General Court considers ‘gymnastic and sporting articles’ and ‘games and toys’ dissimilar for the purpose of likelihood of confusion assessment

Are toys that fall within the category of ‘gymnastic and sporting articles’ different from toys that fall within the broader category of ‘games and toys’?

In a recent decision, the General Court considered the goods covered by the marks in question, namely ‘Games, toys’ and ‘Gymnastic and sporting articles’, dissimilar since they have a different nature, intended purpose, method of use, manufacturers, and distribution channels. Even if it could not be ruled out that a link could be made between certain goods within ‘gymnastic and sporting articles’ and those falling within ‘games and toys’, in so far as certain sporting articles can also be used for games and certain games can also be sporting articles, such an assumption would not call into question the fact that the intended purpose of those two categories of goods is essentially different.

Background

In 2018, Master Gift Import filed an application for EU trade mark (EUTM) registration for the following mark:

The application concerned goods and services in Classes 28, 35, and 39 of the Nice Classification. The relevant goods for the purposes of the present action were those in Class 28 (gymnastic and sporting articles).

In 2018, Simba Toys GmbH & Co. KG (the opponent) filed an opposition pursuant to Articles 8(1)(b), 8(4) of Regulation (EU) 2017/1001 (EUTMR).

The opponent claimed that there was a likelihood of confusion, on the basis of its following earlier marks:

• Mark 1: International word mark SIMBA registered for goods in Class 28 (Toys, with the exception of soft toy animals, games’);
• Mark 2: International figurative mark for goods in Class 28 (Toys, excluding soft-padded cloth animals (toys):

• Mark 3: International figurative mark for goods in Class 28 ‘Games, toys’:

• Mark 4: The trade name “Simba Toys GmbH & Co. KG” used in the course of trade in Germany for ‘games, toys’.

In 2021, the Opposition Division partly upheld the opposition on the basis of Article 8(1)(b) EUTMR. The Opposition Division rejected the opposition with regard to ‘gymnastic and sporting articles’ in Class 28 covered by the mark applied for, finding that they would be different from ‘games, toys’ in Class 28 covered by the earlier Mark 3 above.

In relation to Article 8(4) EUTMR, the Opposition Division considered that, even if the requirements relating to the proximity of the relevant economic sectors under German law are generally lower than those relating to the similarity of the goods under Article 8(1)(b) EUTMR, protection would not go beyond the scope of protection under the latter provision.

The applicant appealed the decision to the EUIPO Fourth Board of Appeal (the board), which dismissed the action.

The applicant subsequently appealed to the General Court and alleged infringement of Articles 8(1)(b) and 8(4) EUTMR.

The present analysis only focuses on the General Court’s findings in relation to Article 8(1)(b) EUTMR.

The General Court’s judgment

The applicant criticized the board for not having considered (amongst other things) the:

(a) nature of several subcategories included in the general categories of goods covered by the signs,

(b) intended purpose of the goods covered by the mark applied for,

(c) the identical method of use of the goods, and

(d) the different manufacturers and the distribution channels of the goods covered by the signs at issue.

The General Court considered that it followed from case law that ‘Games and toys’ and ‘Gymnastic and sporting articles’ are different because they have a different nature, intended purpose and distribution channels, and are not interchangeable or in competition with each other.

Since Article 8(1)(b) of the EUTMR was not satisfied, the board did not err in finding that there was no likelihood of confusion within the meaning of that article.

Comment

The decision highlights how the circumstance that there might be some connection between goods/services in different classes – as it was here between certain sporting articles that can also be used for games and certain games that can also be sporting articles – does not entail that a general connection can be also automatically established between goods/services in different classes. All this means that the traditional Canon factors are to be rigorously considered and applied.