solid power inside TM | Decision 2616426

OPPOSITION DIVISION
OPPOSITION No B 2 616 426
Intel Corporation, 2200 Mission College Boulevard, Santa Clara, California 95052-
8119, United States of America (opponent), represented by CMS Cameron
McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St, London London
EC4N 6AF, United Kingdom (professional representative)
a g a i n s t
Contemporary Amperex Technology Co. Limited, No. 1 Xingang Road, Zhangwan
Town, Jiaocheng District, Ningde City, Fujian Province 352100, People’s republic of
China (applicant), represented by Greaves Brewster LLP, Copa House Station
Road Cheddar, Somerset BS27 3AH, United Kingdom (professional representative).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 616 426 is upheld for all the contested goods.
2. European Union trade mark application No 14 395 362 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 395 362 for the figurative mark
. The opposition is based on,
inter alia, European Union trade mark registration No 8 144 115 for the word mark
‘INTEL INSIDE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
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
Decision on Opposition No B 2 616 426 page: 2 of 9
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 8 144 115.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signaling, checking (supervision), life-saving
and teaching apparatus and instruments; apparatus and instruments
for conducting, switching, transforming, accumulating, regulating or
controlling electricity; apparatus for recording, transmission or
reproduction of sound or images; magnetic data carriers, recording
discs; automatic vending machines and mechanisms for coin-
operated apparatus; cash registers, calculating machines, data
processing equipment and computers; fire-extinguishing apparatus;
computers; notebook computers; laptop computers; portable
computers; handheld computers; personal digital assistants; personal
media players; mobile telephones; smart phones; digital cameras;
servers; computer hardware; computer and telecommunications
networking hardware; computer network adaptors, switches, routers
and hubs; wireless and wired modems and communication cards and
devices; computer firmware for use in operating and maintaining the
computer system; computer software; semiconductors;
microprocessors; integrated circuits; central processing units;
microcomputers; computer chipsets; computer motherboards;
computer graphics boards; computer peripherals and electronic
apparatus for use with computers; parts, fittings, and testing
apparatus for all the aforesaid goods; downloadable electronic
publications in the area of computers, telecommunications, telephony,
and wireless communications; digital video recorders; set top and set
back boxes; televisions.
The contested goods are the following:
Class 9: Galvanic cells; battery boxes; accumulators, electric; batteries,
electric, for vehicles; batteries for lighting; plates for batteries;
electricity mains (material for -) [wires, cables]; graphite electrode;
condensers [capacitors]; stable electrical source; integrated circuits;
printed circuits; printed circuit boards.
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 galvanic cells; battery boxes; accumulators, electric; batteries,
electric, for vehicles; batteries for lighting; condensers [capacitors] are included in the
broad category of the opponent’s apparatus and instruments for accumulating
electricity. Thus, these goods are identical.
Decision on Opposition No B 2 616 426 page: 3 of 9
The contested plates for batteries are included in the broad category of the
opponent’s apparatus and instruments for accumulating electricity; parts, fittings, and
testing apparatus for all the aforesaid goods. It follows that these goods are identical.
The contested electricity mains (material for -) [wires, cables]; graphite electrode;
stable electrical source are included in the broad category of the opponent’s
apparatus and instruments for conducting electricity. Thus, these goods are identical.
The contested integrated circuits are also covered by the earlier trade mark.
Consequently, these goods are identical.
The contested printed circuits and printed circuit boards overlap with the opponent’s
computer motherboards in view of the fact that these latter consist of a printed circuit
board containing the principal components of a computer or other device, with
connectors for other circuit boards to be slotted into. Thus, these goods are identical.
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 consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large
and also at business customers with specific professional knowledge or expertise.
The degree of attention is expected to be average.
Given that the general public is more prone to confusion, the examination will
proceed on this basis.
c) The signs
INTEL INSIDE
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
Decision on Opposition No B 2 616 426 page: 4 of 9
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 common element ‘INSIDE’ is not meaningful in certain territories, for example in
those countries where English is not understood. However, the word ‘SOLID’ and
‘POWER’ of the contested mark will be understood in certain territories where English
is not commonly understood, such as the Italian-speaking part of the European
Union.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the Italian-speaking part of the public.
The earlier word mark ‘INTEL INSIDE’ has no meaning for the relevant public and is,
therefore, distinctive.
The contested mark is a figurative mark, namely the following,
.
Preliminarily, the Opposition Division notes that the contested sign also contains the
two letters ‘TM’, which will be understood as an informative indication that the sign is
purportedly registered. This element is not part of the trade mark as such.
Consequently, these two letters will not be taken into consideration for the purposes
of comparison.
Also, the second part of the sign consists of several Chinese characters, to which the
relevant public will not attribute any meaning, a part of the one according to which
they are Chinese characters per se. In its observations of 07/02/2017 the applicant
claims that at least some consumers in the relevant territory do understand and
speak Chinese. This circumstance may be true. However, it does not eliminate the
fact the vast majority of the consumers, and in particular the Italian-speaking
consumers now taken into account, do not have even a minimum understanding of
Chinese languages or in general Far-East languages, considering that Chinese
characters are logograms used in the writing of Chinese, Japanese, Korean and
some other Asian languages. Therefore, these elements will be simply understood as
Chinese characters, as already explained. Since the mere presence of these
characters will be taken as a simple indication of the possible origin of the goods in
question, namely the Far-East, these elements are deemed to be non-distinctive.
As regards the remaining word elements, the word ‘INSIDE’ has no meaning for the
relevant public and is, therefore, distinctive.
