OPPOSITION No B 1 430 158

Acer Incorporated, 7F-5, No. 369, Fuxing N. Rd., Songshan Dist., Taipei City 105, Taiwan (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Beko plc, Beko House, 1 Greenhill Crescent, Watford, Hertfordshire WD18 8QU, United Kingdom (applicant), represented by Beck Greener LLP, Fulwood House, 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 430 158 is partially upheld, namely for the following contested goods:

Class 9: Sound and video recording, amplifying, reproducing and transmitting apparatus and instruments; tape and tape cassette recorders and playback machines; optical disk recorders and playback machines; record playing apparatus and instruments; loud speakers; earphones and headphones; video recorders and video playback machines; video cameras; television apparatus and instruments; remote control apparatus and instruments; computers and printers; disks for the storage of audio, video or computer data; parts and fittings for all the goods; computer software; tapes, wires for the storage of audio, video or computer data.

2. European Union trade mark application No 6 490 809 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 6 490 809 , namely against all the goods in Class 9.

The opposition is based on the following earlier trade marks:

• German trade mark registration No 1 022 265

• European Union trade mark registration No 4 108 511

• Austrian trade mark registration No 95 919

• Benelux trade mark registration No 368 535

• Benelux trade mark registration No 368 353

• Czech trade mark registration No 287 304

• Danish trade mark registration No VR 1981 01125

• Estonian trade mark registration No 36 597

• Finnish trade mark registration No 85 373

• Greek trade mark registration No 68 570

• Irish trade mark registration No 101 849

• Italian trade mark registration No 1 321 368

• Latvian trade mark registration No 50 114

• Lithuanian trade mark registration No 44 854

• Maltese trade mark registration No 41 702

• Portuguese trade mark registration No 222 275

• Slovak trade mark registration No 209 958

• Slovenian trade mark registration No 2004 70 440

• Swedish trade mark registration No 179 839

• United Kingdom trade mark registration No 1 134 399

• Spanish trade mark registration No 969 314;

all for the word mark ‘ALTOS’ and

• European Union trade mark registration No 5 064 291 for the word mark ‘ACER ALTOS’.

The opponent invoked Article 8(1)(b) EUTMR.

On 27/06/2013 the Opposition Division rendered a decision which resulted in the partial rejection of the contested European Union application No 6 490 809.

The decision was appealed and the Board of Appeal decided in case R 1690/2013‑5 on 31/08/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division, for reasons of procedural economy, selected two out of the opponent´s twenty-two earlier rights as the sole bases of its decision to partly uphold the opposition. However, the two earlier rights selected, namely, Slovenian trade mark registration No 2004 70 440 and Maltese trade mark registration No 41 702, were cancelled during the appeal proceedings. Therefore, the Board of Appeal stated that a new examination of the opposition must be made on the basis of all the other earlier rights which had been substantiated by the opponent. As the applicant expressly requested the remittal of the case back to the Opposition Division in order to have a full first-instance assessment of the remaining earlier rights, the Board of Appeal found appropriate to remit the case back to the Opposition Division for further prosecution pursuant to Article 64(2) EUTMR.

On 02/09/2016, the Opposition Division rendered a decision which resulted in the partial rejection of the contested European Union application No 6 490 809. Said decision was based on the Slovak mark No 209 958.

The decision was appealed and the Board of Appeal decided in case R 1991/2016‑5 on 13/12/2017. The Board’s decision confirmed the contested decision and dismissed the appeal as it found that there was a likelihood of confusion between the mark applied for and the earlier Slovak mark.

However, Judgement of 14/02/2019, T-162/18, ALTUS, annulled the decision of the Board of Appeal of 13/12/2017 (Case R 1991/2016-5). The General Court considered that the Board of Appeal’s decision, in refusing to suspend the opposition proceedings by upholding the opposition without waiting for the outcome of the revocation proceedings of the earlier Slovak mark pending before the competent national authority and on which the opposition was based, is vitiated by an error of law and by manifest errors of assessment.

