OPPOSITION No B 3 048 679

The Paper & Office Equipment Spain Ass, S.A. Poessa, Polígono Industrial Bakiola Nave 1, 48498 Arrankudiaga, Spain (opponent), represented by María Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Lucky star (Shenzhen) Industrial Co. Ltd., 312, Block 3, Hongshengyuan, Bantian St., Longgang Dist, 518000 Shenzhen, People's Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 679 is partially upheld, namely for the following contested goods:

Class 16: Cream containers of paper; Silver paper; Paper coffee filters; Garbage bags of paper or of plastics; Bags for microwave cooking; School supplies [stationery]; Office requisites, except furniture; Stationery; Drawing pens; Propelling pencils; Writing implements; Writing materials; Aquarelles; Drawings; Paintings; Maps; Printed matter; Beer mats; Paper; Paper serviettes.

Class 22: Ropes; Packing [cushioning, stuffing] materials, not of rubber, plastics, paper or cardboard; Packaging bags of textile; Wrapping or binding bands, not of metal; Packing rope.

Class 28: Paper party hats; Scale model vehicles; Toy model vehicles; Jigsaw puzzles; Toy models; Toy masks.

2. European Union trade mark application No 17 616 517 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 all the goods of European Union trade mark application No 17 616 517 for the word mark ‘golden target’. The opposition is based on European Union trade mark registration No 14 536 726 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 and services

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

Class 16: Writing or drawing books; School writing books; Files [office requisites]; Binders; Document files [stationery]; File covers; Paper folders; Index files; Printed matter, namely steel letters, Printing blocks, Printers' type, Composing frames [printing], Numbers [type], Letters [type], Letters [type], Printers' blankets, not of textile, Address plates for addressing machines, Greeting cards, Musical greeting cards, Flags of paper; binding articles; Photographs; Stationery, namely rollers for typewriters, typewriter ribbons, inking ribbons for computer printers, ink cartridges, adhesive tape dispensers (stationery), stapling presses (stationery), bookends, document files (stationery), pencils, loose-leaf binders, gummed tape (stationery), pads (stationery), drawing pins, writing or drawing books, index cards (stationery), paper sheets (stationery), folders for papers, letter trays, French curves, covers for books or for writing or drawing books (stationery), envelopes (stationery), nibs, rubber erasers, bookmarks, balls for ball-point pens, transparencies (stationery), gluten (glue) for stationery or household purposes, adhesive tapes for stationery or household purposes, starch paste (adhesive) for stationery or household purposes, self-adhesive tapes for stationery or household purposes, wood pulp board (stationery), stands for pens and pencils, announcement cards (stationery), writing cases (stationery), isinglass for stationery or household purposes, copying paper (stationery), writing brushes, marking pens (stationery), document holders (stationery); Glue for stationery or household purposes; Artists' materials, namely watercolours, Sketch pads, Painters' brushes, Painters' easels, Compasses for drawing, Drawing boards, Tracing needles for drawing purposes, Drawing pens, Modelling paste, Palettes for painters, Pantographs [drawing instruments], Pastel crayons, Canvas for painting, Drafting rulers, Vignetting apparatus, Paint brushes, Paint brushes, Squares for drawing, T-squares for drawing, Paint trays; Typewriters and office requisites (except furniture), namely, Staples for offices, Staples for offices, Pencil sharpening machines, electric or non-electric, Sealing machines for offices, Finger-stalls [office requisites], Files [office requisites], Office perforators, Correcting fluids [office requisites], Paper clasps, Envelope sealing machines, for offices, Ledgers [books], Indexes, Forms, printed, Scrapers [erasers] for offices, Printed timetables, Printing sets, portable [office requisites], Folders [stationery], Pens [office requisites], Calendars, Elastic bands for offices, Paper shredders for office use, Stationery (Cabinets for -) [office requisites], Stationery (Cabinets for -) [office requisites], Paper knives [office requisites], Paper knives [office requisites], Paper knives [office requisites], Pencil sharpeners, electric or non-electric, Bookbinding apparatus and machines [office equipment], Checkbook covers, Clipboards, Correcting tapes [office requisites]; Instructional and teaching material (except apparatus); Plastic material for packaging (not included in other classes); Printers' type; Printing blocks; Namely paper, Paper boxes, Advertisement boards of paper, Silver paper, Blotters, Tracing paper, Carbon paper, Paper for recording machines, Hygienic paper, Wrapping paper, Electrocardiograph paper, Notepaper, Luminous paper, Papier mâché, Manifolds [stationery], Rice paper, Parchment paper, Radiograms (Paper for -), Paper ribbons, Wood pulp paper, Placards of paper, Paper signboards, Waxed paper, Waxed paper, Drawer liners of paper, perfumed or not, Xuan paper for Chinese painting and calligraphy; Cardboard, namely papier mâché, Wood pulp board [stationery], Advertisement boards of cardboard, Cardboard boxes, Placards of cardboard, cardboard signboards.

