OPPOSITION No B 3 008 169

Coolpay Pte Ltd, 2 Battery Road, #28-01 Maybank tower, 049907, Singapore, Singapore (opponent), represented by Squire Patton Boggs (UK) LLP, 7 Devonshire Square, EC2M 4YH, London, United Kingdom (professional representative)

a g a i n s t

The Touchee Tales Oy, c/o Sanna Seiko Salo, Kiveliönkatu 44, 33580 Tampere, Finland (applicant).

On 18/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 008 169 is upheld for all the contested goods, namely

Class 9: Educational apparatus and instruments; computer software; compact discs; DVDs; other digital data carriers.

2. European Union trade mark application No 15 991 921 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 991 921, for the word mark ‘TOUCHEE’, namely against all the goods in Class 9. The opposition is based on international trade mark registration designating the European Union No 1 288 617, 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Computer programs [downloadable software];

The contested goods are the following:

Class 9: Educational apparatus and instruments; computer software; compact discs; DVDs; other digital data carriers.

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.

The contested computer software covers, as a broad category, the opponent´s computer programs [downloadable software]. Therefore, they are identical.

The contested educational apparatus and instruments include, inter alia, various types of hardware used for educational/training purposes (e.g. computers; tablets) which need programs, routines, and symbolic languages to control the functioning and direct their operations, in order to work properly. These are programs are known as software. According to this, it can be stated that the contested educational apparatus and instruments are similar to the opponent´s computer programs [downloadable software]; all included in this class, since they are complementary, can coincide in distribution channels/points of sale, can be directed at the same consumers and can come from the same undertakings.

The contested compact discs; DVDs; other digital data carriers are similar to a low degree to the opponent’s computer programs [downloadable software]; all included in this Class (9) since they are complementary and can originate from the same kind of undertakings.

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 and services found to be identical and similar to varying degree are directed at both, the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price, or terms and conditions of the goods and services purchased.

c) The signs

	TOUCHEE
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 implies that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union.

The verbal element of the earlier mark ‘TOUCHÉ’ and the contested sign ‘TOUCHEE’ are meaningful in certain territories, for example in those countries where French is understood, the first as the past participle of the verb ‘toucher’ used as an acknowledgement of a hit, and the second one, as its feminine form, despite the fact that in French it contains an accent that is not present in the contested sign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, since from this perspective the signs bear additional coincidences (e.g. conceptual).

Both elements, ‘TOUCHÉ’ and ‘TOUCHEE’, have no meaning in relation to the relevant goods and services and are, therefore, distinctive.

The figurative element of the earlier mark is considered decorative as consists of four common geometrical shapes. Furthermore, 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, which attributes the verbal elements a stronger impact (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently not only is this element secondary but is also the least distinctive (if at all) element. No elements could be considered clearly more dominant (visually eye-catching) than other elements.

The similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52). Indeed aside from the accent, the verbal element of the earlier mark is entirely incorporated in the contested sign and the additional ‘e’ at the end is something that will not be immediately appreciated given its secondary positioning. Further, the stylisation of the verbal element of the figurative mark is so minimal that it does not constitute a clear difference.

Visually, the signs coincide in ‘TOUCHE’, which constitutes the only verbal element of the earlier mark. Even if they differ in the figurative element and the slight stylisation of the earlier mark, these differences are marginal for the reasons previously explained. The difference in the accent in the earlier mark is rather insignificant due to its small size.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of its letters, taking into account that the additional differing letter ‘E’ of the contested sign is silent in French, and the accent in the earlier mark has no impact.

Therefore, aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs relay the same meaning, the only difference in the conjugation, the earlier mark being a past participle whilst the contested is feminine. Consequently, both will be perceived as having the same meaning thus 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.

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 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.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to varying degrees. The degree of attention of the relevant public may vary from average to high and the distinctiveness of the earlier mark is normal.

The signs are visually and conceptually similar to a high degree and aurally identical. The differences between the signs are based on secondary, less distinctive elements.

Likelihood of confusion covers situations 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. Indeed, it is highly conceivable that the relevant consumer will 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/services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consumers could be led to believe that the owner of the earlier mark has launched a new line of products, for example a line for women, Therefore, there is a likelihood of confusion as consumers, even professionals with a high degree of attention, aware of the differences between the signs, nevertheless assumes that they are derived from the same undertaking or economically-linked undertakings.

Taking into account all the above, the Opposition Division considers that there is a likelihood of confusion on the French-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 288 617. It follows that the contested trade mark must be rejected for the all the contested goods, including those found similar to low degree, since the coincidences between the marks are sufficient to counteract the low similarity of those goods (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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

María del Carmen SUCH SÁNCHEZ

María Clara IBÁÑEZ FIORILLO

Vanessa PAGE

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.