The European court ruled in Case T-657/13. It concerns an attempt of Panline U.S.A. Inc. to register an European trademark ALEX for the following Classes:
Class 16: ‘Rubber stamps and stamp pads; stencil boxes; rulers; pop-up birthday cards; felt tip markers; children’s paint sets containing finger paint, poster paint, water colours, paint brushes, paint cups, and kids’ aprons; board erasers; chalk; wax and plastic crayons; glues for stationary or household use; kids’ scissors; coloured pencils; origami paper; drawing pads; colour and cut books; colouring books; and children’s activity books’;
Class 20: ‘Children’s furniture’;
Class 28: ‘Children’s arts and crafts kits for making jewellery, string beads, cards, jungle dioramas, key chains, clothes accessories, origami and kirigami, stickers, glitter art, sand art, animal sculptures, models, collages, potions, personal fragrances, bath gels, personal diary and holiday keepsake books, photo albums, patterns on silk, fashion accessories (including lanyard, love-beads and glow beads); children’s arts and crafts kits for use in painting, drawing, stencilling, colouring, clay modelling, dinosaur making and drawing and teaching alphabet and numbers (using flashcards, magnetic plastic numbers and letters); paper craft hobby kits; masquerade party kits; watch and watch band making kits; kids’ aprons sold as part of arts and crafts kits; children’s bath toys; and children’s educational and developmental activity toys, none of the aforementioned goods including sporting article ’ (as amended).
Against this application was filed an opposition by Arcandor Akt on the basis of earlier German trademarks ALEX for Classes:
Class 28 – towels, namely hand towels, bath towels, washcloths, towels for guests‘ in Class 24 and “sports articles”;
Class 12 – ‘bicycle’
Class 18 – bags, backpacks, travel bags and suitcases “
By decision of 16 September 2013, the Second Board of Appeal of OHIM confirmed the decision of the Opposition Division. The Board of Appeal stated that it was confining its review to the ground of opposition under Article 8(1)(b). It also stated that the applicant did not dispute that the earlier trade marks had only been put to use on ‘sporting articles’, and that the opposition was restricted to ‘children’s bath toys’ and to ‘children’s educational and developmental activity toys’ in Class 28. The Board of Appeal considered that the relevant public comprised members of the general public in Germany. It stated that there was no dispute that, with respect to the earlier word marks, the marks at issue were identical, and that with respect to the earlier figurative mark, the marks at issue were similar. The Board of Appeal held that ‘sporting articles’ and ‘children’s bath toys; and children’s educational and developmental activity toys’ were dissimilar goods and, accordingly, there could be no likelihood of confusion since an indispensable condition for the application of Article 8(1)(b) of Regulation No 207/2009, namely identity or similarity of the goods, was not met.
The Court upheld this decision.