OPPOSITION No B 2 749 318
Double A (1991) Public Company Limited, 1 Moo 2, Tambol Thatoom, Amphur Srimahaphote Prachinburi, Thailand (opponent), represented by Sipara Limited, Seacourt Tower, Third Floor, West Way, Oxford OX2 0JJ, United Kingdom (professional representative)
a g a i n s t
Tony Tiendas S.A. DE C.V., Av. Urano No. 585 B, Fracc. Jardines de Mocambo, Boca del Rio Veracruz, Mexico (holder), represented by Silex IP, Calle Velázquez 109 2º D, 28006 Madrid, Spain (professional representative).
On 27/06/2017, the Opposition Division takes the following
1. Opposition No B 2 749 318 is upheld for all the contested goods.
2. International registration No 1 271 663 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 271 663. The opposition is based on European Union trade mark registration No 11 801 371. The opponent invoked Article 8(1)(b) and 8(5) 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 goods and services
The goods and services on which the opposition is based are the following:
Class 16: Paper; cardboard; bookbinding materials; photographs; stationery; adhesives for stationery or household purposes; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers type; printing blocks; books; booklets; carbon paper; pens; rulers; pencils and notebooks.
Class 35: Wholesale and retail services connected with the sale of stationery, namely paper products and office requisites, computer peripheral equipment and consumables and custom printed goods; management of business and commercial printing and document copying requirements; document copying; photocopying, binding, copying and duplicating services; business management and advisory services relating to the operation and management of franchise and retail services.
The contested goods are the following:
Class 16: Paper, cardboard and goods made from these materials not included in other classes; printing products (printed matter); bookbinding material; photographs; stationery; adhesives (glues) for stationery or household use; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional material or teaching material (excluding apparatus); plastic materials for packaging (not included in other classes); printing type; printing blocks.
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
Paper, cardboard; bookbinding material; photographs; stationery; adhesives (glues) for stationery or household use; paintbrushes; typewriters and office requisites (except furniture); instructional material or teaching material (excluding apparatus); plastic materials for packaging (not included in other classes); printing type; printing blocks are identically contained in both lists of goods (including synonyms).
The contested printing products (printed matter) are all printed items such as books, greeting cards, catalogues, printed form, magazines, etc. Therefore, they include, as a broader category, the opponent’s books. 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 artists’ materials include, as a broader category, the opponent’s paint brushes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the contested goods made from these materials not included in other classes [Paper, cardboard] in Class 16 lack the clarity and precision to specify the scope of protection that they give as they do not provide a clear indication of what goods are covered.
When comparing the contested goods made from these materials not included in other classes [Paper, cardboard] and the opponent’s books, even though the former can be considered vague, it can be established that their nature (made of paper) and their purpose are the same in the broadest sense of the word. Therefore, they are similar at least to a low degree.
- 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 at issue are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark
The relevant territory is 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for which the common elements ‘SMART COPY’ are meaningful and have, therefore, an impact on the conceptual perception of the signs.
The earlier mark is a figurative mark consisting of the words ‘SMART COPY’ written in slightly slanted upper case letters on a black and grey background that depicts a brush effect; the word ‘SMART’ is above the word ‘COPY’.
The background of the earlier mark is a commonplace shape used in labels and has, therefore, a purely decorative nature.
The contested sign is the word mark ‘SMART COPY’.
The words ‘SMART COPY’, included in both signs, are meaningful. The verbal element ‘SMART’ is an adjective meaning ‘intelligent/clever/bright’ and is increasingly used in different fields to indicate positive characteristics of goods or services; the word ‘COPY’ refers, inter alia, to printed matters.
The verbal element ‘SMART COPY’ is, therefore, likely to be perceived by the relevant public as an expression alluding to the high quality of printed matter or related products, such as the format, the reproduction, the clarity of the texts produced, etc. Bearing in mind that some of the relevant goods are printed matter or related products, the degree of distinctiveness of the verbal elements of the marks under comparison is reduced for these goods. The word ‘COPY’ enjoys a normal degree of distinctiveness for the remaining goods not related to printed matter, such as plastic materials for packaging, as it is not descriptive or allusive in relation to them. The word ‘SMART’ is weak for the goods not related to printed matter, as it refers, in general, to the positive characteristics of these goods.
Neither of the signs has any elements that could be considered clearly more dominant than other.
Visually, the signs coincide in the words ‘SMART COPY’ and differ in the figurative element (the background) and the slight stylisation of the earlier sign. Although the elements that the signs have in common are weak in relation to some of the goods, the additional elements that could differentiate the marks are minimal and do not introduce any relevant differences. As explained above, the background and the slight stylisation of the verbal elements of the earlier mark will be perceived by the public as merely decorative.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the words ‛SMART COPY’, present identically in both signs. Therefore, the signs are aurally identical.
Conceptually, the signs coincide in the words ‘SMART COPY’, which will be associated with the meaning described above. Taking into account that the differing element, that is, the background, does not evoke any specific concept that could alter the conceptual perception of the sign, the signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 in relation to some of the goods 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark is lower than normal for some of the goods in question, such as printing products (printed matter). The mark has a normal degree of distinctiveness for the remaining goods, in relation to which the mark as whole has no meaning from the perspective of the public in the relevant territory, despite the presence of a weak element as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods are identical or similar to at least a low degree.
The signs are visually similar to a high degree and aurally and conceptually identical, insofar as they coincide in the words ‘SMART COPY’, which is the only verbal element of the earlier mark and constitutes the entirety of the contested sign.
The degree of distinctiveness of the earlier mark is lower than normal for some of the goods. However, this factor alone cannot prevent a finding that there is a likelihood of confusion (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). In the present case, the differences between the signs are confined to elements that have a minimal impact on the relevant public, as explained in section c). This makes the fact that the marks coincide in the words ‘SMART COPY’ very relevant in the present case, despite the reduced distinctiveness of this expression for some of the goods.
This is also true for the contested goods found to be similar to at least a low degree to the opponent’s goods. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore, the high degree of visual similarity and the aural and conceptual identity between the signs is sufficient to counteract the low degree of similarity of the contested goods and to find a likelihood of confusion on the part of the public with regard to these goods.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 801 371. It follows that the contested trade mark must be rejected for all the contested goods.
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/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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 grounds of the opposition, namely Article 8(5) EUTMR.
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 holder 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
IBARRA DE DIEGO
Angela DI BLASIO
Francesca CANGERI SERRANO
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.