OPPOSITION No B 2 325 622

Asociacion Cultural Ikastari (IKA), Comedias, 14 4, 31001 Pamplona (Navarra), Spain (opponent), represented by Renomark Consulting, S.L.U., Extremadura, 13, Local 2, 28939 Arroyomolinos (Madrid), Spain (professional representative)

a g a i n s t

Adams Family Productions, 30 Boulevard d’Argenson, 92200 Neuilly Sur Seine, France (applicant), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 325 622 is partially upheld, namely for the following contested goods and services:

Class 9:        Apparatus for recording, processing, transmission or reproduction of sound or images; computer software (recorded programs).

Class 16:        Photographs, stationery, posters, albums, cards, books, newspapers, prospectuses, brochures, calendars, writing implements.

Class 28:        Games, playthings, playing cards or table cards.

Class 41:        Entertainment, drama performances, television shows, live performances, videotape film production.

2.        European Union trade mark application No 12 233 896 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 233 896. The opposition is based on Spanish trade mark registration No 2 692 503. 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 are the following:

Class 16:        Publications, paper, cardboard and goods made from these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery; adhesives (glues) for stationery or household purposes; material for artists; brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastics for packaging (not included in other classes); block letters; cliches.

Class 41:        Education, training, entertainment; sporting and cultural activities.

The contested goods and services are the following:

Class 9:        Apparatus for recording, processing, transmission or reproduction of sound or images; Magnetic data carriers, recording or optical discs, floppy disks, audio and video cassettes, DVDs, computer software (recorded programs); Optical articles.

Class 14:        Novelty jewellery, novelty key rings, medals, watches.

Class 16:        Photographs, stationery, posters, albums, cards, books, newspapers, prospectuses, brochures, calendars, writing implements.

Class 18:        Leatherware, namely bags, backpacks, travelling bags, handbags, beach bags, school satchels, briefcases, purses, umbrellas.

Class 25:        Clothing, footwear, headgear, shirts, T-shirts, scarves, ties, socks, caps.

Class 28:        Games, playthings, playing cards or table cards, scooters (toys), sailboards or surfboards.

Class 41:        Entertainment, drama performances, television shows, live performances, videotape film production.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the applicant’s list of goods in Class 18 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 9

The contested computer software (recorded programs), which can be specifically built and adapted for learning and training purposes, is similar to the opponent’s education and training services in Class 41 because these goods and services can be complementary, have the same relevant public, origin and distribution channels.

The contested apparatus for recording, processing, transmission or reproduction of sound or images are broadly defined and also encompass audio-video teaching apparatus, which may be essential for the provision of the opponent’s education in Class 41. Therefore, these goods and services can be complementary and have the same relevant public. In addition, they can have the same distribution channels, as an education service provider may distribute these goods, in the form of handheld electronic devices, to course participants. Since the Opposition Division cannot dissect ex officio the broadly defined contested goods and since at least some of the goods falling thereunder have the above mentioned connections with the earlier services in Class 41, they are considered similar to a low degree.  

The rest of the contested goods in Class 9, namely magnetic data carriers, recording or optical discs, floppy disks, audio and video cassettes, DVDs and optical articles do not have the same nature, purpose, method of use or usual origin as the opponent’s goods and services in Classes 16 and 41. Furthermore, they are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other. As opposed to the contested computer software, the contested data carriers do not have any pre-recorded content and therefore they cannot be found similar to the recorded content that they could contain, merely on the basis that goods can be stored or saved on data carriers. Therefore, all the contested goods are found dissimilar to all the opponent’s goods and services.

Contested goods in Classes 14, 18 and 25

The contested goods in Classes 14, 18 and 25 are also found dissimilar to the opponent’s goods and services in Classes 16 and 41, as they do not have in common the relevant factors specified above. In particular, the contested goods have different nature and serve different purposes from those of the opponent’s goods and services (e.g. personal adornment, measuring time, carrying items, protecting the body against the elements, etc. versus stationery, education, entertainment, etc.). In addition, they do not have the same producers/providers, distribution channels or methods of use. Further, they are not complementary or in competition.

Contested goods in Class 16

Photographs and stationery are identically contained in both lists of goods in Class 16.

The contested posters, cards, books, newspapers, prospectuses, brochures, calendars are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested albums and writing implements are included in the broad category of the opponent’s stationery. Therefore, they are identical.

