CANCELLATION No 8 370 C (INVALIDITY)

 

Dracco Company Ltd, Unit 1201-05, 12F, Stelux House, n°698, Prince Edward Road East, San Po Kong, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative)

 

a g a i n s t

 

Graco Children’s Products Inc., 6655 Peachtree Dunwoody Road, Atlanta Georgia 30328, United States of America (EUTM proprietor), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

 

On 10/02/2017, the Cancellation Division takes the following

 

 

DECISION

 

1.        The application for a declaration of invalidity is upheld.

 

2.        European Union trade mark No 11 351 053 is declared invalid for all the contested goods, namely:

 

Class 28:        Children’s multiple activity toys; teething toys; baby rattles; bath toys; crib mobiles and toys; dolls; doll furniture and accessories; plush toys, wind-up toys; musical toys; manipulative puzzles for infants; pull/push toys and puppets; all afore-mentioned products for children up to six years of age.

 

3.        The European Union trade mark remains registered for all the uncontested goods, namely:

 

Class 12:        Car seats, booster car seats and carriers all for infants and children; travel systems for infants and children, namely, car seats, car seat bases, and carriers; accessories car seats, booster car seats, baby carriers and travel systems all for infants and children, namely, seat pads, neck and head supports, storage compartments, caddies, trays and holders, protective shields and covers, car seat head supports.

 

Class 20:        Cribs; cradles; bassinets; high chairs; high chair accessories, namely seat pads, spill pads and toy bars that attach to high chairs; infant walkers; infants’ and children’s mattresses; playards; toddler and youth beds; children’s feeding seats.

 

4.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

 

 

REASONS

 

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 11 351 053, namely against all the goods in Class 28. The application is based on European Union trade mark registration No 3 849 346. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that there is likelihood of confusion between the contested EUTM, ‘GRACO’, and the applicant’s earlier trade mark, ‘DRACCO’, in relation to goods in Class 28. The applicant states that the signs are visually and aurally similar, that neither of them has any meaning, and that the contested goods are identical to the ones which the earlier mark is registered for.

 

The applicant notes that the parties have previously been engaged in opposition proceedings, namely B 893 382 brought by the applicant against European Union trade mark application No 4 016 705 ‘GRACO’ in relation to goods in Class 28. By decision of 04/06/2012, the Opposition Division found that there is likelihood of confusion and upheld the opposition. The applicant also mentions that Graco (EUTM proprietor) appealed the decision of the Opposition Division though subsequently withdrew its appeal upon which the Board closed the appeal proceedings by decision of 15/04/2013, R 1444/2012-1.

 

The EUTM proprietor argues that the trade marks at issue are dissimilar from a visual, aural and conceptual point of view. In particular, the proprietor claims that the earlier mark, ‘DRACCO’, does have a meaning because it refers to ‘draco’ which is a Latin word for ‘dragon’ and, nowadays, designates a genus of gliding lizards from South East Asia. Furthermore, the EUTM proprietor claims that the average consumer is perfectly aware of this meaning, because ‘Draco’ is the name of a fictional character in the adventure film Dragon Heart and also in J.K. Rowling’s Harry Potter series. In support of its observations, the EUTM proprietor submits a printout from Wiktionary in relation to the word ‘Draco’ and a printout from Wikipedia on ‘Draco Malfoy’, the character in Harry Potter series. On the other hand, the EUTM proprietor asserts that the contested sign does not evoke any associations and is perceived as a made-up word lacking any meaning.

 

As regards the previous decision of the Opposition Division, the EUTM proprietor argues that, according to case-law, the legality of decisions is to be assessed purely by reference to EUTMR, and not to Office practice in earlier decisions.

 

Concerning the comparison of goods, the EUTM proprietor points out that, in the present proceedings, the contested goods are limited to being products for children up to six years of age. Therefore, the contested goods have a clearly different nature, intended purpose, method of use, distribution channels, end users and relevant public than those of the applicant’s goods. The EUTM proprietor concludes that the abovementioned factors, coupled with a high degree of attention of the relevant public, lead to the finding of no likelihood of confusion.

