OPPOSITION No B 2 835 646

Brigitte Müller, Rotthauser Str. 91, 45884, Gelsenkirchen, Germany (opponent),

a g a i n s t

Vinci Group Sp. z o.o., Reguły ul. Królewska 5, 05-816, Michałowice, Poland (applicant), represented by Biuro Usług Patentowych Jan Szuta, ul. Pływacka 94, 94-127, Łodź, Poland (professional representative)

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 835 646 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 15 964 224 . The opposition is based on European Union trade mark registration No 12 630 125 .
The opponent invoked Articles 8(1)(a) and (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.

a) The goods

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

Class 28: Toys, playthings; gymnastic and sporting articles.

The contested goods are the following:

Class 28: Playground apparatus made of metal; playground apparatus made of wood; playground apparatus made of plastics; play apparatus for use in children's nurseries; body-training apparatus.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical or similar are directed at both the public at large and at professionals.

The degree of attention will vary from average to higher than average. An higher than average degree of attention will be paid in relation to part of the goods, for instance, play apparatus for use in children's nurseries, since these are purchased mainly by professionals, with the purpose of being used by small children or babies. In this scenario, the safety and quality of the goods is of great importance, and this will lead consumers to pay a higher than average degree of attention.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is 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.

In this case, it must be noted that the elements forming the marks can be perceived in different ways depending on the language spoken by consumers and of the visual perception of the signs, in particular of the earlier mark. This sign is highly stylised, and it can be perceived as a random combination of meaningless lines or, at least by part of the public, as a handwritten signature formed by the words ‘Da Vinci’.

The contested sign will be perceived by the vast majority of consumers as formed by the words ‘play vinci’. However, it cannot be totally disregarded that part of the public perceives the middle element as a stylised letter ‘A’ or as a meaningless curved line.

In order to focus on the best-case scenario for likelihood of confusion to arise, the Opposition Division will take into account the perception of the signs from the perspective of those consumers for whom the signs bear more coincidences. In this case, the part of the public perceiving the earlier mark as ‘Da Vinci’ and the contested sign as ‘play vinci’ will find coincidences between the marks (i.e. aural) that will not arise from other perspectives. Therefore, the Opposition Division will proceed with the analysis and comparison of signs by taking into account this part of the public.

Consumers will perceive the earlier mark as the signature of Leonardo Da Vinci (commonly referred to as ‘Da Vinci’), a famous Italian polymath of the Renaissance known by its contribution to art (paintings, sculptures) and ingenious inventions.

Taking into account the kind of goods involved, the word ‘play’ in the contested sign will be perceived as the basic-English word widely known and used throughout the relevant territory for referring to the act of performing a game, or participating in it, for the purpose of amusement. The word ‘vinci’ will be perceived by the relevant public either as the name of an Italian city, as an Italian surname, or as a meaningless term. The Italian-speaking part of the public could also perceive it as an imperative, meaning ‘win’.

The words ‘Da Vinci’ of the earlier mark are neither descriptive nor allusive of the characteristics of the goods involved, and are therefore of average distinctive character in relation to them.

The word ‘play’ in the contested sign is of, at most, of lower than average distinctive character in relation to the goods involved, since it can be seen as at least allusive or descriptive of their characteristics (e.g. of the fact that they are meant for playing or amusement purposes). The word ‘vinci’ is of average distinctive character when perceived as the name of an Italian city, as an Italian surname, or as a meaningless term since, with these concepts, it is neither descriptive nor allusive of their characteristics. However, if perceived as meaning ‘win’ (i.e. by Italian-speaking consumers) it can be seen as at least evocative of the common purpose of participating in games (e.g. to win). From this perspective, it would be of lower than average distinctive character.

Regarding the visual impact of the elements forming the marks, the earlier mark has no elements that could be considered more dominant (visually eye-catching) than others. The contested mark is formed by the dominant element ‘vinci’ in bright pink, and by the less eye-catching word ‘play’, of much smaller size and in blue.

