OPPOSITION No B 2 675 943

Heike Schwarz, Albert-Schweitzer-Straße 12, 82008 Unterhaching, Germany (opponent), represented by Weickmann & Weickmann Patentanwälte – Rechtsanwalt PartmbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Shanghai Petkit Network Technology Co. Ltd., Room 106, No. 22, Boxia Road Zhangjiang Hi-tech Park, Shanghai City, People’s Republic of China (applicant), represented by Carolina Margareto Blasco Ibañez, 72 1C, 28050 Madrid, Spain (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 943 is partially upheld, namely for the following contested goods:

Class 28:        Toy vehicles; radio-controlled toy vehicles; toy cars; jigsaw puzzles; toy watches; toy cameras (not capable of taking a photograph); skateboards.

2.        European Union trade mark application No 14 407 076 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 407 076. The opposition is based on German trade mark registration No 305 24 420. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for her opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 305 24 420.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 22/01/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 22/01/2011 to 21/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 15:        Musical instruments.

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; instructional and teaching material (except apparatus).

Class 20:        Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

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

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 25/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/10/2016 to submit evidence of use of the earlier trade mark. On 28/10/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Some invoices addressed to customers in Germany during 2010-2016 regarding the sale of various playthings. The sign is used as in the invoices.

• An affidavit signed on 25/10/2016 by Mrs Heike Schwarz (the opponent), the managing director of Pekip-Spielwaren Bete mbH, the company that owns German trade mark No 305 24 420. The affidavit refers to the fact that the opponent’s earlier mark ‘PEKiP’ was used between July 2010 and July 2015 for all the opponent’s goods in Classes 15, 16 and 28.

• Game manuals that describe the concepts of the various playthings for each level of development. The game manuals display the following sign: .

• An article dated 10/04/2013 that contains a recommendation for PEKiP goods and a link to the website www.pekip-spielwaren.de.

• Press releases dated in March 2012 and February 2016 that display the following sign: .

• A brochure containing a promotional leaflet.

• A flyer that gives an overview of the opponent’s product range.

The evidence shows that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros), some German addresses and some German websites. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. The opponent also submitted game manuals, but these did not show complete dates. However, these documents have to be viewed in conjunction with the evidence that is dated; they may, therefore, still be taken into consideration.

The invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use during the relevant period. They are for significant quantities/amounts and to customers in various towns in Germany.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 28-38). A depiction of the mark on packaging, or in catalogues, advertising material or invoices relating to the goods and services in question, constitutes direct evidence that the mark has been put to genuine use.

In the present case, earlier German trade mark No 305 24 420 is registered as the word mark ‘PEKiP’. The mark at issue appears as  in the invoices and as  in the game manuals.

The use of a slightly stylised typescript in red constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the earlier mark, ‘PEKiP’, which was registered as a word mark.

The additional elements used together with the word ‘PEKiP’ are illegible and, therefore, they do not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

Therefore, the use of the earlier mark in the way described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

Regarding the goods in Class 28, the Opposition Division considers that the evidence as a whole does not show use for the registered broad category of games, gymnastic and sporting articles not included in other classes. However, the evidence shows use for the registered category of playthings in Class 28.

No genuine use has been shown for any of the goods in Classes 15, 16 and 20. In particular, no invoices proving the sale of any of these goods have been submitted. The evidence is clearly not sufficient to prove that the mark has been put to genuine use on the market for these goods.

Consequently, the evidence of use in its entirety sufficiently indicates the place, time, extent and nature of use of the opponent’s trade mark for some of the goods for which it is registered and on which the opposition is based, and the Opposition Division will now further examine the opposition on the basis of:

Class 28:        Playthings.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 the following:

Class 28:        Playthings.

The contested goods, after the applicant’s limitations of 29/12/2016 and 14/01/2016, are the following:

Class 9:        Pedometers; smartphones; cabinets for loudspeakers; sound recording carriers; headphones; baby monitors; video baby monitors; temperature indicator labels, not for medical purposes.

Class 18:        School bags.

Class 28:        Toy vehicles; radio-controlled toy vehicles; toy cars; jigsaw puzzles; toy watches; toy cameras (not capable of taking a photograph); skateboards.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 pedometers; smartphones; cabinets for loudspeakers; sound recording carriers; headphones; baby monitors; video baby monitors; temperature indicator labels, not for medical purposes and the opponent’s playthings in Class 28 are dissimilar. These goods do not have the same natures, purposes, distribution channels or commercial origins. Moreover, they are not in competition or complementary.

Contested goods in Class 18

The contested school bags have a different nature, purpose and method of use from the opponent’s playthings in Class 28. These goods are not in competition or complementary; they have different manufacturers and distribution channels. Therefore, these goods are dissimilar.

Contested goods in Class 28

Playthings include a variety of goods used for playing with. The contested toy vehicles; radio-controlled toy vehicles; toy cars; jigsaw puzzles; toy watches; toy cameras (not capable of taking a photograph); skateboards are included in the broader category of the opponent’s playthings. Therefore, these goods are 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 are directed at the public at large.

The Court has indicated that, for the purposes of the global assessment, the average consumer of the products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, and that the relevant public’s degree of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Whether its degree of attention will be higher or lower will depend, inter alia, on the nature of the relevant goods and services and the knowledge, experience and purchase involvement of the relevant public.

The applicant cited a judgment of the General Court, 24/05/2011, T-408/09, ancotel, EU:T:2011:241, to support its contention that the degree of attention of the public is high. However, it is important to remark that in the case cited the relevant goods were in Classes 35 and 38 and in the present case the relevant goods for analysing degree of attention are in Class 28; therefore, this argument must be set aside.

The Opposition Division considers the degree of attention average.

3. The signs

PEKiP
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 signs under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘PE*KI*’. However, they differ in their last letters, namely ‘P’ versus ‘T’, and in the additional letter ‘T’ of the contested sign, which is its third letter. The differences are rather hidden, being located in the middle and at the end of the marks, where they are less noticeable. Contrary to the applicant’s argument, there is no high variation in the stylisation of the word element in the figurative mark (the contested mark), and the word element is easily recognisable and legible. Moreover, 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. Taking all the above into account, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PE*KI*’, present in both signs. The pronunciation of the signs differs in the sound of the additional letter ‛T’ of the contested sign, which has no counterpart in the earlier mark, and in their last letters, namely ‘P’ versus ‘T’. As pointed out above, the differences are rather hidden, being located in the middle and at the end of the marks, where they are less noticeable. Therefore, the signs are aurally similar to at least a low degree.

Conceptually, the applicant stated that the earlier mark is the acronym of Prager-Eltern-Kind-Programm (the Prague Parent-Child Programme). That is a concept for group work with parents and their children in their first year of life. However, it did not submit any evidence in support of this statement, so the Opposition Division refused this statement.

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.

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 her 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.

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 (recital 8 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). Furthermore, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical and partly dissimilar to those of the earlier trade mark and they target the public at large, whose degree of attention is average. The signs are visually similar to an average degree and aurally similar to a low degree. Furthermore, the earlier mark has a normal degree of distinctiveness.

In addition, it should be borne in mind that, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect picture 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 public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 305 24 420.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Alexandra APOSTOLAKIS

Adriana VAN ROODEN

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.