OPPOSITION No B 2 730 912

Juguetes Falomir, S.A., Tuejar, 43, 46183 La Eliana (Valencia), Spain (opponent), represented by Leggroup, C/ Campoamor 13, 1º, 28004 Madrid, Spain (professional representative)

a g a i n s t

Hasbro Inc., 1027 Newport Avenue, Pawtucket, Rhode Island 02862, United States of America (applicant), represented by Gill Jennings & Every Llp, The Broadgate Tower, 20 Primrose Street, London  EC2A 2ES, United Kingdom (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 912 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 of European Union trade mark application No 15 453 251 ‘KRE-O’. The opposition is based on Spanish trade mark registration No 3 032 673 ‘CREA’. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 28: Games and toys.

The contested goods are the following:

Class 28: Toys, games and playthings.

Toys, games and playthings are identically contained in both lists of goods (including synonyms).

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 is considered average.

3. The signs

CREA	KRE-O
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark consisting of the Spanish word ‘CREA’, which is the verbal conjugation (third-person singular) of the Spanish verb ‘crear’ and refers to an activity in which a person is engaged in a creative work.  Bearing in mind that the relevant goods are games and toys which are often made to foster children’s creativity and imagination, this element is considered weak.

The contested sign is a word mark consisting of the elements ‘KRE-O’. The first element ‘KRE’ has no meaning for the public in the relevant territory and is therefore considered distinctive. In relation to the letter ‘O’, which in Spanish is used as a link between two or more alternatives, and the element ‘-‘ placed in the middle of the contested sign and perceived solely as a punctuation mark, the Opposition Division considers them to be distinctive as they are not descriptive, allusive or otherwise weak for the relevant goods. Even though it cannot be excluded that part of the public will perceive the contested sign as consisting of the verbal element ‘KREO’, this invented term has no meaning.

Visually, the signs coincide in the letters ‘RE’ placed in the same position, in the middle of both marks. However, they differ in the remaining letters ‘C’ and ‘K’ at the beginning of the signs and in their endings with the letter ‘A’ in the earlier mark, and with the element ‘-‘ and the letter ‘O’ in the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the marks differs only in their last letters ‘A’ and ‘O’ respectively. The beginnings of the signs, ‘CRE’ and ‘KRE’, are pronounced identically and, as the opponent argues, the hyphen in the middle of the contested sign will most probably go unnoticed and it will not affect the sound produced by the contested sign.

Nevertheless, taking into account that the earlier mark ‘CREA’ is weak as such, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the contested sign has no meaning. Therefore, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question, namely games and toys in Class 28.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods are identical to the opponent’s goods and they target the public at large whose degree of attention is average.

The signs in dispute are visually similar to a low degree, aurally similar to an average degree, conceptually not similar and the earlier mark, ‘CREA’, has a low distinctive character. In this respect, it must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). It follows that a trade mark with low distinctive character also enjoys a lesser degree of protection. Whereas a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

In the present case, the signs in dispute are relatively short. Their different structure and the fact that they differ in their initial letter (‘C’ versus the unusual letter ‘K’) are relevant factors to consider when evaluating the likelihood of confusion between the conflicting signs.

Taking all the above into account, that the earlier mark ‘CREA’ is weak whereas the contested sign will be perceived as consisting of the fanciful components, ‘KRE-O’, which are distinctive, the average degree of aural similarity between the signs is insufficient to counteract their low degree of visual similarity and the fact that they are not conceptually similar. Therefore, and bearing in mind the low distinctiveness of the earlier mark, the overall impression produced by the signs is not sufficiently similar to lead to a likelihood of confusion on the part of the relevant public under analysis, not even in relation to the goods found to be identical, and there is thus no reason to believe that consumers would see the contested sign as a variation of the earlier mark as argued by the opponent, or that consumers would believe that goods sold under the different signs originated from the same or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Steve HAUSER

Begoña URIARTE VALIENTE

Frédérique SULPICE

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.