The Slovak mark No 209 958 was revoked by the competent national authority as of 04/04/2017 due to lack of genuine use on the Slovak territory. The General Court considered that the earlier mark on which the opposition is based must be valid not only at the time of the publication of the application for registration of the contested mark, but also at the time that EUIPO gives a decision on the opposition. It adds that the Boards of Appeal failed to take into account all aspects of the applicant’s situation, so that in appraising the interests of that company, the Boards of Appeal did not look at the whole picture and did not properly weigh the various interests involved. As the examination of the question of whether to suspend the proceedings before the Board of Appeal precedes the examination of whether there is a likelihood of confusion between the mark applied for and the earlier trade mark, it is necessary to annul the contested decision in its entirety.

Consequently, the Board of Appeal decided in case R 1350/2019‑1 on 12/09/2019 that, following the annulment of the decision of the Fifth Board in appeal No R 1991/2016-5 by judgment of the General Court (14/02/2019, T-162/18, ALTUS (fig.) / ALTOS et al., EU:T:2019:87), in accordance with Article 72(6) EUTMR, the First Board shall take the necessary measures to comply with this judgment.

In its decision, the Board of Appeal stated that, as proven by the applicant, the earlier Slovak mark was revoked on 2 March 2018, with effect as of 4 April 2017. According to the information contained in the Slovak IPO, the mark lapsed on the latter date.

Since the General Court has confirmed that the earlier mark on which an opposition was based must be valid at the time that a decision is rendered on the opposition and that if the earlier mark invoked as the ground for the decision loses its validity during the course of the proceedings, those proceedings become devoid of purpose.

Therefore, the Board of Appeal decided that in accordance with the provisions of Article 71(1) and (2) EUTMR, it deems it appropriate to remit the case to the Opposition Division, so that it can assess the opposition with respect to the earlier marks which have been substantiated by the opponent and which continue to be valid.

Preliminary remark

On 31/03/2017, during the appeal proceedings, the Board of Appeal sent a communication to the parties informing that it noted that certain earlier rights were subject to renewal. It requested that the respondent (opponent) provided the renewal certificates of the following earlier rights: Austrian trade mark registration No 95 919, Estonian trade mark registration No 36 597, Greek trademark registration No 68570, Latvian trade mark registration No 50 114, Maltese trade mark registration No 41 702, Slovak trade mark registration No 209 958, United Kingdom trade mark registration No 1 134 399 and Spanish trade mark registration No 969 314.

On 18/04/2017, the respondent (opponent) submitted the corresponding renewal certificates of the abovementioned trade marks with the exception of the Finnish trade mark registration No 85 373, Czech trade mark registration No 287 304, the Slovenian trade mark registration No 2004 70 440 and the Swedish trade mark registration No 179 839 which were not renewed. As regards the Slovak trade mark registration No 209 958, it was revoked on 2 March 2018, with effect as of 4 April 2017 as it was mentioned above.

The extract from the TMview including the registration details of the Maltese trade mark registration No 41702 shows that the said mark has been revoked.

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

According to Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part), the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

Earlier Benelux trade mark registration No 368 535

In the present case the notice of opposition was not accompanied by any evidence as regards this earlier trade mark on which the opposition is, among others, based.

On 17/11/2008, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after several extensions, on 15/01/2012.

The opponent did not submit any evidence concerning the substantiation of earlier Benelux trade mark registration No 368 535. The only certificate of a national Benelux mark provided relates to the registration and substantiation of Benelux trade mark registration No 368 353.

In so far as Portuguese trade mark registration No 222 275 is concerned, the opponent provided two printouts, in English, from the online database of the Portuguese National Institute of Industrial Property. The first extract contains all the relevant indications as regards the registration of said mark and states that the mark is registered for goods in Class 9, without listing them. The second extract shows that the Portuguese mark is registered for the following goods in Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, 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.

