OPPOSITION No B 2 955 147

Ravi S.r.l. Unipersonale, Via Dell'Epomeo n. 223, 80126 Napoli, Italy (opponent), represented by G.D. Di Grazia D'Alto & C. S.n.c., Isola E1- Centro Direzionale, 80143 Napoli, Italy (professional representative)

a g a i n s t

Emirhan Yaramanci, Eski Hükümet Meydani, Pasa Camii Karsisi No 23, Bor, Nigde, Turkey (applicant), represented by Esquivel, Martin, Pinto & Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 29/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 955 147 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 627 011 for the figurative mark ‘ ’. The opposition is based on, inter alia, European Union trade mark registration No 15 412 687 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 European Union trade mark registration No 15 412 687.

1. The goods and services

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

Class 10: Dummies for babies; dummies for babies; disposable teats; feeding bottle teats; incontinence sheets for use with infants; incontinence sheets for use with babies; feeding bottle receptacles; covers for baby feeding bottles; feeding bottle receptacles; feeding bottle receptacles; feeding bottle valves; feeding bottle teats; feeding aids and pacifiers; teething rings; orthotic footwear; orthopedic soles.

Class 25: Children's wear; babies' pants [clothing]; rompers; children's headwear; trousers for children; children's wear; children's footwear; infants' boots; costumes for use in children's dress up play; children's wear; snap crotch shirts for infants and toddlers; beachwear; trunks; beachwear; beach robes; beach shoes; beach hats; sandals and beach shoes; christening robes; waist belts; earbands; layettes [clothing]; bridesmaid dresses; baby bunting [clothing]; cloth bibs; plastic baby bibs; union suits; mules; slipper socks; bath slippers; stockings; slippers; knitted underwear; gloves [clothing]; ski gloves; knitted gloves; gloves [clothing]; bandanas [neckerchiefs]; bandanas [neckerchiefs]; fascinator hats; nightcaps; knot caps; rainproof clothing; clothing; shoulder wraps [clothing]; maternity clothing; ear muffs [clothing]; handwarmers [clothing]; mufflers [clothing]; loungewear; layettes [clothing]; thermally insulated clothing; waterproof outerclothing; rainproof clothing; dance clothing; arm warmers [clothing]; headbands [clothing]; maternity bands; windproof clothing.

The contested goods are the following:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles, medical corsets, orthopedic shoes, elastic and supporting bandages; suture materials; artificial organs and prostheses; sterile theatre gowns and drapes, sterile clothes and covers for operating rooms; feeding bottles, teats, soothers, teethers for babies; equipment and furniture for surgical, medical, dental and veterinary tools; equipment and materials for sexual purposes and adult sexual stimulation aids; adult sexual aids; condoms.

Class 25: Clothing, footwear, headgear; under garments, outer garments, underwear, socks, foulards, leggings, pashminas, shawls, scarves, tunics, dresses, belts made of any material except protective ones; shoes, boots, slippers, sandals; hats, caps, bonnets, berets, turbans, sun hats, beach hats, caps [headwear], hoods, head covers.

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 case scenario.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high because goods in Class 10 concern health issues and some of those goods are specialised and will be bought infrequently and after thorough inspection.

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).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.

The earlier mark is a figurative mark consisting of the verbal elements ‘Win’ and ‘Kids’ depicted in slightly stylised, sparkly grey and handwritten cursive characters, with the first letters of the two terms capitalised.

The contested sign is a figurative mark consisting of the verbal elements ‘NO WORRIES AFTER OPERATION WIN PET’; the first four words of which are depicted in standard small black, upper case letters. The verbal element ‘WIN’ is depicted in white highly stylized upper case characters; underneath which on the right, the verbal element ‘PET’ is depicted in black, standard and upper case letters. On top of the verbal element ‘WIN’, there is a white human hand holding the shape of a dog and a cat. These elements feature within a red circle surrounded by a white circular border, placed on a black square background. Inside the white border, the previously mentioned verbal elements ‘NO WORRIES AFTER OPERATION’ appear.

