DECISION

of the Fifth Board of Appeal

of 7 September 2016

In Case R 1235/2015-5

Kabushiki Kaisha Zoom
4-4-3 Kanda-surugadai, Chiyoda-ku Tokyo Japan	Opponent / Appellant

represented by Arpe Patentes y Marcas, S.L., Guzmán el Bueno, 133, 3º Edificio Germania, 28003 Madrid, Spain

v

Leedsworld, Inc.
400 Hunt Valley Road New Kensington Pennsylvania 15068 United States of America	Applicant / Respondent

represented by Duclos, Thorne, Mollet-Vieville et Associes, 164, rue du Faubourg Saint-Honoré, 75008 Paris, France

APPEAL relating to Opposition Proceedings No B 2 240 557 (European Union trade mark application No 11 766 111)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Szanyi Felkl (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 24 April 2013, Leedsworld, Inc. (‘the applicant’) sought to register the word trade mark applied for:

ZOOM

for the following list of goods:

Class 9 – Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables; carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; and battery chargers and power banks; none of the aforementioned products relating to music technology products.

2. The application was published on 11 June 2013.

3. On 10 September 2013, Kabushiki Kaisha Zoom (‘the opponent’) filed an opposition against the registration of the published trade mark application for trade mark applied for goods.

4. The grounds of opposition were those laid down in Article(s) Art. 8(1)(a) and Art. 8(1)(b) and Art. 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

• For the EUTM No 4 888 749 for the figurative mark:

filed on 6 February 2006 and registered on 28 April 2008 for the following goods and services:

Class 9 – Programmed-data-carrying magnetic discs, downloadable computer program; magnetic disks, optical disks, magneto-optical disks, CD ROMs, digital versatile disk- ROMs, magnetic tapes carrying information of images and/or text data of magazines, books, newspapers, maps and photographic images; all the aforesaid goods being intended for use in connection with musical instruments and sound recording apparatus, and not relating to telephony; laboratory apparatus and instruments; measuring or testing machines and instruments; power distribution or control machines and apparatus; rotary converters; phase; batteries and cells; electric or magnetic meters and testers; electric wire and cables; photographic machines and apparatus; cinematographic machines and apparatus; optical apparatus and instruments; spectacles (eyeglasses and goggles); life saving apparatus and equipment; encoded magnetic cards, magnetic sheets, tapes, magnetic compact discs, record; metronomes; electronic circuits and CD-ROMs recorded automatic performance programs for electronic musical instruments; mouse pads for electronic computers; magnetic tapes; electronic machines and apparatus, namely multi-track recorders, hard disc recorders, rhythm machines, drum machines; and sound processors, effect processors, and their parts; electronic publications; ozonisers (ozonators); electrolysers (electrolytic cells); programmed-data carrying electronic circuits, magnetic tapes for computers for video game apparatus for commercial use; sports training simulators; vehicle drive training simulators; electric flat irons; electric hair curlers; electric buzzers; vehicle breakdown warning triangles; luminous or mechanical road signs; fire boats; fire alarms; gas alarms; anti-theft warning apparatus; gloves for protection against accident; fire extinguishers; fire hydrants; fire hose nozzles; sprinkler systems for fire; fire engines; cigar lighters for automobiles; protective helmets; fireproof garments; dust masks; gas masks; welding masks; magnetic cores; resistance wires; electrodes; exposed cinematographic firms; exposed slide films; slide film mounts; receded video discs and video tans; vending machines; coin-operated gates for car parking facilities; cash registers; coin counting or sorting machines; photocopying machines; manually operated computing apparatus; weight belts (for scuba diving); wetsuits (for scuba diving); inflatable swimming floats; protective helmets for sports; air tanks (for scuba diving); swimming flutter boards; regulators (for scuba diving); diving machines and apparatus (not for sports); electric arc welding machines; electric, welding apparatus; programmed-data-carrying electronic circuits, magnetic disks, optical disks, magneto-optical disks, CD-ROMS, digital versatile disk-ROMs, magnetic tapes for computers for video game apparatus for personal use; memory cards for personal use; consumer video games; electronic circuits and CD-ROMs recorded programs for hand-held camas with liquid crystal displays; electric door openers; magnets; permanent magnets; railway signals; marker buoys; cigar lighters for motorcycles; ear plugs;

Class 15 – Turning apparatus for music instruments; musical instruments; musical performance auxiliaries, namely, multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic-effects pedals, guitar effect processors, tuning forks.

