OPPOSITION No B 2 709 171

Rolf Vandoren, Kwikstaartstraat 46, 2170 Merksem, Belgium (opponent), represented by Bureau M.F.J. Bockstael Nv, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Bob Licensing Sarl, 21 Rue Docteur Emile Bataille, 76250 Deville les Rouen, France (applicant).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 171 is upheld for all the contested goods.

2.        European Union trade mark application No 15 088 461 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 in Class 28 of European Union trade mark application No 15 088 461 BB SMART. The opposition is based on, inter alia, European Union trade mark registration No 11 936 234 . 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.

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 11 936 234, which is not subject to the applicant’s request to prove use.

1. The goods

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

Class 28: Games and playthings; Playing cards; Electric and electronic games, other than those adapted for use with television sets; Electric and electronic toys, including electronic game apparatus with an integrated LCD screen.

The contested goods are the following:

Class 28: Games; Toys.

Contested goods in Class 28

Games are identically contained in both lists.

The contested games; toys include, as broader categories, the opponent’s playthings; playing cards; electric and electronic games, other than those adapted for use with television sets; electric and electronic toys, including electronic game apparatus with an integrated LCD screen. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

	BB SMART
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element that the signs have in common, namely ‘SMART’, is not meaningful in certain territories, for example in those countries where English is not understood, such as Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier sign is a figurative mark composed of the verbal element ‘SMART’ in grey upper case letters, and below it a black and white square with a figurative black and white depiction of a puppet juggling three balls, one each in blue, red and yellow.

The contested mark is a word mark, ‘BB SMART’.

The element ‘SMART’, present in both signs, and the letters ‘BB’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Since the word ‘SMART’ in both signs is meaningless for the Spanish-speaking public, its distinctiveness is normal. Therefore, the applicant’s arguments regarding the weak distinctive character of the earlier mark are not relevant.

The figurative element of a juggling puppet in the earlier sign will be associated with toys. Bearing in mind that the relevant goods are toys, games, this element is weak for these goods. Therefore, the word ‘SMART’ is the most distinctive element in the earlier sign.

Furthermore, 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).

Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘SMART’, which form the earlier mark’s entire verbal element and constitute the second verbal element in the contested sign, which, as stated previously, is distinctive. However, they differ in the two first letters, ‘BB’, of the contested sign, and in the figurative elements of the earlier mark, described above, which have, as explained above, less impact and are of a weak distinctive character.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SMART’, present identically in both signs. The pronunciation differs in the sound of the letters ‛BB’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the figurative element of a puppet in the contested sign will be associated with the meaning explained above. The other sign has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical. They target the public at large, and the degree of attention of the relevant public will be average.

The signs are visually similar to an average degree and aurally similar to a high degree. The differences between the earlier mark and the contested sign, namely the additional letters ‘BB’ in the contested sign and the figurative elements of the earlier mark (which are weak for the goods at issue), are not sufficient to counteract the significant similarities between them; therefore, there is a serious likelihood that the relevant public will confuse them and believe that they come from the same undertaking or from economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Moreover, 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). This is true even for consumers who pay a high degree of attention (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘SMART’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SMART’. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since they are not comparable. In B 1 460 155 and R 1205/2010-2, the meaning had a special relevance for finding dissimilarity between the signs. In R 414/2013-4, there was a very low degree of similarity between the goods at issue.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Taking into account the normal degree of distinctiveness of the earlier mark, it is considered that the differences between the signs are not sufficient to overcome their similarities, and that there is a likelihood of confusion for all the identical goods on the part of the Spanish-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 11 936 234. It follows that the contested trade mark must be rejected for all the contested goods.

As European Union trade mark registration No 11 936 234 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).

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

Sandra KASPERIŪNAITÉ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.