The common element ‘WIN’ has positive or laudatory connotations, so that the part of the relevant public that understands English will perceive this term as a promotional, laudatory message or in any case will convey a positive message. In other words, it is a laudatory message that assures the relevant consumer that they will make the best choice in purchasing these products and they can achieve the most satisfactory results by using them. Therefore, it is at least weak for this part of the public in relation to the relevant goods. On the other hand, for the non-speaking English public, this element is meaningless and is, therefore, distinctive.

The word ‘KIDS’ in the earlier mark is a basic English word that will be understood throughout the relevant territory as a plural form of the noun ‘kid’, meaning ‘a child or young person’ (information extracted from Oxford Dictionaries on 07/08/2018 at en.oxforddictionaries.com/definition/kid). For the English speaking public, the combination of the words ‘Win Kids’ is distinctive to a low degree for the contested goods, as it may be perceived as allusive of certain characteristics: as mentioned above, on the one hand, it is a laudatory message that assures the relevant consumer that they will make the best choice in purchasing these products; and, on the other hand, indicates the intended user of the goods, namely children or young people. The non-speaking English public, will understand at least the term “KIDS” as it is a basic English tem and it will be perceived as an indication of a characteristic of the goods (e.g. the final consumer are children) and at least this term will be considered as non-distinctive in relation to all the goods.

The verbal elements ‘NO WORRIES AFTER OPERATION’ of the contested sign will be understood by the English-speaking part of the public. Bearing in mind that the relevant goods include ‘surgical, medical, dental and veterinary apparatus and instruments’, these elements are weak for part of the goods (e.g. for at least part of the goods in Class 10); however, they are normally distinctive for the remaining goods (e.g. the goods in Class 25). For the non-speaking English part of the public, the verbal elements ‘NO WORRIES AFTER OPERATION’ have no meaning and are thus to be considered distinctive for all the goods at issue.

On the other side, the verbal element ‘PET’ is weak for part of the goods in Class 10, more exactly ‘veterinary tools’ insofar as the English speaking public is concerned. Regarding the rest of the goods, this element is distinctive.

The figurative element consisting of the shape of a human hand holding the above-mentioned representation of a cat and a dog in the contested sign can be allusive and therefore somehow weak for some of the goods at issue (e.g. veterinary tools). However, the stylisation of this element is unusual; therefore it cannot be considered to be devoid of any distinctive character, rather its distinctiveness is slightly below average. On the other hand this element is distinctive for the rest of the goods.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The verbal elements ‘WIN PET’ of the contested sign are the dominant elements, as they are the most eye-catching.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘WIN’. On the other hand, they differ in the five additional verbal elements in the contested sign, ‘NO WORRIES AFTER OPERATION’ and ‘PET’. They also differ in the figurative elements of the contested sign, in particular in the shape of a human hand holding a dog and a cat, the element ‘KIDS’ of the earlier mark, as well as in the significantly different stylisation of the letters of the coinciding element WIN in both marks. Furthermore, the marks contain additional differences lying in the endings of the signs constituting them, in their different lengths and structures and in the figurative elements of the contested sign. The Opposition Division considers that in the present case the differences between the signs will not go unnoticed by the relevant consumers when they perceive the marks visually. The same applies to the figurative elements and overall graphical depiction of the contested sign, which, although less important than the verbal elements of the sign, will still play a relevant role in the visual impression created by that sign.

Considering the above, the visual impression created by the contested sign denotes clearly perceptible differences from the one created by the earlier mark, as they coincide only in the term ‘WIN’ which, however, is stylised in a very different way in the signs under comparison.

Therefore, the signs are similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘WIN’. The pronunciation differs in the sound of the additional sounds, ‘NO WORRIES AFTER OPERATION’ and the additional word ‘PET’ at the end of the contested sign. The pronunciation also differs in the second additional verbal element of the earlier mark, ‘KIDS’. Even though the verbal elements ‘WIN PET’ are the dominant elements, it must be borne in mind that the relevant public will also pronounce the additional sounds ‘NO WORRIES AFTER OPERATION’ when referring to the contested sign. These elements -even if of weaker distinctiveness for part of the public in relation to part of the goods - mark the overall rhythm and aural structure of the contested sign, rendering it very different from that of the earlier mark. All these additional words in the contested sign, which will be pronounced, create noticeable aural differences between the earlier mark and the contested sign.