 

In reply, the applicant argues that the EUTM proprietor has not put forward any cogent arguments as to why a different conclusion should be reached in the present proceedings than that reached in the opposition proceedings between the same parties and involving the same marks and goods. The applicant asserts that it would be absurd for the Office to conclude in the present proceedings that the respective trade marks are suddenly not similar, since there has been no material change in law or practice that would lead to a different conclusion being reached. The applicant points out that there is a legitimate expectation on the part of the parties that consistency will be applied as far as possible in the dealings of the Office so as to achieve certainty and fairness. In addition, the applicant maintains and elaborates as to why the contested goods are identical to the ones covered by the earlier mark and rebuts the EUTM proprietor’s arguments regarding the alleged meaning of the word ‘Draco’.

 

The EUTM proprietor does not file any observations in reply.

 

 

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

 

Class 28:        Games and playthings, including collectibles such as figurines; collecting cards, yo-yos, caps, namely round plastic coins with different motives, footballs, spin tops, plastic toys, electronic toys (not for use in connection with television apparatus), plush toys, games; games, namely playing figurines with 4 feet placed on magnets at the side of the legs.

 

The contested goods are the following:

 

Class 28:        Children’s multiple activity toys; teething toys; baby rattles; bath toys; crib mobiles and toys; dolls; doll furniture and accessories; plush toys, wind-up toys; musical toys; manipulative puzzles for infants; pull/push toys and puppets; all afore-mentioned products for children up to six years of age.

 

The earlier mark is registered for, inter alia, games and playthings, including collectibles such as figurines. Before proceeding to the comparison, an interpretation of this wording is required to determine the scope of protection of these goods.

 

The term including indicates that the specific goods (collectibles such as figurines) are only examples of items included in the aforementioned category (games and playthings) and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

In view of the foregoing, the applicant’s games and playthings are a broad category encompassing toys, material or equipment used in playing games, educational playthings and those intended for infants or pre-school children. Therefore, notwithstanding the fact that the contested goods are specified as products for children up to six years of age, the contested children’s multiple activity toys; teething toys; baby rattles; bath toys; crib mobiles and toys; dolls; doll furniture and accessories; plush toys, wind-up toys; musical toys; manipulative puzzles for infants; pull/push toys and puppets; all afore-mentioned products for children up to six years of age are included in the broader category of the applicant’s games and playthings. Therefore, the goods 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 are directed at the public at large. The degree of attention may vary from average to relatively high, depending on the specialised nature and sophistication of the goods, the frequency of purchase and their price.

 

 

3. The signs

 

 

 

DRACCO	GRACO
Earlier trade mark	Contested trade mark

 

 

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

 

In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public for whom the signs lack any meaning, for reasons given herein below.

 

Each sign under comparison is composed of one word without any identifiable components. Neither of them exists as such in the relevant language. The EUTM proprietor argues that the earlier mark, ‘DRACCO’, would be associated with ‘dragon’ on account of the Latin word ‘draco’ and its use in biology. However, the Cancellation Division finds it reasonable to assume that the average consumer will not make such a mental leap, bearing also in mind that the equivalent word for ‘dragon’ is ‘dragón’ in Spanish. Moreover, the public at large cannot be expected to have sufficient knowledge in biology to be familiar with the taxonomic genius for gliding lizards from South East Asia. The EUTM proprietor’s argument according to which the public would associate the word ‘DRACCO’ to fictional characters that have appeared in films or literature does not alter the present findings. Therefore, the public will perceive the words ‘DRACCO’ and ‘GRACO’ as fanciful terms lacking any clear semantic content. They have an average degree of inherent distinctiveness in relation to the goods at issue.

