OPPOSITION No B 2 695 040

CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Wanyomo Limited, 30 Tintern Crescent, Reading RG1 6HA, United Kingdom (applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 695 040 is partially upheld, namely for the following contested goods:

Class 25: Clothing, footwear, headgear; hats of paper and cardboard.

2.        European Union trade mark application No 15 089 386 is rejected for all the above goods. It may proceed for the remaining goods and services.

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 15 089 386 ‘YOMO’. The opposition is based on European Union trade mark registration No 14 583 454 ‘yobo’. 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 and services

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

Class 18: Luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, animal skins, hides and goods made of these materials, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather straps, leather laces, bandoliers, sheets of imitation leather for further processing.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, fur and pelts, and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing; arranging and conducting of advertising events and customer loyalty programmes.

The contested goods and services are the following:

Class 9: Computer games; computer games programs; application software; electronic games software; downloadable electronic games programs; programs and software and games programs for smart phones, hand held devices, and mobile and wireless devices; online software for gaming; computer games provided through a global computer network or supplied by means of multimedia electronic broadcast or through telecommunications or electronic transmission or via the Internet; games, all supplied in the form of pre-recorded cartridges, tapes, cassettes, records, discs, CDs and DVDs, or other electromagnetic, magnetic or optical media; CD-Roms; interactive CDs; video CDs; computer apparatus; electronic publications; films, television films and animated films with soundtracks; computer game software; electronic game programs; downloadable electronic game software; digital computer game software; electronic game software for mobile phones and smartphones; electronic game programs for use with televisions, touch sensitive electronic screens and liquid crystal display screens; parts and fittings for all the aforesaid goods.

Class 16: Printed publications; printed matter; paper and cardboard, badges of paper and cardboard, works of art, figurines and dolls of paper and cardboard, paper table linen, paper cups, paper napkins, paper bags, paper shopping bags, paper party bags, paper flags, banners of paper and cardboard, coasters of paper and cardboard, boxes of paper and cardboard, wrapping paper, paper tissues signboards of paper and cardboard; books; printed publications containing games; stationery; posters; games manuals; instructional and teaching materials.

Class 25: Clothing, footwear, headgear; hats of paper and cardboard.

Class 26: Badges (for wear); buttons; decorative textile articles.

Class 28: Electronic games; hand-held electronic games; hand-held units for playing electronic games; controllers for games consoles; skill and action games; toys, games and playthings; action figures; playsets for action figures; stuffed toys; playing cards; peripherals and accessories for use in playing games; video game machines; face masks of paper and cardboard; parts and fittings for all the aforesaid goods.

Class 41: Electronic games services; provision of on-line computer and video games including via smart phones, hand-held devices, and mobile and wireless devices; providing online information in the field of computer games and video games; provision of games by means of computer-based systems; providing interactive multi-player computer games and video games via the internet and electronic communication networks; providing a website featuring entertainment information relating to computer games and video games; entertainment services; educational services; online publishing; arranging and conducting competitions for computer game players; production of programmes, television programmes and video tapes for gamers and game players; arranging and conducting workshops, conferences, seminars, conventions and congresses; demonstrations of games for instructional purposes; syndication and distribution of television programmes, cine-films and video tapes for gamers and game players; Entertainment services, namely, providing on-line computer games; electronic games services provided by means of a global communication network; providing on-line computer games that can be played via telephone, cellular telephone and wireless communication devices information and advisory services relating to the aforegoing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in both lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 Classes 9, 16 and 28 

The contested goods are essentially computer games, electronic games, game software, computer apparatus, electronic publications, films, screens, parts and fittings of these goods in Class 9; printer matter, paper and cardboard and goods made from these materials, stationery, instructional and teaching materials in Class 16; games, toys and playthings, parts and fittings of these goods in Class 28.

These goods are obviously not similar to the opponent’s goods and services in Classes 18, 25 and 35 which mainly cover raw materials such as leather and imitations of leather, hides, animal skins and goods made of these materials; clothing, footwear and headgear and advertising, business management and business administration services, office functions and retail services in relation to specific goods in Classes 3, 9, 14, 18 and 25.

These goods and services differ in their natures, purposes and distribution channels since they are not provided/manufactured by the same undertakings. Furthermore, they are neither complementary nor in competition with each other.

In particular, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Therefore in the absence of an obvious similarity with the goods and services of the opponent and since no argument has been submitted by the opponent, it is concluded that the applicant’s goods in classes 9, 16 and 28 are not similar to the opponent’s goods and services.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods in Class 25.

The contested hats of paper and cardboard are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested goods in Class 26

The contested goods are badges (for wear); buttons; decorative textile articles. These goods belong to the categories of accessories for apparel, sewing articles and decorative textile articles. Contrary to the opponent’s arguments, they are not textile articles for household use which are classified in Class 24.

Even though the contested goods are used to make and/or to decorate clothes, hats, footwear or leather goods or are used in combination with leather to manufacture leather goods, they are not similar to the opponent’s goods in Classes 18 and 25. The mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). These goods do not have the same natures, purposes, their producers differ and they are not distributed through the same channels and outlets. Furthermore, they are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking.

These differences are even stronger or clearer with the opponent’s services in Class 35 because of their different natures, purposes, distribution channels and manufacturers/providers. In particular and as explained above, they are not similar to the opponent’s retail services which concern different goods.

Contested services in Class 41

The contested services cover essentially entertainment and in particular game services; educational services; publishing; arranging and conducting workshops, conferences, seminars, conventions and congresses.

These services are obviously not similar to the opponent’s goods in Classes 18 and 25. They differ in their natures, purposes and distribution channels since they are not provided/manufactured by the same undertakings. Furthermore, they are neither complementary nor in competition with each other.

Regarding the opponent’s services in Class 35, they cover advertising services, business and support services that assist in the working of a commercial enterprise and retail services. These services are not similar to the contested services since they do not have the same natures, purposes and providers. Moreover, they are neither in competition nor complementary.

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 whose degree of attention is average.

3. The signs

yobo	YOMO
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).

It is worth mentioning that both marks are word marks and thus any differences in the use of capital or lower case characters is immaterial since protection is sought for the word itself rather than the actual representation.

Conceptually, for the vast majority of the public, neither of the signs has a meaning. Therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, it cannot be totally excluded that a small part of the public may perceive the word ‘yobo’ as referring to a surname or, for a small part of the English-speaking public, to a casual address to one's wife, husband or sweetheart (in slang) whereas the contested sign has no meaning. Therefore, for this small part of the public, the signs are not conceptually similar.

Visually and aurally, the signs coincide in the letters ‘Y-O-*-O’ placed in the same order and position and in their pronunciation. The signs are of the same length (4 letters) and only differ in one letter/sound, namely ‘B’ versus ‘M’ placed in the middle of the signs where they are more likely to go unnoticed. Therefore, the signs are considered visually and aurally similar to a medium 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.

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

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).

The goods and services are partly identical and partly dissimilar.

The earlier mark is inherently distinctive to an average degree and the degree of attention of the public is average.

The signs are visually and aurally similar to a medium degree since they coincide in three letters out of four placed in the same order and position. For the vast majority of the public, the signs have no concepts that could help to differentiate them.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Therefore, the Opposition Division considers that the difference lying in only one letter/sound placed in the middle of the signs is not sufficient to differentiate the signs and to safely rule out a likelihood of confusion, in particular taking into account that the goods are identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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

Boyana NAYDENOVA

Frédérique SULPICE

Martina GALLE

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.