TikTok vs TIC TAC K.O.

EUIPO 2 maart 2023, IEF 21301; Opposition No B 3 160 576 (TikTok vs TIC TAC K.O.) De opposant heeft oppositie ingesteld tegen de inschrijving van het woordmerk TIC TAC K.O. De oppositie is gebaseerd op Uniemerkinschrijving van het woordmerk TikTok. Het EUIPO heeft vastgesteld dat het risico op verwarring van handelsmerken wereldwijd moet worden beoordeeld en afhankelijk is van verschillende factoren, zoals de mate van erkenning van de handelsmerken op de markt, de associatie die het publiek tussen de merken kan maken, en de mate van gelijkenis tussen de merken en de goederen. In dit geval zijn de goederen identiek, wat betekent dat er een hoge mate van verschil tussen de merken nodig is om verwarring te voorkomen. Omdat de merken visueel en conceptueel vergelijkbaar zijn, en er slechts een gemiddelde aandacht van het publiek wordt verwacht, is er waarschijnlijk sprake van verwarring tussen de merken. Het argument van de verweerder dat de handelsmerken co-existeren, wordt afgewezen omdat er geen bewijs is dat ze daadwerkelijk samen bestaan ​​op de markt zonder verwarring te veroorzaken. Het argument dat de handelsmerken in de Verenigde Staten worden beschermd, is irrelevant omdat de wetgeving in de EU alleen van belang is.

e)        Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the trade marks on the market, the association that the public might make between the marks, and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical. According to case-law, when the goods covered by the signs at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

The goods target the public at large. The level of attentiveness of the relevant public is average. The inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to a low degree, aurally similar to a higher-than-average degree and conceptually similar to an average degree. Considering the similarities and differences between the signs, as described in section c), the overall impression of the signs for the relevant public will be that they are similar. This is because the differences between the marks will not be sufficient to counteract the commonalities. Therefore, the relevant public, who must rely on their imperfect recollection of the signs, could easily confuse them or believe that the identical goods originate from the same or economically linked undertakings.

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). In the present case, the identity between the goods compensates for and outweighs the fact that the signs are visually similar to a low degree.

In its observations, the applicant argues that its trade mark coexists with the opponent’s earlier marks.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, LA ESPAÑOLA (fig.) / ACEITE DE OLIVA CARBONELL (fig.), EU:C:2009:503, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, GRUPO SADA (fig.) / Sadia (fig.), EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union 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 (11/05/2005, T‑31/03, GRUPO SADA (fig.) / Sadia (fig.), EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence in national or European Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/European Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

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

Furthermore, the applicant argues that the Applicant’s mark was applied for in the United States of America on 3 March 2021. That mark was granted registration by the USPTO on 9 August 2022. It further added that not only do the marks coexist in the marketplace, but also on the US Trade Marks Register, with no apparent confusion. Furthermore, the USPTO did not consider the marks to be similar when examining the Applicant’s US application. It did not cite the Opponent’s mark against the application as a conflicting earlier mark.

However, this is irrelevant in the present case. In this regard, the lawfulness of the Office’s decisions must be assessed solely on the basis of EU regulations, as interpreted by the European Union judicature. Accordingly, the Office is not bound either by its previous decision-making practice or by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (23/01/2014, T‑513/12, Norwegian getaway, EU:T:2014:24, § 63). This is true even if the decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (16/05/2013, T‑356/11, Equipment, EU:T:2013:253, § 7).

Moreover, the applicant contends that, essentially, the Office’s search report did not cite the earlier marks, which, according to the applicant, means that the Office does not consider the earlier marks in conflict with the later-filed application. However, the Office’s search report is designed to identify similar earlier marks filed for the same classes, or for classes that are considered to contain similar goods and/or services by the Office, and that its sole purpose is to inform the applicant, in a non-exhaustive manner, whether there can be any conflicts with regard to relative grounds for refusal. It does not preclude trade marks that have not been discovered and not listed from being invoked in opposition proceedings (11/12/2014, R 1160/2014‑1, VALUA (fig.) / VALEA et al., § 37). Therefore, the applicant’s claim has to be dismissed.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public specified in detail in section c) of this decision. In this regard, as stated above, 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 EUTM registration No 18 184 895. 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 and/or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier EUTM registration No 18 184 895 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 ground of the opposition, namely Article 8(5) EUTMR.