OPPOSITION No B 2 684 903

Educa Borras S.A., Osona, 1 Políg. Ind. Can Casablancas, 08192 Sant Quirze del Vallès (Barcelona), Spain (opponent), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Guangdong Ideal Color Printing CO. LTD. Shenzhen Office, Room 717-718, South Block, Cang Song Building, No. 25 7th Terra Road, Shatou Street, Futian District, Shenzhen, People's Republic of China (applicant), represented by Guy Delhaye, 2 rue Gustave de Clausade, 81800 Rabastens, France (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 684 903 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 859 136. The opposition is based on the following earlier rights:

• Spanish trade mark registration No 2 983 803  EDUCA (word mark)

• European Union trade mark registration No 39 552

• European Union trade mark registration No 547 737

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

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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.

In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 02/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 9:         Teaching apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images; information treatment (data processing) equipment and computers.

Class 16:         Instructional and teaching material (except apparatus); paper, cardboard, goods made from paper and cardboard not included in other classes; printed matter, publications.

Class 28:         Games and playthings.

Class 41:         Education and entertainment services; publication of texts services.        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 08/08/2016 the opponent submitted the following evidence:

• Screenshot of Google search results for ‘EDUCA’, showing the opponent’s website as the first result from 9.430.000 websites
  
• Printouts from websites such as clubparenting.com, bloggersandfamily.com, pequesymas.com, showing toys with the earlier EUTMs, printouts of the Facebook page of the opponent with almost 20.000 likes
  
• Advertisements in Spanish newspapers such as “El País Semanal”, “El Mundo”, “Supertele”, “Futbolísta”, “Deportes telecinco”, “Supertelele” in 2007
  and 2008 showing sometimes the term “EDUCA”, the term “Educa Borras”, or the sign , or , other times, only , in connection with toys.
  
• Several Spanish-language invoices issued to the opponent for advertisements of products for the years 2007 to 2013, for tens of thousands of Euros

• Spanish-language toy catalogues showing the sign  

• Hundreds of invoices issued between 2008-2013 by the opponent to
  different clients, showing sales of toys for several thousand Euros each.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite the large volumes of evidence showing extensive use of the trade marks, the documents provide little information on the extent of such use in the market. This is because the opponent did not provide any information referring to its position and share in the relevant market or to the overall size of that market, and, therefore, the Opposition Division cannot establish whether or not the invoices correspond to a substantial presence in the market.

While the invoices contain information on large sales volumes and the opponent has also made significant expenditures concerning promotions, the evidence falls short of giving sufficient information that would allow the Opposition Division to draw solid conclusions on whether, a result of these sales and promotions, the earlier marks were known by a significant part of the relevant public.

In other words, there is no information as to the degree of recognition of the earlier marks by the relevant public. Google search results and Facebook likes cannot be taken into consideration as these platforms are available all over the world and therefore are not valid indicators of the exposure and knowledge of the relevant public in Spain. Even if, as the opponent states and demonstrates, the mark appears in Spanish newspapers, this alone is not a good indicator of public recognition either, as newspapers generally cover a large variety of content and their readers are not expected to retain every single piece of information. Moreover, there is no information on the extent of distribution and user base of these newspapers.

The opponent could have demonstrated, for instance by conducting a survey, the percentage of the relevant consumers concerned who are able to identify the goods and services on the basis of the trade marks.

Consequently, while demonstrating a large extent of use and significant investments in promotion, in the absence of information on the market share and the public’s recognition, the opponent did not succeed in clearly establishing all the facts necessary to safely conclude that the marks are known by a significant part of the public.

It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

The materials submitted do not support, without resorting to probabilities and assumptions, a conclusion that the earlier marks were known by a significant part of the relevant consumers for the goods and services concerned. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the earlier European Union trade marks or the Spanish trade mark the opposition is based on have a reputation.

