OPPOSITION No B 2 541 145

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Minka Mannerla, Kanneljärventie 9 C, 02130 Espoo, Finland, Meri Mannerla-Magnusson, Rapparintie 3, 00660 Helsinki, Finland, Miia Mannerla, Tavaststjernankatu 1 A 7, 00250 Helsinki, Finland, Kaisla Mannerla, Maskuntie 8 A 9, 00280 Helsinki, Finland, Tuuli Mannerla, Rättärinpolku 1 A 3, 00910 Helsinki, Finland (applicants).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 541 145 is upheld for all the contested goods.

2.        European Union trade mark application No 13 845 557 is rejected in its entirety.

3.        The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 845 557. The opposition is based on German trade mark registration No 30 622 993 and German trade mark registration No 30 2013 028 260. 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.

1. The goods

The goods on which the opposition is based are, among others, the following:

Earlier German trade mark registration No 30 2013 028 260

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electrical apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; hardware for data processing, computers; calculators; magnetic data carriers, recording discs; CDs, DVDs and other digital data carriers; software (recorded or downloadable), in particular apps; electronic publications (recorded or downloadable); photographs (recorded or downloadable); podcasts; computer games (recorded or downloadable); recorded data files.

Earlier German trade mark registration No 30 622 993

Class 16:        Printed matter; photographs; bookbinding material; paper, cardboard and goods made from these materials, as far as included in this class; instructional and teaching material (except  apparatus); stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except  furniture); plastic materials for packaging (not included in other classes).

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

The contested goods are the following:

Class 9:        Recorded content; Information technology and audiovisual equipment; Scientific research and laboratory apparatus, educational apparatus and simulators; Safety, security, protection and signalling devices; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors.

Class 16:        Disposable paper products; Decoration and art materials and media; Adhesives for stationery or household purposes; Printed matter; Paper and cardboard; Stationery and educational supplies; Works of art and figurines of paper and cardboard, and architects' models; Filtering materials of paper; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Money holders.

Class 28:        Toys; Toys, games, playthings and novelties; Fairground and playground apparatus; Sporting articles and equipment; Festive decorations and artificial Christmas trees.

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 goods in this class will be compared with the goods in Class 9 protected by earlier German trade mark registration No 30 2013 028 260.

The contested recorded content includes, as a broader category, the opponent’s recorded data files. 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 information technology … equipment includes, as a broader category, the opponent’s computers. 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 audiovisual equipment and the opponent’s apparatus for recording, transmission or reproduction of sound or images overlap to a large extent. Consequently, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category of, or overlap with, the opponent’s scientific apparatus. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of, or overlap with, the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested safety, security, protection devices overlap with the opponent’s life-saving … apparatus and instruments. Therefore, they are identical.

The contested signalling devices and the opponent’s signalling … apparatus and instruments are synonymous and are, therefore, identical.

The contested navigation, guidance, tracking, targeting devices overlap with the opponent’s nautical … apparatus and instruments. Therefore, they are identical.

The contested map making devices are included in the broad category of, or overlap with, the opponent’s surveying … apparatus and instruments. Therefore, they are identical.

The contested optical devices, enhancers and correctors are included in the broad category of, or overlap with, the opponent’s optical … apparatus and instruments. Therefore, they are identical.

Contested goods in Class 16

The contested goods in this class will be compared with the goods in Class 16 protected by the earlier German trade mark registration No 30 622 993.

The contested disposable paper products; decoration and art materials and media; works of art and figurines of paper and cardboard, and architects' models; filtering materials of paper; bags and articles for packaging, wrapping and storage of paper, cardboard are included in the broad categories of, or overlap with, the opponent’s goods made from these materials [paper, cardboard], as far as included in this class. Therefore, they are identical.

Adhesives for stationery or household purposes; printed matter; paper and cardboard; stationery and educational supplies are identically contained in both lists of goods (including synonyms).

The contested bags and articles for packaging, wrapping and storage of …  plastics are included in the broad category of, or overlap with, the opponent’s plastic materials for packaging (not included in other classes). Therefore, they are identical.

The contested money holders are similar to the opponent’s stationery or office requisites (except furniture). They can coincide in their nature, purpose and method of use and can target the same relevant public.

Contested goods in Class 28

The contested goods in this class will be compared with the goods in Class 28 protected by the earlier German trade mark registration No 30 622 993.

The contested toys (mentioned twice in the contested list of goods) are included in the broad category of the opponent’s playthings. Therefore, they are identical.

The contested novelties overlap with the opponent’s playthings. Therefore, they are identical.

Games, playthings, sporting articles and equipment are identically contained in both lists of goods (including synonyms).

The contested festive decorations overlap with the opponent’s decorations for Christmas trees. Therefore, they are identical.

The contested artificial Christmas trees are similar to the opponent’s decorations for Christmas trees as they can coincide in the relevant consumer and distribution channels. Furthermore they are complementary.

The contested fairground and playground apparatus are similar to the opponent’s gymnastic and sporting articles not included in other classes that include goods such as basketball baskets, goal posts, benches for sporting use or artificial climbing walls. The goods compared have a similar nature, purpose and method of use. They can also be in competition or complementary and can target the same relevant public.

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 either at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from low to average to high, depending on the nature of the goods, their sophistication, the frequency of purchase and their price. For example, the degree of attention will be low for disposable paper products in Class 16, average for games in Class 28 and high for scientific research and laboratory apparatus in Class 9.

3. The signs

DE No 30 622 993

STERN DE No 30 2013 028 260	Stern von Afrika
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 fact that the first earlier trade mark is depicted in upper case and the contested sign in title case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the words themselves, and not for the particular way in which the mark is written.

The element ‘STERN’ of both earlier trade marks and of the contested sign will be understood as ‘star’ (in the meaning of a small point of light in the night sky or something in the form or a star) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘von Afrika’ of the contested sign will be understood as ‘of Africa’ by the relevant public. As it is not clearly descriptive, allusive or otherwise weak in the context of the contested sign for the relevant goods, it is distinctive. Furthermore, it is clear that the goods have no particular connection with Africa.

Neither the earlier marks nor the contested sign have any element that could be considered clearly more distinctive or more dominant than other elements.

When signs consist of both verbal and figurative components (such as in the case of the second earlier trade mark), 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).

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 ‘STERN’. However, they differ in ‘von Afrika’ of the contested sign. The marks also differ in the figurative element depicting a star and the stylisation of the word element in the second earlier trade mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛STERN’, present identically in all the signs. The pronunciation differs in the sound of the letters ‛VON AFRIKA’ of the contested mark, which have no counterparts in the earlier signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In addition, the figurative element of the second earlier trade mark will be perceived as a star. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average 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 marks

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 marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partially identical and partially similar. The degree of distinctiveness of the earlier trade marks per se is average. The degree of attention of the relevant public will vary between low, average and high.

The marks are visually, aurally and conceptually similar on account of the coinciding word element ‘STERN’. This element is the only element of the first earlier mark and the only word element of the second earlier trade mark. In the case of the contested sign, this element is placed in the prominent position at the beginning of the sign where it plays the role of a separate distinctive component. On the whole, the overall impressions created by the marks are similar.

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 German trade mark registrations No 30 622 993 and No 30 2013 028 260. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicants are the losing party, they 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

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.