The opponent also provided, on 16/01/2012, an extract from TM view, which is considered an officially accepted database (The EUIPO Guidelines, Part C concerning opposition, Section 1 Procedural Matters, page 34). In this extract it is stated that the Portuguese mark is protected for the following goods in Class 9:

Sistemas de computadores, unidades de processamento de centrais de computadores, comandos de discos de memória para computadores e programas para computadores gravados em suportes magnéticos.

According to Rule 98(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

It is apparent that the translation and the English version of the goods do not correspond to the original Portuguese version of the goods as listed in the extract from TM view. The list of goods in the English version is undoubtedly longer and contains more terms.

Consequently, as regards the list of goods and/or services, there is a discrepancy between the two extracts and there is no other document which clarifies the scope of protection of this earlier mark. In this regard, the opponent must always file the original list in Portuguese (from an official source) and an accurate translation into English.

In this context, the Opposition Division notes that the document submitted by the opponent does not contain all the relevant data in relation to the registration of the earlier Portuguese mark and its scope of protection. It is not clear which are the exact goods for which the mark is protected.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded in so far as it is based on Benelux trade mark registration No 368 535 and Portuguese trade mark registration No 222 275.

As regards the Finnish trade mark registration No 85 373, Czech trade mark registration No 287 304, the Slovenian trade mark registration No 2004 70 440 and the Swedish trade mark registration No 179 839 which were not renewed and the Slovak trade mark registration No 209 958 and the Maltese trade mark registration No 41702 which were revoked, the opposition must also be rejected as unfounded in so far as it is based on those earlier marks.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of the request for proof of use), if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of all the earlier marks on which the opposition is based. However, the request for proof of use concerning the valid European Union trade marks Nos 5 064 291 (registered on 23/03/2007) and 4 108 511 (registered on 15/08/2012) cannot be taken into account, because it is directed against marks which, at the date of publication of the contested trade mark (11/08/2008), had not been registered for at least five years. Therefore, the request for proof of use is inadmissible as regards those marks.

The Opposition Division will examine the request of proof of use for the remaining valid earlier marks on which the opposition is based, that is:

• German trade mark registration No 1 022 265 for the word mark ‘ALTOS’ registered for microcomputers; microcomputer accessory parts, namely propulsion equipment for disks and tapes, control devices, data terminals, especially data recording, processing memory, input and output devices, document reader, display units, printers as data output devices; magnetic disks, magnetic tapes; printed circuits for microcomputers; parts of microcomputers, namely central processing units for microcomputers; microcomputer software storage devices, namely magnetic tapes, diskettes, floppy disks and related storage media in Class 9.

• Austrian trade mark registration No 95 919 for the word mark ‘ALTOS’ registered for microcomputer systems; microcomputer peripheral apparatus, in particular discs as data carriers, disc drive and control device; control panels for microcomputer, printed circuits, single components of microcomputer, central process controller units; software for micro-computers in Class 9.

• Benelux trade mark registration No 368 353 for the word mark ‘ALTOS’ registered for microcomputer instruments; microcomputer peripherals, namely discs and instruments operations, end stations and printer (printers); microcomputer circuit plates, namely printed circuit plates; accessories for micro-computers, namely microcomputer central processing instruments and microcomputer programs (software) in Class 9.

• Danish trade mark registration No VR 1981 01125 for the word mark ‘ALTOS’ registered for the goods Class 9 including micro-computers and microcomputer installations, outer devices for micro-computers namely magnetic discs, activating and steering units for magnetic discs, terminals as well as print devices, micro-computers panels namely panels with printed circulation, microcomputers components namely central units and computer programs for micro-computers.

• Estonian trade mark registration No 36 597 for the word mark ‘ALTOS’ registered for microcomputers, microprocessors, computers, computers programs, computer exterior devices, computer software(recorded), computer hardware, servers, perennial systems, scanners, computer monitors, printers for use with computers, computer disk devices, computer keyboards, computer fax modem-cards, computer interface cards, computer memories, computer net dispensers, circuit breakers and routers, computer mouse, floppy discs, web devices and net programs, internet devices in Class 9.