However, the words ‘solid power will be understood as a meaningful expression,
making reference to anot hollow, uninterrupted or reliable energy’. This is due to the
understanding of the word ‘solid’, which is almost identical to its Italian equivalent
solido or solida and the word ‘power’, which many Italian-speaking consumers may
associate to the idea of energy, considering that expressions such as ‘horse-power
or ‘powerline’ are part of the Italian vocabulary.
The elements ‘solid power’ will then be associated to a positive meaning in relation to
energy. Bearing in mind that the relevant goods in Class 9 are all related to energy
and power, these elements as a whole expression are weak for these goods.
Decision on Opposition No B 2 616 426 page: 5 of 9
The contested sign has no element that could be considered clearly more dominant
than other elements.
Visually, the signs coincide in the word ‘INSIDE’, which is distinctive in both signs.
The fact that in the case of the contested sign this word is in lower case letters is not
relevant, since the earlier mark is a word mark. Word marks are marks consisting of
letters, numbers and other signs (e.g. ‘+’, ‘@’, ‘!’) reproduced in the standard
typeface used by the respective office. This means that they do not claim any
particular figurative element or appearance. The signs differ in the additional word
‘INTEL of the earlier mark and in the additional weak elements ‘solid powerof the
contested sign. Also, they differ in the additional non-distinctive characters of the
contested sign.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘IN-SI-DE’
(according to the Italian pronunciation), present identically in both signs and being
part of the distinctive word INSIDE’. The pronunciation differs in the sound of the two
syllables ‛IN-TEL’ of the earlier sign, which is a distinctive element, and in the sound
of the weak elements ‘solid power of the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meanings
of the elements of the contested sign as explained above, the other sign has no
meaning in that territory. Since one of the signs will not be associated with any
meaning, the signs are not conceptually similar. However, this must be seen in the
context of the weak or non-distinctive character of the differing meaningful elements.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in Global assessment’).
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 public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
According to the Court of Justice’s case law, the risk that the public might believe that
the goods or services in question come from the same undertaking or, as the case
may be, from economically-linked undertakings, constitutes a likelihood of confusion
Decision on Opposition No B 2 616 426 page: 6 of 9
(29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 17).
The likelihood of confusion must be appreciated globally, in accordance with the
relevant public’s perception of the signs and of the goods and services in question,
taking into account all factors relevant to the circumstances of the case (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the
goods and services, which are interdependent criteria in the sense that a lesser
degree of similarity between the goods 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).
The global appreciation of the likelihood of confusion must, as regards the visual,
aural or conceptual similarities between the marks in question, be based on the
overall impression created by them, bearing in mind, in particular, their distinctive and
dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a
likelihood of confusion on the part of the public...’, shows that the perception of marks
in the mind of the average consumer of the category of goods or services in question
plays a decisive role in the global appreciation of the likelihood of confusion. Average
consumers normally perceive a mark as a whole and do not proceed to analyse its
various details, since they rarely have the chance to make a direct comparison
between different marks, but must trust in their imperfect recollection of them
(11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 25).
The goods covered by the trade marks in dispute have been found identical. The
level of attention of the part of the public taken into account is expected to be
average.
The marks are visually similar to a low degree and aurally similar to an average
degree since they share a distinctive element, namely the word ‘INSIDE’.
From a conceptual perspective, they are not similar. However, this is due to the
presence of elements in the contested sign that, as explained above in section c) of
the present decision, play a secondary role whether because they are weak (solid
power’), or non-distinctive (the Chinese characters).
In view of the foregoing, it is likely to expect that of the whole contested sign the word
‘INSIDE’, which has a normal degree of distinctiveness, will be remembered more
clearly than the rest of the sign.
As regards the earlier mark ‘INTEL INSIDE’, both elements plays the same role from
the perspective of the consumers who do not associate any meaningful content to
them, such as the Italian-speaking part of the relevant public, that has been taken
into account as an example.
In the present case, as seen above, the lesser degree of similarity between the signs
is clearly offset by the identity between the goods, for the reasons seen above.
Also, the Opposition Division deems that consumers may legitimately believe that the
contested sign is a new brand line or a recent development under the opponent’s
mark. In other words, consumers may confuse the origins of the goods at issue found
to be identical by assuming that they come from the same undertaking or from
economically linked undertakings.
Decision on Opposition No B 2 616 426 page: 7 of 9
In fact, although the coincidences in the signs are less obvious than the differences,
a likelihood of confusion still exists, as the coinciding element plays an independent
distinctive role in both signs. Most of the differences between the signs are confined
to secondary elements and aspects.
In its observations of 07/02/2017 the applicant argues that there are several
registrations with the word ‘INSIDE’ in the European Union trade marks Register,
some of which coexist 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 (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §
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 (judgment
of 11/05/2005, T-31/03, Grupo Sada, 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 interveners 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, EU:T:2005:169,
§ 86).
In this regard it should be noted that formal coexistence in national or 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/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.
Also, the applicant refers to previous decisions of the Office to support its arguments.
However, the Office is not bound by its previous decisions, as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Decision on Opposition No B 2 616 426 page: 8 of 9
Considering all the above, there is a likelihood of confusion on the general part of the
Italian-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. Also, given that a likelihood of confusion
for only part of the relevant public of the European Union is sufficient to reject the
contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 8 144 115. 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 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 European Union trade mark registration No 8 144 115 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
Furthermore, 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.
COSTS
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
Orsola LAMBERTI Andrea VALISA Edith Elisabeth
VAN DEN EEDE
Decision on Opposition No B 2 616 426 page: 9 of 9
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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