OPPOSITION No B 1 963 886
CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)
a g a i n s t
Merry-Hat S.L., Avda. Madariaga 45, 48014 Bilbao, Spain (applicant), represented by Leggroup, C/ Campoamor 13, 1º, 28004 Madrid, Spain (professional representative).
On 07/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 963 886 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 in Class 25 of European Union trade mark application No 10 373 397. The opposition is based on European Union trade mark registration No 5 365 036 for goods in Class 25. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The signs
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HOLY |
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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 earlier mark is the word mark ‘HOLY’. For the English-speaking part of the public, this word means ‘related to a religion or a god; very religious or pure’ (information extracted from Cambridge Dictionary on 28/03/2017 at http://dictionary.cambridge.org/dictionary/english/holy?a=british). For part of the public, it is meaningless. In any case, as it is not descriptive, allusive or otherwise weak for the relevant goods in Class 25, it is distinctive.
The contested sign is a complex figurative sign. It is composed of a stylised letter ‘P’ (in cursive upper case script) superimposed on a stylised upper case letter ‘H’ (depicted using thick lines) which appears within a shield motif. These elements are surrounded by a laurel wreath (two interlocking laurel branches) and have an oval shape above them. They are all depicted in orange, except the stylised letter ‘P’ which is in pink. In the lower part of the sign, a banner is depicted with some verbal elements. However, these verbal elements are barely perceptible, as the writing is minuscule and blurred. In addition, they are in a secondary position within a complex sign and they are not noticeable at first sight. As these elements are likely to be disregarded by the relevant public, they will not be taken into consideration (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 42).
Although the laurel wreath usually refers to a victory and could be perceived as slightly laudatory, it is considered distinctive in relation to the goods in Class 25. The letters ‘P’ and ‘H’ have no meaning in relation to the goods and are, therefore, distinctive. As far as the remaining elements of the contested sign are concerned (the shield, the oval and the banner), they are essentially decorative and of limited distinctiveness.
Conceptually, as explained above, the earlier sign, ‘HOLY’, is meaningful for some consumers, who will perceive it as referring to a religion or god, whereas for other consumers it is meaningless. The contested sign contains depictions of the letters ‘P’ and ‘H’, as well as a laurel wreath, a shield and some decorative elements with no specific meaning. Therefore, the signs are not conceptually similar.
Visually, the signs coincide in the letter ‘H’, which constitutes the first letter of the earlier sign and one of the stylised letters of the contested sign. However, they differ in all the remaining elements of the signs, that is, the letters ‘OLY’ of the earlier sign, and the letter ‘P’, the stylisation and the figurative elements of the contested sign, as described above. Although the signs have the letter ‘H’ in common, since consumers will not perceive the letters of the earlier mark separately, but will, rather, perceive the mark as a whole, the signs are not visually similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign is pronounced /ho-ly/, whereas the contested sign is pronounced /H-P/ or /P-H/. As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.
It is concluded that the signs are, overall, dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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Adriana Van ROODEN
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Frédérique SULPICE |
Begoña URIARTE VALIENTE |
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.