Urteile

beQueen gewinnt gegen QUEEN

Entscheidungsgründe

On 21/11/2008 the applicant filed application No 7 412 786 to register the trade mark shown on the cover page for goods in class 16.

The opposition is directed against all of the goods covered by the contested trade mark.

The opposition is based on International trade mark registration No 946 279 of the trade mark shown on the cover page, registered on 25/05/2007 for goods and services in classes 9, 16, 35, 38 and 41. This registration is effective in the European Community.

The opposition is based on all of the goods and services covered by the earlier mark.

The grounds of the opposition are those laid down in Article 8(1)(b) of the Community Trade Mark Regulation (CTMR).

The opponent argues that the signs to be compared are almost identical since they consist of the same word “Queen”. Taking this fact into account, together with the identity of the goods in class 16, there is a likelihood of confusion.

The applicant replies that there are obvious visual and aural differences between the signs with regard to the prefix “be”. Conceptually they are also different since the earlier trade mark means “to be queen” while the contested one just means “queen”. It considers that those differences should be viewed in connection with the fact that there are several variations of the sign “queen” registered as CTMs in class 16.

The opponent responds that the applicant has failed to show the weakening of the distinctiveness of the element “queen” and reiterates that the compared signs are highly similar.

II. DECISION

1. Likelihood of Confusion – Article 8(1)(b) CTMR

a) Preliminary remarks

In its observations, the applicant states that there are several variations of trade marks already co-existing on the market which contain the word “Queen” and which are registered as Community trade marks in class 16. It makes reference to five of these trade mark registrations.

In this regard the Court of First Instance has held that “the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical” (Judgment in case T-31/03 Grupo Sada, pa, SA, v OAMI, paragraph 86).

In this regard, it should be noted that formal co-existence on national or Community registries of certain marks is not per se particularly relevant. It should also be proven that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. In other words, on the basis of data concerning registry only, it cannot be assumed that all such trade marks have been effectively used. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

Therefore, in the absence of convincing arguments and evidence thereof, this particular argument of the applicant must be rejected as unfounded.

b) Identity of the goods

The goods on which the opposition is based, among others, are the following:

Class 16:
printed matter, leaflets, periodicals, newspapers, books; bookbinding materials, posters, stickers, calendars; signboards and models of paper or cardboard; photographs and photographic products; paper and cardboard, included in this class; stationery and office requisites (except furniture); instructional and teaching material (except apparatus);

The contested goods are the following:

Class 16:
magazines; periodicals; newspapers.

Since the earlier trade mark is registered, among others, for printed matter, in class 16, which is a generic term covering all kinds of products printed on paper and therefore also magazines; periodicals; newspapers, etc, the Office concludes that the compared goods are identical. Furthermore, the denomination periodicals, newspapers could be found as such in the specification of the goods of the earlier trade mark.

c) Comparison of the signs

The signs to be compared are the following:

beQueen
Earlier trade mark

QUEEN
Contested trade mark

The relevant territory is the European Union.

Visually, the compared signs are highly similar since they are both word marks and share five identical letters composing the word “QUEEN”. In fact, the contested sign is fully included into the earlier mark which in addition has two further letters B and E. Thus, the signs are visually similar to a high degree. It also should be mentioned that since both signs are written in a standard typeface, it is irrelevant whether the typeface used is in upper or lower-case.

Aurally, the signs correspond in the pronunciation of the word “QUEEN” which composes the contested mark and the second part of the earlier mark, and differ in one syllable “BE” which exists only in the earlier mark. The pronunciation of the element “QUEEN” would depend on the phonetic rules of the languages spoken by a particular consumer and his level of knowledge of the English language. However, in any case, the same element “QUEEN” would be pronounced the same way in both signs by the same consumer. Therefore, the stress would be on the same syllable of the word “QUEEN” and the rhythm and intonation of both signs would be similar. Consequently, the Office finds that the compared signs are phonetically similar to a medium degree.

Conceptually, the word “QUEEN” in English is the title of the female ruler of the state, or that of the wife of the king. The element “be” at the beginning of the earlier trade mark may be understood by an English-speaking consumer as the verb “to be” or the imperative form of this verb. Therefore, the signs are conceptually similar for the English-speaking consumers as they both refer to the concept of “queen”.

In the territories where English is not understood, the signs will have no meaning and, therefore, the conceptual comparison does not influence the assessment of similarity of the signs.

d) Global assessment

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see Judgment of the Court of Justice, Case C-251/95, Sabèl BV v Puma AG, Rudolf Dassler Sport (‘Sabèl’) [1997] OJ OHIM 1/98, p. 91, paragraph 22 et seq.)

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see Judgment of the European Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. (‘Canon’) [1998], OJ OHIM, No 12/98, p. 1419, paragraph 17 et seq.)

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (‘Lloyd’), OJ OHIM No 12/1999, p. 1585, paragraph 26).

In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered (see Lloyd, paragraph 28 et seq.).

As to the distinctive character of the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the assessment of the distinctiveness of the earlier mark must rest on its distinctiveness per se. Since the words “beQueen” have no meaning in relation to the goods at hand, the earlier mark has an average degree of distinctiveness.

The goods have been found to be identical and they are directed at the public at large.

The signs have been found to be visually highly similar, phonetically similar to a medium degree and have the same semantic connotation of “queen”, at least for English-speaking consumers.

Thus, taking into account the identity of the goods and the close similarity of the signs, the Office finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s International trade mark registration. It follows that the application must be rejected for all the contested goods.

III. COSTS

According to Article 85(1) CTMR, 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)(6) and (7)(d)(i) of Community Trade Mark Implementing Regulation (CTMIR), the costs to be paid to the opponent are the opposition fees and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)

DECIDES TO:

1. Uphold opposition number B 1 508 921 for all the contested goods.

2. Reject application number 7 412 786 in its entirety.

3. Order the applicant to bear the costs, which are fixed as follows:

Costs of representation EUR 300
Opposition fee EUR 350
Total amount EUR 650

The Opposition Division

Ignacio IGLESIAS ARROYO
Asta LUKOŠIŪTĖ
Claudia SCHLIE

Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 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. Under Rule 94(4) CTMIR 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 (Article 2(30) of the Community Trade Mark Fees Regulation (CTMFR)) has been paid.

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