• EUTM No 227 157 for the word mark ‘ZOOM’ filed on 1 April 1996 and registered on 22 December 1999 for the following goods and services:

Class 9 – Apparatus for reproduction and recording of sounds, namely voice frequency transmitting apparatus, portable communicating apparatus, sound recording apparatus, public address systems, amplifiers; synchronizing and auto locating systems for video tape recorders (VTR), audio tape recorders (ATR) and musical instruments; audio visual teaching apparatus, namely apparatus for developing, printing, enlarging and finishing of photographs, with the exception of such which have the capability of magnifying or enlarging static or moving images; computers and LSI-circuits (large scale integrated-circuit);

Class 15 – Electronic musical instruments.

6. By decision of 30 April 2015 (‘the contested decision’), the Opposition Division partially upheld the opposition for the following goods:

Class 9 – Carrying cases for electronic equipment, namely, media players and handheld devices; stands for electronic equipment, namely, media players and handheld devices; none of the aforementioned products relating to music technology products.

7. It gave, in particular, the following grounds for its decision:

• Proof of use of the earlier marks was requested and shown for the following goods:

Class 15 – Apparatus for reproduction and recording sounds, namely handy audio recorders, multi-track recorders, hard disk recording studio;

Class 15 – Electronic musical instrument, namely multi-effects processors, multi-effects guitar consoles and pedals, bass and acoustic pedals and guitars.

• Comparison with the contested goods ;

• Under Article 8(1)(b) EUTMR a risk of confusion was established on the following basis;

• The earlier word trade mark ‘ZOOM’ is identical to the contested sign, while , is the same sign, but for the fancy script – it is highly similar to the contested sign;

• Aurally, the signs will be pronounced identically and conceptually, the signs are identical to the extent that they both contain the concept of “zoom” which refers to the sound or act of zooming or to a zoom lens;

• The marks under comparison have no elements which could be considered clearly more distinctive or dominant than other elements;

• The goods found to be similar are directed towards the public at large. The degree of attention of the latter will be, on the whole, average;

• Likelihood of confusion includes the belief that items carrying the signs come from the same undertaking or from economically related ones – given the identity, or near identity, of the signs, this is highly probable;

• The contested trade mark is rejected for all goods found to be similar.

• Article 8(5) EUTMR was dismissed as the opponent failed to prove its earlier rights enjoyed a reputation in the European Union for all the goods for which registration was sought

8. On 29 June 2015, the opponent filed an appeal against the contested decision, requesting that refusal of the sign be extended to all the goods of the application. The statement of grounds of the appeal was received on 28 August 2015.

9. Observations in reply were received on 6 November 2015.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• The contested decision erred in its consideration of the similarity of the goods at issue:

Class 9 – Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables; carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; and battery chargers and power banks; none of the aforementioned products relating to music technology products

are similar to the limited list of goods for which contested decision established use;

• The limitation in the contested decision is meaningless – it does not guarantee that the devices in Class 9 would be restricted to music technology products – a USB cable, for example, can be used in numerous devices;

• Previous decisions of Opposition Division have found similarity between accessories (e.g. holders, battery chargers, cases, cables, wire) and apparatus apparatus for recording, transmission, or reproduction of sound or images;

• This similarity can be extended to cable management devices and battery chargers in Class 9 listed above;

• The evaluation of the proof of use evidence was in error – this should be extended to include the accessories supplied with the opponent’s devices – e.g. ‘handy recorders’ are supplied with a remote control, windscreen, a mic stand clip adaptor, an adjustable desk top tripod, a padded-shell case, an AC adapter (USB type) and a USB cable;

• Further, use is shown for ‘photographic machines and apparatus; cinematographic machines and apparatus’, given its sales of the ‘handy recorder’ – a device which allows streaming of videos through a computer directly to the web, so it is a ‘portable communicating apparatus’;

• The evidence should be considered again by the Board, taking into account the principles laid down by the Court in cases 14/07/2005, T‑126/03, Aladin, EU:T:2005:288 and 13/02/2007, T‑256/04, Respicur, EU:T:2007:46 ;

• Cord and cable management products are highly similar to ‘electric wire and cables’;

• ‘Battery chargers and power banks’ included in the contested application are identical to ‘power distribution or control machines and apparatus’ in the earlier right;

• ‘Carrying cases and stands for cameras’ in the contested application are highly similar to ‘photographic machine and apparatus; cinematographic machine and apparatus’ of the earlier right – ‘carrying cases and stands for computers, cell phones, PDAs, electronic tablets’ are also similar to the opponent goods;

• The opponent has a reputation for the purposes of Article 8(5) EUTMR – the contested decision failed in its analysis of the evidence;

• The contested sign should be rejected in its entirety and the opponent awarded costs.

