OPPOSITION No B 2 631 920

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Matuszczak Łukasz PPHU Kolba, ul. Bolesława Limanowskiego 65, 42 506 Będzin, Poland (applicant), represented by Marek Wiński, Partyzantów 101/4, 51-679 Wrocław, Poland (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 631 920 is upheld for all the contested services, namely:

Class 35:        Placement on the market and export of the following goods: laser lights, torches for lighting, laser torches, and hunting calls; placement on the market and export of the following goods: lures for hunting, decoys for hunting or fishing, decoy ducks for hunting, waterfowl hunting decoys, hunting lures; placement on the market and export of the following goods: stands for locating apparatus and for weapons, hunting binoculars, headphones, hunting and fishing requisites, hangers for game, hunting scales, headphones for hunting, knife sharpeners; placement on the market and export of the following goods: decoys for animals, beech tar, game hauling devices, screens for hunting purposes, stands; advertising.

2.        European Union trade mark application No 14 250 955 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 250 955, namely against all the services in Class 35. The opposition is based on, inter alia, German trade mark registration No 302 010 062 993. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 010 062 993.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 35:        Advertising; import-export agencies.

The contested services are the following:

Class 35:        Placement on the market and export of the following goods: laser lights, torches for lighting, laser torches, and hunting calls; placement on the market and export of the following goods: lures for hunting, decoys for hunting or fishing, decoy ducks for hunting, waterfowl hunting decoys, hunting lures; placement on the market and export of the following goods: stands for locating apparatus and for weapons, hunting binoculars, headphones, hunting and fishing requisites, hangers for game, hunting scales, headphones for hunting, knife sharpeners; placement on the market and export of the following goods: decoys for animals, beech tar, game hauling devices, screens for hunting purposes, stands; advertising.

The contested advertising is identically contained in the opponent’s list of services.

The contested placement on the market and export of the following goods: laser lights, torches for lighting, laser torches, and hunting calls; placement on the market and export of the following goods: lures for hunting, decoys for hunting or fishing, decoy ducks for hunting, waterfowl hunting decoys, hunting lures; placement on the market and export of the following goods: stands for locating apparatus and for weapons, hunting binoculars, headphones, hunting and fishing requisites, hangers for game, hunting scales, headphones for hunting, knife sharpeners; placement on the market and export of the following goods: decoys for animals, beech tar, game hauling devices, screens for hunting purposes, stands, although they refer to the movement of particular goods, do not relate to the actual retail or wholesale of the goods. As such, these services are preparatory or ancillary to the commercialisation of such goods on the market. In this respect, it is necessary to explain how the term ‘placement on the market … of the following goods’, included in the applicant’s specification of its services, should be interpreted. In the Opposition Division’s opinion, this term, although vague in itself, in connection with the words, ‘export of the following goods’, indicates that the commercial activity in question consists in import services. Considering all the above, the contested services are included in the broader category of the opponent’s import-export agencies and are, therefore, 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 services found to be identical are aimed at supporting or helping other businesses to carry out or improve their business. They are, therefore, in principle, directed at a professional public with specific professional knowledge or expertise. As the services are contracted infrequently, can be expensive and can have long-term consequences for one’s business affairs, it is considered that the relevant public’s degree of attention is higher than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 a figurative mark, consisting of the single word ‘real’ in dark-grey lower case letters, followed by two strokes representing a comma and a dash.

The contested sign is a figurative sign consisting of the verbal element ‘realhunter’, above which there is a figurative element depicting a deer’s head with antlers within the crosshairs of a telescopic sight. The verbal element is in lower case letters in a standard typeface and is split visually into two separate words, ‘real’ and ‘hunter’, both of which are meaningful words for a part of the relevant public, as outlined below. All the elements of the contested sign are green; the verbal element ‘real’ is light green and the remaining elements are dark green.

For the public in the relevant territory, the word ‘real’, which the signs have in common, means ‘existing or occurring in the physical world, material, factual’, as translated from German (information extracted from Duden at http://www.duden.de/rechtschreibung/real). In its observations of 02/09/2016, the applicant argues that the verbal element ‘real’ has a low degree of distinctiveness because it describes the characteristics (the quality) of the relevant services and that, in addition, there are many trade marks that include this element. In support of its argument, the applicant refers to several trade mark registrations in the European Union, including Germany, for services in Class 35. In this regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘real’. Under these circumstances, the applicant’s claims must be set aside. As the element ‘real’ is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive to an average degree (30/03/2016, R 1361/2015-4, F’REAL / REAL,-, § 17).

