OPPOSITION No B 2 625 302

Melissa & Doug, LLC, 141 Danbury Road, Wilton, Connecticut 06897, United States of America (opponent), represented by Zacco Dr. Peters und Partner, Am Wall 187-189, 28195 Bremen, Germany (professional representative)

a g a i n s t

Grendene, S/A, Av. Pimentel Gomes, 214, Bairro: Expectativa, Sobral, CE 62040-050, Brazil (applicant), represented by Rafael Ortega Pérez, Diego A. Montaude, 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 625 302 is partially upheld, namely for the following contested goods:

Class 16:        Paper stationery; pencils; postcards and picture postcards; postage stamps; fountain pens; ball pens; rubber stamps; jotters; pads [stationery]; notepads; adhesive note pads; loose-leaf pads; holders for notepads; memo pad holders.

Class 28:        Games; toys.

2.        European Union trade mark application No 14 587 547 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 587 547. The opposition is based on European Union trade mark registration No 4 184 354. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 4 184 354.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 23/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/10/2010 to 22/10/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 16:        Printed publications; books; activity books; drawing books; colouring books; children’s books; calendars; desk calendars; wall calendars; maps; plans; atlases; globes; charts; chalk boards; black boards; poster boards; flip charts; wall charts; dry erase boards; responsibility charts; display boards; weather display boards; pens; pencils; artists materials; modelling materials; modelling clay; chalk; erasers; glue for stationery or household use; paint kits; arts and craft paint kits; paint brushes; paint pallets; paint boxes; stencils; stencil cases; stencil plates; rubber stamps; rubber stamp pads; paper; children’s activity books; magnetic learning boards; magnetic calendars; magnetic maps; magnetic chalk boards; magnetic dry erase boards; magnetic responsibility charts and magnetic weather boards.

Class 20:        Display boards; display shelves; display stands; display columns; toy boxes and chests; display racks for toys and train and vehicle toy systems; picture frames; photograph frames; mirrors; jewellery boxes; trinket boxes; plaques; wall plaques; furniture; furniture for children; juvenile furniture.

Class 28:        Toys; games and playthings; model toys; bath toys; wind up toys; electronic toys; educational toys; jigsaw puzzles; toy vehicles; toy model vehicles; ride on toy vehicles; dominos; domino sets; marbles; bowling pins and balls; toy building blocks; toy construction blocks; toy pattern blocks; toy alphabet and number blocks; toy beads; dolls; doll furniture; doll accessories; doll houses and furnishings; plush toys; plush stuffed toys; puppets; toy musical instruments; skipping ropes; jump ropes; return tops; spinning tops; construction toys; model vehicles and related accessories sold as a unit; children’s multiple activity toys; chess sets; checker sets; action-type target games; magic tricks; pull toys; magnetic toy figures in the shape of letters and numbers; memory and brain teaser board games; manipulative games; manipulative puzzles; hand held manipulative games; manipulative games containing latches, locks and laces; hand held units for playing electronic and video games; hobby craft sets for making wooden vehicles; hobby craft sets for making toy figures; toy animals; pretend play kits; play sets and play cases; toy kitchens; toy tool benches; toy barns; toy castles; play tents; play houses; toy parking garages; toy horse stables; toy food items; toy utensils for preparing food, sold as a unit; toy abacuses; toy pounding benches; toy cobbler benches; shape sorting toys; toy boats.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 02/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/10/2016 to submit evidence of use of the earlier trade mark. Following a request by the opponent, this deadline was extended until 02/12/2016 and then, due to exceptional circumstances justifying the further extension, until 02/02/2017. On 13/01/2017, within the time limit, the opponent submitted evidence of use.

The opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties. The Opposition Division accepts this request insofar as it relates to part of the evidence (specifically the financial and other sensitive commercial information contained in the documents) and will describe that part of the evidence in only the most general terms, without divulging any such data. However, this does not apply to the evidence that consists of information that is already available to the public, either in printed form or on the internet.

The evidence to be taken into account is, in particular, the following:

• Exhibit ZAC 1: an affidavit by Mr Chris Myers, the opponent’s Director of Supply Chain, providing the following information:

• the opponent produces and sells children’s toys and skill builders, costumes, colouring books, stickers, activity pads, glitter, stamps, drawing accessories, paper, decorating accessories, musical instruments, card sets, dolls, doll’s houses, stuffed animals, puppets, puzzles and other playthings;
• all products are labelled with the trade mark ‘Melissa & Doug’, on either the product itself or its packaging;
• the opponent has been active in Europe since at least 2005 and sells, advertises and distributes products under the trade mark ‘Melissa & Doug’ in different EU countries, such as Austria, Belgium, Bulgaria, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Italy, Latvia, Malta, the Netherlands, Poland, Portugal, Romania, Spain, Sweden and the United Kingdom;
• approximate sales figures for products sold under the trade mark ‘Melissa & Doug’ during 2010, 2011, 2012, 2013, 2014 and 2015 in the EU as a whole and in different EU countries.

