OPPOSITION No B 2 066 226

David Bonney, c/o Suite 11 Penhurst House, 352-356 Battersea Park Road, London  SW11 3BY, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London  EC4A 1BL, United Kingdom (professional representative)

a g a i n s t

Armin Navabi Shirazi, 476-280 Nelson Street, Vancouver, British Columbia  V6B 2E2, Canada (applicant), represented by Joshi Worldwide IP, Citypoint, 1 Ropemaker Street, London, City of London EC2Y 9HT, United Kingdom (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 066 226 is upheld for all the contested goods and services, namely 

Class 14:        Jewelry; novelty items, namely key rings made of precious metals; novelty items, namely statues of precious metal and their and alloys.

Class 16:        Novelty items, namely, pennants, bumper stickers, stickers, flags, emblems and tattoo transfers.

Class 21:        Drinking and decorative glasses, steins, mugs, beverage holders, plastic coasters, glass coasters, place mats, and shooter glasses; novelty items, namely, statues of china, porcelain, crystal, glass and earthenware; novelty items, namely collector, commemorative and souvenir plates.

Class 25:         Clothing, namely, casual wear; headwear, namely, hats, caps, toques and visors.

Class 35:        Advertising and information distribution services for others, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; online retail store services featuring clothing, headwear, novelty items, drinking and decorative glasses, steins, mugs, beverage holders, plastic coasters, glass coasters, place mats, and shooter glasses, and jewelry.

Class 41:        Special event planning for social entertainment purposes.

2.        European Union trade mark application No 10 727 221 is rejected for all the contested goods and services. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 727 221, namely against all the goods and services in Classes 14, 16, 21, 25, 35 and against some of the services in Class 41. The opposition is based on European Union trade mark registration No 10 034 874. 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 and services

The opposition was initially based on an earlier EUTM application, which was registered on 19/07/2016. Some of the goods the opposition was based on were refused by Opposition decision No 1 946 402 of 28/02/2013, upheld on appeal by Decision No R 803/2013-4 delivered on 05/08/2014.

Therefore, the goods and services on which the opposition is based are the following:

Class 18:        Wallets; belts; baby carriers; baby slings, belt pouches; belts; belts made of imitation leather; belts made of leather; boxes made of leather; boxes made of leather boards; coats for animals; coats for cats; coats for dogs; coin holders; collars for animals; cosmetic holdalls; credit card holders made of leather; dog collars; driving licence holders; jewel rolls; jewellery rolls; key holders; key holders  made of leather; key pouches;  leather belts; leather briefcases; leather portfolios; leather wallets; pocket wallets; travelling sets; wristlets, beach umbrellas; umbrellas, walking sticks; wallets; wallets for attachment to belts.

Class 25:        Eye masks.

Class 35:        Advertising, marketing, promotion, retail (whether in store, by mail order, telephone, or via the internet) of health and beauty products, cosmetics, fragrances and toiletries, perfumes, essential oils, cosmetics, dentifrices, deodorants, non-medicated toilet preparations, preparations and substances for use in the care and appearance of the skin, hair, nails, eyes and teeth, soaps and cleaning preparations, creams, medicinal and remedial preparations and substances, homeopathic preparations and substances, preparations and substances derived from plants and flowers for use in the treatment of emotional conditions, preparations and substances for medicinal purposes derived from plants and flowers, candles, towels, flannels, bath robes, sponges, combs, nail brushes, hair brushes, toilet brushes, mirrors, bath mats, showercaps, loofahs, bath pillows, bath racks, pumice stones, foot spas, hairdryers, food, headgear, hair accessories,  millinery, jewellery and imitation jewellery including clocks and watches, eyewear, sporting goods and articles, toys, games and playthings, cutlery, glassware and other tableware, cooking utensils and articles for the preparation of food and drink, ornaments for the home, carpets and home furnishings, bed linen, consumer electrical and electronic goods and accessories, goods relating to home decoration, ironmongery, hand tools and instruments for domestic, household, kitchen and garden use, interior and garden furniture, stationery, books, literary materials, printed matter, Christmas hampers and decorations, food and drink; business management; business administration; office functions; organising, arranging and promoting trade fairs, exhibitions and conferences.