 

Visually, the signs coincide in the sequence of the letters ‘RAC-O’. The signs differ in their first letters, namely ‘D’ in the earlier mark and ‘G’ in the contested sign. In addition, the earlier mark contains two letters ‘C’ whilst the contested sign only contains one ‘C’. However, that has to be weighed against the fact that the double ‘C’ in the earlier mark appears in the same position as the single ‘C’ in the contested sign.

 

As the shared letter sequence occupies a relatively large proportion in each sign, and given that the additional letter ‘C’ is a repetition of the same letter in the same position, the signs are visually similar to an average degree.

 

Aurally, in the relevant language area, the phoneme corresponding to the double ‘C’ in the earlier mark is very similar, if not identical, to that of the single ‘C’ in the contested sign. Thus, the aural difference between the letter sequence ‘-RACCO’ of the earlier mark and ‘-RACO’ of the contested sign is hardly audible. However, the pronunciations of the signs differ in their first phonemes, namely ‘D’ in the earlier mark and ‘G’ in the contested sign.

 

Given that the shared sound sequence, ‘-RAC(C)O’, contains two identical vowels that gives the signs the same length in terms of number of syllables and endows them with the same intonation, whilst the only material difference is confined to the first consonants of the words, it is considered that the signs are aurally similar to at least an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods 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). The interdependence principle is crucial to the assessment of likelihood of confusion, especially since, in the present case, the goods covered by the conflicting trade marks are identical.

 

The similarity between the signs results from the common letter sequence ‘-RAC(C)O’. Although it is true that the signs show some differences as set out in section c) of this decision, the differentiating aspects between the signs are not strong enough as to dispel an average degree of visual similarity, or—from the perspective of the public in the relevant language area—at least an average degree of similarity on an aural level.

 

In that regard, it has to be kept in mind that the public in the relevant language area will not attach any clear meaning to either of the signs that would aid in putting some distance between their overall impressions. The Cancellation Division finds that the differences identified between the signs are not sufficient to outweigh the similarities.

 

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

 

Based on the average degree of inherent distinctiveness of the earlier mark, and taking into account the interdependence principle, the differences between the trade marks are insufficient for enabling the public to safely distinguish between them. When encountering the conflicting trade marks in the context of identical goods, the public may confuse them giving rise to a situation where consumers believe that the conflicting goods come from the same undertaking, or from economically linked undertakings.

 

The EUTM proprietor argues that, given the fact that the contested goods are specifically intended for children for up to six years of age, the relevant public, consisting of parents who purchase the goods for their children, will take much care about the characteristics and quality of those goods. Furthermore, in the opinion of the EUTM proprietor, a high degree of attention will be displayed by the relevant public in relation to the goods covered by the earlier mark. In that regard the Cancellation Division notes that, whilst parents may display an enhanced degree of attention when choosing certain types of toys or playthings, particularly goods that are bought infrequently, that are expensive items or imply a higher purchase involvement otherwise, account must be taken of the fact that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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 declare the contested trade mark invalid.

 

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 3 849 346. It follows that the contested trade mark must be declared invalid for all the contested goods.

 

In their observations, the parties refer to a previous decision of the Opposition Division taken in the proceedings involving the same parties, the same signs and essentially the same goods (04/06/2012, B 892 283). The EUTM proprietor argues that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Although previous decisions of the Office are not binding and each case has to be dealt with on its own merits, it does not mean that the reasoning and outcome of the previous cases will be automatically dismissed when deciding upon a particular case.

 

In the present proceedings, the assessment of likelihood of confusion carried out by the Cancellation Division is by reference to EUTMR and current Office practice as laid down in EUIPO Guidelines for examination of EU trade marks. It is against that background that the Cancellation Division has reached the conclusion that there is likelihood of confusion between the conflicting trade marks.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Cancellation Division

 

 

Jose Antonio GARRIDO OTAOLA

Solveiga BIEZA

Michaela SIMANDLOVA

 

 

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 Cancellation 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.