OPPOSITION No B 2 722 661

Play Entertainment S.r.l., Via dei Sabelli, 215, 00185 Roma, Italy (opponent), represented by Massimiliano Cesareo, Via Po', n. 48, 03036 Isola Del Liri (FR), Italy (professional representative)

a g a i n s t

Dan-Car Autosikring ApS, Smedevænget 20, Marbjerg, 2640 Hedehusene, Denmark (applicant), represented by Awapatent A/S, Strandgade 56, 1401 Copenhagen K, Denmark (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 661 is upheld for all the contested goods.

2.        European Union trade mark application No 15 062 532 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 062 532. The opposition is based on European Union trade mark registration No 10 685 113. The opponent invoked Article 8(1)(a) and (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 goods and services on which the opposition is based include, inter alia, the following goods:

Class 9:        Cameras; Motion picture apparatus; Optical apparatus and instruments; Measuring apparatus; Audio-visual teaching apparatus; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Fire-extinguishing apparatus.

The contested goods are the following:

Class 9:        Remote control devices for electric or electronic drive mechanisms.

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 9

The contested remote control devices for electric or electronic drive mechanisms and the opponent’s apparatus for recording, transmission or reproduction of sound or images usually coincide in producer, relevant public and distribution channels. Furthermore, the contested goods are complementary to the opponent’s goods. Therefore, they are similar.

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 similar are directed at the public at large.

The degree of attention is considered to be 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.

In the present case, the Opposition Division finds it appropriate, in order to remove the need to examine the specific meaning (or lack thereof) and the distinctive elements of the marks (and their elements/components) for different parts of the relevant public, to focus the comparison of the signs on the German-speaking part of the relevant public for which the verbal elements ‘ELFOODZ’ (earlier sign) and ‘ELFOOT’ (contested sign) have no meaning.

The earlier mark is consisting of the verbal element ‘ELFOODZ’, depicted in bold slightly stylised letters in three different shades of green. Above the verbal element two oval abstract elements, each of them is including an additional circular form, are depicted in the same shades of green as the verbal element. All elements are distinctive as they have no meaning in relation to the relevant goods. The earlier sign has no elements that could be considered clearly more distinctive and/or dominant (visually eye-catching) than other elements.

The contested sign is consisting of the verbal element ‘ELFOOT’, depicted in bold black letters with the letter ‘L’ being tilted to the left. Each of the letters ‘OO’ is including a blue, black and white abstract form, making the letters ‘OO’ to look like a pair of eyes. The pair of eyes is forming a smiling face together with a drawn line, which is placed below the letters ‘OO’. Since these elements have no relation to the relevant goods, they are distinctive. The contested sign has no elements that could be considered clearly more distinctive and/or dominant (visually eye-catching) than other elements.

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).

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.

Visually, the signs coincide in the sequence of letters ‘ELFOO**’. However, they differ in their additional ending letters ‘DZ’ (earlier sign) versus ‘T’ (contested sign) and the figurative elements, the colours and the depiction of the letters which have no counterpart in the other mark.

Therefore, especially taking into account that verbal component of the sign usually has a stronger impact on the consumer, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ELFOO’, present identically in both signs and in the fact that both signs have two syllables, ‘EL-FOODZ’ (earlier sign) and ‘EL-FOOT’ (contested sign). The pronunciation differs in the ending letters of the signs ‛DZ’ (earlier sign) versus ‘T’ (contested sign). 

Considering the above, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the depiction of the smiling face of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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.

5. Global assessment, other arguments and conclusion

The contested goods are similar to the opponent’s goods. The signs have been found visually similar to an average degree and aurally highly similar. The coincidences between the signs are found in the sequence of letters ‘ELFOO**’ being the first five out six letters (contested sign) and the first five out of seven letters (earlier sign) part of the sole verbal elements of the signs, which are distinctive in relation to the relevant goods. The differences, as explained above in section c) of this decision, are not sufficient to offset the similarity between the signs.

Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The applicant refers to decisions T-394/10 and T-47/13 of the General Court to support its arguments. In the present case, the previous cases referred to by the applicant cannot be considered relevant to the present proceedings as the compared signs of the said previous decision have, inter alia, a shorter sequence of letters in common than the conflicting signs of the present opposition.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 685 113. 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.

It follows from the above that the contested trade mark must be rejected in its entirety.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Irina SOTIROVA

André Gerd Günther BOSSE

Ana MUÑÍZ RODRÍGUEZ

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.