The contested goods and services are the following:

Class 14:        Jewelry; novelty items, namely key rings made of precious metals; novelty items, namely statues of precious metal and their and alloys.

Class 16:        Novelty items, namely, pennants, bumper stickers, stickers, flags, emblems and tattoo transfers.

Class 21:        Drinking and decorative glasses, steins, mugs, beverage holders, plastic coasters, glass coasters, place mats, and shooter glasses; novelty items, namely, statues of china, porcelain, crystal, glass and earthenware; novelty items, namely collector, commemorative and souvenir plates.

Class 25:        Clothing, namely, casual wear; headwear, namely, hats, caps, toques and visors.

Class 35:        Advertising and information distribution services for others, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; online retail store services featuring clothing, headwear, novelty items, drinking and decorative glasses, steins, mugs, beverage holders, plastic coasters, glass coasters, place mats, and shooter glasses, and jewelry.

Class 41:        Special event planning for social entertainment purposes.

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

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

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 14

The contested novelty items, namely key rings made of precious metals are highly similar to opponent’s key holders in Class 18. The goods have the same purpose of holding the keys together and they target the same end users, they coincide in the distribution channels and they can coincide in the producer. Furthermore, they can be ‘interchangeable’.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method 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.

The principle set out above applies to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as internet shopping among the others.

Therefore, the contested jewelry is similar to a low degree to the opponent’s services of retail (whether in store, by mail order, telephone, or via the internet) of […] jewelry in Class 35.

For the reasons stated above, the contested novelty items, namely statues of precious metal and their and alloys are similar to a low degree to the opponent’s services of retail (whether in store, by mail order, telephone, or via the internet) of […] goods relating to home decoration in Class 35 since statues of precious metal and their and alloys are included in the broad category of goods relating to home decoration and considered identical.

Contested goods in Class 16

The contested novelty items, namely, pennants, bumper stickers, flags, emblems and tattoo transfers are included in the broad category of printed matter and, therefore, identical. As explained above, the retail services are generally offered in the same places where the goods are offered for sale, they target the same public and are complementary, therefore, the contested novelty items, namely, pennants, bumper stickers, flags, emblems and tattoo transfers are similar to a low degree to the opponent’s services of retail (whether in store, by mail order, telephone, or via the internet) of […] printed matter in Class 35.

The contested novelty items, namely stickers are included in the broad category and therefore identical to stationery. In line with what has been explained above, the contested novelty items, namely stickers are also similar to a low degree to the opponent’s services of retail ([…] via the internet) of […] stationery in Class 35.

Contested goods in Class 21

The contested drinking glasses, and shooter glasses are included in the broad category and identical to glassware, therefore, they are similar to a low degree to the opponent’s retail ([…] via the internet) of […] glassware in Class 35, since, as explained above, they are complementary, the services are generally offered in the same places where the goods are offered for sale and they target the same public.

The contested steins, mugs, beverage holders, plastic coasters, glass coasters, place mats are included in the broad category of tableware and, therefore, identical. Consequently, the contested steins, mugs, beverage holders, plastic coasters, glass coasters, place mats are similar to a low degree to the opponent’s retail (whether in store, by mail order, telephone, or via the internet) of […] other tableware in Class 35, since, as explained above, they are complementary, the services are generally offered in the same places where the goods are offered for sale and they target the same public.

The contested decorative glasses; novelty items, namely, statues of china, porcelain, crystal, glass and earthenware; novelty items, namely collector, commemorative and souvenir plates overlap with goods relating to home decoration and considered identical, therefore the contested decorative glasses; novelty items, namely, statues of china, porcelain, crystal, glass and earthenware; novelty items, namely collector, commemorative and souvenir plates are similar to a low degree to the opponent’s retail (whether in store, by mail order, telephone, or via the internet) of […] goods relating to home decoration in Class 35, since, as explained above, they are complementary, the services are generally offered in the same places where the goods are offered for sale and they target the same public.

