OPPOSITION No B 2 068 834

Morgan Samuel (HK) Ltd, Unit 16-17, 4th Floor Block A, Vigor Industrial Building, 14-20 Cheung Tat Rd, Tsing Y, Hong Kong Special Administrative Region of the People's Republic of China (opponent), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)

a g a i n s t

Humantool Oy, Lohitie 8C, 02170 Espoo, Finland (applicant)

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 068 834 is upheld for all the contested goods, namely 

Class 16:         Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20:         Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

2.        European Union trade mark application No 10 834 398 is rejected for all the contested goods. It may proceed for the remaining non-contested goods, namely:

Class 10:         Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 834 398, namely against all the goods in Classes 16 and 20. The opposition is based on European trade mark registration No 10 054 302. 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, inter alia, the following:

Class 16: Printed matter; bookbinding material; typewriters; typewriters; typewriters; plastic materials for packaging not included in other classes; printers' type; printing blocks; printed publications; greetings cards; birthday invitations; wedding invitations; party invitations; birthday cards; Christmas cards; wedding cards; new baby cards, baptismal cards, bar mitzvah cards, bat mitzvah cards, maternity leave cards, paternity leave cards, promotion cards, leaving for another job cards, moving house cards, relocation cards and having a baby cards, Christian confirmation cards, first confession cards, engagement cards, retirement cards, graduation cards, divorce cards, cards upon professional qualification, cards to celebrate exam success, coming of age cards; gift wrapping; gift wrapping foil; gift wrapping materials; gift wrapping paper; magazines; business card holders; bookmarks, calendars, periodicals, journals, newspapers; newsletters; brochures; flyers; advertising material; paper, cardboard and goods made from these materials, not included in other classes; pamphlets, prospectuses, books, forms, maps, magazines, manuals, pictures photographs; photograph albums; calendars; catalogues; publicity material; promotional material; advertising material; books; car stickers; programmes; posters; postcards; prints; greeting cards; cards; tickets; leaflets; carrier bags; paper bags; book covers; diaries; business cards; business card holders; paper weights; letter openers; souvenir plastic carrier bags; computer programs in printed form; paper tapes, cards, ribbons and discs; paper tissues; paper napkins; menus; tickets; vouchers; parts and fittings for all the aforesaid goods; Absorbent sheets of paper or plastic for foodstuff packaging; Address plates for addressing machines; Address stamps; Addressing machines; Advertisement boards of paper or cardboard; Albums; Almanacs; Aquarelles; Architects' models; Arithmetical tables; Atlases; Bags (Conical paper -); Bags [envelopes, pouches] of paper or plastics, for packaging; Bags for microwave cooking; Bags (Garbage -) of paper or of plastics; Bibs of paper; Binding strips [bookbinding]; Biological samples for use in microscopy [teaching materials]; Blueprints; Bookbinding apparatus and machines [office equipment]; Bookbinding cloth; Bookbinding cords; Bookbinding material; Bookbindings; Booklets; Books; Bottle envelopes of cardboard or paper; Bottle wrappers of cardboard or paper; Bows (Paper -); Boxes of cardboard or paper; Bubble packs (Plastic -) for wrapping or packaging; Calculating tables; Calendars; Cardboard ; Cardboard articles; Cardboard tubes; Cards ; Catalogues; Chaplets; Charts; Checkbooks [cheque books] (Holders for -); Chromolithographs [chromos]; Chromos; Cigar bands; Clips (Money -); Cloth for bookbinding; Coasters of paper; Coffee filters (Paper -); Comic books; Composing frames [printing]; Composing sticks; Computer printers (Inking ribbons for -); Computer programmes (Paper tapes and cards for the recordal of -); Cords for bookbinding; Correcting ink [heliography]; Covers of paper for flower pots; Cream containers of paper; Credit card imprinters, non-electric; Decalcomanias; Diagrams; Document laminators for office use; Drawer liners of paper, perfumed or not; Duplicators; Duplicators (Inking sheets for -); Electrocardiograph paper; Electrotypes; Embroidery designs [patterns]; Engraving plates; Engravings; Envelope sealing machines, for offices; Etchings; Fabrics for bookbinding; Face towels of paper; Figurines [statuettes] of papier mâché; Film (Plastic cling -) extensible, for palletization; Filter paper; Filtering materials [paper]; Filters (Paper coffee -); Flags of paper; Flower-pot covers of paper; Flyers; Forms, printed; Franking machines for office use; Galley racks [printing]; Garbage bags of paper or of plastics; Geographical maps; Globes (Terrestrial -); Graining combs; Graphic prints; Graphic representations; Graphic reproductions; Greeting cards; Handbooks [manuals]; Handkerchiefs of paper; Handwriting specimens for copying; Hat boxes of cardboard; Hectographs; Histological sections for teaching purposes; Holders for checkbooks [cheque books]; Holders (Passport -); House painters' rollers; Humidity control sheets of paper or plastic for foodstuff packaging; Hygienic paper; Imprinters (Credit card -), non-electric; Inking ribbons; Inking ribbons for computer printers; Inking sheets for document reproducing machines; Inking sheets for duplicators; Jacquard looms (Perforated cards for -); Labels, not of textile; Laminators (Document -) for office use; Ledgers [books]; Letters [type]; Lithographic stones; Lithographic works of art; Lithographs; Luminous paper; Magazines [periodicals]; Manuals [handbooks]; Maps (Geographical -); Mats for beer glasses; Microwave cooking (Bags for -); Mimeograph apparatus and machines; Modelling clay; Modelling clays (Molds for -) [artists' materials]; Modelling clays (Moulds for -) [artists' materials]; Modelling materials; Modelling paste; Modelling wax, not for dental purposes; Models (Architects' -); Molds for modelling clays [artists' materials]; Money clips; Moulds for modelling clays [artists' materials]; Mounting photographs (Apparatus for -); Musical greeting cards; Napkins of paper for removing make-up; Napkins of paper (Table -); Newsletters; Newspapers; Numbering apparatus; Numbers [type]; Obliterating stamps; Oleographs; Packaging material made of starches; Packing paper; Paintings [pictures], framed or unframed; Pamphlets; Paper; Paper bows; Paper (Electro-cardiograph -); Paper for recording machines; Paper ribbons; Paper shredders for office use; Paper tapes and cards for the recordal of computer programmes; Paper (Waxed -); Papier mâché; Parchment paper; Passport holders; Patterns for dressmaking; Patterns for making clothes; Perforated cards for Jacquard looms; Periodicals; Photo-engravings; Photograph stands; Photographs (Apparatus for mounting -); Photographs [printed]; Pictures; Placards of paper or cardboard; Place mats of paper; Plans; Plastic cling film, extensible, for palletization; Plastic film for wrapping; Plastics for modelling; Plates for addressing machines (Address -); Portraits; Postage meters for office use; Postage stamps; Postcards; Posters; Printed matter; Printed publications; Printed timetables; Printers' blankets, not of textile; Printers' reglets; Printing blocks; Printing sets, portable [office requisites]; Printing type; Prints [engravings]; Prospectuses; Publications (Printed -); Radiograms (Paper for -); Reproductions (Graphic -); Ribbons (Paper -); Rollers for typewriters; Rollers (House painters' -); Rosaries; Sealing machines for offices; Sheets of reclaimed cellulose for wrapping; Shields (Erasing -); Signboards of paper or cardboard; Silver paper; Song books; Spools for inking ribbons; Starches (Packaging material made of -); Steel letters; Stencil plates; Stones (Lithographic -); Table linen of paper; Table napkins of paper; Tablecloths of paper; Tablemats of paper; Tables (Arithmetical -); Tables (Calculating -); Terrestrial globes; Tickets; Timetables (Printed -); Tissues of paper for removing make-up; Toilet paper; Towels of paper; Trading cards other than for games; Transfers [decalcomanias]; Trays for sorting and counting money; Tubes (Cardboard -); Type [numerals and letters]; Typewriter keys; Typewriter ribbons; Typewriters, electric or non-electric; Vignetting apparatus; Viscose sheets for wrapping; Waxed paper; Wood pulp paper; Wrapping paper; Writing paper; Xuan paper for Chinese painting and calligraphy.

