OPPOSITION No B 2 976 648

Leisure Group Italia S.r.l., Via Licinia, 3, 00153 Roma, Italy (opponent), represented by Società Italiana Brevetti S.P.A., Via Carducci, 8, 20123 Milano, Italy (professional representative)

a g a i n s t

Shenzhen Kean Digital Co., Ltd., Floor 4, Ru Jun Building, No.105 Zhongxin Road, Bantian Street, Longgang District, Shenzhen, Guangdong Province 518129, People's Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 20/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 976 648 is partly upheld, namely for the following goods in Class 28:

Archery implements; balls for games; toys; playing balls; fishing tackle; swimming pools [play articles]; spinning tops [toys]; skis; drones [toys]; dolls' feeding bottles; dolls' clothes.

2. European Union trade mark application No 16 841 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the - remaining - goods of European Union trade mark application No 16 841 017 (figurative mark: ‘ ’), namely against all the goods in Class 28. The opposition is based on Italian trade mark registration No 1 549 244 - filing number: 2 012 902 107 290 - (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 and services

The goods and services in Classes 9, 28 and 41 on which the opposition is based are the following:

Class 9: Coin-changer and token-changer apparatus; software for videogames, carousels, games of luck; karaoke equipment; coin or token operated musical equipment; coin or token operated photographic equipment.

Class 28: Entertainment equipment, automatic, coin or token ball; games of luck and skills, automatic, coin or token ball; carousels, amusements parks equipment; inflatable toys and structures for entertaining children; trampolines; games and playthings, toys.

Class 41: Entertainment; management of arcades, amusements parks, amusements areas for children; organisation and management of parties for children; organisation of shows for children.

The contested goods remaining after partial refusal of the contested sign in opposition decision B 2 980 145 of 26/09/2018 are the following:

Archery implements; balls for games; toys; playing balls; fishing tackle; swimming pools [play articles]; spinning tops [toys]; skis; ornaments for christmas trees, except illumination articles and confectionery; drones [toys]; dolls' feeding bottles; dolls' clothes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Toys are identically contained in both lists of goods.

The contested balls for games are included in the broad category of the opponent’s games as an element thereof. Therefore, they are identical.

The contested swimming pools [play articles]; playing balls are included in the broad category of the opponent’s playthings. Therefore, they are identical.

The contested spinning tops [toys]; drones [toys]; dolls' feeding bottles; dolls' clothes are included in the broad category of the opponent’s toys. Therefore, they are identical.

The contested archery implements; fishing tackle (as sporting articles); skis have the same nature, public and producers as the opponent´s games. Therefore, they are similar to a low degree.

The remaining contested ornaments for christmas trees, except illumination articles and confectionery have a different nature and different purposes. Furthermore, these contested goods are neither complementary nor in competition with the opponent’s goods and services. Their distribution channels, producers and methods of use are also different. Consumers would not assume that these goods and services come from the same undertaking or economically linked undertakings. These goods are neither in competition ’nor complementary. Therefore, they are dissimilar.

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 or similar to a low degree are directed at the public at large. The public’s degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 signs are figurative marks.

The figurative elements of the earlier trade mark are the depiction of the letters ‘YOUNGO’ in different colours and a green chameleon with a multi-coloured tail. wearing a white jersey with the inscription ‘YO’, and leaning against the last letter of the verbal element ‘YOUNGO’. Since the figurative elements are not basic, they are distinctive.

The contested sign contains the words ‘YOUNG’ and ‘GO’, written in white upper-case letters with a thick black outline. The words are depicted in a slightly inclined, stylised font. The font for the word ‘YOUNG’ is more standard, while that for the word ‘GO’ is more irregular and slightly larger. Since the figurative elements are rather basic, they are non-distinctive.

The public will not dissect the verbal element ‘YOUNGO’ of the earlier trade mark into separate elements. Moreover, since the letter combination ‘YO’ has no meaning for the goods, all the verbal elements are distinctive. The verbal elements of the contested sign will be perceived by the relevant public as English words. They will be understood by a part of the Italian-speaking public as meaning, for example, ‘YOUNG’ (which could be weak) and ‘GO’. Another part of the public will not perceive any meaning in the word elements. The Office will base its decision on the part of the public that has no comprehension of the signs in order to avoid further possible conceptual differences between them. Therefore, all the verbal elements are distinctive.

Neither sign has any element that could be considered clearly more dominant than other elements.

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).

Visually, the signs differ in the abovementioned figurative elements. As these elements are not distinctive in the contested sign, they are not relevant for the visual comparison. The verbal element of the earlier trade mark is completely included in the contested sign, with the first five letters being identical. However, they are depicted differently: the verbal element of the contested sign is depicted in two parts (‘YOUNG’ and ‘GO’), the earlier trade mark in one. Furthermore, the letter ‘G’ is depicted twice in the contested sign, namely as the last letter of the word ‘YOUNG’ and the first letter of the following word ‘GO’. Since the signs also have a very similar length, namely six letters in the earlier trade mark and seven letters in the contested sign, the marks are visually similar to an average degree.

Aurally, the figurative elements will not be pronounced. With the exception of the additional letter ‘G’ in the contested sign, the marks completely coincide. Therefore, they are aurally similar to a high degree.

Conceptually, neither of the verbal elements has a meaning for the public in the relevant territory without any consequences for the outcome of the comparison. Since the green chameleon with a multi-coloured tail in the earlier trade mark has no counterpart in the contested sign, 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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar to a low degree and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected for those goods.

Taking into account the average degree of visual similarity, the high degree of aural similarity, the fact that the verbal element of the earlier trade mark is included in its entirety in the contested sign, the merely normal degree of attention of the public, the normal degree of distinctiveness of the earlier trade mark and the identity or similarity of the goods, there is, although the signs are conceptually not similar, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition is upheld. Because of the relevant visual and aural similarities between the signs, this also applies for the goods that are only similar to a low degree.

The applicant has not submitted any observations.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Astrid WÄBER

Peter QUAY

Claudia MARTINI

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.