11. The arguments raised in reply to the appeal may be summarised as follows:

• The only earlier right used as a trade mark in the evidence supplied is The word version of the latter is employed merely as a company identifier (11/09/2007, C‑17/06, Céline, EU:C:2007:497; 05/10/2010, STRATEGI, T-92/09, EU:T:2010:424);

• The use of the word ‘namely’ in the specification of the opponent’s earlier rights limits use to what follows this term;

• ‘Handy recorders’ are not listed in the opponent’s specification, so the contested decision was wrong to conclude they designate use of the sign;

• There is no evidence that has been used on ‘power distribution or control machines and apparatus (AC adapters) and electric cable, photographic machines and apparatus, cinematographic machines and apparatus’ – the category is too broad, even if the ‘handy recorder’ is sold with, in particular, an AC adaptor and a USB cable. There are many possible subcategories under descriptions indicated;

• The evidence is not specific enough – even where the invoices refer to –‘accessories’, this does not identify which accessories – and some of the invoices are after the relevant date;

• The basis of the comparison of goods should be between ‘multi-track recorders; hard disc recorders and guitar effect consoles’ and goods that exclude products relating to music technology, as per the limitation in the applicant’s specification (which guarantees its scope – music technology products do not constitute the applicant’s core business);

• There is no identity between ‘multi-media electronic devices’ and ‘apparatus for recording sound’ – it would have the consequence of preventing the registration of trademarks designating any kind of multimedia electronic devices – the protection granted is unreasonably wide: electronic devices combine many functionalities (video, camera, mobile phone) – this does not establish identity or even similarity;

• The goods at issue are dissimilar;

• The signs are not similar, given that ‘zoom’ is descriptive of some of the goods at issue (video recorders) and arbitrary in relation to others – as a consequence, they and have no operative conceptual link. The calligraphy in means they can be visually distinguished;

• The opponent and the applicant are not in the same marketplace (see Exhibit DTMV 4 – the applicant provides promotional products (clothing, bags, cases, games, housewares) direct to businesses and not the end consumer) while the opponent is involved in music technology (Exhibit DTMV 5) – there can thus be no confusion as the relevant public differs;

• Given the descriptiveness of ‘zoom’, the strength of the earlier right lies in the mark as a whole and this distinguishes the signs (22/05/2012, T‑60/11, Suisse Premium, EU:T:2012:252 ; 13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394);

• The opponent enjoys no repute in the ‘ZOOM’ name;

• The word is descriptive for many Class 9 goods;

• This meaning is promoted in the mark by the appearance of the ‘OO’;

• The relevant public in this case is the public at large – evidence has to be commensurate in that context – a knowledge threshold has to be established amongst that public;

• The MIPA awards are inadmissible late evidence, do not show any use of the signs on the relevant goods and are illegibly presented;

• There is little ‘third party’ endorsement of the opponent’s fame under its earlier rights, many of the documents submitted in evidence are produced by the opponent and circulation is unknown and the products are directed to a niche public – not the general public;

• The advertising and invoice evidence are insufficient to establish long-lasting and constant use over a long enough period;

• There is no information about market size and the opponent’s place within that market in the European Union.

• As a consequence, Article 8(5) EUTMR cannot apply;

• The application should be registered for all the goods applied for and the opponent should bear the costs of proceeding.

Reasons

12. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Proof of use and reputation of the earlier rights

13. Both parties to the case criticise the handling of the evidence as set out in the contested decision. It therefore behoves the Board to reconsider this material in its totality, paying particular attention to the comments made by both sides.

14. In its submissions, the opponent includes evidence intended to prove use of its earlier rights – and their reputation for the purposes of Article 8(5) EUTMR. This requires a consideration of the material submitted from both aspects – not a trivial task, given that there are some 140 or so exhibits mentioned.