Class 35: Advertising; Supplying services for others (purchase of goods and services for other enterprise); Import, export and sole agencies; Management assistance for franchised businesses; Retailing in shops, via electronic means or via global computer networks of writing or drawing books, files, folders, paper, cardboard and office requisites.

The contested goods are the following:

Class 9: Electronic collars to train animals; Chargers for electric batteries; Batteries, electric; Rechargeable electric batteries; 3D spectacles; Goggles for sports; Light emitting diodes (LEDs); Plug connectors; Automatic indicators of low pressure in vehicle tires; Selfie sticks [hand-held monopods]; Earphones; Set-top boxes; Car video recorders; Virtual reality glasses; Light boxes; Computer peripherals; Neon signs; Humanoid robots with artificial intelligence; Cases for smartphones; Protective films adapted for smartphones.

Class 16: Cream containers of paper; Silver paper; Paper coffee filters; Garbage bags of paper or of plastics; Bags for microwave cooking; School supplies [stationery]; Office requisites, except furniture; Stationery; Drawing pens; Propelling pencils; Writing implements; Writing materials; Aquarelles; Drawings; Paintings; Maps; Printed matter; Beer mats; Paper; Paper serviettes.

Class 22: Padding materials, not of rubber, plastics, paper or cardboard; Ropes; Car towing ropes; Network; Vehicle covers, not fitted; Tarpaulins; Hammocks; Tents; Packing [cushioning, stuffing] materials, not of rubber, plastics, paper or cardboard; Raw fibrous textile; Plastic fibers for textile use; Carbon fibers for textile use; Glass fibers for textile use; Packaging bags of textile; Wrapping or binding bands, not of metal; Twine for nets; Hemp; Wadding for filtering; Textile fibers; Packing rope.

Class 28: Toys for domestic pets; Toy building blocks; Paper party hats; Toy pistols; Parlor games; Scale model vehicles; Toy air pistols; Children's multiple activity toys; Toy model vehicles; Jigsaw puzzles; Toy models; Toy masks; Electronically operated toy motor vehicles; Artificial fishing bait; Fishing tackle.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods in Class 16 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 9

All the contested goods in this class refer mainly to audio-visual, information technology equipment and its accessories and protective and safety equipment. They are dissimilar to the opponent’s goods in Class 16 referring principally to paper, cardboard and certain goods made of those materials, as well as office requisites and artists’ materials. The nature, purpose, method of use, relevant public and distribution channels of these goods are very different from those of the opponent’s goods in Class 16.

Furthermore, they are also dissimilar to the opponent’s services in Class 35, which aim at supporting or helping other businesses to do or improve business. They are, therefore, in principle directed at the professional public. Consequently, the contested goods and the opponent’s services are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Contested goods in Class 16

The contested Silver paper; Drawing pens; Paper are identically mentioned in both specifications.

The contested Office requisites, except furniture include, as a broader category, the opponent’s Staples for offices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Stationery includes, as a broader category, the opponent’s rollers for typewriters. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Likewise, the contested Printed matter includes, as a broader category, the opponent’s Greeting cards. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Propelling pencils are included in the broad category of the opponent’s pencils. Therefore, these goods are identical.

The contested Writing implements; Writing materials include, as broader categories, the opponent’s pencils, marking pens. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested School supplies [stationery] include, as a broader category, the opponent’s document files (stationery). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Bags for microwave cooking are also called microwave steam bags and they have some relevant points in common with the opponent’s Wrapping paper. They may have the same producer, can coincide in distribution channels and relevant public. Furthermore, they are complementary. Therefore, they are similar.

The contested Aquarelles; Drawings; Paintings are similar to the opponent’s Drawing boards, Palettes for painters. These goods can originate from the same providers and have the same distribution channels. They may target the same relevant public and be complementary.

The contested Maps have some relevant points in common with the opponent’s Photographs. They can share their ultimate purpose and be addressed to the same relevant public. Furthermore, they can coincide in distribution channels and producers. Consequently, they are similar.

The contested Paper serviettes; beer mats are similar to the opponent´s paper. These sets of goods may have the same producer, can coincide in distribution channels and relevant public. Furthermore, they are complementary.

The contested Garbage bags of paper or of plastics are similar to the opponent’s paper because they coincide in relevant public and distribution channels. Furthermore, they may be complementary.

The contested Cream containers of paper; Paper coffee filters is similar to the opponent’s paper as they may have the same relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 22

The contested wrapping or binding bands, not of metal; ropes are similar to the opponent’s binding articles in Class 16. Although these goods are made of different materials (textile against paper or plastic), they have the same purpose (binding/wrapping). In addition, they may be directed at the same consumers and be manufactured by the same companies.

For the same reasons, the contested packaging bags of textile; packing [cushioning, stuffing] materials, not of rubber, plastics, paper or cardboard; packing rope are similar to the opponent’s plastic material for packaging (not included in other classes).

