OPPOSITION No B 1 046 848
Boomerang International AB, Kräftriket 16 A, 114 19 Stockholm, Sweden (opponent), represented by Gozzo Advokater HB, Mässansgata 18 våning 5, 400 24, Göteborg, Sweden (professional representative)
a g a i n s t
El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (applicant), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative).
On 28/03/2017, the Opposition Division takes the following
1. Opposition No B 1 046 848 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 4 761 573, namely against all the goods in Class 25. The opposition is based on Swedish trade mark registrations No 247 835 and No 229 323. 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 signs
Mark 1: Registration No 229 323
Mark 2: Registration No 247 835
Earlier trade marks
The relevant territory is Sweden.
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).
Earlier mark 1 is a word mark, ‘BOOMERANG’. Earlier mark 2 is a figurative mark consisting of a depiction of a boomerang, two interwoven circles and the word ‘BOOMERANG’ positioned between the circles. The word ‘BOOMERANG’ of the earlier marks is very similar to the equivalent word in Swedish, ‘BUMERANG’, and, furthermore, the relevant public is familiar with English. Therefore, the word ‘BOOMERANG’ will be understood by the relevant public as referring to ‘a curved piece of wood which comes back to you if you throw it in the correct way‘ (information extracted from https://www.collinsdictionary.com). As the verbal elements of the earlier marks and the boomerang and circles in earlier mark 2 are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
The contested sign is a figurative mark consisting of the words ‘CONEXION TIJUANA’, depicted in stylised letters against a grey ellipse, above which is a depiction of a dog in grey and black. Underneath the ellipse are the barely visible words ‘by Boomerang’ in minuscule letters. These words can be considered 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, the words ‘by Boomerang’ are barely perceptible and are placed in a secondary position below the figurative elements and larger word elements. As the words ‘by Boomerang’ are barely visible, they will probably be disregarded by the relevant public and not taken into consideration.
The element ‘CONEXION’ of the contested sign has no meaning for the relevant public. The element ‘TIJUANA’ will be perceived as the name of a city in Mexico. The depiction of a dog will be perceived as such. As the verbal elements and the depiction of a dog are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
None of the signs contains any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually and aurally, the marks have been described above. Since the contested sign does not coincide with either of the earlier marks in any element, it is considered that the signs are not visually or aurally similar.
Conceptually, the meanings of the signs have been explained above. The earlier marks and the contested sign are conceptually dissimilar, since they convey different meanings.
As the signs do not coincide in any element, they are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.