15. The material is summarised in the paragraphs that follow, until par. 37, below.

16. Documents 1 to 4 contain the opponent’s product guide from 2012 and two more general product catalogues. The partial copy of the download from website could not be located (Document 2).

17. The ‘Zoom’ product guide from 2012 is, more or less in line with the opponent’s summary of its product offerings as:

1. ‘Handy Recorders’, that is hand held video/audio and audio only (there are several examples, with different designations, but all carrying the trade mark);

2. more sophisticated recording devices for live performance recording, interfacing, controlling and sampling;

3. guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars.

The product guide is in English, but refers to an address in Japan and to a Japanese based website.

18. Documents No 3 and 4 consist of two product guides, dated ‘2010/11’ and 2012/2013 for a Berlin based company called ‘Sound & Service GmbH’. It describes itself as one of the major independent German distribution companies for musical instruments and studio equipment, in business for more than 25 years. It has a presence in a number of European Union countries. The documents are in English and German. The customer base appears to be the music professionals, but does not exclude the non-professional public. The opponent’s products listed above (par. 17) are included in the catalogues and are described as follows:

‘ZOOM has built up a huge fan base among both amateur and professional musicians and engineers for its large collection of attractive sound gear concentrating on it’s advanced, high performance effect processors. … ZOOM has not let up churning out a diverse range of highly original and innovative products ranging from effect processors to Rhythm machines, Samples, Recorders and just about anything in between … thereby winning a solid base of devotees’.

‘ZOOM has establish a complete new category of innovative products for musicians … Not only in MI, but also in the consumer market, ZOOM is now well known for its market leading product recorders …’.

The Board notes that there is no information on the circulation of this material, but it would be unrealistic to conclude that, given the nature of ‘Sound & Service GmbH’ as set out in its own words, the documents were kept in filing cabinets in their offices. These documents are promotional tools.

19. Documents 5 to 10 contain a ‘selection’ of invoices for ‘ZOOM’ products. The products shown were all purchased from ‘Sound & Service GmbH’, supplied to a handful of retailers, within a handful of German cities, over the relevant period for proving use (though the first batch of invoices are dated 2007, the continuing is uniformly spread through the years up to 2012). The product range as listed above is represented. However, the actual number (but for the one exception) of the opponent’s items shown on these documents invoices is low – there tends to be one or two examples buried in a range of other Sound & Service GmbH supplied products.

20. Documents 11 to 51 are described as containing ‘Specimen’ examples of magazines advertising the opponent’s products. Whole magazines are included, that reference one advertisement in each, which seems rather unnecessary, in terms of the bulk of material submitted. (In general, the opponent’s evidence would be more effective, if it were more focused and accompanied with a better explanation of its value).

21. Having said this, these documents appear within the relevant date period for proof of use purposes (they range from 2007 to 2012, with examples that are directed to the relevant public – mostly German consumers (Recording magazine), with some (little) evidence of promotion to Dutch consumers (GUITARIST magazine). The trade mark is used throughout this advertising.

22. Documents No 52 to 61 are examples of advertising in ‘original’ magazines. Again, most examples apply to Germany (TASTENWELT and SOUNDCHECK magazines), with two examples from Poland (TOP GUITAR magazine) and one from Hungary (ZENESZ). The examples are within the relevant period and, again, the trade mark is featured.

23. As pointed out by the applicant, no information is given as to the circulation of these magazines and they appear to be directed to a specialised public.

24. Documents 62 to 70 are presented on CD and contain nine advertisements, presented in a more digestible and sensible format. Some of these are outside the European Union (Documents 68 to 70 show advertisements in the US). The other material shows promotion in Germany (Frankfurt Daily from March 2012, a German and English language paper; KEYS MUSIC AND COMPUTER magazine, dated April 2012; PROFESSIONAL AUDIO, dated April 2012) and the Netherlands and Poland (former being undated, while the latter GITARZYSTA is from 2012).

Document 70 contains a market data listing (revenues, employee count, and company type) for the top global music product trade businesses. The opponent is listed at number 64 with revenue of nearly $63.5 million. However, this is a global value and it is not stated how much of the latter applies to the European Union.

25. Document 71 contains brochures of the opponent’s products. As before, these brochures give an address in Japan. They are dated 2009, 2010 and 2011 and contain examples of the products listed above. The extent of their circulation in the European Union is unexplained.