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, and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader. According to this, the part of the public referred to above reads the earlier mark as ‘Da Vinci’ and the contested mark as ‘play vinci’. It is therefore relevant to note that the first parts read and pronounced in the signs constitute the main dissimilarities between them (see detailed comparison below)

Visually, the signs do not visually coincide in any element. Even if perceiving the word ‘vinci’ in both of them, this term is represented in totally different stylisation in each of the marks. The signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘vinci’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Da’ in the earlier mark and ‘play’ in the contested sign.

Although the element ‘play’ has less impact than the contested sign’s second element ‘VINCI’, for the reasons explained above (e.g. for being of, at most, a lower than average distinctive character), this element is located at the more noticeable beginning of the mark and sounds very different from the earlier mark’s first and distinctive element ‘DA’. Therefore, overall the signs are considered aurally at most similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are conceptually not similar.

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.

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.

e) Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22 et seq.)

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabel’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods compared have been assumed to be identical are directed at both the public at large and at professionals. The degree of attention paid by consumers during the purchase of the goods will vary from average to higher than average.

The signs are not similar visually and conceptually, and are aurally similar to an average degree.

In this respect it must be noted that the degree of aural similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually visually perceives the mark designating those goods (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 55, and 28/06/2005, T-301/03, Canal Jean, EU:T:2005:254, § 55 and 08/02/2007, T-88/05, Nars, EU:T:2007:45, § 69).

That is the case with respect to the goods at issue here. The goods at stake are bought on sight in toy shops and sports shops, where they are generally displayed in such a way that consumers are able to examine those goods visually when purchasing them. Accordingly, in this case the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, joined cases T-117/03, T-119/03 and T-171/03, NLSPORT, EU:T:2004:293, § 50).

Furthermore, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them, when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping it immediately (22/06/2004, T-185/02, Picaro, EU:T:2004:189). As mentioned above, the consumers will attribute in any case a clear and precise meaning to the earlier mark ‘DA VINCI and, in some cases, a different meaning to the element ‘VINCI’ of the contested mark, which will enable them to clearly distinguish the marks.

Therefore, on the basis of all the foregoing, taking into account all the relevant circumstances of the case, the Opposition Division takes the view that the aural similarity found is sufficiently neutralised by the visual and conceptual differences, for the part of the public on which the comparison is focussed, and therefore, there is no likelihood of confusion, or even of association, despite the assumed identity of the goods. The relevant public will not perceive the goods bearing the ‘Da VINCI’ logo and the ‘play VINCI’ logo as originating from the same undertaking or from economically-linked undertakings.

In this case, it is considered that the coincidences between the signs described above are clearly not sufficient to lead consumers to believing that the signs come from the same or economically-linked undertakings, even assuming the identity of the goods involved. For all of the above, the Opposition Division considers that the signs in question have such blatant differences to enable the relevant consumers to safely distinguish between them and that therefore there is no likelihood of confusion between the marks.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since they involve the comparison of different signs and/or different goods and/or services (i.e. in the present case the earlier mark is highly stylised, and the element ‘play’ is contained in the contested mark, circumstances that are not reproduced or similar in any of the previous cases referred to). Overall, they involve different scenarios. Therefore, the same reasoning cannot be expected to be followed, or the same conclusion reached.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the parts of the public not taken into account in the comparison above, namely those consumers perceiving the earlier mark as a meaningless combination of lines and/or those consumers perceiving the middle element in the contested mark as something different from a letter ‘n’. This is because, from those perspectives, the signs contain even less similarities (i.e. aural) than from the perspective of the public constituting the
best-case-scenario for likelihood of confusion to arise, as explained in detail above.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR, because the signs are obviously not identical

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

María Clara IBÁÑEZ FIORILLO

María del Carmen SUCH SANCHEZ

Adriana VAN ROODEN

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.