iKIOSK | Decision 2832890

OPPOSITION No B 2 832 890
Axel Springer SE, Axel-Springer-Str. 65, 10969 Berlin, Germany (opponent),
represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62,
50674 Köln, Germany (professional representative)
a g a i n s t
Shenzhen Philisitome Information Technology CO. LTD., 2nd Floor, Building2,
Lian-jian Industrial Park, HuarongRoad, With wins community Dalang Street Longhua
District, Shenzhen, Guangdong Province, China (applicant), represented by Beetz &
Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 02/11/2017, the Opposition Division takes the following
1. Opposition No B 2 832 890 is upheld for all the contested goods.
2. European Union trade mark application No 15 902 431 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 902 431 . The opposition is based on European Union
trade mark registration No 8 578 197 IKIOSK. The opponent invoked Article 8(1)(b)
A likelihood of confusion exists 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 the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
Decision on Opposition No B 2 832 890 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 9: Recorded and unrecorded sound, image and data carriers, except
unexposed films; magnetic data carriers; computer programs and software, recorded
and/or downloadable; apparatus for recording, transmitting or reproduction of
sounds, images or data; calculating machines; data-processing equipment and
computers; 3-D glasses; apparatus for interactive television, decoders, cards with
integrated circuits (smart cards); computer games recorded on data carriers;
computer programs, in particular for gaming; video games adapted for use with
external screens or monitors only; exposed films; electronic publications,
downloadable; downloadable sound, images and data, including being data files.
The contested goods are the following:
Class 9: Bar code readers; computer peripheral devices; printers for use with
computers; computer programs [downloadable software]; automated teller machines
(ATM); ticket dispensers.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
The contested bar code readers are included in, and therefore identical to data
processing equipment for which the earlier mark is protected.
The contested goods computer peripheral devices include, among other goods,
monitors for use with computers. Accordingly, there is an overlap with the opponent's
apparatus for recording, transmitting or reproduction of sound, images or data. As the
Office cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
Printers for use with computers are similar the opposing goods computers. These
goods are complementary and can coincide in their manufacturer, end user and may
also share the same distribution channels.
The goods computer programs [downloadable software] of the contested mark are
included in, and as such identical to the opposing goods computer programs and
software, recorded and/or downloadable.
The goods automated teller machines (ATM) of the contested mark are machines
that dispense cash or perform other banking services when an account holder inserts
a bank card (https://en.oxforddictionaries.com/definition/automated_teller_machine).
These electronic devices usually also allow bank's customers to check their account
balances, deposit cash or cheques and transfer money from their bank accounts to
other bank accounts. Ticket dispensers as covered by the contested mark are
automatic machines that are designed to produce and release tickets, such as train
tickets at railway stations or cinema tickets at a cinema
(https://en.oxforddictionaries.com/definition/dispenser). Typically the customer uses
an interface to choose the type and quantity of tickets needed and then selects a
payment method. Such devices have a computing, calculating and data processing
function. In particular, they process the data recorded on the card or the data typed in
by the user, verify certain requirements and then dispense either the requested
Decision on Opposition No B 2 832 890 page: 3 of 6
amount of cash or tickets provided that the verification was successful. Taking into
account the nature of the goods and the aforementioned method of use, there is a
link between the contested goods automated teller machines (ATM), ticket
dispensers and the opponent's goods calculating machines; data-processing
equipment and computers. It can also not be excluded that the goods target the
same relevant public and share the same commercial origin. Overall, the goods are
therefore at least similar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumers degree of attention is likely to vary
according to the category of goods or services in question.
In the present case part of the relevant goods, namely bar code readers; automated
teller machines; ticket dispensers target a professional public exclusively. The
remaining goods that were found to be identical or similar such as computer
programs are directed at both, the public at large and business customers with
specific professional knowledge or expertise.
The public’s degree of attentiveness may therefore vary from average to high,
depending on the specialised nature of the goods, the frequency of purchase and
their price.
