OPPOSITION No B 2 742 818

ShinHan Art Materials, Inc., ShinHan Bldg., 16-24 Bulkwang-Dong Eunpyung-Gu, Seoul, Republic of Korea (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Hitouch Technology Co., Ltd, Unit AB, 5F Block A Building 9th Baoneng Science Park, Qinghu Industrial Park, Qingxiang Rd, Longhua, Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 742 818 is upheld for all the contested goods.

2.        European Union trade mark application No 15 296 478 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 15 296 478 for the figurative mark , namely against all the goods in Class 16. The opposition is based on European Union trade mark registration No 10 061 372 for the word mark ‘TOUCH’. 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.

1. The goods

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

Class 16:        Artists’ materials; writing and drawing instruments including art and graffiti markers, pens, pencils, air brush devices and accessories for all of the same.

The contested goods are the following:

Class 16:        Staples for offices; erasing products; office requisites, except furniture; stationery; school supplies [stationery]; desk mats; wood pulp board [stationery]; stands for pens and pencils; writing board erasers; clipboards; ink; writing materials; writing instruments; marking pens [stationery]; highlighter pens; drawing boards; teaching materials [except apparatus]; blackboards; printed teaching materials; magnetic boards for scheduling activities and appointments.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

Writing instruments are identically contained in both lists of goods.

The contested office requisites, except furniture; stationery; school supplies [stationery]; writing materials include, as broader categories, or overlap with the opponent’s writing and drawing instruments. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested ink is included in the broad category of the opponent’s artists’ materials. Therefore, they are identical.

The contested marking pens [stationery]; highlighter pens are included in the broad category of the opponent’s goods writing and drawing instruments. Therefore, they are identical.

The contested erasing products are similar to the opponent’s artists’ materials, as they have the same purpose. They can have the same producers and distribution channels.

The contested desk mats; wood pulp board [stationery]; clipboards; drawing boards; blackboards are flat pieces of rigid material that provide a firm base for writing or for drawing on. The opponent’s writing and drawing instruments include items such as markers, pens or pieces of chalk used for writing on different surfaces. These goods can have similar origins and the same distribution channels; they target the same public and, in some cases, are complementary (e.g. chalk and blackboard). Therefore, these goods are considered similar to this extent.

The contested magnetic boards for scheduling activities and appointments are flat pieces of rigid material on which notes can be held by means of a magnet. Moreover, these magnetic boards are usually in the form of a whiteboard, which is a writing surface that can be wiped clean after writing or drawing on. The opponent’s writing and drawing instruments include markers for use on a whiteboard. To this extent, these goods are similar, since they can have the same producers, distribution channels and end users.

The contested staples for offices; writing board erasers; stands for pens and pencils; teaching materials [except apparatus]; printed teaching materials are or include stationery items or materials for writing. To this extent, they are similar to a low degree to the opponent’s writing and drawing instruments, as they can have the same end users and distribution channels.

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

TOUCH
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.

The word ‘TOUCH’ 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 mark is the word mark ‘TOUCH’. This word is meaningless for the Spanish-speaking part of the public. Therefore, it is distinctive in relation to the goods in question.

The contested sign is a figurative mark composed of the word ‘HITOUCH’, which has no meaning for the relevant public and is, therefore, distinctive, as well as less distinctive figurative elements of a purely decorative nature, namely a stylised black title case typeface and a curved line above the letters ‘TOUCH’. Therefore, the verbal element is more distinctive than the figurative elements.

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).

Visually, the signs coincide in the string of letters ‘TOUCH’, present identically in both signs. However, they differ in the additional letters ‘HI’ at the beginning of the contested sign and in its figurative elements. Therefore, the signs are similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the syllable ‛TOUCH’, present identically in both signs. The pronunciation differs in the syllable ‛HI’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are similar to an average degree.

Conceptually, 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 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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods at issue are identical and some are similar to various degrees. They target the general and professional public, whose degree of attention may vary from average to high.

The similarity between the signs results from the visual and aural commonalities in the verbal elements of the signs, namely that the earlier mark is fully contained in the contested sign.

The differences in the first letters, ‘HI’, of the contested sign and in its decorative figurative elements are likely to have a limited impact on the public’s perception, taking into account that 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). Moreover, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as 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).

Therefore, although the contested sign differs in its additional elements, these elements cannot outweigh the visual and aural similarities between the earlier mark and the contested sign, especially taking into account that the earlier mark is fully contained in the contested sign. Taking into account all the relevant factors of the case, as well as the interdependence principle mentioned above, it is considered that the similarities between the signs outweigh the low degree of similarity between some of the goods. Therefore, the relevant public could be led to believe that the goods found to be identical, similar or similar to a low degree come from the same undertaking or economically linked undertakings (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, as the goods in question are identical or similar to various degrees, a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion 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 10 061 372. 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

Martin EBERL

Octavio MONGE GONZALVO

Denitza STOYANOVA-VALCHANOVA

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.