Class 20: Handles made of plastics for garden implements; cat flaps not of metal or masonry; dog flaps not of metal or masonry; beds for domestic pets; beds for animals; carriers for animals; beds for household pets; beds for pets; dog mats; dog cushions; cat mats; cat cushions; beds for domestic pets; radiator beds for pets; cat radiator beds; cat beds being hammocks; carriers for transporting domestic pets other than cages; scratching posts for animals; scratching posts for cats; dog houses; dog kennels; hutches for pets; mirrors; pillows; beds; CD racks; DVD racks; utensil racks; recipe book stands; bottle racks; picture frames; mattresses; curtain fittings; curtain rods, rails, poles, rings, hooks and tie-backs; wine racks; mobiles, wind chimes, wall plaques; goods (not included in other classes) of horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials; metal picture frames; non-metal picture frames; non-metallic key rings; figurines being statuettes of wood, wax, plaster or plastic; ornamental figurines wood, wax, plaster or plastic; figurines made of gypsum cement or of gypsum derivatives, plaster, plastics, wax, wood or wood resin, miniature figurines; birds (stuffed -); stuffed animals; parts and fittings for the aforesaid goods.

Class 35: Retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, ( …) goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics ( …).

The contested goods are the following:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

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

The contested paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks are identically contained in both lists of goods (including synonyms).