Therefore, the signs are aurally similar to a low degree as well.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs have the word ‘WIN’ in common which is normally distinctive for part of the public but very differently stylised in the signs under comparison. However, the signs differ in their remaining elements, namely the word ‘Kids’ in the earlier sign which will be understood throughout the whole relevant territory and ‘NO WORRIES AFTER OPERATION’ and ‘PET’ in the contested sign. It cannot be excluded that the public will consider the expressions ‘WIN KIDS’ and ‘NO WORRIES AFTER OPERATION, WIN PET’ as a whole, which denote diverse concepts for the English-speaking public. While the earlier sign clearly refers to ‘kids’, the contested sign refers to the fact that after an operation the consumer will not have to worry about their pet. In any event, and including for the non-English speaking public, the contested sign differs in the concept of a human hand holding a dog and a cat, which has no counterpart in the earlier sign and, considering their stylised depiction, will not be overlooked by the public.

Considering the above factors, the signs are conceptually similar to a very low degree for the English-speaking public as both have the verbal element ‘WIN’ which is nevertheless weak for that part of the public. For the rest of the public, the earlier sign will communicate the concept of “KIDS”, even though weak, and the other the concept of a cat a hand and a dog, therefore the marks are dissimilar for the non-English speaking public.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question for a part of the relevant public, namely the speaking-English part of the public. The mark has a normal degree of distinctiveness for the remaining part of the relevant public, where as a whole it has no meaning in relation to the goods.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods at issue have been assumed to be identical. The degree of attention paid by the relevant public may vary from average to high. As stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question for a part of the relevant public, namely the English-speaking part of the public. The mark has a normal degree of distinctiveness for the remaining part of the relevant public, at least insofar as the term WIN is concerned being the term KIDS non– distinctive throughout the whole relevant territory.

As to the similarities established between the signs, the signs have been found aurally similar only to a low degree and this to the extent that they coincide in the verbal element ‘WIN’. However, as explained above in section c) of the present decision, this commonality cannot outweigh the striking differences in the pronunciation, intonation and rhythm of the verbal elements, ‘NO WORRIES AFTER OPERATION WIN PET’, on the one hand, and ‘WIN KIDS’, on the other.

Furthermore, on a visual level, the signs in question also show overwhelming differences. The relevant public will consider the contested sign as a whole and the differences between the signs when perceived visually are striking.

Conceptually, the signs are similar to a very low degree for the English-speaking public as they have in common the verbal element ‘WIN’ and for the rest of the public the different terms are normally distinctive

.

Based on the overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that the mere fact that the marks coincide in the word ‘WIN’, which has a very low degree of distinctiveness for a part of the public (both alone and in combination with the remaining terms included in the signs under comparison), is insufficient to trigger a likelihood of confusion, including a likelihood of association, on the part of the relevant public. The differing verbal elements of both signs and the figurative elements of the contested sign will enable consumers, even those displaying an average degree of attention, to safely differentiate between the signs. In view of these differences and as a result of a lack of any other similarities between the signs under comparison, English-speaking consumers are not likely to make assumptions as regards to the commercial origin of the goods or, indeed, any economic links between commercial undertakings merely on the basis of the word ‘WIN’, which has a low degree of distinctiveness for the goods in question.

Furthermore even the scenario where the public does not speak English (possibly the best case scenario for the Opponent) and therefore the one where the only concepts understood are those conveyed by “KIDS” and representation of the shape of a human hand holding the above-mentioned representation of a cat and a dog, and where the term “WIN” is distinctive and common to both signs the remarkable visual and phonetic differences between the signs, have much more weight than the similarities in the case at issue and will be certainly perceived by the consumer at issue irrespective of the degree of attention.

Finally, and for the sake of completeness, as regards to the goods in Class 25 for which the attention of the public will be average, account must be taken of the fact that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T 117/03 T 119/03 & T 171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional and different verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

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.

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

• Italian trade mark registration No 1 623 788 for the figurative mark ‘  ’, registered for goods in Class 25.

Since this mark is identical to the one that has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, 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.

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

Riccardo RAPONI

Michele M. BENEDETTI - ALOISI

Edith Elisabeth VAN DEN EEDE

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.