• Greek trade mark registration No 68 570 for the word mark ‘ALTOS’ registered for microcomputer systems; microcomputer peripheral apparatus. in particular discs, control device and controls for discs, terminals and systems printers, boards for microcomputers and in particular printed circuit boards; components for microcomputers in particular central processing unit development for microcomputers; software for microcomputers.

• Irish trade mark registration No 101 849 for the word mark ‘ALTOS’ registered for computer systems; computer central processing units; computer memory disc drives; and computer programmes recorded on magnetic media; all included in Class 9.

• Italian trade mark registration No 1 321 368 for the word mark ‘ALTOS’ for microcomputer systems; microcomputer peripheral apparatus, in particular discs, control device and controls for discs, terminals and systems printers, boards for micro-computer and in particular printed circuit boards; components for micro-computer in particular central processing unit development for micro-computer; software for microcomputers in Class 9.

• Latvian trade mark registration No 50 114 for the word mark ‘ALTOS’ registered for microcomputers, microprocessors, computers, computers programs, computer peripherals, computer software, recorded computer software, computer hardware, servers, rack system, scanners, computer monitors, computer printers, computer disk drives, computer keyboards, computer fax modem cards, computer interface boards, computer memories, computer network hubs, switches and routers, mouse, diskettes, networking equipment and programs, internetworking devices in Class 9.

• Lithuanian trade mark registration No 44 854 for the word mark ‘ALTOS’ registered for computers, micro-computers; microprocessors; recorded computer programs; computer peripherals; recorded computer software; computer hardware; servers; scanners (data processing equipment); monitors (computer equipment); computer printers; computer disc drives; computer keyboards; computer facsimile apparatus modem cards; computer interface cards; computer memory devices; computer network hubs, switches and routers; mouse (data processing equipment); floppy diskettes, computer equipment and recorded programs for work in the network in Class 9.

• United Kingdom trade mark registration No 1 134 399 ‘ALTOS’ registered for servers, all being microcomputers; magnetic discs, disc drives and electrical control apparatus, input, output and printout apparatus, all for servers being microcomputers in Class 9.

• Spanish trade mark registration No 969 314 for the word mark ‘ALTOS’ registered for microcomputer systems, peripheral devices, microcomputers, especially records, mechanisms impulse and control disks, terminals and printers; frames for microcomputers, especially frames for printed circuits; components of microcomputers, especially elements of computer central microcomputers and carriers of recording microcomputers in Class 9.

In the present case, the contested trade mark was published on 11/08/2008. The opponent was therefore required to prove that the abovementioned trade marks on which the opposition is based which are subject to proof of use were put to genuine use in their respective territories from 11/08/2003 to 10/08/2008 inclusive.

The request was filed in due time and is admissible as these earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, as mentioned above.

On 17/04/2012, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 18/06/2012 to submit evidence of use of the earlier trade marks. On 18/06/2012, within the time limit, the opponent submitted evidence of use which consists on the following:

• Exhibit 1: Several extracts in German and in English showing reviews dated 2006 and 2007 for Acer Altos in relation to servers.

• Exhibit 2: Extracts in German and in English that correspond to parts from Acer Altos User Guides dated 2006 and 2007 about the server.

• Exhibit 3: A data Sheet in German from Acer dated 2006. Acer Altos is shown.

• Exhibit 4: A report about the company profile of Acer Inc issued by Datamonitor dated 2007. It refers to the markets where the company is present and its revenues. It mentions the sign Altos.

• Exhibit 5: A report from Intel about Server Benchmarks dated 2006 where Altos is mentioned.

• Exhibit 6: Press release regarding cooperation of AMD and Acer in Europe dated 2005.

Assessment of the evidence of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In its observations, the applicant states that the evidence is insufficient to proof use of the earlier marks. The opponent failed to explain the extent to which the earlier trade marks ‘ALTOS’ have been used.

