OPPOSITION No B 2 725 771
H Young Holdings Public Limited Company, Buckingham House, West Street, Newbury, Berkshire RG14 1BD, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St, London EC4N 6AF, United Kingdom (professional representative)
a g a i n s t
Anima AB, Västra Varvsgatan, 19, 211 19 Malmö, Sweden (applicant), represented by Hansson Thyresson Patentbyrå Ab, Kansligatan 1, 201 20 Malmö, Sweden (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 725 771 is partially upheld, namely for the following contested goods:
Class 9: IT systems, software and apps for smart connected clocks and watches.
Class 14: Horological and chronometric instruments.
2. European Union trade mark application No 15 115 322 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 115 322 for the word mark ‘ANIMA’, namely against some of the goods and services in Classes 9, 14, 35 and 42. The opposition is based on, inter alia, EU trade mark registration No 8 508 . The opponent invoked Article 8(1)(b) and 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 EU trade mark registration No 8 508.
- The goods and services
The goods on which the opposition is based are the following:
Class 14: Watch straps, watches, clocks and horological instruments.
The contested goods and services are the following:
Class 9: IT systems, software and apps for smart connected clocks and watches.
Class 14: Horological and chronometric instruments.
Class 35: Marketing, retailing of IT systems, software and apps for smart connected clocks and watches.
Class 42: Design and development of IT systems, software and apps for smart connected clocks and watches.
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
The contested IT systems, software and apps for smart connected clocks and watches relate to a watch information content distribution processing system, an information distribution system, or an information processing method applied to software that can be found in many watches these days. Therefore, these goods are similar to a low degree to the opponent’s watches. They may have the same purpose and relevant public and be in competition.
Contested goods in Class 14
Horological instruments are identically contained in both lists of goods.
The contested chronometric instruments are similar to a high degree to the opponent’s horological instruments in Class 14. These goods are, by definition, timing devices with a special mechanism for ensuring and adjusting their accuracy. They include watches, which are small portable timepieces. They have the same nature, purpose, methods of use, distribution channels and points of sale and are likely to be manufactured by the same kinds of undertakings.
Contested services in Class 35
Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that, in principle, goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.
Marketing consists of the process that brings goods or services to the marketplace through planning, pricing, coordinating, promoting, selling and distribution.
Therefore, the contested marketing, retailing of IT systems, software and apps for smart connected clocks and watches are dissimilar to the opponent’s goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other. In particular and contrary to the opponent’s view, there is nothing in common between the contested marketing services and the opponent’s goods.
Contested services in Class 42
The contested design and development of IT systems, software and apps for smart connected clocks and watches are different from the opponent’s goods. They differ in nature and purpose. The manufacturers of such goods do not typically provide the contested services and their channels of trade and end users are typically different. Furthermore, these goods and services are not in competition with or complementary to each other. The fact that an app may contain technical information relating to the opponent’s goods is too tenuous a link to find any degree of similarity. Therefore, the contested services in Class 42 are dissimilar to all the opponent’s goods in Class 14.
- 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 and similar to different degrees are directed at the public at large.
The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.
- The signs
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ANIMA
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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 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.
The earlier mark is a figurative mark consisting of the highly stylised letters ‘ANIMAL’. The contested sign is the word mark ‘ANIMA’.
The words ‘ANIMAL’ and ‘ANIMA’ have no meaning in certain territories, for example, in those countries where Spanish, Italian or English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public, for which these two words are meaningless.
It is also well-established case-law that the average consumer normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52), and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (16/7/2014, T-324/13, Femivia, EU:T:2014:672, § 48).
Both signs are distinctive in relation to the goods and services. The contested sign is a word mark and therefore, by definition, has no dominant elements, because word marks are written in a standard typeface. The earlier mark sign does not contain any elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘ANIMA’. It is the only element in the contested mark and is entirely contained in the earlier sign. They differ in the stylisation of the verbal element and in the letter ‘L’, both of which are present only in the earlier mark.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ANIMA’ and differs only in the sound of the additional letter ‘L’ of the earlier mark.
Therefore, the signs are aurally highly similar.
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.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The goods are partly identical and partly similar to different degrees. The services are dissimilar.
The conflicting signs coincide in the letters ‘ANIMA’, that is, the contested sign is entirely included in the earlier sign, ‘ANIMAL’. The differences in stylisation, although not to be ignored in the global comparison, are not sufficiently strong to prevent a finding of similarity between the signs.
When regarded and compared as a whole, the differences between the signs are not sufficient to counteract the similarities between them and the signs are, therefore, similar, at least for the Polish-speaking public in the European Union.
In addition, it should also be taken into account that 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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to different degrees to those of the earlier trade mark. This conclusion also stands for the contested goods and services that are similar to a low degree. This is because the similarity between the signs is significant enough to lead to a likelihood of confusion in relation to the goods and services that have only a low degree of similarity.
The rest of the contested services 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 services cannot be successful.
Since the opposition is partially 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 and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
The opponent has also based its opposition on the following earlier trade marks:
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Since these marks cover the same scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
The Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR as regards the dissimilar services.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs
The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
- Reputation of the earlier trade marks
According to the opponent, the earlier trade marks have a reputation the United Kingdom.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 16/02/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:
Class 14: Watch straps, watches, clocks and horological instruments
In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.
On 20/01/2017, the opponent submitted the following evidence:
- Witness statement signed by Chloe Cosby, Marketing Manager of the opponent’s company, ‘Animal’, on 20/01/2017. In this document, a part of the story of the opponent’s company is mentioned, as well as some products, such as watches. It states that sales between 2007 and 2014 amounted to GBP 3 275 973 and the total number of watches sold in the United Kingdom was 121 635. Some promotional activities and catalogues are also mentioned.
- Several catalogues from the opponent featuring the earlier mark and many different models of watches with their characteristics; some of the documents contain prices and dates.
- Screenshot from the websites ‘The Watch Forum’ and boardsportsource.com, including a part of the story of the opponent’s company, ‘Animal’, and its products, such as watches.
First, the Opposition Division notes that, to prove the reputation of a mark, it is not sufficient that the mark is used. Instead, it needs to be shown that the mark is known by a significant part of the relevant public for the opponent’s products.
The evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Erkki MÜNTER |
Birgit FILTENBORG |
Pedro JURADO MONTEJANO |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.