• Exhibits ZAC 2-ZAC 7: the opponent’s product catalogues from 2010, 2011, 2012, 2013, 2014, 2015 and 2016 (762 pages in total), with the mark  appearing in different colours and on different coloured backgrounds on every second page, and the mark on the covering pages and on the goods or their packaging, as well as pictures of, information about and price lists regarding different toys, games, playthings, books, stationery, paper, pens, pencils, artists’ materials, etc., including phone numbers and contact information for ordering these goods in the United Kingdom, Europe, Mexico and worldwide.

• Exhibit ZAC 8: screenshots (undated) of the opponent’s website www.melissaanddoug.com (20 pages in total), where different toys, games and playthings offered and sold by the opponent under the trade mark ‘Melissa & Doug’ can be found. The website bears the trade mark  and products are grouped by age, kind and type of activities; the products can be ordered and bought online; the list of countries (including EU countries) to which the goods can be delivered is provided.

• Exhibit ZAC 9: examples of invoices for 2010, 2011, 2012, 2013, 2014, 2015 and 2016 and some for 2017 (1 232 pages in total), issued to different companies in, inter alia, Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom, together with indications of the products sold. The invoices are in euros or pounds sterling and they all bear the mark  in the top left-hand corner together with the opponent’s name and its address in the United Kingdom.

• Exhibit ZAC 10: examples of merchandising and advertising material (112 pages in total), such as pictures of the opponent’s products in various shops (including online shops, such as Amazon.com), copies of magazines and catalogues, all showing the mark  or ‘Melissa & Doug’ on shop shelves, stands, shop windows, etc., or on the goods’ packaging, or using this mark when making reference to the opponent’s goods. The evidence submitted is in English, French, German, Spanish, etc.; some of the evidence is dated within the relevant period, some of the evidence is dated outside the relevant period and the remaining evidence is undated.

The invoices and opponent’s catalogues, together with the copies of magazines, examples from other catalogues and screenshots of the opponent’s website, show that the mark is used in many different countries within the European Union. This can be inferred from shipping addresses to companies in these countries, from the language of the documents (such as English, French, German and Spanish) and from the currencies mentioned (euros and pounds sterling). Therefore, the evidence relates to the relevant territory.

As regards the time of use, the evidence submitted as Exhibits ZAC 2-ZAC 7 and Exhibit ZAC 9 and some of Exhibit ZAC 10 is dated within the relevant period. The evidence submitted as Exhibit ZAC 1 provides information relating to the relevant period. According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period is the opponent’s product catalogue from 2016 (Exhibits ZAC 2-ZAC 7), some invoices for 2016 and 2017 (Exhibit ZAC 9), screenshots (undated) of the opponent’s website (Exhibit ZAC 8) and some examples of merchandising and advertising material (Exhibit ZAC 10). However, these items of evidence merely confirm the use of the opponent’s mark within the relevant period, since the use they demonstrate is quite close in time to the relevant period and shows continued use when these items are considered in connection with the abovementioned evidence dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. It has been demonstrated that the opponent sold different kinds of toys, games and playthings under the trade mark ‘Melissa & Doug’ in 2010, 2011, 2012, 2013, 2014 and 2015 throughout the European Union (demonstrated by examples of invoices submitted as Exhibit ZAC 9 and supported by an affidavit submitted as Exhibit ZAC 1, the opponent’s product catalogues submitted as Exhibits ZAC 2-ZAC 7 and additional information submitted as Exhibit ZAC 8 and Exhibit ZAC 10). The invoices and affidavit, when taken together, indicate quite high commercial volumes in relation to the different countries and the European Union as a whole and show continuous consistent sales during the relevant period. Therefore, the evidence submitted provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark; and it can be clearly seen that the owner has made serious efforts to acquire a commercial position in the relevant market by using its mark ‘Melissa & Doug’ within the relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in the European Union.

The evidence submitted in the exhibits indicated above demonstrates that the earlier sign was used in such a way as to establish a clear link between the goods and the person responsible for their marketing. Therefore, the Opposition Division considers that the evidence demonstrates use of the sign as a trade mark.