In the present case, the opponent submitted documents issued by itself such as the Altos User Guide (exhibit 2) and a data sheet (exhibit 3). As far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements coming from the sphere of the opponent themselves or their employees and statements drawn up by an independent source; following the established case-law (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T-463/1, MB, EU:T:2014:935, § 54).

As regards the report about the company profile of Acer Inc issued by Datamonitor (exhibit 4), this data is provided by an independent provider however it only shows general information about the company. Moreover, even if the report includes amounts of last recorded revenues, they are very general and it does not provide specific information to which goods they refer to and to which customers these amounts were addressed to and other important information such as the price per item, the amount of products sold and under which trade mark. It is impossible to conclude with certainty, on the basis of this document, whether the relevant goods were actually distributed and, if so, the quantities involved.

The remaining documents, in particular the reviews, the server benchmark and the press release (exhibits 1, 5 and 6) cannot show genuine use of the earlier marks in the absence of sufficient additional data on the advertising expenditure, turnover and market share, etc. in relation to the relevant territories.

Furthermore, in the absence of specific sales or turnover figures, any invoices or other documents from which it could be ascertained how frequently the earlier goods have been provided and under what trade mark, the Opposition Division concludes that there is no sufficient evidence of the extent of use of the abovementioned earlier trade marks.

Given that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 28), the Opposition Division concludes that the opponent failed to adduce such evidence and establish genuine use of its trade marks: German trade mark registration No 1 022 265, Austrian trade mark registration No 95 919, Benelux trade mark registration No 368 353, Danish trade mark registration No VR 1981 01125, Estonian trade mark registration No 36 597, Greek trade mark registration No 68 570, Irish trade mark registration No 101 849, Italian trade mark registration No 1 321 368, Latvian trade mark registration No 50 114, Lithuanian trade mark registration No 44 854, United Kingdom trade mark registration No 1 134 399, Spanish trade mark registration No 969 314.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) as it is based on these earlier marks. The examination of the opposition will continue in relation to the remaining earlier marks which are not under the obligation to show use, namely, European Union trade marks Nos 5 064 291 and 4 108 511.

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 goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

European Union trade mark registration No 4 108 511

Class 9: Microprocessors, computer fax modem cards, computer interface boards, computer memories, diskettes.

European Union trade mark registration No 5 064 291

Class 9: Servers, rack system.

The contested goods are the following:

Class 9: Sound and video recording, amplifying, reproducing and transmitting apparatus and instruments; tape and tape cassette recorders and playback machines; optical disk recorders and playback machines; record playing apparatus and instruments; loud speakers; earphones and headphones; radios, radio receivers and radio signal tuners; video recorders and video playback machines; video cameras; television apparatus and instruments; remote control apparatus and instruments; optical, photographic and cinematographic apparatus and instruments; telecommunications and telephone apparatus and instruments; aerials; satellite broadcast receiving apparatus and instruments; games apparatus adapted for use with television receivers; electric flat irons; portable steamers for fabrics; cash registers; electronic calculators; computers and printers; computer software; tapes, disks and wires for the storage of audio, video or computer data; electric irons and presses; parts and fittings for all the aforesaid goods.

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.

A server is a computer system in a network that is shared by multiple users. Therefore, computer software is identical to the opponent’s servers (No 5 064 291).

The contested sound and video recording, amplifying, reproducing and transmitting apparatus and instruments are at least similar to the opponent’s diskettes (No 4 108 511) since they can coincide in producer, end consumer and distribution channels. The goods can also be complementary.

The contested loud speakers; earphones and headphones; video recorders and video playback machines; video cameras; television apparatus and instruments fall into the broad category of sound and images amplifiers/reproduction apparatus. They are at least similar to the opponent’s diskettes (No 4 108 511) since they can coincide in producer, end consumer and distribution channels. The goods can also be complementary.

The contested tape and tape cassette recorders and playback machines; optical disk recorders and playback machines; record playing apparatus and instruments refer to a variety of devices that allow for the reproduction of sound either pre-recorded. They are similar to a low degree to the opponent’s diskettes (No 4 108 511) because the goods coincide in producers, distribution channels and relevant public.

