OPPOSITION No B 2 334 210

Spy Optic Inc., 1896 Rutherford Rd., Carlsbad California 92008, United States of America (opponent), represented by Scott & York Intellectual Property Law, 45 Grosvenor Road, St. Albans, Hertfordshire AL1 3AW, United Kingdom (employee representative)

a g a i n s t

Atomic Monkey Products Limited, Room 811, 8/F. Corporation Park, No. 11 On Lai Street, Shatin, New Territories, Hong Kong, The Hong Kong Special Administrative Region of The People's Republic of China (applicant), represented by Cabinet Chaillot, 16-20 avenue de L'Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 334 210 is partially upheld, namely for the following contested goods:

Class 9: Optical apparatus and instruments.

Class 22: Bags, sacks (not included in other classes).

Class 28: Toy goggles; toy briefcases.

2.        European Union trade mark application No 12 175 006 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 the European Union trade mark application No 12 175 006. The opposition is based on the European Union trade mark registrations Nos 5 805 577, 5 648 969, 5 648 911 and the United Kingdom trade mark registration No 1 570 544 SPY. The opposition is also based on the French trade mark registration No 94 520 610 SPY, Greek trade mark registration No 122 529 SPY, Italian trade mark registration No 1 094 953 SPY, Austrian trade mark registration No  160 269 SPY, Czech Republic’s trade mark registration No 99 616 SPY, German trade mark registration No 2 900 885 SPY, Danish  trade mark registration No 199 503 033 SPY, Finnish trade mark registration No 140 519 SPY, Hungarian trade mark registration No 150 541 SPY, Irish 165 975 SPY, Benelux trade mark registration No  561 219 SPY, Polish trade mark registration No  107 892 SPY, Swedish trade mark registration No 305 313 SPY, Portuguese trade mark registration No 342 282 , Spanish trade mark registration No 2 378 311 , Croatian trade mark registration No Z20 031 494 SPY, Estonian  trade mark registration No 40 191 SPY, Lithuanian trade mark registration No 49 684 SPY, Latvian trade mark registration No 54 036 SPY, Slovenian trade mark registration No 200 371 456 SPY. The opposition is also based on non-registered trade marks  , SPY (word), SKYOPTIC (word)  in the member states of the European Union, all for Sunglasses and protective googles, sporting bags and backpacks, wearing apparel, namely T-shirts, shirts, shorts, pants, sweatpants, hats, visors, shoes, sandals and bells and on non-registered trade mark  in Portugal for Sunglasses parts of sunglasses, cases for sunglasses and wires for sunglasses and non-registered trade mark  in Spain for Sunglasses and goggles.

The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

SUBSTANTIATION

First, the Opposition Division examines the substantiation of the following trade rights:

French trade mark registration No 94 520 610 SPY, Greek trade mark registration No 122 529 SPY, Italian trade mark registration No 1 094 953 SPY, Austrian trade mark registration No  160 269 SPY, Czech Republic’s trade mark registration No 99 616 SPY, German trade mark registration No 2 900 885 SPY, Danish  trade mark registration No 199 503 033 SPY, Finnish trade mark registration No 140 519 SPY, Hungarian trade mark registration No 150 541 SPY, Irish 165 975 SPY, Benelux trade mark registration No  561 219 SPY, Polish trade mark registration No  107 892 SPY, Swedish trade mark registration No 305 313 SPY, Portuguese trade mark registration No 342 282 , Spanish trade mark registration No 2 378 311 , Croatian trade mark registration No Z20 031 494 SPY, Estonian  trade mark registration No 40 191 SPY, Lithuanian trade mark registration No 49 684 SPY, Latvian trade mark registration No 54 036 SPY, Slovenian trade mark registration No 200 371 456 SPY.