The remaining contested Padding materials, not of rubber, plastics, paper or cardboard; Car towing ropes; Network; Vehicle covers, not fitted; Tarpaulins; Hammocks; Tents; Raw fibrous textile; Plastic fibers for textile use; Carbon fibers for textile use; Glass fibers for textile use; Twine for nets; Hemp; Wadding for filtering; Textile fibers are dissimilar to the opponent’s goods in Class 16, referring principally to  paper, cardboard and certain goods made of those materials, as well as office requisites and artists’ materials. The nature, purpose, method of use, relevant public and distribution channels of these goods are very different from those of the opponent’s goods in Class 16.

Furthermore, they are also dissimilar to the opponent’s services in Class 35, which aimed at supporting or helping other businesses to do or improve business. Consequently, these contested goods and the opponent’s services are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Contested goods in Class 28

The contested Paper party hats; Scale model vehicles; Toy model vehicles; Jigsaw puzzles; Toy models; Toy masks may be made of the opponent’s paper in Class 16. Therefore, these goods can have the same nature, distribution channels and target the same public as the opponent’s paper in Class 16. These goods are, therefore, similar.

The remaining Toys for domestic pets; Toy building blocks; Toy pistols; Parlor games; Toy air pistols; Children's multiple activity toys; Electronically operated toy motor vehicles; Artificial fishing bait; Fishing tackle are various types of toys and leisure products. They are dissimilar to the opponent’s goods in Class 16 referring principally to paper, cardboard and certain goods made of those materials, as well as office requisites and artists’ materials. The nature, purpose, method of use, relevant public and distribution channels of these goods are very different from those of the opponent’s goods.

Moreover, they are also dissimilar to the opponent’s services in Class 35, which aimed at supporting or helping other businesses to do or improve business. They are, therefore, in principle directed at the professional public. Consequently, the contested goods and the opponent’s services are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 are directed at the public at large with a normal degree of attentiveness.

c) The signs

	golden target
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 earlier mark is a figurative mark composed of the verbal element ‘GOLDEN’, written in standard uppercase letters with the first letter ‘G’ slightly bigger than the rest of the letters and followed by a figurative element representing a shape of an apple in black with white shades.

The contested sign is a word mark ‘golden target’.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division observes that the common term ‘GOLDEN’ will be understood by a part of the relevant public, in particular by the German or English-speaking part of the public as allusive of the exceptional quality of the goods in question. However, another part of the relevant public, such as, for example, the Polish-speaking part will not understand this term; indeed, the equivalent term in Polish is ‘złoty’.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the element ‘GOLDEN’ is meaningless and, therefore, has a normal degree of distinctiveness, such as the Polish-speaking part of the public.

The second element of the contested sign, ‘target’, does not convey any meaning for the relevant public at issue and, therefore, its inherent distinctiveness will be average in relation to the goods in question.

The signs have no elements that could be clearly more dominant (visually eye-catching) than other elements.

Regarding the figurative aspects of the earlier mark (the script and the shape of an apple), it must be noted that, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the public will pay less attention to the figurative element and aspects of the earlier mark and will focus more on the verbal element of the sign, which constitutes its initial element, and will instantly perceive it as a badge of origin of the respective goods.

Visually and aurally, the signs coincide in the string of the letters/phonemes constituting the element ‘GOLDEN’, which is the initial element of the earlier mark and the first distinctive element of the contested sign. The signs differ in the second/last element of the contested sign, namely in the letters/phonemes ‘target’ which, due to its position in the contested sign, will catch less attention of the public. Furthermore, they differ in the figurative element and aspects of the earlier mark (only visually); however, bearing in mind that the differing elements have limited impact for the reasons given above, the signs are considered visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. In the present case, the public in question will perceive a clear meaning of the figurative element of the earlier mark – the apple ‑ and, consequently, 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The earlier mark is distinctive to an average degree.

Visually and aurally the signs are similar to an average degree due to the coincidence in the distinctive element ‘Golden’, which plays an independent role in both signs. Furthermore, this element constitutes the initial element of the earlier mark and the first and normally distinctive element of the contested sign. Therefore, for all these reasons, it will immediately catch the attention of the relevant public. The additional differentiating elements present in the signs refer either to the last and, therefore, secondary element of the contested sign, ‘target’, or to the figurative element and aspects of the earlier mark which, as mentioned above, will have less impact on the relevant public. Considering all the above, the relevant public will attribute more trade mark significance to this common element of the signs.

Therefore, given the reproduction of the distinctive element ‘GOLDEN’ it is very likely that the relevant part of the public will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall 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. Indeed, in the present case, consumers may legitimately believe that the contested sign is a new extension/continuation or a new brand line of goods, provided under the opponent’s mark, as it is a normal market practice for brands to introduce their new versions via the introduction of new verbal or/and stylisation components, as in the present case the additional element ‘target’ of the contested sign, while preserving the same ‘house’ brand, ‘GOLDEN’.

As a result, taking into account all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element ‘GOLDEN’, and there is a likelihood of confusion, including a likelihood of association with the earlier trade mark, on the part of the Polish-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 partially well-founded on the basis of the opponent’s European Union trade mark registration No 14 536 726.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the opponent’s goods and services.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

Marta GARCÍA COLLADO

Monika CISZEWSKA

Carlos MATEO PÉREZ

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.