The contested remote control apparatus and instruments are systems used for operating a device wirelessly from a short line-of-sight distance. The goods are complementary to the opponent’s servers (No 5 064 291). In fact, such remote control apparatus cannot work independently, but only in connection with other programs. Therefore, these goods are similar.

Computers are at least similar to computer interface boards (No 4 108 511) protected by the earlier mark. Computer interface boards play a large and primary role in the functioning of computers and many of the peripheral devices. They are needed in order for computer to function. Thus there is a close relationship and high complementary character between the goods. Moreover, it is very likely that the companies, which manufacture computers, will also manufacture those boards. Finally, they share the same distribution channels.

Printers are similar to a low degree to the opponents servers (No 5 064 291) as they have the same nature (computer or telecommunications items), have the same relevant public, have the same distribution channels (IT related), be complementary or have the same producer (IT or telecommunications items producing companies).

The contested tapes, disks and wires for the storage of audio, video or computer data are similar to the opponent’s diskettes (No 4 108 511). They serve the same purpose, they have a similar method of use and they can coincide in their producers, distribution channels and end users. Furthermore, they can be interchangeable or in competition since the potential consumer may prefer to use diskettes instead of a tape, for example, to save the data. The goods are similar.

The contested parts and fittings for all the aforesaid goods (that is sound and video recording, amplifying, reproducing and transmitting apparatus and instruments, tape and tape cassette recorders and playback machines, optical disk recorders and playback machines, record playing apparatus and instruments, loud speakers, earphones and headphones, video recorders and video playback machines, video cameras, television apparatus and instruments, remote control apparatus and instruments, computers and printers) have a certain link with the opponent’s microprocessors (No 4 108 511). This is so because microprocessors serve as components in almost any electronic device and they can be parts and fittings of the applicant’s goods. Therefore, these goods are similar.

The contested parts and fittings for all the aforesaid goods (that is disks for the storage of audio, video or computer data) are components for data storage devices and data storage media. Therefore, they can be considered to be complementary and essential for the use of diskettes (No 4 108 511). The one cannot function without the other. Furthermore, the goods are of the same nature and can be produced and distributed by the same undertakings and found on adjacent shelves in electronics shops. The goods are similar.

As regards, the contested optical, photographic and cinematographic apparatus and instruments; telecommunications and telephone apparatus and instruments; satellite broadcast receiving apparatus and instruments; games apparatus adapted for use with television receivers, although the contested goods are used in relation to television receivers, they are sufficiently removed from the opponent’s goods in Class 9. They have a different nature, purpose and method of use. They are distributed through different trade channels and target different end users. Consequently, they are dissimilar.

Cash registers are mechanical or electronic devices for registering and calculating transactions. Electronic calculators are small, portable electronic devices used to perform both basic operations of arithmetic and mathematical operations. They are sufficiently removed from the opponent’s goods in Class 9. They have a different nature, purpose and method of use. They are distributed through different trade channels and target different end users. Consequently, they are dissimilar.

An aerial is a rod, wire, or other structure by which signals are transmitted or received as part of a radio or television transmission or receiving system. Radios, radio receivers and radio signal tuners are devices that allow for the reproduction of sound via sound waves. They are sufficiently removed from the opponent’s goods in Class 9. They have a different nature, purpose and method of use. They are distributed through different trade channels and target different end users. Consequently, they are dissimilar.

The remaining electric flat irons; portable steamers for fabrics; electric irons and presses are electrical appliances used to iron or provide steam. They are sufficiently removed from the opponent’s goods in Class 9. They have a different nature, purpose and method of use. They are distributed through different trade channels and target different end users. Consequently, they are dissimilar.

The contested parts and fittings for all the aforesaid goods (that is radios, radio receivers and radio signal tuners, optical, photographic and cinematographic apparatus and instruments, telecommunications and telephone apparatus and instruments, satellite broadcast receiving apparatus and instruments, games apparatus adapted for use with television receivers, cash registers, electronic calculators) are also different to the opponent´s goods in Class 9 since it is unlikely that the parts and fittings of these goods be produced by the same undertaking that manufactures the end product. Consequently, they are dissimilar.

