OPPOSITION No B 3 051 136

Intex Marketing Ltd., 9th Floor, Dah Sing Financial Centre, 108 Gloucester Road, Wanchai, Hong Kong SAR, Hong Kong (opponent), represented by Reddie & Grose LLP, The White Chapel Building 10, Whitechapel High Street, E1 8QS, London, United Kingdom (professional representative)

a g a i n s t

Changchun Chengji Technology CO., LTD., 3-4-1 to 3-4-6 Southwest of The 3rd F Bldg.5 No.358, Zhenyu St. High-tech Zone, Changchun, Jilin, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas, S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 15/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 136 is upheld for all the contested goods.

2. European Union trade mark application No 17 639 923 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 17 639 923 for the word mark ‘INTEY’. The opposition is based on, inter alia, European Union trade mark registration No 180 935 for the word mark ‘INTEX’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 180 935.

a) The goods

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

Class 28: Goggles, masks, snorkels, fins, nose clips and eardops and other like accessories for swimming; inflatable toys e.g. suitable for use in swimming pools; inflatable floating lounges, mats, rafts and tubes for recreational use (being sporting and game articles or playthings); portable inflatable pools and play swimming pools; children’s recreational equipment such as water slides suitable for use in swimming pools; pumps for inflating balls, kicking tees for egg shaped balls, miniature model vehicles as well as other playthings, gymnastic and sporting articles as far as falling in this class.

The contested goods are the following:

Class 28: Dolls; jigsaw puzzles; golf clubs; water wings; darts; skittles; building blocks [toys]; novelties for parties, dances [party favors, favours]; carnival masks; strings for rackets; swimming belts; swings; rocking horses; slides [playthings]; dominoes; practical jokes [novelties]; radio-controlled toy vehicles; scooters [toys]; toys for domestic pets; remote control toys.

The term ‘e.g.’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested golf clubs; water wings; darts; skittles; strings for rackets; swimming belts are included in the broad categories of, or overlap with, the opponent’s gymnastic and sporting articles as far as falling in this class (Class 28). Therefore, they are identical.

The contested dolls; jigsaw puzzles; building blocks [toys]; carnival masks; swings; rocking horses; slides [playthings]; dominoes; radio-controlled toy vehicles; scooters [toys]; toys for domestic pets; remote control toys comprise a wide range of playthings and playground apparatus that are at least similar to a high degree to the opponent’s playthings, as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested novelties for parties, dances [party favors, favours]; practical jokes [novelties] are similar to the opponent’s playthings as they usually coincide in producer, relevant public and distribution channels.

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, at least similar to a high degree or similar are directed at the public at large. The degree of attention is considered average.

c) The signs

INTEX	INTEY
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 verbal elements, ‘INTEX’ of the earlier mark and ‘INTEY’ of the contested sign, have no meaning for the relevant public and are, therefore, distinctive.

In addition, when assessing the visual and aural similarity of the marks in question, it must be taken into account that 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 sequence of letters ‘INTE*’. However, they differ in the last letter ‘X’ of the earlier mark and ‘Y’ of the contested sign. In this regard, it must be stressed that the Court held that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121, § 27).

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the sequence of letters ‘INTE*’. They only differ in the sound of the last letter ‘X’ of the earlier mark and ‘Y’ of the contested sign.

Therefore, the signs are aurally similar to a high degree.

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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods have been found partly identical, partly similar to at least a high degree and partly similar. They target the general public, who will pay an average degree of attention.

The signs have been found visually and aurally similar to a high degree, insofar as they coincide in the initial sequence of letters ‘INTE’. None of the marks have a concept that could help consumers to set the signs apart.

Taking all the above into account, the Opposition Division considers that the differences between the signs, which are only found in their last letters, are clearly not sufficient to outweigh the visual and aural similarities between them. Consequently, when encountering the signs in relation to goods that are identical, at least similar to a high degree or similar, the relevant public are likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 180 935. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 180 935 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) 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.

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

Marianna KONDAS

Aldo BLASI

Victoria DAFAUCE MENENDEZ

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.