Moreover, it is also noted that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

The opponent, notably, only claimed that use of the contested trade mark would take unfair advantage of the repute of the earlier trade marks as the direct, “inevitable” consequence, and for the sole reason that the marks have reputation.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

It does not evidently follow from the mere existence of a mark’s reputation that any subsequent identical or similar registration would take unfair advantage of such repute. Aside from submitting evidence to establish reputation, and making the above general statements, the opponent did not submit any facts, arguments or evidence that could support the claim of unfair advantage or detriment to the distinctive character of the earlier trade marks.

In conclusion, it has not been established that the earlier trade marks have a reputation, nor has it been established that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks as required by Article 8(5) EUTMR. As two of the necessary requirements are not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR.

The examination of the opposition will thus proceed with the other ground 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

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

Class 9: Teaching apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images; information treatment (data processing) equipment and computers.

Class 16: Instructional and teaching material (except apparatus); paper, cardboard, goods made from paper and cardboard; printed matter, publications.

Class 28: Games and playthings.

Class 41: Education and entertainment services; publication of texts services.

The contested goods and services are the following:

Class 16: Placards of paper or cardboard; writing or drawing books; printed matter; figurines (statuettes) of papier mâché; printed publications; lithographic works of art; stationery; school supplies (stationery); drawing materials; teaching materials (except apparatus). 

Class 28: Counters (discs) for games; building blocks (toys); toys; parlor games; stuffed toys; toy models; toy figures; games; rackets; jigsaw puzzles.

Class 41: Educational services; nursery schools; coaching (training); arranging and conducting of symposiums; bookmobile services; publication of texts, other than publicity texts; publication of books; providing recreation facilities; club services (entertainment or education); publication of educational books.

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 16

Printed matter equally appears on both lists of goods. Therefore the goods are identical.

Teaching material (except apparatus) is included in the broad category of the opponent’s teaching instruments. Therefore the goods are identical.

Placards of paper or cardboard falls under the broad category of the opponent’s paper, cardboard. Therefore the goods are identical. 

Stationery; school supplies (stationery) overlaps with the broad category of paper covered by the earlier right and therefore there is identity between the goods.

Printed publications fall under the broad category of the opponent’s printed matter. Therefore the goods are identical.

Writing or drawing books, drawing materials are included in or overlap with the opponent’s broad category instructional and teaching material (except apparatus). Therefore the goods are identical.

The contested figurines (statuettes) of papier mâché are similar to a low degree to the opponent’s goods made from paper. When comparing these goods the nature can be considered the same (paper), and they may be available through the same distribution channels, such as those that specialise in arts and crafts supplies. To that extent these goods are considered similar to a low degree, but in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use coincide, or that they are in competition or complementary.

The contested lithographic works of art are similar to a low degree to the opponent’s printed matter as printed matter also includes works of art such as photographs or graphic prints that can be distributed through the same channels, target the same users and be in competition with each other. They also may have the same purpose (interior decoration).

Contested goods in Class 28

The contested counters (discs) for games; building blocks (toys); toys; parlor games; stuffed toys; toy models; toy figures; games; rackets; jigsaw puzzles are all included in the opponent’s broader category games and playthings. Therefore the goods are identical.

Contested goods in Class 41

The following contested services all fall under the broader categories of the opponent’s respective services and therefore the services are identical:

• Educational services; nursery schools; coaching (training); arranging and conducting of symposiums; are identical to education services.

• Publication of texts, other than publicity texts; publication of books; publication of educational books are identical to publication of texts services.

• Providing recreation facilities; club services (entertainment or education) are identical to entertainment services (or education services, as appropriate).

Bookmobile services are either included in the broader category of overlap with the opponent’s education services. Therefore they are identical.

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 considered to be average.

3. The signs

EUTM No 39 552 EUTM No 547 737 ES TM No 2 983 803 EDUCA
Earlier trade marks	Contested sign

The relevant territory is the European Union for the EUTMs (1) + (2) and Spain for the Spanish earlier mark (3), respectively.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to weak elements.

Although both signs are composed of one verbal element, the relevant consumers will break a verbal sign 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).

