OPPOSITION No B 2 934 787

El Corte Inglés, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Addo Play Limited, The Three Pines, Church Road, Penn, High Wycombe, HP10 8EG Buckinghamshire, United Kingdom (applicant), represented by Graham Coles & Co., 24 Seeleys Road, HP9 1SZ Beaconsfield, United Kingdom (professional representative).

On 11/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 934 787 is upheld for all the contested goods.

2. European Union trade mark application No 16 747 222 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 16 747 222 for the figurative mark , namely against all the goods in Class 28. The opposition is based on, inter alia, Spanish trade mark registration No 3 112 031 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 Spanish trade mark registration No 3 112 031.

a) The goods

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

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

The contested goods, following the limitation requested by the applicant on the 26/01/2018, are the following:

Class 28: Toys; playthings; toys for infants; stuffed and plush toys; mechanical toys; battery-operated toys; articles of clothing for toys and accessories therefor; carrying cases for toys and toy clothing; dolls; dolls' clothing; dolls' clothing accessories; dolls' houses; toy vehicles; sit-in toy vehicles; ride-on toys; construction toys; toy building block sets; kits of parts [sold complete] for constructing models; toy models; puzzles; electronic learning toys; toy action figures; play sets for action figures; trading cards [card game]; gymnastic and sporting articles not included in other classes; parts and accessories for all the aforesaid goods.

Playthings; gymnastic and sporting articles not included in other classes are identically contained in both lists of goods.

The contested toys; toys for infants; stuffed and plush toys; mechanical toys; battery-operated toys; articles of clothing for toys and accessories therefor; carrying cases for toys and toy clothing; dolls; dolls' clothing; dolls' clothing accessories; dolls' houses; toy vehicles; sit-in toy vehicles; ride-on toys; construction toys; toy building block sets; kits of parts [sold complete] for constructing models; toy models; puzzles; electronic learning toys; toy action figures; play sets for action figures; trading cards [card game]; parts and accessories for all the aforesaid goods are included in the broad category of the opponent’s playthings. Therefore, they are identical.

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.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both marks are figurative marks. The contested sign has no one element that could be considered clearly more dominant than other elements, while the element ‘JAPPY’ of the earlier mark is the dominant element due to its relative size and position. As claimed by the parties, the marks are made up of English terms, which will be meaningless for the Spanish public, even if it cannot be excluded that some of the relevant public may perceive the meaning of all or some of these English words. The Opposition Division finds it appropriate to focus the comparison of the signs on the majority of the Spanish public for which all the verbal elements that make up the signs at issue are meaningless and therefore fully distinctive.

The earlier mark is made up of the verbal elements ‘JAPPY FUNNY PETS’, with the verbal element ‘JAPPY’ written in a multi-coloured highly stylised typeface made to resemble different animals, and the verbal elements ‘FUNNY PETS’ written in a smaller standard typeface.

The contested sign is in different shades of grey and is made up of the verbal elements ‘HAPPY PETS’, with the verbal element ‘PETS’ written in a stylised typeface including an animal paw print, and the verbal elements ‘HAPPY’ written in a smaller standard typeface. They are placed on the outline of a house and, in the case of the word ‘HAPPY’, on a light rectangular background between two animal heads.

As mentioned above, the verbal elements are normally distinctive for the public taken into account, since they do not directly describe any characteristics of the goods. However, the figurative elements depicting animals are less distinctive, at least for part of the goods, namely the toys and playthings that can take the form of animals.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘*APPY PETS’ present identically in both signs. They differ in the initial letter ‘J’ in the earlier mark, which is an ‘H’ in the contested sign, and in the verbal element ‘FUNNY’ of the earlier mark, which has no counterpart in the contested sign, as well as in their figurative elements (some of which are less distinctive for some of the goods) and stylisation, which is quite noticeable.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘API PETS’. The pronunciation differs in the sound of the letters ‘J’ and ‘FUNNY’ of the earlier mark, which have no counterpart in the contested sign.

Therefore, the signs are similar to an above average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, both signs include depictions of animals, and to this extent the signs will be associated with a coinciding concept (namely a variety of animals in each sign), as well as the differing concept of a house in the contested sign as explained above. Therefore, the signs are conceptually similar to a low 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.

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 despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) 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 are identical, and are directed at the public at large with an average degree of attention. The signs are aurally similar to an above average degree and visually and conceptually similar to a low degree; and the distinctiveness of the earlier mark is normal.

Due especially to the above average degree of aural similarity between the signs and taking into account that the goods are identical, a likelihood of confusion exists.

Considering all the above, there is a likelihood of confusion on the part of the public that will not perceive any meaning in the English terms as explained above. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 112 031. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 112 031 leads to the success of the opposition and to the rejection of the contested trade mark 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).

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

Benoit VLEMINCQ

Helen Louise MOSBACK

Jorge ZARAGOZA GÓMEZ

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.