OPPOSITION No B 2 749 359
The Mad Pixel Factory, S.L., C/ Fuencarral, nº 125, Madrid, Spain (opponent),
represented by Casas Asin, S.L., Av. San Francisco Javier, 9, Edificio Sevilla 2, 8ª
Planta, Oficina 7, 41018 Sevilla, Spain (professional representative)
a g a i n s t
Samsung Electronics Co., Ltd., 129, Samsung-ro, Yeongtong-gu, Suwon-si,
Gyeonggi-do, Republic of Korea (applicant), represented by Perani & Partners Spa,
Piazza San Babila, 5, 20122 Milano, Italy (professional representative).
On 18/10/2017, the Opposition Division takes the following
1. Opposition No B 2 749 359 is upheld for all the contested goods.
2. European Union trade mark application No 15 435 845 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 435 845 for the word mark ARTCANVAS. The opposition is based
on European Union trade mark registration No 12 209 243 for the figurative mark
. 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.
Decision on Opposition No B 2 749 359 page: 2 of 7
a) The goods and services
The goods and services on which the opposition is based are in Classes 9, 38, 41,
42. They include, inter alia, the following:
Class 9: Computer software.
The contested goods are the following:
Class 9: Application software for use with smart phones, tablet computers and smart
televisions, for use in creating drawings, illustrations, sketches, designs and
The contested application software for use with smart phones, tablet computers and
smart televisions, for use in creating drawings, illustrations, sketches, designs and
paintings are included in the broad category of the opponent’s computer software.
Therefore, they are identical.
b) 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 described as application
software intended for use with standard consumer electronic items, namely smart
phones, tablet computers and smart televisions for use in creating drawings,
illustrations, sketches, designs and paintings. Consequently, whilst the goods can be
directed at professionals working in the field of art and design it is also equally clear
that the goods are directed at the public at large for use in creating drawings,
illustrations, sketches, designs and paintings.
The degree of attention is considered to be average for the public at large, although it
may be higher for professionals working in the field of art and design. However, for
the purposes of further examination, the Opposition Division finds it appropriate to
proceed with the analysis of the similarities of the signs from the perception of the
public at large, which is more prone to confusion.
c) 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).
Decision on Opposition No B 2 749 359 page: 3 of 7
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.
All the verbal elements of both signs are recognisable English words. Consequently,
the Opposition Division finds it appropriate to focus the comparison of the signs on
the English-speaking part of the public at large.
The earlier mark consists of two English words, ‘SECOND’ (meaning, amongst
others, coming directly after the first in numbering or counting order, position, time,
etc; being the ordinal number of two: often written 2
) and ‘CANVAS’ (meaning,
amongst others, a piece of canvas or a similar material on which a painting is done,
usually in oils; a painting on this material, esp. in oils), which taken together can be
understood as referring to ‘the subsequent or additional canvas’.
The applicant argued that the contested sign, ‘ARTCANVAS’, is a fanciful word with
no meaning. However, although it is composed of one verbal element, the relevant
English-speaking consumers, when perceiving a verbal sign, will break it down into
elements that suggest a concrete meaning, or that resemble words that they already
know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06,
Aturion, EU:T:2008:33, § 58). Therefore, the Opposition Division is of the opinion that
the relevant public will readily perceive the contested sign as containing the English
words ‘ART’ and ‘CANVAS’.
(All definitions are taken from the Collins English Dictionary Online
The word ‘ART’ will be understood as meaning, amongst others, any branch of the
visual arts, esp. painting, whilst ‘CANVAS’ will be understood as above. Taken
together they can be understood as referring to ‘a canvas used for art’.
The applicant also argued that in the fields of informatics, electronics and software
the word ‘CANVAS’ refers to a (virtual) container that holds various drawing
elements, like lines, shapes, text, frames containing other elements, etc, and,
consequently, it has a lesser degree of distinctiveness. The applicant attached
evidence in support of this argument, consisting of two extracts from the online
encyclopaedia Wikipedia for ‘Canvas (GUI)’ and ‘Canvas element’, a forum article
from stackoverflow.com entitled ‘Does it make sense to create a canvas-based UI
components’, an article from npmjs.com entitled ‘canvas-ui’, an article from
wiki.gnome.org entitled ‘Gtk Canvas’ and a forum article from html5gamedevs.com
entitled ‘CastorGUI – a GUI library for canvas with system of BDD’.
The evidence filed by the applicant does show that the term canvas has an additional
meaning for IT professionals involved with software development. However, as
described above in section b) the goods found to be identical are intended for use
with standard consumer electronic items, namely smart phones, tablet computers
and smart televisions, and are directed at least in part, at the public at large which is
the public being focus upon in this decision. This public will not be aware of the
technical meaning that IT professionals apply to the word ‘CANVAS’ and will instead
associate it with the everyday meaning of the word.
