Are the signs represented below, registered as trade marks for the same goods (clothing, footwear, headgear) in Class 25 of the Nice Classification confusingly similar, so that the one on the right hand side cannot be a valid EU trade mark (EUTM)?
This question was, first, addressed and answered in the negative in 2016 by the EUIPO Cancellation Division. However, earlier this week the EUIPO First Board of Appeal (R1776/2016-1) gave a different response. By annulling the decision of the Cancellation Division, the Board declared the invalidity of EUTM 11775509 ‘TOBBIA’ for all its goods.
Katfriend Nedim Malovic (Sandart&Partners) explains what happened.
Here’s what Nedim writes:
“In 2013 Pan Xianhao successfully submitted an application to the EUIPO to have the ‘TOBBIA’ figurative sign registered as an EUTM for the goods in Class 25 mentioned above.
In 2015 Entertainment One UK and Ashley Baker Davies filed a request for a declaration of invalidity for the above granted EUTM. The grounds were likelihood of confusion with an earlier registered figurative trade mark, ie EUTM 10186261 ‘PEPPA PIG’, pursuant to what is now Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR), and conflict with an earlier copyright (subject to registration both in the US and China), pursuant to what is now Article 60(2)(c) EUTMR.
In relation to the conflict with the earlier ‘PEPPA PIG’ EUTM, the Board considered whether there was a likelihood of confusion between this and the ‘TOBBIA’ sign.
As per constant interpretation, there exists a likelihood of confusion 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 a global assessment that takes into account several, interdependent factors. Such factors include: the similarity of the signs, the similarity of the goods and services (identical in this case), the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public (the average consumer with an average level of attention) and territory (the EU in this case).
Similarities between the signs
With regard to the visual similarities of the signs, the Board considered that these are similar to the extent that they share a figurative element depicting – in a humouristic fashion – an anthropomorphic animal with a round head and a cylindrical snout. The shape of the head and snout is almost identical in both signs, and so are the ears, cheeks, eyes, nostrils, and smiley mouth.
There are, however, some visual differences, including: clothes, colours used, and word elements below the signs. The Board dismissed the argument that, unlike PEPPA PIG, the animal represented in the ‘TOBBIA’ mark would not be a pig, but rather a tapir.
From an aural/verbal point of view, the Board found that there is a certain association (likely to confuse) between the element “Peppa” and “Tobbia”: both are disyllabic words and have the repetition of a strong consonant, namely PP and BB. The public will identify these two elements as a given name.
Overall assessment
The Board considered that (1) the identity of the goods, and (2) the visual and conceptual similarities between the signs were such as not to dispel a likelihood of confusion for reasonably attentive consumers.
The Board also recalled that the various factors of a global assessment analysis may come into consideration in different ways, also depending on the conditions under which the goods and services covered by the signs are marketed. In the clothing sector, where the goods covered by the signs at issue are usually sold in self-service stores where the consumers may choose the product themselves and must therefore rely on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important than the phonetic and conceptual similarities. In the case at hand, the figurative elements of the signs are extremely similar and, due to their position and size in both signs, consumers will not overlook them.
Furthermore, although the verbal elements of both signs cannot be considered similar (Peppa and Tobbia obviously do not sound the same), there is some correlation in their structure and in both cases they are composed of a given name. This circumstance may lead some consumers to consider them related in some way, given the fact that they contain extremely similar graphic elements. Even if the public were able to distinguish between the marks at issue, they could be led to believe that the trade marks originate from the same undertaking in that they cover the same goods.
Conclusion
The decision of the Board does not appear surprising, also considering that the similarities may be said to outweigh the differences between the signs. It would have been interesting to see a more thorough discussion of the other ground raised by the ‘PEPPA PIG’ trade mark owner, ie conflict with the earlier copyright.”