26. Documents 72 to 96 consist of copies of various German publications focused on ‘Apple Corporation’ products (MACLIFE, which appears to be available in Austria, Italy, Luxemburg, the Netherlands and Denmark; MACEASY, available in Germany and Austria; iPhone/more; IPHONE Life and MacBIBEL), that is, directed to ‘Apple enthusiasts’. Aimed at a wider constituency than recording professionals and musicians and the like, mention of the opponent products are limited to the camera and music product sections of the MACLIFE publication, which makes up the majority of examples. The material is in the form of promotional articles, referring to the products as listed above, though in some cases, the mention is merely incidental. The publications fall within the relevant period (from 2007 to 2012).

27. Document 97 is a copy of the opponent website, dated January 2014, outside the relevant date. The website emphasises the link between the opponent product and ‘iOS’ (that is, ‘Apple’) devices. It provides a list of a ‘world-wide’ dealer-network, which includes many European Union Countries. Much of the distribution is through ‘Sound Service European Music Distribution’, though there are exceptions.

28. Document 98 is, again, outside the relevant period (dated 2014). It shows a product information video for a video recorder sold under the brand. The video, as the date shown, had received just over 2,500 viewings. It states: ‘A revolution in stereo microphones for the iPhone, iPad and iPod Touch’. Related videos show many more ‘hits’, but it is unknown where the latter originate.

29. Document 99 is a download from the opponent’s UK ‘Facebook’ account dated 2014. The number of followers is not shown.

30. Document 100 contains a statement from Ms Sue Cox, the general manager of ‘Zoom UK Distribution Limited’. This states that the sales and advertising spend for the opponent’s products in the years 2007 to 2011. Coupled with Document 115 (last row), this provides information on sales in the UK. The average is around GBP 3 000 000 per annum over the relevant period, with advertising around the GBP 60 000 mark.

31. The opponent submitted further evidence, with submissions dated 22 September 2014. This is summarised as follows.

32. Documents 102 to 206 contain product guides from 2008, 2009, 2010, 2011 and 2013. Again, the products as listed above are shown. Circulation for these documents is unknown – they are reproduced in English.

33. Documents 107 and 108 contain two advertisements for portable recorders. Both are in English and both are directed to the specialist recording and musician markets.

34. Documents 109 to 113 contain a large number of invoices of sales under the name ‘ZOOM’ in the UK. They cover the period from 2008 to 2013. The sales cover the products listed above and are made to various music and recording retailers throughout UK, mostly in England. The brand is used as a header in these documents, though the word version of the sign (‘ZOOM’) is employed in the body of each invoice, when referring to individual products. Document 113 encloses a list of ‘debit notes’ to various customers in the UK. The sales indicated are not insubstantial.

35. Document 116 contains copy invoices, all from 2013, issued by ‘Sound & Service GmbH’ to various clients in what the opponent describes as ‘Central Europe’. They are, in the vast majority, to Germany and, as before, the products of the opponent are mixed in with items from other suppliers. They are referenced by the ‘ZOOM’ name as a word mark. Advertising and sales spend (in EUR) are provided for 2013 and 2014 (to July) (186,000 and 7,985,117; 98,260 and 3,917,523).

36. Documents 118 to 121 contain more examples of ‘specimen’ advertising in magazines from the relevant period, from Italy.

37. Documents 122 to 142 all contain a mixture of material. Copies of advertising material for individual examples of the opponent’s products (some copyrighted within the relevant period) are enclosed with the results of Google searches for the same product. The latter all seem to have been undertaken in 2014, but some of the material is clearly within the relevant period. It is, none the less, difficult to assess the value of this material given the ‘transnational’ nature of the internet.

Proof of genuine Use

38. Article 42(2) EUTMR provides that an applicant for a European Union trade mark may request proof that the earlier European Union trade mark on which an opposition is based has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered during the five-year period preceding the date of publication of the European Union trade mark application against which the opposition has been filed, provided that the earlier European Union trade mark has at that date been registered for more than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods and services.

39. The contested mark was published on 11 June 2013. The opponent is therefore required to prove that its earlier rights were put to genuine use in the European Union from 11 June 2008 to 10 June 2013 inclusive. The use shown must relate to the goods of the trade marks upon which the opposition is based, as listed above.

40. Under Rule 22(2) CTMIR, proof of use must cover the place, time, extent and nature of the use made of the earlier trade mark.

41. In the view of the Board, there is more than sufficient material here to show that the opponent has used its mark on the goods listed above.

