OPPOSITION No B 2 205 188

Excelitas Technologies Corp, 200 West Street, Suite E403, 02451 Waltham, Massachusetts, United States of America (opponent), represented by Marks & Clerk France, Immeuble ‘Visium’, 22, avenue Aristide Briand, 94117 Arcueil Cedex, France (professional representative)

a g a i n s t

Q Lifestyle Holding AB, Jakobsbergsgatan 16, 11144 Stockholm, Sweden (applicant).

On 22/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 205 188 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 11 409 621, namely against all the goods in Class 9. The opposition is based on Community trade mark registration No 9 795 592. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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:

Class 9: Video projectors and video cameras; optical instruments; microscopes; zoom lenses and other lenses for optical instruments; infra-red objectives, objectives (lenses), objectives (optics); optical goods, optical lenses; video couplers, TV camera lenses; zoom lenses, objectives; colour separation filters, heat/light separation filters, neutral density filters, attenuations filters.

The contested goods are the following:

Class 9: Digital cameras; Photographic cameras; Cameras [photography]; Filters [photography].

The contested digital cameras; photographic cameras; cameras [photography]; filters [photography] are included in the broad categories of the opponent’s optical instruments; optical goods. Therefore, they are identical.

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 are directed at the public at large and at a professional public with professional knowledge or expertise. The degree of attention will vary from average to high depending on the nature (i.e. whether specialised or not) and price of the relevant goods.

3. 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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark composed of a stylised green letter ‘Q’. The shape of the letter ‘Q’ is oval rather than circular and there is an opening in the lower right part of the letter. The descender is in the shape of a long, thin triangle positioned in the opening and extending upwards into the centre. The contested sign is a figurative mark composed of the black stylised word ‘the’ followed by a thick, closed black circle with a small triangle attached to its lower right part and extending downwards.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

Visually, the signs coincide in that they each contain a circular element with a triangle in its lower right part. However, as the marks differ in many aspects, they are considered visually similar only to a low degree. First, the marks differ in the fact that the contested sign has an additional word ‘the’ at its beginning which has no counterpart in the earlier mark. As this additional element appears in the first position, it is liable to attract the consumer’s attention more than the following part. The marks also differ in their colours, the earlier mark being green and the contested sign being black. Furthermore, they differ in that the earlier mark is composed of an oval that has an opening at its lower right side and the contested sign of a circle that is completely closed. The descender in the earlier mark is a long, thin triangle extending upwards into the centre, while the contested sign has a small triangle attached to its lower right part and extending downwards.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, for the part of the relevant public that will perceive the contested sign as the letter ‘Q’, the pronunciation of the signs coincides in the sound of the letter ‘Q’, present identically in both signs, and to that extent the signs are aurally similar to an average degree. The marks differ in the sound of the additional word ‘the’ in the contested sign. For the part of the relevant public that will not grasp the letter ‘Q’ in the contested sign and who will only pronounce the word ‘the’, the marks are aurally not similar.

Conceptually, part of the public in the relevant territory will perceive the letter ‘Q’ in both marks.

The word ‘the’ in the contested sign will be perceived by the English-speaking public as a determiner. For the remaining part of the relevant public this word is meaningless.

For the part of the relevant public that will perceive the letter ‘Q’ in both marks, the signs are conceptually similar.

For the part of the relevant public that will perceive the earlier mark as the letter ‘Q’ but that will not perceive that letter in the contested sign, the marks 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 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In this respect, it should be noted that the Court has held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services in question and applying the same criteria that apply to other word marks (09/09/2010, C‑265/09 P, α, EU:C:2010:508). Although that judgment deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter trade marks. Furthermore, according to the same judgment, unless a letter combination, as such, is intrinsically non-distinctive for the goods and services, these signs are not necessarily distinctive only to a low degree.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the goods of the earlier mark.

The relevant public consists of both the general public and a professional public; the degree of attention will vary from average to high.

The conflicting marks are visually similar to a low degree; they coincide in a circular element and in a triangle in their lower right part. For the part of the relevant public that will grasp the letter ‘Q’ in the contested sign, the marks are aurally and conceptually similar.

However, it is considered that the similarities between the marks will not lead to a likelihood of confusion as the marks show overall more differences than similarities.

The earlier mark is a figurative mark composed of a stylised green letter ‘Q’. The shape of the letter ‘Q’ is oval rather than circular and there is an opening in the lower right part of the letter. The descender is in the shape of a long, thin triangle positioned in the opening and extending upwards into the centre. The contested sign is a figurative mark composed of the black stylised word ‘the’ followed by a thick, closed black circle with a small triangle attached to its lower right part and extending downwards.

Even if the relevant public perceives the letter ‘Q’ in both marks, they differ in that the earlier mark is composed of an oval that has an opening at its lower right side and the contested sign of a circle that is completely closed. The descender in the earlier mark is a long, thin triangle extending upwards into the centre, while the contested sign has a small triangle attached to its lower right part and extending downwards.

The marks also differ in their colours, the earlier mark being green and the contested sign being black.

Furthermore, the marks differ in the fact that the contested sign has an additional word ‘the’ at its beginning which has no counterpart in the earlier mark. In signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark.

Moreover, the earlier mark consists of a single letter while the contested sign consists of a short three-letter word followed by a single letter, if perceived as such. Therefore, both marks are relatively short marks which makes that the relevant public will more easily perceive all their single elements and will be more aware of the differences between them.

Considering all the above, it is considered that the differences between the marks considerably influence the overall impression of the marks and largely outweigh the similarities. Therefore it is considered that the relevant public will be able to safely distinguish between the marks, even when they are used in relation to identical goods and even with an average degree of attention.

The opponent argues that the element ‘the’ in the contested sign constitutes a secondary element in the mark as it will be seen as a mere determiner that draws the attention to the subject, which is the single letter ‘Q’. This argument has to be set aside because the marks convey a sufficiently different visual impression so that a likelihood of confusion can be safely ruled out. Moreover, the word ‘the’ does influence the aural and, at least for part of the relevant public, the conceptual impression of the mark and will help the relevant public in that sense to even further distinguish between the marks.

Finally, the opponent argues that the contested sign is applied for in black and that no colours are claimed, and that therefore it is possible that the applicant will use the contested sign in the same colour, green, as the earlier mark. The issue of whether or not a trade mark registered in black and white should be considered to cover all colours has been addressed by the Court (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199). First, the Court stated that when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs. Furthermore, the Court considered the fact that ‘the proprietor of [a] mark may use it in a colour or a combination of colours and obtain for it, as the case may be, protection under the relevant applicable provisions … does not, however, mean … that the registration of a mark which does not designate any specific colour covers “all colour combinations which are enclosed with the graphic representation” ’. Consequently, it is relevant in the present case that one of the differences between the marks lies in their colours.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 CTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) CTMIR.

The Opposition Division

Julia SCHRADER

Saida CRABBE

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 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 Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.