Posted: 30/09/2019
This case concerns an opposition filed by Asmodee Group against EUTM application no 17 895 544 for the word mark DOODLE by Shantou Chengai Coolplay Trading Co Ltd.
The opposition was based on a claim of likelihood of confusion with an earlier EU registration for the word mark DOBBLE. The application sought registration for: “toys for babies; building blocks [toys]; scale model vehicles; action toys; toy vehicles; jigsaw puzzles; remote-controlled toy vehicles; scale model kits [toys]; stuffed toys; toy models; flying discs [toys]; toy putty; scale model airplanes; toy airplanes; educational toys; toys” in class 28. The goods applied for were all deemed identical to goods for which the earlier mark was protected, so the outcome of the opposition essentially came down to whether the respective marks were similar enough to give rise to a likelihood of confusion.
First, the opposition division (OD) noted that it is irrelevant whether a word mark is registered in upper or lower case characters. In the case of word marks, it is the word as such that is protected and not its written form.
When considering visual similarity, the signs were held to be visually similar to an average degree, taking into account that the signs coincide in a majority of their letters (involving DO and LE separated by two characters) and in both their beginning and ending letter combinations.
Aurally, the signs were held to be highly similar in certain parts of the EU, particularly for the Czech, Polish and Slovak-speaking parts of the public. For this part of the relevant public, the signs are pronounced “DO-DLE” and “DO-BLE”, generating a highly similar rhythm and intonation in both signs.
The first syllables of the signs also start identically with the sound of the letters “DO”, and the ending of the first syllable is less audible than the beginning of it. In light of the above, the OD found that the signs were aurally highly similar. A conceptual comparison was not possible, as the marks were held to convey no meaning.
Considering that the signs were visually similar, aurally highly similar and the contested goods were identical to the opponent’s goods, the OD held that there was a likelihood of confusion in the Czech, Polish, and Slovak-speaking parts of the public. As a likelihood of confusion for a part of the relevant public of the EU is sufficient for an opposition to succeed, the application was refused.
This article was published in CITMA Review in September 2019.
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