42. In terms of place, given that the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 15(1) and 42(2) EUTMR). The evidence shows that the opponent has supplied goods in Germany and in the UK, with some indication of supply in other EU countries as well (e.g. the Netherlands). The invoice evidence provides clear indications of the sales in both these counties, the sales amounting to some EUR 3 million in the UK alone, per annum, over the relevant period, being widely dispersed throughout that country. Germany is the largest country in the European Union. In the context of this, the Board is content to conclude that sales have taken place in the European Union during the relevant period, in keeping with the requirements of case law (19/12/2012, C‑149/11, Leno, EU:C:2012:816; 30/01/2015, T-278/13, now, EU:T:2015:57).

43. In terms of time of use this need not have been made throughout the relevant five year period, but rather within it. Further, the provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52). As it happens, the evidence demonstrates that the opponent has used the mark continuously throughout the relevant period. As shown in the invoice evidence, coupled with the continuous (if not abundant) material demonstrating promotion of the mark, the Board has no hesitation in concluding that the earlier right was used during the pertinent time period from 11 June 2008 to 10 June 2013 inclusive.

44. Next, in terms of extent of use, it is well established in case law that use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). The opponent need only show a serious attempt to acquire a commercial position in the relevant market. This has very clearly been achieved when the totality of the evidence is viewed. As previously stated, there has been continuous promotion of the goods, mainly to a specialist audience, and if the evidence of promotion is not indicative of vast sale, it is genuine and real resulting in sales of the goods, again, not vast, but certainly sufficient.

45. Nature of use is concerned with the how the mark was used. This includes consideration of whether the earlier right was used as a trade mark, whether the sign as used in the marketplace reflect that as registered and to what extent the use references the goods listed in the specifications.

46. There is little doubt that the signs have been used as registered. The applicant argues that on the figurative expression of the earlier rights has been employed ( ), as the latter appears in advertising and on the opponent’s goods – and use of ‘zoom’ per se is as a reference to the company and not use as a brand. This is unconvincing. In judgments 11/09/2007, C‑17/06, Céline, EU:C:2007:497, §  22, 23 and in 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 24 it has been established that there is use ‘in relation to goods’ where a third party uses the earlier right in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party. The opponent’s German distributor uses the word ‘zoom’ in exactly this way on all the invoices it sends to its customers – establishing the link as required by law.

47. Next, it is clear that the use reflects the signs as registered – there is no dissenting voice on this point from the applicant and neither should there be: examples in the submitted evidence abound.

48. In summary, the Board is content to adopt the summary set out previously as to the actual good upon which the earlier rights have been used. This use is limited to the following:

1. ‘Handy Recorders’, that is hand held audio/sound recording devices;

2. Recording devices for live performance recording, interfacing, controlling and sampling; and

3. Guitar ‘effects’ devices (stomps, pedals) including acoustic, bass and electric guitars.

49. The contested decision appears to have ignored the large amounts of evidence that shows sales of hand-held video devices as well as sound recording items. It could be argued that the use of the word ‘ZOOM’ (as in ‘zooming’ in or out) on these devices is merely descriptive and not trade mark use at all. The point is not discussed in the contested decision. Certainly, several decisions of the Board of Appeal have found the word to be without distinctive character in relation to cameras and a whole range of other goods (see 31/10/2014, R 639/2014-5, Touch Zoom (fig), § 25 et seq.; see also the decisions in 28/10/2015, R 468/2015-5, QUICKZOOM, § 12; 12/05/2010, R 230/2010-1, ZOOM, § 16; 18/12/2007, R 963/2006-4, NANOZOOM, § 17).

50. Yet the opponent’s earlier right No 4 888 749 for the figurative mark has been accepted for registration, without limitation, for ‘photographic machines and apparatus; cinematographic machines and apparatus’ and must be deemed to be valid (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40 to 45).

51. It could be that the mark was accepted on the basis of its stylisation. The Board notes that the goods specified under the word only version of the opponent’s earlier right does not include video recording devices, and where it refers to ‘audio visual teaching apparatus, namely apparatus for developing, printing, enlarging and finishing of photographs’ it is accompanied by the limitation ‘with the exception of such which have the capability of magnifying or enlarging static or moving images’.

