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 (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

The contested goods for writing and drawing, in particular wood-cased pencils, colour pencils, lead pencils, pens, crayons, drawing pencils; wax crayons; wood-cased pens for artists; wood-cased pencils for artists; wood-cased coloured pencils for artists; wood-cased lead pencils for artists are identical to the broad categories of the opponent’s writing instruments; drawing materials, either because they are identically contained in both lists, including synonyms or slightly different wording (e.g. the contested goods for writing and drawing), or because the opponent’s goods include, or overlap with, the contested goods (e.g. the contested wax crayons; wood-cased pens for artists; wood-cased pencils for artists).

b) 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 and at business customers with specific professional knowledge or expertise, such as artists.

The degree of attention is considered to be average.

c) The signs

Polycolor	REMBRANDT POLYCOLOR
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 component ‘color’ (the American English spelling of ‘colour’), present in both signs, will be understood by the English-speaking part of the public and by the part of the public for which the spelling of the equivalent word is identical or similar, such as in French (‘couleur’), Italian (‘colore’), Romanian (‘culoare’) and Spanish (‘color’). However, ‘color’ is meaningless, and therefore distinctive, for a substantial part of the relevant public that does not speak these languages (16/09/2019, R 2167/2018‑4, KISS COLOR (fig.) / Kiss et al., § 23). This is the case, for example, for the public from Bulgaria and Hungary.

The component ‘poly’ of both signs will be understood by English-speaking consumers as a prefix meaning ‘more than one; many or much; having an excessive or abnormal number or amount’ (information extracted from Collins Dictionary on 27/07/2020 at https://www.collinsdictionary.com/dictionary/english/poly). Moreover, it is very similar to ‘poli’, which is a widely used prefix of Greek origin that also means ‘many, much’. Therefore, ‘poly’ will be understood across the relevant territory.

Considering the above, and as also correctly pointed out by the applicant, the verbal element ‘Polycolor’, which the signs have in common, is meaningful in those countries where English is understood, as well as in some of the non-English-speaking parts of the relevant territory. Given that the meaning of this element as a whole and its relationship to the goods in question may affect its distinctiveness, the Opposition Division will assess the signs from the perspective of the part of the relevant public for which ‘Polycolor’, taken as a whole, is a meaningless term, and therefore distinctive for the goods at issue. Such a public exists, for example, in Bulgaria and Hungary.

The verbal element ‘REMBRANDT’ of the contested sign refers to the name of a Dutch painter, considered one of the greatest painters in history. Therefore, this element will be meaningful for the public under assessment. The opponent disputed the distinctiveness of this element in relation to the relevant goods in Class 16, claiming that the average consumer would associate these goods with the name of the Dutch painter rather than with their source of origin. The Opposition Division does not share the opponent’s view. Although a reference to a famous artist in relation to writing and drawing instruments might create a positive impression on consumers, it will not be perceived as a direct description of any characteristics of the goods; nor will the allusion materially affect the distinctiveness of this element in any other way. Therefore, the degree of distinctiveness of this element must be considered normal.

As already indicated above, at least in the Bulgarian- and Hungarian-speaking parts of the European Union, the verbal element ‘Polycolor’ of the signs, when taken as a whole, is not likely to be understood or associated with any meanings and will be perceived in its entirety as a distinctive element. This holds true even if the part ‘Poly’ is understood by the public under assessment and were to be perceived as weak for the goods in question (e.g. as an inexact indication of the quantity of the goods in the package). However, this is debatable, considering that this part of the public cannot draw any conclusion as to what exactly ‘Poly’ is referring to, given that the element ‘color’ is not understood.

The opponent argued that the verbal element ‘Polycolor’ was the dominant element of the signs. However, the Opposition Division reminds that by definition, word marks have no dominant element. Therefore, this argument of the opponent is irrelevant.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Polycolor’ and its sounds. However, they differ in the distinctive verbal element ‘REMBRANDT’ of the contested sign, and its sounds.

The fact that the earlier mark is written in title case while the contested sign is written in upper case is immaterial, because, in the case of word marks, it is the word as such that is protected and not its written form (21/09/2012, T‑278/10, WESTERN GOLD / WeserGold et al., EU:T:2012:1257, § 44, 46).

Therefore, the signs are visually and aurally similar to a below-average degree.

Conceptually, although the signs as a whole do not have any meaning for the public under assessment, the component ‘Poly’, included in both signs, will be associated with the meaning explained above. To that extent (notwithstanding its possibly weak character), and taking into account the additional concept conveyed by the word ‘REMBRANDT’ in the contested sign, the signs are conceptually similar to a below-average degree.

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

d) 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 under assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a possibly weak element in the mark, as stated above in section c) of this decision.

e) 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services 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, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion considers the perception of the Bulgarian- and Hungarian-speaking parts of the public in the relevant territory. The relevant public consists of the public at large and business customers, the degree of attention is average and the earlier mark has a normal degree of inherent distinctiveness.

As concluded above, the contested goods are identical to the opponent’s goods.

The signs in conflict are similar to a below-average degree in all aspects of the comparison (visually, aurally and conceptually), as explained in section c) of this decision. This is because the earlier mark is completely reproduced in the contested sign, in which it plays an independent and distinctive role. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public is likely to detect the differences between the conflicting signs, the likelihood that it will associate the signs with each other is very real. Indeed, the relevant consumer is likely to perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is perfectly conceivable that the relevant public with an average degree of attention will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, under the ‘POLYCOLOR’ brand. This is all the more likely because of the identity of the goods at issue.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the Bulgarian- and Hungarian-speaking parts of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 758 097. 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 sign 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark No 15 758 097 leads to the success of the opposition and to the rejection of the contested sign 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) or the ground of Article 8(5) EUTMR claimed with regard to these trade marks.

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

Martina GALLE

Martin MITURA

Katarzyna ZANIECKA

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.