As can be seen from the evidence, the mark ‘Melissa & Doug’ has been used in relation to the relevant goods as both a word mark, ‘Melissa & Doug’ (part of Exhibit ZAC 10), and a figurative mark,  (Exhibits ZAC 2-ZAC 7, Exhibit ZAC 8 and Exhibit ZAC 10),  (Exhibit ZAC 9) and  in different colours on different coloured backgrounds (Exhibits ZAC 2-ZAC 7). Since the stylisation of the mark ‘MELISSA & DOUG’ in the ways in which it is used, as well as the elliptical red background and different colours of the mark’s word elements and its background are of a rather decorative nature, the Opposition Division considers that these differences do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of earlier European Union trade mark No 4 184 354 during the relevant period in the relevant territory. However, the evidence does not demonstrate genuine use of the trade mark for some specific goods in Class 16 (i.e. plans; atlases; globes; weather display boards; paint pallets and magnetic weather boards) and Class 28 (i.e. marbles; chess sets and checker sets).

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part of the goods for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence demonstrates genuine use of the trade mark for the following goods:

Class 16:        Printed publications; books; activity books; drawing books; colouring books; children’s books; calendars; desk calendars; wall calendars; maps; charts; chalk boards; black boards; poster boards; flip charts; wall charts; dry erase boards; responsibility charts; display boards; pens; pencils; artists materials; modelling materials; modelling clay; chalk; erasers; glue for stationery or household use; paint kits; arts and craft paint kits; paint brushes; paint boxes; stencils; stencil cases; stencil plates; rubber stamps; rubber stamp pads; paper; children’s activity books; magnetic learning boards; magnetic calendars; magnetic maps; magnetic chalk boards; magnetic dry erase boards; magnetic responsibility charts.

Class 20:        Display boards; display shelves; display stands; display columns; toy boxes and chests; display racks for toys and train and vehicle toy systems; picture frames; photograph frames; mirrors; jewellery boxes; trinket boxes; plaques; wall plaques; furniture; furniture for children; juvenile furniture.

Class 28:        Toys; games and playthings; model toys; bath toys; wind up toys; electronic toys; educational toys; jigsaw puzzles; toy vehicles; toy model vehicles; ride on toy vehicles; dominos; domino sets; bowling pins and balls; toy building blocks; toy construction blocks; toy pattern blocks; toy alphabet and number blocks; toy beads; dolls; doll furniture; doll accessories; doll houses and furnishings; plush toys; plush stuffed toys; puppets; toy musical instruments; skipping ropes; jump ropes; return tops; spinning tops; construction toys; model vehicles and related accessories sold as a unit; children’s multiple activity toys; action-type target games; magic tricks; pull toys; magnetic toy figures in the shape of letters and numbers; memory and brain teaser board games; manipulative games; manipulative puzzles; hand held manipulative games; manipulative games containing latches, locks and laces; hand held units for playing electronic and video games; hobby craft sets for making wooden vehicles; hobby craft sets for making toy figures; toy animals; pretend play kits; play sets and play cases; toy kitchens; toy tool benches; toy barns; toy castles; play tents; play houses; toy parking garages; toy horse stables; toy food items; toy utensils for preparing food, sold as a unit; toy abacuses; toy pounding benches; toy cobbler benches; shape sorting toys; toy boats.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 16:        Printed publications; books; activity books; drawing books; colouring books; children’s books; calendars; desk calendars; wall calendars; maps; charts; chalk boards; black boards; poster boards; flip charts; wall charts; dry erase boards; responsibility charts; display boards; pens; pencils; artists materials; modelling materials; modelling clay; chalk; erasers; glue for stationery or household use; paint kits; arts and craft paint kits; paint brushes; paint boxes; stencils; stencil cases; stencil plates; rubber stamps; rubber stamp pads; paper; children’s activity books; magnetic learning boards; magnetic calendars; magnetic maps; magnetic chalk boards; magnetic dry erase boards; magnetic responsibility charts.

Class 20:        Display boards; display shelves; display stands; display columns; toy boxes and chests; display racks for toys and train and vehicle toy systems; picture frames; photograph frames; mirrors; jewellery boxes; trinket boxes; plaques; wall plaques; furniture; furniture for children; juvenile furniture.