52. The opponent’s figurative mark is used on its goods as follows:

It could be argued that the word is being used in a descriptive manner on this combined video and sound recording device, but the earlier marks appear in invoices and in advertising and are clearly used in a trade mark sense. The Board is prepared to accept that the sign has been used for handheld video, as well as audio, devices.

The question now follows as to what extent and how this use legitimately reflects the specifications of the earlier rights. The applicant fairly points out that use of the word ‘namely’ in the specification of the opponent’s earlier rights limits use to what follows this term – the Board will take note of this where it has a bearing on the decision.

53. Less fairly, the applicant states that because ‘handy recorders’ are not listed in the opponent’s specifications, the contested decision was wrong to conclude they designate use of the sign and no proof of use has been shown for such devices. The opponent’s specifications do refer to ‘photographic machines and apparatus; cinematographic machines and apparatus’ ( ) and ‘sound recording apparatus’ (‘ZOOM’), which specifications encompass ‘handy recorders’. Whatever name is employed to describe these products, there is no doubt in the mind of the Board that the opponent has marketed hand held video/audio and audio devices under the name and the word mark ‘ZOOM’. Use has been demonstrated.

54. Both parties cite the 14/07/2005, T‑126/03, Aladin, EU:T:2005:288 case, where proof of use relating to a ‘product for polishing metals consisting of cotton impregnated with a polishing agent (magic cotton)’ was sufficient to support use of ‘polish for metals’, but not for the higher level ‘polishing preparations’ in Class 3. This maintained a balance between the preservation of protection afforded by the use proved and extending that protection to too extensive a category of goods beyond what is reasonably indicated by that use.

55. The opponent argues that given its sales of the ‘handy recorder’, that use is shown for ‘photographic machines and apparatus; cinematographic machines and apparatus’.

56. In the view of the Board, the opponent is asking for too much on the basis of the use it had shown for these devices. ‘Handy recorders’ are reasonably sophisticated video and recording devices, small in size and therefore easily portable – they are hand-held and typically depicted in use at concerts, small scale events or even impromptu recording sessions. The opponent has not demonstrated commercial interest in any other product that could fall under the category ‘photographic machines and apparatus; cinematographic machines and apparatus’.

57. The latter descriptions subsume a truly vast array of products. For example, ‘photographic machines and apparatus’ could include cameras (digital, polaroid or analogue) – from the most simple ‘point and press’ device to the most sophisticated example as used by professionals – and everything in between. The description could include devices for editing digital photographs or developing traditional film, as well as projection, storage or management of the same. It could include devices that index and organise photographic content and apparatus such as automated ‘photo-booths’ – and does not exclude such items as light meters, flashguns, lenses or webcams.

58. To accept that the opponent has used its sign on these specified goods would be disproportionate on behalf of the Board, and would certainly go against established case law. In the aforementioned Aladin case, § 45 the Court stated: ‘… a trade mark … registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition’.

59. The opponent is asking the Office to extrapolate use from a clear subcategory to that of a super-category that is some levels above it. To do so is unjustified. Much the same can be said of ‘cinematographic machines and apparatus’. This description covers products on a spectrum that might begin with goods that used by the occasionally interested amateur and ends with the items employed on the set of a Hollywood block buster. In the view of the Board, the opponent has proved use of ‘hand-held videoing and record devices’ (or ‘hand held recording apparatus’ as set out in the specification of the earlier word mark (EUTMR 227 157)) – which represent a reasonable subsector. But that is all.

60. Moving on, the argument by the opponent that its goods are also ‘portable communicating apparatus’ because they can stream videos through a computer directly to the web, is unconvincing. Data streaming is a computer function and may only be regarded as incidental to the main purpose of hand-held recorders.

61. Further, there is no evidence that the opponent’s goods have been used on ‘power distribution and control machines apparatus (AC adapter) and electric wire and cable’.

62. The opponent argues that each of its ‘Handy Recorder’ products are supplied with a remote control, windscreen, a mic stand clip adaptor, an adjustable desk top tripod, a padded-shell case, an AC adapter (USB type) and a USB cable.

