OPPOSITION No B 2 735 952

Playgo Art & Craft Manufactory Limited, 12th Floor, Tower 1, South Seas Centre, 75 Mody Road Tsimshatsui East, Kowloon, Hong Kong special Administrative Region of the People's Republic of China (opponent), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London, City of EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Most Success Trading Limited, Unit 901-2 9/F, East Ocean Centre, 98 Granville Road, T.S.T. East Kowloon, Hong Kong special Administrative Region of the People's Republic of China (applicant) , represented by Bernard Soyer Conseil, 58 avenue Marceau, 75008 Paris, France (professional representative).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 952 is upheld for all the contested goods.

2.        European Union trade mark application No 15 218 209 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 15 218 209. The opposition is based on European Union trade mark registration No 11 200 359. In the notice of opposition the opponent invoked Article 8(1)(b) and 8(4) EUTMR and subsequently on 20/01/2017 limited the grounds of the opposition to Article 8(1)(b) only.

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.

1. The goods

The goods on which the opposition was initially based were the following:

Class 28:        Battery-powered toy vehicles; toy musical instruments; children's multiple activity toys; toy telephones; toy radios.

On 11/07/2016 the Opponent has requested to amend the specification of the goods

in Class 28 of the earlier mark. Thus, the goods on which the opposition is based are

currently the following:

Class 28:        Battery-powered toy vehicles; toy musical instruments; children's multiple activity toys; toy telephones; toy radios; excluding toys for infants and toddlers, being toys for the age group of 0-36 months

The contested goods are the following:

Class 28:        Toys games and playthings; toy vehicles; toy locomotives; toy cars, toy bicycles, toy tricycles, toy motorcycles, toy scooters, toy trucks, toy trains, toy helicopters, toy aeroplanes, toy armored vehicles; toy craft, boats and ships; toy aircraft, toy spacecraft; diecast toys; diecast toy vehicles, locomotives, watercraft, aircraft and spacecraft; scale models; toy model kits; scale models sold in kits of parts for construction; scale model vehicles, locomotives, watercraft, aircraft and spacecraft; radio-controlled toys; radio-controlled toy vehicles, locomotives, watercraft, aircraft and spacecraft; electronic toys; electronically-operated toy vehicles, locomotives, watercraft, aircraft and spacecraft; toy robots; toy animals; toy buildings; toy building structures and fixtures; toy scenery; toy playsets; educational toys; pre-school toys; building blocks (toys).

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 28

The contested toys games and playthings include, as a broader category the opponent’s children's multiple activity toys excluding toys for infants and toddlers, being toys for the age group of 0-36 months. 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 toy vehicles include, as a broader category the opponent’s Battery-powered toy vehicles excluding toys for infants and toddlers, being toys for the age group of 0-36 months. 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 toy locomotives; toy cars, toy bicycles, toy tricycles, toy motorcycles, toy scooters, toy trucks, toy trains, toy helicopters, toy aeroplanes, toy armored vehicles; toy craft, boats and ships; toy aircraft, toy spacecraft; diecast toys; diecast toy vehicles, locomotives, watercraft, aircraft and spacecraft; scale models; toy model kits; scale models sold in kits of parts for construction; scale model vehicles, locomotives, watercraft, aircraft and spacecraft; radio-controlled toys; radio-controlled toy vehicles, locomotives, watercraft, aircraft and spacecraft; electronic toys; electronically-operated toy vehicles, locomotives, watercraft, aircraft and spacecraft cannot be clearly separated from the opponent’s battery-powered toy vehicles excluding toys for infants and toddlers, being toys for the age group of 0-36 months. These goods overlap and are, therefore, considered identical.

The contested toy robots; toy animals; toy buildings; toy building structures and fixtures; toy scenery; toy playsets, educational toys; pre-school toys; building blocks (toys) cannot be clearly separated from the opponent’s children's multiple activity toys excluding toys for infants and toddlers, being toys for the age group of 0-36 months. These goods overlap and are, therefore, considered identical.

2. 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. The degree of attention is considered to be average.

3. The signs

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and French- speaking part of the relevant public.

As regards the earlier sign, it is composed of the white verbal elements ‘PLAY’ and ‘GO’ and figurative element in the form of the black inverted triangle of a purely decorative nature. Therefore, the triangular shape is considered lowly distinctive.

