OPPOSITION No B 2 771 668
Adams Mad, S.L., Sant Antoni 81, 08570 Les Franqueses Del Valles, Spain (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain(professional representative)
a g a i n s t
Lonex Technology CO. LTD., No.57 Singfu E. Rd. Sinjhuang Dist., New Taipei City, Taiwan (applicant), represented by Florian Schwerbrock, Hagenauer Str. 1, 10435 Berlin, Germany (professional representative).
On 10/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 771 668 is upheld for all the contested goods, namely
Class 28: Toys; toy guns; toy sets; toy swords; toy weapons; action toys; toys relating to magic; toys made of metal; toys made of plastics; toys made of rubber; toys made of wood.
2. European Union trade mark application No 15 487 201 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 487 201 namely against all the goods in Class 28. The opposition is based on Spanish trade mark registration No 3 017 133. 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 goods
The goods on which the opposition is based are the following:
Class 28: Games; toys; toy guns; models and replicas of weapons of those included in this class as well as their constituent parts (except for vision telescope) and accessories; shells and ammunition for these models and their replicas; models and replicas of weapons falling within this class for virtual shooting and its constituent parts; models and replicas of weapons of those included in this class for their use with an electronic target or display, its parts constituent and accessories.
The contested goods are the following:
Class 28: Toys; toy guns; toy sets; toy swords; toy weapons; action toys; toys relating to magic; toys made of metal; toys made of plastics; toys made of rubber; toys made of wood.
The contested goods are identically included in the opponent’s list of goods or are included in the opponent’s broader category toys. Therefore, they are identical.
- 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 are directed at the public at large with an average level of attention.
- The signs
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Earlier trade mark |
Contested sign |
The relevant territory is Spain.
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 earlier sign contains the word element ‘LONEX’, in stylised characters in yellow represented within a green oval figure. The contested sign is composed of a figurative element in the form of a horse’s head and the word element ‘LONEX’ below. None of the word or figurative elements which compose the signs has a meaning in relation with the goods in question, and therefore, the signs have no elements which could be considered more distinctive than others.
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in ‘LONEX’ but differ in the graphic representation of this word element as well as in the additional figurative elements of each sign.
However it should be noted that 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 signs are identical as they coincide in the only word element that composes the signs, and the diverging figurative elements will not be pronounced.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the figurative element of the contested sign in the form of a horse’s head will be associated by the relevant public with this meaning. However, 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.
- 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.
- Global assessment, other arguments and conclusion
As mentioned above, the goods are identical and directed at the public at large with an average degree of attention. The signs are aurally identical and visually similar to an average degree. Bearing this in mind, it is considered that the differences between the signs due to the presence of different figurative elements are not sufficient to counteract the similarities between them, since in any event the consumers of these goods will also have to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). Considering all the above, the Opposition Division finds that 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 Spanish trade mark registration No 3 017 133. 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
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Fabian GARCIA QUINTO |
Ana MUÑIZ RODRIGUEZ |
Loreto URRACA LUQUE |
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.