Class 28:        Toys; games and playthings; model toys; bath toys; wind up toys; electronic toys; educational toys; jigsaw puzzles; toy vehicles; toy model vehicles; ride on toy vehicles; dominos; domino sets; bowling pins and balls; toy building blocks; toy construction blocks; toy pattern blocks; toy alphabet and number blocks; toy beads; dolls; doll furniture; doll accessories; doll houses and furnishings; plush toys; plush stuffed toys; puppets; toy musical instruments; skipping ropes; jump ropes; return tops; spinning tops; construction toys; model vehicles and related accessories sold as a unit; children’s multiple activity toys; action-type target games; magic tricks; pull toys; magnetic toy figures in the shape of letters and numbers; memory and brain teaser board games; manipulative games; manipulative puzzles; hand held manipulative games; manipulative games containing latches, locks and laces; hand held units for playing electronic and video games; hobby craft sets for making wooden vehicles; hobby craft sets for making toy figures; toy animals; pretend play kits; play sets and play cases; toy kitchens; toy tool benches; toy barns; toy castles; play tents; play houses; toy parking garages; toy horse stables; toy food items; toy utensils for preparing food, sold as a unit; toy abacuses; toy pounding benches; toy cobbler benches; shape sorting toys; toy boats.

The contested goods are the following:

Class 16:        Paper stationery; pencils; postcards and picture postcards; postage stamps; fountain pens; ball pens; rubber stamps; jotters; pads [stationery]; notepads; adhesive note pads; loose-leaf pads; holders for notepads; memo pad holders.

Class 18:        Bags; hipsacks; canvas bags; bags for sports; travelling handbags; beach bags; multi-purpose purses; small clutch purses; valises.

Class 21:        Cups; household or kitchen utensils; glassware for household purposes; china ornaments; mugs made of earthenware; earthenware basins; combs; electric combs; brushes; sponges; cleaning articles; refrigerating bottles; insulating flasks; squeeze bottle [empty]; water bottles; bottle cradles; sports bottles sold empty.

Class 25:        Waist belts; leather belts [clothing]; dresses; tee-shirts; sports jerseys.

Class 28:        Games; toys.

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 16

Pencils and rubber stamps are identically contained in both lists of goods.

The contested paper stationery includes, as a broader category, or overlaps with the opponent’s paper. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fountain pens; ball pens are included in the broad category of the opponent’s pens. Therefore, they are identical.

The contested jotters; pads [stationery]; notepads; adhesive note pads; loose-leaf pads; holders for notepads; memo pad holders are different types of stationery and printed matter; they are considered similar to the opponent’s paper, since they may be manufactured by the same undertakings, target the same public and have the same distribution channels and sales outlets (stationery shops).

The contested postcards and picture postcards are rectangular pieces of thick paper or thin cardboard intended to be written on and mailed without an envelope. The contested postage stamps are small adhesive pieces of paper of a specified value issued by a national post office to be affixed to a letter or parcel to indicate the amount of postage paid. These contested goods have some things in common with the opponent’s printed publications, which refer to text, images, newspapers, magazines, catalogues or other printed materials issued at regular or irregular intervals. These goods may have the same origin and distribution channels and target the same relevant consumers. Therefore, they are considered similar to a low degree.

Contested goods in Class 18

The contested bags; hipsacks; canvas bags; bags for sports; travelling handbags; beach bags; multi-purpose purses; small clutch purses; valises are different kinds of bags for personal use and for carrying items from one place to another. The nature of these goods is very different from that of the opponent’s goods in Classes 16, 20 and 28, which include various printed or artists’ materials, display boards and furniture, toys, games and playthings. They serve different purposes and do not satisfy the same needs. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. Therefore, they are considered dissimilar.

Contested goods in Class 21

The contested cups; household or kitchen utensils; glassware for household purposes; china ornaments; mugs made of earthenware; earthenware basins; combs; electric combs; brushes; sponges; cleaning articles; refrigerating bottles; insulating flasks; squeeze bottle [empty]; water bottles; bottle cradles; sports bottles sold empty are various utensils, articles and containers used in a household or domestic setting. They have a completely different nature and intended purpose from the opponent’s goods in Classes 16, 20 and 28, which include various printed or artists’ materials, display boards and furniture, toys, games and playthings. Moreover, they have different distribution channels and sales outlets, are not usually manufactured by the same undertaking and are neither complementary to nor in competition with each other. Therefore, they are considered dissimilar.