The contested parts and fittings for all the aforesaid goods (that is computer software, tapes, wires for the storage of audio, video or computer data) are also different to the opponent´s goods in Class 9 since it is unlikely that the parts and fittings of these goods be produced by the same undertaking that manufactures the end product. Consequently, they are dissimilar.

The contested parts and fittings for all the aforesaid goods (that is electric flat irons; portable steamers for fabrics; electric irons and presses; aerials) are also different to the opponent´s goods in Class 9 since it is unlikely that the parts and fittings of these goods be produced by the same undertaking that manufactures the end product. Consequently, they are dissimilar.

2. 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 or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. The degree of attentiveness is deemed to vary from average (in relation to, for instance, daily consumption goods such as tapes) to enhanced (in relation to for example expensive and sophisticated microprocessors).

3. The signs

No 4 108 511

ALTOS No 5 064 291 ACER ALTOS
Earlier trade marks	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).

Whilst ‘ALTUS’ which forms the contested sign does not have any meaning, the word ‘ALTOS’ of the earlier marks is, among other meanings, a Spanish adjective which refers to the plural form of ‘tall’. It could also be perceived by the English-speaking part of the public as a signing voice with a lower range than that of a soprano. The element ‘ACER’ included in the earlier mark No 5 064 291 means a tree or plant that is often grown for its attractive leaves and bright autumn colours for the English-speaking part of the public. Be that as it may, since none of these elements has any direct relation to the relevant goods, they are normally distinctive. Furthermore, the marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘ALT*S’ however, they differ in the letters ‘O’ and ‘U’ included in both signs respectively and in the colour and the graphical representation of the contested sign. The signs also differ in the first element ‘ACER’ of the earlier mark No 5 064 291.

In relation to EUTM No 4 108 511, the first parts of the elements ‘ALTOS/ALTUS’ are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar as regards earlier mark No 4 108 511. However, they are visually similar to an average degree in relation to the earlier mark No 5 064 291.

Aurally, the pronunciation of the signs coincides in the sound of the letters /alt*s/, present identically in both signs in the same place and order. The pronunciation differs in the sound of the letters /o/ and /u/ included in both signs respectively which are pronounced very closely. Both elements contain five letters, of which four are placed in the same place and order, therefore, they share the same rhythm and intonation. The signs also differ in the first element ‘ACER’ of the earlier mark No 5 064 291.

Therefore, the signs are aurally highly similar as regards earlier mark No 4 108 511. However, they are aurally similar to an average degree in relation to the earlier mark No 5 064 291.

Conceptually, neither of the signs has a meaning for a part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

However, for the other part of the public for which ALTOS and/or ACER have a meaning as express above, whereas ALTUS is meaningless the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods have been found to be partially identical or similar to varying degrees and partially dissimilar.

On an overall assessment of the signs, and taking into account especially the fact that the signs share the same string of letters ‘alt*s’, it is considered that the visual and aural similarities between the signs are enough to counteract the dissimilarities. The difference in the letters ‘O’ and ‘U’ included in both signs respectively, which are pronounced closely, as well as in the element ‘ACER’ of the earlier mark No 5 064 291 is not sufficient to counteract that the signs are similar, even for the public showing a high attentiveness.

In addition, the Opposition Division notes that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16). In the present case, the consumer may easily conclude that the goods labelled and offered under the contested sign come from the same or from an economically-linked undertaking as the earlier marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations Nos 5 064 291 and 4 108 511.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.

It also has to be noted that likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). In the present case and taking into account this principle, the contested trade mark must be rejected for the goods found to be similar to a low degree to the goods of the earlier trade marks as the obvious similarities between the signs offset the low degree of similarity between the goods.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Octavio MONGE GONZALVO

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

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.