OPPOSITION No B 2 766 551

Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (opponent), represented by Nicola Franzky, Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

Frédérick Guillier-Sahuque, 3 rue des Alouettes, 56390 Grand-Champ, France, and Ottomobile, Rua de Viseu N°144 Fast Garden – Bloco 2 – Res do Chaoh – Taipa, Macao, People’s Republic of China (applicants), represented by Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 551 is upheld for all the contested goods.

2.        European Union trade mark application No 15 480 304 is rejected in its entirety.

3.        The applicants bear the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 480 304 , namely scale model vehicles in Class 28. The opposition is based on, inter alia, European Union trade mark registration No 13 713 151 . 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 13 713 151.

1. The goods and services

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

Class 35:        Retailing of playthings.

The contested goods are the following:

Class 28:        Scale model vehicles.

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.

The applicants argue that scale model vehicles are very specific goods, in terms of their nature, purpose and method of use. In particular, the applicants claim that they offer high-end, limited-edition vehicles targeting a clearly defined relevant public, namely collectors, and sold only to specialised stores and websites. In addition, the applicants emphasise that similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods are identical.

Firstly, the Opposition Division notes that the comparison of goods and services must be based on the usual meaning of the wording used in the list of goods/services as registered and applied for. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Secondly, while generally goods and services are not in competition with and, in principle, not complementary to each other, an exception in this respect exists when comparing retail services related to the sale of particular goods with those particular goods. Although the natures, purposes and methods of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33).

As correctly claimed by the applicants, for a finding of similarity between goods and retail services, the goods covered by the retail services and the specific goods covered by the other mark have to be identical, that is to say, they must either be exactly the same goods or fall within the natural and usual meaning of the same category. In the present case, the Opposition Division notes that the opponent’s retailing of playthings concerns the retailing of goods that can be defined as a broad category including any type of plaything, namely ‘a toy or other object that a child plays with’ (definition extracted from Collins English Dictionary). In this regard, the Opposition Division finds that the contested scale model vehicles, which are physical miniature representations or copies of vehicles, are included in the broad category of playthings. Therefore, the object of the retail services of the earlier mark, namely playthings, is identical to the goods protected by the contested mark.

Taking into account all the above, the contested scale model vehicles are similar to a low degree to the opponent’s retailing of playthings.

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 and service found to be similar to a low degree are directed at the public at large. The degree of attention is average.

3. The signs

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 ‘OTTO’, contained in both signs, is meaningful in certain territories, for example in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The earlier mark is a figurative mark consisting of the single word ‘OTTO’ written in red upper case letters in a bold font, with the letters joined at the top.

The contested sign is also a figurative mark, comprising the words ‘OttO’ and ‘mobile’ in stylised blue and orange letters, respectively. Above the word ‘OttO’ is a continuous curved line in orange. For a significant part of the relevant public, the combination of the orange curvilinear shape above the word ‘OttO’ and the word ‘OttO’ will be perceived as a depiction of a car. It cannot be excluded that a small part of the relevant public will perceive the curved line as an abstract shape.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

The element ‘OTTO’, which is the sole word element of the earlier mark and the first word element of the contested sign, will be understood by the German-speaking part of the relevant public as a male first name. In relation to the relevant goods and service, it is distinctive.

The second word element of the contested sign, ‘mobile’, will be perceived by the German-speaking part of the relevant public as the plural form of the noun ‘mobil’, which can be translated into English as ‘vehicle’, ‘car’ (information extracted from Duden Online Wörterbuch). In the context of the relevant goods, this word is directly descriptive of the kind of the goods, and, thus, it is considered non-distinctive.

The applicants argue that these two word components will be read as the sequence ‘OttOmobile’ and perceived as a play on the word ‘AUTOMOBILE’. The Opposition Division, however, disputes the applicants’ claim. The consumer will clearly dissect the two individual words ‘OttO’ and ‘mobile’ in the contested sign due to the space between them and their different colours and graphical depictions. Therefore, the applicants’ arguments in this regard must be set aside as highly unlikely.