The contested artists' materials include, as a broader category the opponent’s molds for modelling clays [artists' materials]. 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 stationery overlaps with the opponent’s paper. Therefore, they are identical. Likewise, the contested instructional and teaching material (except apparatus) overlap with the opponent’s printed matter and are, therefore, identical.

The contested office requisites (except furniture) include, as a broader category the opponent’s printing sets, portable [office requisites]; sealing machines for offices. 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 adhesives for stationery or household purposes are similar to a  high degree to the opponent’s bookbinding material, as they have the same purpose and nature. They can coincide in producer and distribution channels.

The contested paint brushes are similar to the opponent’s modelling materials; moulds for modelling clays [artists' materials]. This is because these goods can coincide in distribution channels, relevant public and producer.

Contested goods in Class 20

The contested mirrors, picture frames; goods (not included in other classes) of horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials are identically contained in both lists of goods.

The contested furniture include, as a broader category the opponent’s beds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested goods (not included in other classes) of wood, cork, reed, cane, wicker and substitutes for all these materials, or of plastics are similar to a low degree to the opponent’s retail services connected with the sale of the following goods ( …) goods of wood, cork, reed, cane, wicker and substitutes for all these materials, or of plastics ( …).

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

3. The signs

PILOT	Pilot Spot
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 marks under comparison are word marks. As such, they have no elements that could be considered clearly more dominant than other elements.

The earlier mark consists of the verbal element ‘PILOT’ and the contested sign is made up of the same word followed by the additional element ‘Spot’. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the marks at issue are represented in upper case or lower case letters.  

The element ‘Pilot’ of the earlier mark and of the contested sign will be widely associated (for example, by the English-, Czech-, Bulgarian-, Danish-, Latvian- and Romanian-speaking part of the public) with a person who is trained to fly an aircraft; a person who steers a ship through a difficult stretch of water (see Collins English Dictionary online at www.collinsdictionary.com/dictionary/english). For another part of the public (such as the Italian- and Spanish-speaking part of the public), the word ‘pilot’ does not exist as such and would be meaningless. The word element ‘Spot’ of the contested sign will be associated, for example, by the English-, Italian-, Bulgarian- and Spanish-speaking part of the public with a particular place; location and/or a short broadcast on TV, etc., whereas it has no specific meaning for other territories.  

Nevertheless, in spite of these meanings or the lack of any meaning(s), none of the words in the signs (including in combination as regards the contested sign) have a descriptive, allusive or otherwise weak meaning in relation to the relevant goods and services. Therefore, the inherent distinctive character of the earlier mark is normal, and the contested sign is composed of elements with a normal distinctive character.  

Visually, the signs coincide in that they contain the verbal element ‘PILOT’, which comprises the entirety of the earlier mark and represents the first verbal element of the contested sign. Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the contested sign. The signs differ in the second verbal element ‘SPOT’ of the contested sign.

Taking into account that the earlier mark is fully included in the contested sign but also the mentioned difference and the different length of the contested sign, it is considered that the signs are visually similar to an average degree.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to an average degree.

 

Conceptually, as indicated above, the element ‘PILOT’ included in the signs has a meaning for a part of relevant public and has no meaning for another part of the public. Likewise, part of the relevant public will associate the element ‘spot’ of the contested sign with a meaning, whereas this element would be meaningless for the remaining part of the public.

Consequently, for that part of the public which will not associate the signs with any meaning, as neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

However, the signs will be conceptually similar to an average degree in relation to the part of the public (such as the English-, Czech-, Bulgarian-, Danish-, Latvian- and Romanian-speaking part of the public), which will associate both signs with the same concept of ‘PILOT’.

Finally, as regards the part of the public, which will only understand the concept of ‘spot’ in the signs, since the contested sign will be associated with some meaning and the earlier mark will not be associated with any meaning, 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. 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

The contested goods are identical and similar to various degrees to the opponent’s goods and services and they are directed both at the public at large and at a professional public. The degree of attention may vary from average to high.

The earlier trade mark and the contested sign are visually and aurally similar to an average degree. The signs are conceptually neutral, conceptually similar to an average degree or, they are not conceptually similar.

The similarities between the signs are on account of the common and normally distinctive element ‘Pilot’, which constitutes the totality of the earlier mark and is represented as the initial verbal element of the contested sign.

In relation to the territories where the signs are not conceptually similar, account must be taken of the fact the conceptual difference is not of decisive weight. This is because the initial verbal element in the contested sign ‘Pilot’ is inherently distinctive and equally able to indicate trade origin as the element ‘spot’ that follows it.

As regards the difference in the element ‘spot’ placed as a second element in the contested sign, its impact is not overwhelming and it is not sufficient to counteract the overall similarity between the signs.

In the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier marks configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

 

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. This is clearly the case and the relevant consumer may see the contested mark as being a brand variation for a different line of goods.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 10 054 302. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Dorothée SCHLIEPHAKE

Liliya YORDANOVA

Gueorgui IVANOV

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.