Contested goods in Class 25

The contested clothing, namely, casual wear can coincide in producer, end user and distribution channels with opponent’s baby carriers in Class 18. Therefore they are similar to a low degree.

The contested headwear, namely, hats, caps, toques and visors are included in the broad category and, therefore, identical to headgear. Therefore, in line with what has been explained above regarding the similarity between the particular goods and retail services concerning the sale of those particular goods, the contested headwear, namely, hats, caps, toques and visors are similar to low degree to the opponent’s services of retail (whether in store, by mail order, telephone, or via the internet) of […] headgear in Class 35 because they are complementary, the services are generally offered in the same places where the goods are offered for sale and they target the same public.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested online retail store services featuring […] jewelry are identically contained in both lists of services although in a slightly different wording as regards the form of sale (online in the applicant’s list and via internet in the opponent’s list).  

The contested online retail store services featuring […] headwear […] is identically contained in both lists of services (including synonym of headgear in opponent’s list and the slightly different wording of form of sale as stated above).

The contested online retail store services featuring drinking glasses and shooter glasses are included in the broad category of the opponent’s retail ([…] via the internet) of […] glassware […]. Therefore, they are identical.

The contested online retail store services featuring […] steins, mugs, beverage holders, plastic coasters, glass coasters, place mats are included in the broad category of the opponent’s retail ([…] via the internet) of […] other tableware. Therefore, they are identical.

The contested online retail store services featuring […] novelty items, and decorative glasses […] overlap with the opponent’s retail ([…] via the internet) of […] goods relating to home decoration. Therefore, they are identical.

The contested information distribution services for others, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet are included in the broad category of the opponent’s promotion. Therefore, they are identical.

The contested online retail store services featuring clothing are considered similar to the opponent’s retail services via internet related to […] headgear […]. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Both contested and opponent’s retail services are provided online. Furthermore, they coincide in relevant public.

Contested services in Class 41

Special event planning for social entertainment purposes is planning of an event which is designed to entertain others. The process of planning can include budgeting, scheduling, site selection, coordinating transportation and parking, arranging for speakers or entertainers, arranging décor, event security, catering, coordinating with third party vendors. Organising of any event requires effective event planning. Therefore, the contested services of special event planning for social entertainment purposes have the same nature as opponent’s organising, arranging and promoting trade fairs, exhibitions and conferences Class 35 since both comprise activities of planning/organising of different events. Furthermore, they may coincide in the same service provider and may also have the same relevant public (business customers). Therefore, they are similar to a low degree.

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 services found to be identical or similar are directed at both the public at large and business customers (such services as advertising and information distribution services for others, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet in Class 35 and special event planning for social entertainment purposes in Class 41).

In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of certain goods. In many cases the goods will be luxury items or will be intended as gifts. Therefore, the public’s degree of attentiveness may vary from average to high depending on the price and the infrequent purchase for such contested goods as jewelry, key rings made of precious metals, statues of precious metal in Class 14. Depending also on the terms and conditions of the services for advertising and information distribution services for others, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet in Class 35 the public’s degree of attentiveness may also vary from average to high.

3. The signs

ATHEIST
Earlier trade mark	Contested sign

The relevant territory is 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 earlier mark is a word mark, consisting of the word ‘ATHEIST’.

The word ‘ATHEIST’ is an English language word meaning ‘a person who disbelieves or lacks belief in the existence of God or gods’ (information extracted from Oxford Dictionaries on 30/03/2017 at https://en.oxforddictionaries.com/definition/us/atheist). It is also a German language word with the same meaning. Therefore, it will be understood by the English speaking part of the relevant public (such as United Kingdom, Ireland, Malta) and the German-speaking public (e.g. Germany, Austria). This word will also be understood by other parts of the relevant public due to its close similarity to the equivalent word, such as the Dutch-speaking public will understand it as ‘atheïst’ in Dutch); Bulgarian-, Danish-, Swedish-speaking public will understand it as ‘ateist’, Polish-, the Slovak- speaking public will understand it as ‘ateista’, the Finnish- speaking public as ‘ateisti’. It is also not excluded that part of the relevant public, such as the Spanish- speaking public which is unfamiliar with the English language will not understand the meaning and will perceive it as an invented/fanciful word.