Contested goods in Class 25

The contested waist belts; leather belts [clothing]; dresses; tee-shirts; sports jerseys are clothing articles and accessories that are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. They serve different purposes from the opponent’s goods in Classes 16, 20 and 28, which are various printed or artists’ materials, display boards and furniture, toys, games and playthings. Their natures and methods of use differ, they have different distribution channels and sales outlets, they are not usually manufactured by the same undertaking and they are neither complementary to nor in competition with each other. Therefore, they are considered dissimilar.

Contested goods in Class 28

Games and toys are identically contained in both lists of goods.

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 average.

3. The signs

MELISSA & DOUG
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.

The coinciding element ‘MELISSA’ and the word ‘DOUG’ of the earlier mark are meaningful in certain territories, for example in those countries where English is spoken and understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘MELISSA & DOUG’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The contested sign is a figurative mark consisting of the words ‘galeria melissa’ in stylised lower case letters, where the word ‘galeria’ is much smaller than and is placed above the first two letters of the word ‘melissa’. Therefore, due to its size and position in the overall composition of the contested sign, the word ‘melissa’ is considered more dominant (visually eye-catching) than the clearly subordinate verbal element ‘galeria’, and ‘melissa’ will be the first element noticed by the relevant consumers.

The relevant consumers will perceive the word ‘MELISSA’, present in both signs, as a feminine name, the word ‘DOUG’ of the earlier mark as a masculine name and the ampersand, ‘&’, as representing the conjunction ‘and’. The word ‘galeria’ of the contested sign is very similar to the equivalent English word ‘gallery’ and may be perceived by the relevant public as referring to, inter alia, ‘a place that has permanent exhibitions of works of art in it; an area high above the ground at the back or at the sides of a large room or hall’ (information extracted from Collins Dictionary on 06/07/2017 at https://www.collinsdictionary.com/). Since none of the abovementioned words is directly descriptive, allusive or otherwise weak in relation to the relevant goods, the degree of distinctiveness of each of them is average.

Visually, the signs coincide in the word ‘MELISSA’, which is the first element of the earlier mark and the dominant element of the contested sign. The signs differ in the elements ‘& DOUG’ of the earlier mark and in the word ‘galeria’ of the contested sign, although the latter will not have a significant impact, since consumers will focus on the most dominant element of the contested sign, ‘melissa’, and pay less attention to this subordinate element.

As consumers generally tend to focus on the beginning and on the most dominant element of a sign when they encounter a trade mark, the coinciding element ‘MELISSA’ will be the first element noticed by the relevant consumers. Therefore, the signs are considered visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MELISSA’, present identically in the signs. The pronunciation differs in the sound of the letters ‘DOUG’ and the ampersand (which will be pronounced as ‘AND’) of the earlier mark. The pronunciation also differs in the sound of the letters ‘galeria’ of the contested sign. 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. Since the first verbal element of the earlier mark and the dominant element of the contested sign will evoke identical concepts, the signs are considered conceptually similar to a higher than average 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.

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

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).

As concluded above, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and they target the public at large with an average degree of attention.

As explained in section c), the signs are considered visually and conceptually similar to a higher than average degree and aurally similar to an average degree, on account of the coinciding element ‘MELISSA’, which is the first element of the earlier mark and the dominant element of the contested sign. The degree of distinctiveness of the earlier mark is average.

In it observations of 02/08/2016, the applicant emphasises the importance of the graphical depiction of the contested sign. The applicant refers to the relevant case-law stating that a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, Matratzen, EU:T:2002:26, § 33). In the present case, the graphical depiction of the contested sign consists of only slight stylisation and the vertical arrangement of two words. The sign does not have any figurative elements and cannot even be considered highly stylised. Moreover, its dominant element, ‘melissa’, is identical to the first element of the earlier mark. Consequently, the fact that the signs include the same word, ‘melissa’, which dominates, by itself, the image of the contested sign and will be the first element to catch consumers’ attention in both marks, contributes significantly to finding similarities and a likelihood of confusion between them.

Taking into account that the differences between the signs arise from the second element of the earlier mark and the clearly subordinate element of the contested sign, it must be concluded that they are not capable of counteracting the similarities between the signs. Therefore, and applying the abovementioned principle of interdependence, the relevant public with an average degree of attention is likely to assume that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above and 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 Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

In its observations, the applicant further argues that it owns several registrations containing the words ‘MELISSA’ and ‘GALERIA MELISSA’ in the EUIPO, WIPO and SPTO (Spanish Patent and Trademark Office), which coexist with the opponent’s earlier mark.

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict. Under these circumstances, the applicant’s claim must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 184 354. It follows that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Jessica LEWIS

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.