The figurative elements of the earlier mark, namely the graphical arrangement and the colours of the sign, being entirely decorative and non-distinctive on their own, will be perceived by the public as mere carriers of the sign’s word element, ‘OTTO’.

Regarding the figurative elements of the contested sign, for the significant part of the relevant public that will perceive the depiction of a car, this figurative device is non-distinctive, since it directly describes the kind or other objective characteristics (i.e. the shape) of the goods at issue. For the part of the public that will perceive the curvilinear shape as an abstract figurative element, this figurative feature is of a purely decorative nature and, as such, it will be considered less distinctive than the other elements with a normal degree of distinctiveness. Other figurative features of the contested sign, namely the stylisation and colours of the contested sign’s word elements, will be perceived as common graphical means of bringing the words in question to the public’s attention. Therefore, the relevant public will pay little attention to these features, if any.

Visually, the signs coincide in the word ‘OTTO’, which makes up the entire earlier mark and the first word element in the contested sign and, notwithstanding its stylisation in the marks, is present and legible in both signs. The signs differ in the non-distinctive word ‘mobile’ of the contested sign. Furthermore, although the contested sign contains additional figurative elements, they are non-distinctive or carry less weight in the overall impression produced by the mark, for the reasons set out above.

In this regard, 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).

Furthermore, an important factor to consider is that the sole word element of the earlier mark, ‘OTTO’, is fully included in the beginning of the contested sign and it retains an independent role, given its position and stylisation than the contested sign’s other word element, ‘mobile’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the contested sign the one that first catches the attention of the reader.

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

Aurally, the pronunciations of the signs coincide in the distinctive word ‛OTTO’, which constitutes the entirety of the earlier mark and is included in the contested sign as an identifiable, distinctive element. Although the contested sign differs in the additional word ‘mobile’, bearing in mind that this element is non-distinctive for the contested goods, its impact on the overall impression conveyed by the contested sign is very limited.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In particular, when encountering the contested sign, the public’s attention will be focused on the meaning of the element capable of indicating the commercial origin of the goods, whilst the meaning of the non-distinctive or less distinctive elements has a very low impact on the conceptual perception of the contested sign. As both signs will be associated with the distinctive concept of the word element ‘OTTO’, they are conceptually highly 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 the service 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).

The goods and service are similar to a low degree. The signs are visually similar to an average degree and aurally and conceptually similar to a high degree. The degree of attention of the relevant public is average.

As explained in section c) of this decision, from the perspective of the German-speaking part of the public, the signs are similar on all levels of the comparison, given that the earlier mark is entirely reproduced in the contested sign as an independent and distinctive element. Since the differences between the signs are confined to non-distinctive elements or elements that carry less weight in the overall impression produced by the mark, they are clearly insufficient to enable the relevant public to safely distinguish between the signs. As stated above, the average consumer normally pays less attention to those elements in a trade mark that are non-distinctive or of limited distinctiveness and, furthermore, verbal elements have a stronger impact than figurative elements. Consequently, consumers will focus on the coinciding word ‘OTTO’. Taking into account consumers’ imperfect recollection, and in particular the fact that the earlier mark is reproduced in its entirety in the contested sign, the Opposition Division finds that the differences between the signs are clearly not sufficient to outweigh the high degree of aural and conceptual similarity and the average degree of visual similarity between them and to exclude a likelihood of confusion.

Regarding the goods in Class 28 found to be similar to a low degree to the opponent’s service in Class 35, account must be taken of the well-established principle that 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). In the present case, the similarity between the signs outweighs the low degree of similarity between the opponent’s service and the contested goods, and a risk of confusion still exists.

It is noted that 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 this regard, it must be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant public will notice the repetition of the distinctive element ‘OTTO’, perceive the contested sign as a variation of the earlier mark and assume that the contested sign is a sub-brand of goods/services connected to the earlier mark. Consequently, the public may attribute the same commercial origin to the contested goods or believe that they are produced and provided by economically linked undertakings.

Considering all of the circumstances of the case, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the German-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 13 713 151. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 13 713 151 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 applicants are the losing party, they 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

Pierluigi M. VILLANI

Birgit FILTENBORG

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.

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.