The elements ‘EDU’ and ‘KIDS' are meaningful in certain territories, for example, in those countries where English is understood. The word ‘KIDS’ in the contested sign means children in English and thus will immediately and without further reflection be perceived as an identification of the targeted consumer (18/03/2016, T-33/15, BIMBO, EU:T:2016:159). As such, this term is devoid of distinctive character, which in principle makes the similarities more relevant.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public as far as the earlier EUTMs are concerned.

The earlier EUTM (1) is a figurative mark consisting of the word “EDUCA” written in black upper case letters within a circle consisting of red and orange stylised figures holding hands. The earlier EUTM (2) contains the same elements, within a white circle which is placed on a red rectangle.

The earlier Spanish mark is a word mark ‘EDUCA’.

The contested mark is a figurative mark consisting of the term ‘’EDUKIDS’ written in standard black capital font.

None of the signs have elements which would be more eye-catching, i.e. dominant, compared to other elements.

As far as the English-speaking public is concerned, “EDUCA” in the earlier EUTMs or the term “EDU” in the contested sign is likely to be associated with education. Given that the goods at hand are teaching and instructional equipment, paper goods, stationery, printed matter, games, playthings, educational or recreational services, where the above meanings of ‘EDUCA’/’EDU’ will immediately be perceived as referring to their educational purpose, these terms are weak elements of the marks. The distinctive character of the red and orange stylised figures holding hands is normal. As mentioned above, ‘KIDS’ is devoid of distinctive character.

As for the Spanish-speaking public, the descriptive meaning of ‘EDUCA’ will be perceived, rendering the earlier mark weak, whereas ‘EDUKIDS’ will be meaningless.

Visually, the signs coincide in ‘EDU’, which is nevertheless a weak element of the signs as far as the English-speaking public is concerned. The Spanish-speaking public will perceive ‘EDUCA’ as weak, but will not see a meaning in ‘EDU’ which is thus a distinctive element of the contested mark. They differ in the additional letters ‘CA’ of all the earlier signs, the figurative elements of the earlier EUTMs and the term ‘KIDS’ of the contested sign, which however is non-distinctive in relation to the earlier EUTMs.

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

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘EDU’ and differs the syllable, ‘CA’/’KIDS’. While the initial letters of the differing syllables are pronounced the same way, the rest of the sounds are overall quite different, especially as far as the sounds pronounced by the two consonants ‘DS’ are concerned.

Also taking into account the corresponding weakness of ‘EDU’/’EDUCA’ and the eventual lack of distinctive character ‘KIDS’ the signs are aurally similar to a low degree.

Conceptually, for the Spanish-speaking relevant public only the earlier marks have a concept and therefor the signs are conceptually not similar.

As for the earlier EUTMs, the signs coincide in the concept of education; this concept however concerns a weak element. The signs differ in the concept of ‘KIDS’, although where this concept is perceived it will have limited impact on account of being non-distinctive. The concepts of the red and orange stylised figures holding hands in the earlier marks also set the signs conceptually apart. Therefore, the signs are conceptually similar to a low degree.

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.

According to the opponent the earlier trade marks have a reputation, but as seen above, this has not been proven.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 EUTMs must be seen as normal, despite the presence of weak elements in the marks as stated above in section c) of this decision. The distinctive character of the earlier Spanish mark is below average.

5. Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

In the present case, the signs coincide in a weak element, “EDU”. Even though for the English-speaking public the term ‘KIDS’ is devoid of distinctive character, the combination of the terms ‘EDU’ and ‘KIDS’ is fanciful. This inventive combination sets the contested mark sufficiently apart from the earlier marks containing a different ending ‘CA’. The earlier EUTMs also contain a figurative element with a differing concept. The reasonably well informed and reasonably observant and circumspect relevant public will thus safely distinguish even the identical or similar goods of the two different undertakings.

The absence of likelihood of confusion equally applies to the part of the public which does not dissect the contested signs into meaningful elements ‘EDU’ and ‘KIDS’, such as the Spanish-speaking public. This is because for this part of the public the differences concern a distinctive term ‘KIDS’. Moreover, a part of the remaining public in the European Union, such as the Slovak, Slovene and Hungarian-speaking relevant public will also pronounce the letters ‘C’ and ‘K’ differently.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.