DECISION

of the Second Board of Appeal

of 22 July 2019

In case R 362/2019-2

ESSENTIAL EXPORT, S.A.
Santa Ana, Forum II, Edificio Pacheco Coto, Cuarto Piso San José Costa Rica	Opponent / Appellant

represented by AROCHI & LINDNER, S.L., C/ Gurtubay 6, 3º izquierda, 28001 Madrid, Spain

v

SHENZHEN LIOUYI INTERNATIONAL TRADING CO., LTD
11C-3#, Xifa Huayuan Baoan Shenzhen 518100 People’s Republic of China	Applicant / Defendant

represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France

APPEAL relating to Opposition Proceedings No B 2 945 700 (European Union trade mark application No 16 736 712)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), A. Szanyi Felkl (Rapporteur) and S. Martin (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 17 May 2017, SHENZHEN LIOUYI INTERNATIONAL TRADING CO., LTD (‘the applicant’) sought to register the figurative mark

for the following goods:

Class 9 - Cabinets for loudspeakers; Loudspeakers; Microphones; Headphones; Battery chargers; Power banks; Dog whistles; Mouse [computer peripheral]; Couplers [data processing equipment]; Readers [data processing equipment]; Mouse pads; Pedometers; Cell phone straps; Portable media players;

Class 18 - Umbrellas; Parasols; Mountaineering sticks; Alpenstocks; Canes; Walking sticks; Walking stick seats; Walking stick handles; Walking cane handles; Luggage tags; Trunks [luggage]; Business card cases; Purses; School bags; School satchels; Tool bags, empty; Net bags for shopping;

Class 28 - Toys; Model cars [toys or playthings]; Electronic toys; Balls for games; Body-building apparatus; Body rehabilitation apparatus; Body-training apparatus; Skipping ropes; Jump ropes; Waterski ropes; Waterski tow ropes; Sports training apparatus; Elbow guards [sports articles]; Knee guards [sports articles]; Waist protectors for athletic use; Flying discs [toys]; Remote-controlled toy vehicles; Spinning tops [toys]; Toy watches.

The applicant claimed the colours ‘red’ and ‘black’.

2. The application was published on 24 May 2017.

3. On 22 August 2017, ESSENTIAL EXPORT, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, namely for the goods in Class 18.

4. The opposition was based on the following earlier EUTM registrations:

1. EUTM registration No 6 212 451 for the figurative mark

filed on 20 August 2007 and registered on 15 February 2012 for goods in Class 18;

2. EUTM registration No 15 213 457 for the figurative mark

filed on 15 March 2016 and registered on 22 August 2016 for goods in Class 18.

5. The grounds of the opposition was based on Article 8(1)(b) EUTMR.

6. The applicant requested proof of use of the earlier marks, and despite of the fact that the marks were not subject to proof of use, the opponent still submitted documents as evidence of use.

7. The signs and goods in conflict were as follows:

   EUTMR applied for	Earlier EUTMs
   Contested goods	Opposition based on the following goods
   Class 18 - Umbrellas; Parasols; Mountaineering sticks; Alpenstocks; Canes; Walking sticks; Walking stick seats; Walking stick handles; Walking cane handles; Luggage tags; Trunks [luggage]; Business card cases; Purses; School bags; School satchels; Tool bags, empty; Net bags for shopping.	Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags and briefcases; umbrellas, parasols and walking sticks except those intended for sports.

8. By decision of 30 January 2019 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. It gave, in particular, the following grounds for its decision:

• The earlier marks are figurative ‘TOTTO’ marks, the contested mark is entirely figurative. Contrary to the parties’ opinion, the Opposition Division believes that the consumers (the relevant public consists of the general EU public) will not recognise any letters in the contested sign, just linear black marks and two red dots.

• Visually, while the signs could possibly coincide in some of the vertical and horizontal black lines which form the letters ‘T’ of the earlier marks and are present in the contested mark, these coincidences are not sufficient to consider that the marks share any visual relevant similarity. Even with an effort from consumers to discern some letters in the highly stylised elements of the contested sign, no visual similarities can be detected between the marks.

• Aurally, purely figurative signs are not subject to a phonetic assessment. As the contested sign is purely figurative, it is not possible to compare the signs aurally.

• Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

• The signs merely coincide in irrelevant aspects and are therefore dissimilar. Since one of the necessary conditions of Article 8(1)(b) is missing, the opposition must be rejected.

Submissions and arguments of the parties

9. On 12 February 2019, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set. The statement of grounds of the appeal was received on 25 February 2019 and can be summarised as follows:

• The proof of use is summarised for the Board, in case it considers it necessary.

• The contested mark is not a figurative one, it can be clearly read as ‘TOTU’. Taking into account the words ‘TOTTO’ and ‘TOTU’, they are similar, and phonetically even highly similar.

• Furthermore, all the contested goods are identical or similar to the goods protected by the earlier marks.

• Consequently, and contrary to the contested decision, there is a likelihood of confusion, and the opposition must be upheld.

10. The applicant filed its observations on 23 April 2019. It essentially supports the finding of the contested decision that the signs are dissimilar, and requests the Board to confirm it.