The contested sign is a figurative mark which consists of the slightly stylised verbal elements: ‘PLAY’ written in green, white ampersand symbol (‘&’) and ‘GO’ written in red.

It is reasonable to assume that the basic English word ‘PLAY’ of both signs might be understood by the above-mentioned part of the public with the following meaning: ‘When children, animals, or perhaps adults play, they spend time doing enjoyable things, such as using toys and taking part in games’ (Information extracted from Collins Dictionary on 28/06/2017 at https://www.collinsdictionary.com/dictionary/english/play). Having said that, the term ‘PLAY’ in relation to the goods at stake will be perceived as an indication of the nature or intended purpose of the goods and, therefore, considered non-distinctive for the part of the public in question.

The common element ‘GO’ will be understood by the Spanish-, French- speaking part of the relevant public as alluding to the idea of moving or travelling, namely ‘When you go somewhere, you move or travel there’ (Information extracted from Collins Dictionary on 28/06/2017 at https://www.collinsdictionary.com/dictionary/english/go). However, for the above-mentioned part of the public this element has no immediately perceivable clear meaning in relation to the goods applied for and it does not describe the characteristics of the relevant goods.

In light of the foregoing, the word element ‘GO’ has a normal level of distinctiveness.

The ampersand symbol ‘&’ is used as the shorthand for the conjunction ‘and’ and is commonly used in trade (16/02/2017, R 1050/2016-1 metal& glass, § 18). Therefore, this conjunction is weak.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than the other elements.

Visually, the signs coincide in the term ‘PLAY’ being non-distinctive, and ‘GO’ which is distinctive both written in uppercase. The signs differ in the ampersand symbol (‘&’) contained in the contested mark which has no counterpart in the earlier sign and in the figurative elements of purely decorative nature in the earlier mark and of a lesser impact in the contested sign. It should be specified that the signs have the same structure consisting of the word ‘PLAY’ followed by the word element ‘GO’ underneath, with the only difference of a (weak) ampersand element.

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).

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

Aurally, the pronunciation of the signs coincides in the sound of the word /PLAY/ and /GO/, present identically in both signs. The pronunciation only differs in the sound of the ampersand of the contested sign which has no counterpart in the earlier mark and has been considered weak.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Having said that, for a part of Spanish-, French-speaking public will understand and associate both marks with the English words ‘PLAY’ and ‘GO’ present in both signs with, inter alia, the action of: ‘doing enjoyable things, such as using toys and taking part in games’ and with moving or travelling  ‘When you go somewhere, you move or travel there’. Even though the element ‘PLAY’ is non-distinctive, the above-mentioned public will perceive the same, whole concept (and the conceptual structure) of the word elements: PLAY+GO in both signs. Therefore, for this part of the public, the signs are conceptually similar to a high degree to the extent that in sharing the words ‘PLAY’ and ‘GO’, the signs, make reference to the same meanings.

Finally, the public in question will recognise the ampersand contained in the earlier mark and associate it with the conjunction ‘and’. However, the connector ‘and’ placed in between the words ‘PLAY’ and ‘GO’ in the contested sign is weak.

Therefore, the marks are conceptually similar to a high degree

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 the non-distinctive element in the mark as stated above in section c) of this decision. Indeed, the word elements ‘PLAY’ and ‘GO’ taken as a whole create a combination sufficiently original to maintain an average degree of distinctiveness.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). 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).

As it has been found in the previous sections of the present decision, the goods are partly identical and partly similar, the degree of attention of the relevant public is average, and the earlier mark has a normal distinctiveness.

Due to the combination of the words ‘PLAY’ and ‘GO’ present in both marks, the signs have been considered visually similar to an average degree, aurally similar to a high degree and  are similar to a high degree from the semantic perspective.

Taking all the above into account, the Opposition Division considers that the figurative elements and the additional element ‘&’ of the contested sign are not sufficient to counteract the very similar overall impression created by the marks to the extent that the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

Account is taken of the fact 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, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-, French-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 well founded on the basis of the opponent’s European Union trade mark registration No 11 200 359. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Steve HAUSER

Alexandra APOSTOLAKIS

Benoît VLEMINCQ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.