Contested goods in Class 28

There is a certain complementarity between the opponent’s entertainment services in Class 41 and the contested games, playthings, playing cards or table cards. Although by their nature goods are generally different from services, these goods and services have the same purpose, of amusement, and they have the same consumers. They can have the same origins and distribution channels, since it is not unlikely that producers will manufacture and sell a wide range of amusement products and provide entertainment services. Therefore, the opponent’s services and the contested goods are similar to a low degree.

The remaining contested scooters (toys), sailboards or surfboards have a different nature and serve distinct purposes from the opponent’s goods and services. Furthermore, they are distributed through different channels and they are not necessarily complementary or in competition. Even though sailboards and surfboards are sport articles, this is a too weak connection to find them similar to the opponent’s sporting activities, as, generally, the producers of sport articles are not directly involved in the organisation of sporting activities but are only sponsors or participate indirectly as suppliers of sport devices, whereas the main organiser is a specialised economic unit. The public is generally aware of this. Likewise, even though the purpose of toys is to entertain, their nature, methods of use and producers are different from those of entertainment services in Class 41. Although they can have the same relevant public, this is not sufficient to constitute a similarity between them. They are therefore considered dissimilar.

Contested services in Class 41

Entertainment is identically contained in both lists of services in Class 41.

The contested drama performances, television shows, live performances are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested videotape film production is similar to the opponent’s entertainment, as they have the same purpose and can have the same producers and relevant public.

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 and services found to be identical or similar to varying degrees are directed at the public at large and business consumers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and/or services, the frequency of purchase or their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contains the slightly stylised verbal element ‘ika’ and, above it, a figurative element depicting a dialogue box.

The contested mark is composed of the verbal element ‘IKA’, in red letters with white borders, and a white figurative element in the shape of a heart next to the letter ‘I’, all on a black rectangular background. The three letters are arranged vertically, with the letter ‘A’ slightly below and to the right of the letter ‘K’. The arrangement of the three letters will allow a part of the public to read the sign as ‘I [heart] KA’, probably attaching a love/affection meaning to the heart symbol. However, another part of the public will perceive the sign as ‘IKA’ (as it is normal to read from top to bottom and from left to right) and will not pronounce the heart element. The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that would perceive and read the contested sign as ‘IKA’, since a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

The word ‘ika’ has no meaning for the relevant public and is, therefore, distinctive.

In the present case, it is important to stress that 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). Therefore, the verbal element ‘ika’, present in both signs, is more distinctive and has a stronger impact on the consumer than the figurative elements, which will be attributed little trade mark significance (if any) given their simplicity (dialogue box), merely decorative role (black background) or wide use in the  market  to express affection (the heart).

Neither mark has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘ika’. However, they differ in the stylisation and positioning of the verbal elements, their colours and their figurative elements, as described above. Therefore, and bearing in mind the impact of the additional differing elements as detailed above, overall the signs are visually similar to a slightly below average degree.

Aurally, the signs are identical since they will both be referred to as ‘ika’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the word ‘ika’ has no meaning for the relevant public and the signs contain figurative elements with different conceptual connotations, namely a dialogue box and a heart, the signs are conceptually dissimilar.

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 and services 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).

In the present case, the goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. They target both the public at large and a specialised public, whose degree of attention will vary between average and high respectively.

The earlier sign has a normal degree of distinctiveness.

The signs are visually similar to a slightly below average degree, aurally identical and conceptually dissimilar. The similarity between the signs lies in the coinciding verbal element ‘ika’, which is more distinctive than the figurative elements of the two signs and would, therefore, play a more significant role in the identification of the marks by the relevant public. Although the stylisation of this element is different in the two signs, this would not impede the public from reading it clearly and in the same way in both signs.

In view of this, the differences between the signs are not sufficient to safely rule out a likelihood of confusion, in particular as it is highly conceivable that the relevant consumers, even those who will pay a high degree of attention, will perceive the contested mark as a sub-brand, or a variation, of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in relation to all the contested goods and services that have been found identical or similar, even those that are only similar to a low degree. Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade 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)(b) 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 and directed against the remaining goods because the signs are obviously not identical.

Finally, in relation to the remaining dissimilar goods, there is no need to proceed further to the comparison of the signs for the part of the relevant public that would read the contested sign as ‘I [heart] KA’, since the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Milda CERNIAUSKAITE

Oana-Alina STURZA

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.