Reasons

11. All references made in this decision should be seen as references to the EUTMR 2017/1001 (OJ L 154, 16.6.2017, p. 1), codifying EUTMR 207/2009, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and 68 EUTMR. It is, therefore, admissible.

Article 8(1)(b) EUTMR

13. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

14. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited).

15. According to the Court of Justice’s case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

Comparison of the goods

16. For reasons of procedural economy, the Board will examine the opposition as if all the contested goods were identical to those of the earlier mark.

Relevant territory

17. The earlier marks are EUTM registrations. Therefore, the relevant territory is the whole of the European Union.

The relevant public and its attention level

18. Established case-law has it that the average consumer is deemed to be ‘reasonably well-informed and reasonably observant and circumspect’. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §  26).

19. The Board finds that most of the goods assumed to be identical are directed at the public at large. Thus the public’s degree of attentiveness may vary from average to a higher degree, depending on the price range (leather goods and bags in Class 18) of the individual goods at issue.

As regards the proof of use

20. The Opposition Division was right not to consider the proof of use, since the earlier marks are almost identical, registered for the same goods, and the younger one, EUTM No 15 213 457, is, in any event, not subject to proof of use.

Comparison of the signs

21. The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

22. The signs to be compared are:

    EUTMR applied for	Earlier EUTMs

23. Insofar as the opponent refers to the manner in which the contested mark is used by the owner and how it may be classified in databases, this is irrelevant for the purpose of the present proceedings. The comparison must be made between the signs as they are registered or as they appear in the application for registration (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 57).

24. The earlier marks are slightly stylised word marks, representing the word ‘TOTTO’ in upper case letters, where the inside of the ‘o’ letters are shaded (in the black and white mark), or coloured in red and yellow.

25. The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

26. The assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 29).

27. The EUTM applied for consists of black, linear signs, ׀, ┘, ┌, and their combination and , divided by two red dots at their upper part. The Board agrees with the Opposition Division that no pronounceable word can be recognised in that sign, such as the claimed ‘TOTU’. The Board cannot recognise the upper case ‘T’ in the bicoloured sign at all. If anything, it reminds one of a lower case ‘r’, and if one really looks hard, one might see the sign as ‘ro-ril’ (with an inversed ‘L’), or ‘ro-rij’, but not as ‘TOTU’. The signs appearing as they are depicted are simply too different. It is rather unusual to depict the letters claimed by such symbols (by analogy, 30/11/2017, T-475/16, Fl (fig.) / fly.de (fig.), EU:T:2017:856, § 34). The contested sign, therefore, will be perceived as an abstract, figurative sign. Therefore, visually the signs are dissimilar.

28. Purely figurative signs are not subject to a phonetic assessment. As the contested sign is purely figurative, it is not possible to compare the signs aurally.

29. From a conceptual point of view, the Opposition Division erred in stating that neither of the signs had a meaning for the public in the relevant territory. The earlier signs, ‘TOTTO’ are very similar to lottery games called ‘TOTO’ in certain Member States, like Germany and Hungary. By some, it may be even perceived as derived from the Latin expression ‘in toto’ meaning ‘in all’ (see 09/03/2011, R 1291/2010-2, TOTTO / OTTO, § 30). Bearing this in mind, the Board considers that, even if the relevant public were to connect the word ‘TOTTO’ with the word ‘TOTO’, the marks would be, in any event, conceptually not similar, because of the ‘abstract figurative sign’ concept transmitted by the earlier mark. Because the contested mark is a meaningless sign, a conceptual comparison is not possible for the relevant public, and the conceptual aspect does not influence the assessment of the similarity of the signs.

30. As the signs do not coincide in any element, they are dissimilar overall.

Distinctiveness of the earlier mark

31. In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking.

32. The opponent did not explicitly claim or demonstrate that its earlier 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. The earlier trade mark has no clear 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.

Conclusion on the likelihood of confusion

33. For the purposes of applying Article 8(1)(b) EUTMR, the likelihood of confusion presupposes that the goods or services as well as the signs at issue are identical or similar to those in respect of which the earlier mark is registered. These conditions are cumulative. If the earlier sign and the mark applied for are not similar in the case at hand there can be no likelihood of confusion, regardless of the possible identity or similarity of the goods and whatever the reputation of the earlier mark (12/10/2004, C‑106/03, Hubert, EU:C:2004:611, § 51 and 54).

34. In light of the above, based on an overall assessment of the visual, aural and conceptual similarities between the marks and notwithstanding the principles of interdependence and imperfect recollection, the Board came to the conclusion that the marks at issue are not similar overall. The Board is of the opinion that the visual, aural and conceptual differences between them are sufficient, in spite of the possible identity or similarity of the goods designated, to preclude the resemblances between them from giving rise to a likelihood of confusion in the mind of the average consumer (03/05/2016, T‑454/15, Dynamic Life / DYNAMIN, EU:T:2016:262, § 50 and 08/12/2011, T‑586/10, Only Givenchy / Only, EU:T:2011:722, § 44).

35. The Board thus concludes that the contested decision is to be confirmed and the appeal is to be rejected.

Costs

36. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

37. These consist of the applicant’s costs of professional representation of EUR 550.

38. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed S. Stürmann

Signed A. Szanyi Felkl

Signed S. Martin

Registrar: Signed H.Dijkema