However, the graphic features of the earlier mark, the comma and dash, play a secondary role within the overall impression. Contrary to the applicant’s argument, the addition of two strokes to the word ‘real’ which is depicted in a common typeface will not particularly attract the consumers’ attention as the use of basic graphic elements is commonplace (30/03/2016, R 1361/2015-4, F’REAL / REAL,-, § 17). Therefore, the word ‘real’ is the most distinctive and dominant part of the earlier mark.

The word ‘hunter’ of the contested sign is meaningless for the majority of the public in the relevant territory. Although it cannot be completely excluded that some consumers will understand this word as meaning ‘a person who hunts wild animals for food or as a sport’, a substantial part of the relevant public would know only the German equivalent of this word, that is, ‘Jäger’. The distinctiveness of the word is average for the part of the public that will not associate it with any concept and low for the part that will perceive it as having the meaning given above, since it merely indicates that the relevant services are intended for consumers involved in hunting or fishing.

The figurative element of the contested sign, as described above, is weak for the relevant services. This is because it only refers to the characteristics of the relevant services; more specifically, it refers to the subject matter of the import and export services (i.e. items used for hunting or fishing, as fishing and hunting are closely related) and the content of advertising services (i.e. advertising of hunting and fishing equipment). Furthermore, account must be taken of the fact 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).

In summary, the verbal element ‘real’, included in both signs, together with the element ‘hunter’ of the contested sign (in the perception of the majority of the public), are the most distinctive elements of the signs.

The figurative element of the contested sign may be perceived by some consumers as more dominant (visually eye-catching) than its verbal elements, owing to its size and central position within the sign.

Visually, the signs coincide in the word ‘real’, notwithstanding the different typefaces and colours of the letters. They differ in the verbal element ‘hunter’ of the contested sign, which has no counterpart in the earlier mark. Furthermore, the signs differ in their figurative elements and overall stylisations, which, as stated above, will have a lesser impact on the consumer’s perception than the verbal components of the signs.

It is important to note that the coinciding element, ‘real’, is at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Given that the entire verbal element of the earlier mark, ‘real’, which is distinctive to an average degree, is wholly included in the contested sign as a distinctive element, which is clearly recognisable due to the different colour used for it, the signs under comparison are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛real’, present identically in both signs. The pronunciation differs in the sound of the additional letters of the contested sign, ‛hunter’, which form an element that is considered weak for a minority of the relevant public.

Therefore, and taking into account the fact that the public, as a rule, pays more attention to the beginning of a sign than to the subsequent components, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the meanings of the signs and their individual elements given above.

As seen above, the element ‘real’, included in both signs, will be associated with the meaning ‘actual, genuine’. To that extent, and given that other concepts that will be perceived by the relevant public are conveyed by weak elements or convey no concept (e.g. ‘hunter’, which has no meaning for a significant part of the public), the signs are conceptually similar at least to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the services are identical and they target a professional public with a degree of attention that is higher than average. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant services.

The signs in dispute are similar at least to an average degree in all aspects, as explained in detail above in section c) of this decision. The differences between the signs, as outlined above, are not sufficient to counteract their similarities, since they result either from weak elements (the figurative element and the word ‘hunter’, for a minority of the relevant public, both included in the contested sign) or in elements that are in a secondary position (e.g. the verbal element ‘hunter’ of the contested sign and the comma and dash in the earlier mark). Therefore, these differences do not attract the consumer’s attention as much as the first, distinctive, element, ‘real’, which the signs have in common.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark configured in a different way depending on the type of services that it designates. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the services designated by the conflicting signs as belonging to two ranges of services coming from the same undertaking under the ‘real’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the relevant public, and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 010 062 993.

It follows from the above that the contested sign must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier German trade mark registration No 302 010 062 993 leads to the success of the opposition and to the rejection of the contested sign for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Vít MAHELKA

Martin MITURA

Vita VORONECKAITĖ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.