The distinctiveness of the word ‘ATHEIST’ must be considered as average, irrespective whether the public will recognise a semantic content in this word or not, since for the relevant goods and services it is not descriptive, laudatory or allusive (in a manner that materially affects the distinctiveness).

The contested sign is a figurative mark consisting of the words ‘Atheist Republic’ depicted in black bold stylised typeface and of a figurative element situated above the verbal element. The figurative element consists of black colour images of a horse and a lion, both standing on their back feet and holding a circle between them.

The verbal element of the contested sign, namely ‘Atheist Republic’ will be understood by the English speaking public as referring to a Republic of atheists, although as an unusual combination of these words. The word ‘Republic’ will be understood by the English speaking public and also it will be perceived with the same meaning by the non-English speaking part of the public either because it is very close to the equivalent word in the respective language or because it is a generally used and clearly known term. The non-English speaking part of the public which understands the word ‘atheist’ due to the close similarity as stated above, will also perceive the verbal element ‘Atheist Republic’ in the same way as the English speaking part of the public. The part of the public which perceives the word ‘atheist’ as an invented/fanciful term, will also perceive the combination of ‘Atheist Republic’ as invented/fanciful.

Along similar lines of reasoning with what has been stated above for the earlier mark, the distinctiveness of the verbal element ‘Atheist Republic’ in the contested sign must also be deemed as average.

The figurative element of the contested sign will be perceived by the relevant public as consisting of a horse, a lion and a circle between them. It is not descriptive, allusive or otherwise weak for the relevant goods and services and the distinctiveness is average.

Although, the figurative elements of the contested sign (a horse, a lion and a circle between them) are visually bigger than the verbal element below them, none of them are visually outstanding compared to each other. Therefore, the contested sign has no element which can be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in word element ‘ATHEIST’ which is distinctive in relation to the relevant goods and services. Furthermore, the word ‘ATHEIST’ is the first word of the verbal element of the contested sign and 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.

However, the signs differ in the word element ‘Republic’ and in the figurative elements, namely a horse, a lion and a circle, in the contested sign which are also distinctive in relation to the goods and services. Although the figurative elements are visually bigger, there is no dominant element as stated above. Furthermore, the verbal element below it (although it is in a stylised font) is easily recognisable and legible. Moreover, the verbal element of the contested sign includes the earlier mark in its entirety as stated above.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the word ‛ATHEIST’, present identically in both signs. And since it appears in the beginning of the contested sign as stated above, it will be pronounced before the second word ‘Republic’.

The pronunciation differs in the word ‘Republic’ in the contested sign, which has no counterpart in the earlier sign. The figurative elements of the contested sign are not subject to a phonetic assessment.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public which understands the meaning of the word ‘Atheist’, the earlier trade mark bears the concept of ‘atheist’ as a person and the verbal element ‘Atheist Republic’ in the contested sign refers to the type of Republic. Therefore, for this part of the relevant public the signs are conceptually similar to an average degree. 

For the remaining part of the public the signs will be conceptually not similar as the earlier sign will not convey any meaning whereas the contested sign’s concept of a horse and a lion holding a circle will be perceived as such throughout the relevant territory.

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 and services 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

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 goods and services at issue are identical or similar (to varying degrees), and they are directed at the public at large and at business consumers. The degree of attention varies from average to high.

The signs are considered aurally similar to an average degree, visually similar to a low degree and conceptually similar to an average degree for the part of the relevant public.

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.

As stated above, the earlier mark is entirely contained in the contested sign and even more, it is the first word of its verbal element. Applying the principle of interdependence, the relevant public (including the professional public) is likely to perceive the contested sign as a sub-brand or variant of the earlier mark, configured in a different way according to the type of goods or services that it designates, and believe that the goods and services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Although the signs contain obvious differences, considering all the above the Opposition Division considers that a likelihood of confusion still exists.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 034 874. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Keeva DOHERTY

Biruté SATAITE-GONZALEZ

Marianna KONDAS

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.