Non-registered trade marks  , SPY (word), SKYOPTIC (word)  in the European Union, all for Sunglasses and protective googles, sporting bags and backpacks, wearing apparel, namely T-shirts, shirts, shorts, pants, sweatpants, hats, visors, shoes, sandals and bells and on non-registered trade mark  in Portugal for Sunglasses parts of sunglasses, cases for sunglasses and wires for sunglasses; non-registered trade mark  in Spain for Sunglasses and goggles.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks mentioned in the beginning of this section, on which the opposition is based.

On 22/04/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/08/2016 after two extensions.

In the present case the evidence filed by the opponent in respect of the registered national trade marks listed above consists of documents which are not of official nature, they are of unknown origin, do not indicate the source of the data, or  the database is not of an official nature.

In respect of the non-registered trade marks, the opponent did not submit any evidence concerning the substantiation of these marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks or earlier rights.

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  5 648 911.

1. The goods

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

Class 9:         Sunglasses and goggles.

Class 18:         Bags, including, backpacks and sports bags.

Class 25:         Wearing apparel, including, T-shirts, shirts, shorts, pants, sweatshirts, sweatpants, hats, visors, shoes, sandals and belts.

The contested goods are the following:

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; video games; video game programs; walkie talkies; radio control devices; laser pointing devices; digital cameras; radio transmitter for use with radio controlled toys.

Class 22:         Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials; Synthetic rope for use with winches, hoists and cranes; ropes for use in toys; covers for camouflage; nets for camouflage; belts (not of metal) for handling loads; quick release tie down straps.

Class 28:         Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Toy radio control devices; Radio-controlled action toys; battery operated toy vehicles; remote-controlled toy vehicles. Toy laser pointing devices; toy digital cameras; Action playsets sold as a unit for make-believe play spy activities, battle activities and adventure activities; computerized toy vehicles; toy vehicles incorporated with camera, video, loud speaker and antenna; Toys, games, and playthings, namely, action target games; target games; toy vehicles and accessories therefor; children's multiple activity toys; toy safes; toy watches; toy motion sensors; toy electronic listening devices; toy walkie-talkies; toy magnifying glasses; toy cameras; toy pens; toy binoculars; toy scopes; toy motion alarm traps; toy decoders; toy door alarms; toy lights; toy tool belts; toy lasers; toy text messengers; toy goggles; toy voice recorders; toy trackers; toy briefcases; toy multi-purpose tool kits; toy périscopes; Non-metallic knives with toy tools; toy canteens; toy flashlights; toy disc launchers; toy shredders; toy door alarms; toy kaléidoscopes; Battery operated action toys; electronic action toys; remote-control toys, namely toy vehicles, toy planes, toy helicopters, toy tanks, toy figures; electronically operated toy vehicles; Board games; electronic board games; radio control toy vehicles; toys including combination toy telescopes and microscopes; toy carry-all belts.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

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).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested goods in Class 9

The contested optical apparatus and instruments include, as a broader category the opponent’s Sunglasses and goggles. 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 remaining contested Scientific, nautical, surveying, photographic, cinematographic,  weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; video games; video game programs; walkie talkies; radio control devices; laser pointing devices; digital cameras; radio transmitter for use with radio controlled toys have all a different nature, purpose and methods of use compared to the opponent’s goods in classes 9, 18 and 25, which include sunglasses, bags, clothing and  footwear items. These goods are not in competition nor complementary, they have different manufacturers, distribution channels. The goods are dissimilar.

Contested goods in Class 22

The contested bags, sacks (not included in other classes) are similar to the opponent’s Bags, including, backpacks and sports bags in Class 18. The goods have the same nature, and purpose, they can coincide in manufacturer and distribution channels.

The remaining Ropes, string, nets, tents, awnings, tarpaulins, sails (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials; Synthetic rope for use with winches, hoists and cranes; ropes for use in toys; covers for camouflage; nets for camouflage; belts (not of metal) for handling loads; quick release tie down straps have all a different nature, purpose and methods of use compared to the opponent’s goods in classes 9, 18 and 25, which include sunglasses, bags, clothing and  footwear items.. These goods are not in competition nor complementary, they have different manufacturers, distribution channels. The goods are dissimilar.