Decision on Opposition No B 2 749 359 page: 4 of 7
Consequently, and bearing in mind what has been said above, the Opposition
Division finds that the public at large will perceive both marks as having meanings as
a whole (‘the subsequent or additional canvas’ and ‘a canvas used for art’
respectively), and whilst both refer to the material on which drawings can be made
they do not describe the goods as such and merely allude to them.
The opponent claimed that the shared element ‘CANVAS’ is the dominant element in
the marks, whilst the applicant claimed that the element ‘SECOND’ is the dominant
element of the earlier mark.
The Opposition Division reminds the parties that, according to the current practice of
, a dominant element is one which is considered to be visually outstanding
and eye-catching. Word marks per se do not have dominant elements. Furthermore,
the earlier mark is presented in a manner in which neither of the words ‘SECOND’ or
‘CANVAS’ can be considered to be visually outstanding and overshadowing the other
word. Consequently, the Opposition Division finds that neither sign has any element
that could be considered clearly more dominant than other elements.
The figurative element of the earlier right consists entirely in the use of colour for the
lettering. This is a very minimal degree of stylisation (especially as the letters
themselves are presented in a standard typeface) and will be seen as a decorative
feature by the relevant consumers.
Visually, the signs coincide in six letters, ‘CANVAS’, which furthermore appear in the
same place within the signs, namely as the second part of the signs. However, they
differ in their beginnings namely ‘SECOND’ in the earlier right and ‘ART’ in the
contested sign. Furthermore, they differ in the earlier right’s figurative elements,
although, as mentioned above, this will be seen as a decorative feature and will have
little impact on consumers.
Therefore, and bearing in mind the above, the Opposition Division cannot agree with
the applicant who claimed that the signs are visually different, and instead finds the
signs to be visually similar to an average degree given that six letters out of nine or
twelve are the same and in the same place.
Aurally, the pronunciation of the signs coincides in the syllables /CAN/VAS/ present
identically at the end of both signs. However, the pronunciation differs in the syllables
/SEC/OND/ of the earlier mark and /ART/ in the contested sign.
Therefore, as the signs share two syllables out of either three or four syllables the
signs are similar to an average degree.
Conceptually, the public in the relevant territory will perceive the meanings of the
signs as explained above, and whilst obviously not identical they are conceptually
similar to an average degree.
1 Guidelines for Examination of European Union Trade Marks, section 3.3 Dominant
elements of the marks, accessible here https://euipo.europa.eu/tunnel-
Decision on Opposition No B 2 749 359 page: 5 of 7
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
Whilst the opponent mentioned the principle that trade marks with a highly distinctive
character enjoy broader protection than marks with a less distinctive character, 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, despite the presence of allusive elements, as stated above in section c) of
e) Global assessment, other arguments and conclusion
The goods have been found to be identical. The signs are visually, aurally and
conceptually similar to an average degree, because they share the word ‘CANVAS’
which, for the public at large, forms a substantial part of the relevant public, and
which is not less distinctive as argued by the applicant.
It is true, as argued by the applicant, that 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. Therefore, the applicant is
of the opinion that the differences in the beginnings of the signs, ‘SECOND’ vs ‘ART’,
are important factors in finding no likelihood of confusion.
However, whilst the beginnings are different, they do not mask or alter significantly
the shared element ‘CANVAS’ to a degree that the relevant consumers would only
focus on the signs’ first elements.
It is also true, as argued by the applicant, that the opponent’s claim for a likelihood of
confusion, because of the possibility of the consumers seeing the contested sign as
part of a family of trade marks must be set aside, as the opponent has neither proven
or filed any evidence to prove the existence of an earlier family of marks.
However, it should be remembered that the likelihood of confusion includes the
likelihood of association, in the sense that the public may, if not confuse the two signs
directly, believe that they come from the same undertaking or from economically–
related ones (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30), the relevant
consumers may think that the contested mark is as a sub-brand, a variation of the
earlier mark, configured in a different way according to the type of services that it
designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Furthermore, the global assessment of a likelihood of confusion implies some
interdependence between the relevant factors, and in particular, similarity between
Decision on Opposition No B 2 749 359 page: 6 of 7
the trade marks and between the goods or services. Accordingly, a greater degree of
similarity between the goods or services may be offset by a lower degree of similarity
between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, §
24; Canon§ 17). In the present case it must be remembered that the goods are
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public at large. 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, so in the present case the
English-speaking part of the public at large, there is no need to analyse the
remaining professional part of the English-speaking public or the non English-
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 209 243. It follows that the contested trade mark
must be rejected in its entirety.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Chantal VAN RIEL Ric WASLEY Vita VORONECKAITĖ
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
Decision on Opposition No B 2 749 359 page: 7 of 7
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.