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The element ‘KIOSK’ is meaningful in many territories throughout the European
Union, for example where German or English is understood because the word exists
as such in these languages. Its meaning may also be understood in those territories
with languages which have similar words for the term ‘KIOSK’ such as Spanish
Decision on Opposition No B 2 832 890 page: 4 of 6
(‘QUIOSCO’), Italian (‘CHIOSCO’) or French (‘KIOSQUE’). In English the meaning of
the elementKIOSK’ is related to some of the contested goods, namely automated
teller machines (ATM); ticket dispensers, because it describes the goods themselves.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the German-speaking part of the public who will perceive the element
‘KIOSK’ as distinctive and not having a meaning in relation to the relevant goods.
The relevant public will perceive the earlier sign as a combination of the letter ‘I’ and
the word ‘KIOSK’, which in German designates a sales outlet (often in a small
structure) for magazines, drinks, sweets, cigarettes and the like
(www.duden.de/suchen/dudenonline/kiosk). As the element ‘KIOSK is not descriptive
or weak for the relevant goods from a German-speaking point of view, it is distinctive.
The element ‘I’ has no clear meaning in association with the word ‘KIOSK and is
therefore also distinctive. The fact that a large number of words such as ‘information’,
‘internet’ or ‘interactive’ start with the letter ‘I’, is not in itself sufficient to assume that
the relevant public will perceive ‘I’ as an abbreviation of any of these words when
confronted with that letter in any combination (Decision of the Fourth Board of Appeal
of 20 December 2011 in case R525/2011-4 ‘KIOSK’).
The aforesaid equally applies to the contested sign inasmuch as it includes the same
verbal element ‘IKIOSK’. In addition, the contested sign also includes figurative
elements, namely a grey rectangular background, a barely stylized white font and
underscore as well as a specific stylization of the letter “i” which may either be
perceived as written on a white background or on a white capital letter ‘I’. However,
these elements are merely decorative and thus of a secondary nature.
The contested sign has no element that could be considered clearly more dominant
than other elements.
However, when signs consist of both verbal and figurative components, in principle,
the verbal component of the sign usually has a stronger impact on the consumer than
the figurative component. This is because the public does not tend to analyse signs
and will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually, the earlier sign is fully reproduced in the contested sign as its distinctive
verbal element ‘IKIOSK’. The contested sign differs from the earlier sign in its
figurative elements which have no counterpart in the earlier sign. As mentioned
above, these elements are, however, of less importance as they will have a lesser
impact on the consumer. Therefore, the signs are highly similar.
Aurally, the pronunciation of the signs coincides in the syllables ‛IKIOSK’, present
identically in both signs. Even if the initial letter ‘I’ is perceived as being
superimposed on another letter ‘I’, these two letters will not be pronounced
separately and will instead be seen as forming one stylised letter ‘I’. The signs are
therefore considered to be identical.
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the element ‛KIOSK’, included in both signs, will be
associated with the meaning explained above which at least from a German
perspective is distinctive for the relevant goods. To that extent, the signs are
conceptually identical.
Decision on Opposition No B 2 832 890 page: 5 of 6
As mentioned above, the letter ‘Icould be an abbreviation of many words such as
‘information’, internet’ or ‘interactive’. However, the relevant public is unlikely to
perceive it as such given that this element does not convey any clear meaning in
combination with ‛KIOSK’. Even if the relevant public were to perceive the element ‘I’
as conveying a specific concept, it would be the same for both signs and they would
therefore still be conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods in question from the perspective of the German-
speaking public in the relevant territory (Decision of the Fourth Board of Appeal of 20
December 2011 in case R525/2011-4 ‘KIOSK’). Therefore, the distinctiveness of the
earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Taken as a whole, the earlier mark possesses an average degree of inherent
distinctiveness. The goods have been found to be in part identical and in part similar.
The signs are aurally and conceptually identical and visually similar to a high degree.
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).
Even consumers who pay a high degree of attention need to rely on their imperfect
recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The visual differences between the signs are confined to the additional figurative
elements of the contested mark which have only little impact on the consumer and
are therefore unlikely to be remembered. As the differences are insignificant overall
and the marks coincide in their distinctive element ‛IKIOSK’ the relevant public is
likely to be confused regardless of the exact level of attention displayed when
purchasing the various goods concerned.
Considering all the above, there is a likelihood of confusion at least on part of the
German-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Decision on Opposition No B 2 832 890 page: 6 of 6
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 8 578 197 IKIOSK. It follows that the contested
trade mark must be rejected for all the contested goods.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.

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