Contested goods in Class 28

The contested toy goggles are similar to a low degree to the opponent’s goggles and the contested toy briefcases are similar to a low degree to the opponent’s Bags. These goods have similar nature and purpose respectively, although the methods of use differ, as the opposed goods are used as toys. The goods have different manufacturers, distribution channels and users.  

The remaining contested Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Toy radio control devices; Radio-controlled action toys; battery operated toy vehicles; remote-controlled toy vehicles. Toy laser pointing devices; toy digital cameras; Action playsets sold as a unit for make-believe play spy activities, battle activities and adventure activities; computerized toy vehicles; toy vehicles incorporated with camera, video, loud speaker and antenna; Toys, games, and playthings, namely, action target games; target games; toy vehicles and accessories therefor; children's multiple activity toys; toy safes; toy watches; toy motion sensors; toy electronic listening devices; toy walkie-talkies; toy magnifying glasses; toy cameras; toy pens; toy binoculars; toy scopes; toy motion alarm traps; toy decoders; toy door alarms; toy lights; toy tool belts; toy lasers; toy text messengers; toy voice recorders; toy trackers; toy multi-purpose tool kits; toy périscopes; Non-metallic knives with toy tools; toy canteens; toy flashlights; toy disc launchers; toy shredders; toy door alarms; toy kaléidoscopes; Battery operated action toys; electronic action toys; remote-control toys, namely toy vehicles, toy planes, toy helicopters, toy tanks, toy figures; electronically operated toy vehicles; Board games; electronic board games; radio control toy vehicles; toys including combination toy telescopes and microscopes; toy carry-all belts have all a different nature, purpose and methods of use compared to the opponent’s goods in classes 9, 18 and 25, which include sunglasses, bags, clothing and  footwear items.. These goods are not in competition nor complementary, they have different manufacturers, distribution channels. The goods are dissimilar.

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 at the public at large. The degree of attention is average.

3. The signs

SPY
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 common element SPY is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish, Portuguese or Italian public.

The earlier mark is a distinctive word mark.

The contested mark is a figurative mark containing a word element SPYX in a stylised typeface. It also contains a negligible element. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there is an element, such as a numeral, ‘2’, which is barely perceptible due to its minuscular size and placement. As it is likely to be disregarded by the relevant public, it will not be taken into consideration. The  mark has no elements that could be considered clearly more distinctive or dominant than other 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).

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 the element SPY. However, they differ in the stylisation of that element in the contested sign, and also in the additional letter X placed at the end of the contested sign. It is also noted, that in case of word marks, as the earlier mark, it is the word that is protected, and not its written form.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables SPY, present identically in both signs. The pronunciation differs in the  sound of the letters X of the contested mark, which has no counterparts in the earlier sign.

Therefore, the signs are aurally 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 goods have been found to be partially identical, partially similar to various degrees and partially dissimilar. The similarities and dissimilarities between the signs have been established above.

The signs have been found to be similar to the extent that they share the ‘SPY’ in their beginnings. The differentiating letter X in the signs are placed in a non-prominent, secondary position at the end of the contested sign. Therefore, they can be easily confused when seen or pronounced, especially given that the marks have no concept.

Account is also taken of the fact that 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).

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 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).

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting goods, which are identical and similar (including those that were found similar to a low degree), come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public such as the Spanish, Portuguese or Italian public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

The opponent has also based its opposition on the following earlier trade marks:

EUTM No 5 805 577

EUTM  5 648 969 SPYOPTIC.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements and/or additional words such as the plus sign or the OPTIC, which are not present in the contested trade mark. Moreover, they cover the same scope of the goods in classes 9, 18, 25. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 22/04/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/08/2016 after two extensions.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 shall 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

Francesca DINU

Erkki MÜNTER

Francesca CANGERI SERRANO

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.