63. The Board had examined the evidence carefully in this respect. From Document 123 – which is as good an example as any – these appear to be optional extras that are not supplied with the device. Another example is Document 126 where the opponent’s Q3HD recorder cable is sold separately (and Document 1, dated from 2012)

64. The Board has studied the UK invoices, which are in the language of the proceedings, contain the highest density of information on sales (in the mainly German invoices, the sale number are rather lower) and thus present a representative example of the opponent’s activities. There are plenty of mentions of the various species of ‘Handy Recorder’, but much less evidence that supports sales of the ‘accessory pack’ mentioned by the opponent. The invoices in Documents 111 to 113 record that about 60 of so these items as being sold in a two and half year period costing slightly in excess of GBP 1000. In the view of the Board, this is insufficient evidence to support sales in ‘power distribution and control machines apparatus (AC adapter) and electric wire and cable’. The items in the accessory pack are merely ancillary to the opponent’s main business activities and it would be hard to believe that these sales are sufficient to represent a genuine attempt to develop a marketplace in power distribution devices and in cabling.

65. Now, some of these devices at issue might be similar to each other – for example battery chargers may be similar to accessories used in the telecommunications industry or cable and wire similar to recording apparatus. But one must not confuse evidence as to proof of use with what is essentially a determination of similarity of goods – genuine use cannot be provide by means of probabilities or suppositions, but demonstrated by solid objective evidence of effective and sufficient use of the trade mark in the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22). Proof is simply insufficient in this case.

66. Finally, the opponent also claims use for ‘batteries and cells’. There is no evidence that such goods have been supplied to consumers under the opponent’s brand. They are made available with the opponent’s products in much the same way in which petrol or gasoline might be supplied with a new car, with much the same effect. No consumer would believe because of this that Ford or Nissan (for example) were fuel manufacturers and/or distributors. In fact, in evidence, the opponent emphasises the generic nature of these products, stating, for example (Document 126) ‘The Q3HD is powered by two standard AA batteries …the unit is computable with NiMH batteries, which can be recharged using a commercially available charger’.

67. In short, the opponent’s use is restricted to the items listed in paragraph 48 supra.

68. These, more or less, are the same goods that were indicated in the contested decision, in terms of what the opponent has proved use. The Board will later consider the matter of similarity between these goods and the goods contested in this case.

Reputation of the earlier marks

69. Reputation, for the purposes of Article 8(5) EUTMR, represent a certain knowledge threshold – in 14 September 1999, C-375/97, GENERAL MOTORS, EU:C:1999:408, § 23 the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD the Court held that the text of the Trade Marks Directive ‘… implies a certain degree of knowledge of the earlier mark among the public’ and explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks … and the earlier mark may consequently be damaged’. This means that the earlier mark must be known by a by a significant part of the relevant public (14 September 1999, C-375/97, General Motors, EU:C:1999:408, § 23, 25/05/2005, T 67/04, Spa-Finders, EU:T:2005:179, § 34). The Court has resisted assigning a particular percentage to this level of awareness (16/11/2011, T‑500/10, Doorsa, EU:T:2011:679, § 45; 14/09/1999, C-375/97, ‘Chevy’, EU:C:1999:408, § 22, 23 and 26).

70. In examining whether this condition is fulfilled, all relevant facts must be taken into consideration, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it and the proportion of the relevant section of the public which, because of the mark, identifies the relevant goods as originating from a particular undertaking (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, §§ 22 and 23; 14/09/1999, C-375/97, ‘Chevy’, EU:C:1999:408, § 27).

71. In determining the distinctive character of a mark, and in assessing the degree of that distinctiveness, the Board must make an assessment in which account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods or services for which it has been registered; its recognition in the market, such as the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from Chambers of Commerce and Industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

72. The opponent has entered into evidence a vast amount of physical documentation. However, much of this seems to have been submitted on the basis of the dictum ‘never mind the quality, feel the width’, with the effect that its volume belies its worth. It is easy to find examples of this: the invoices (e.g. Documents 5 to 10) where a mention of the opponent’s products is buried amongst of range of other products from other suppliers and the magazines (e.g. Documents 11 to 51) where whole specimens, containing some 150 pages or more, are submitted into evidence containing only one advertisement of the opponent’s products. The UK invoice evidence (Document 111 to 113) is better, quality material but, as will be seen the turnover figures are not convincing.

73. On appeal, the opponent reasserts its contention that its name has become well known in the European Union. It refers, in particular to the following material:

• Document 79: This describes the International Radio exhibition held in Germany in 2010. The opponent states it was a participant;

• Document 98 shows videos several years ago, showing over 10,000, 45,000 and 29,000 viewings;

• Document 119: Where there is a magazine article in the Italian edition of ‘AXE’ magazine;

• Document 122 to 132: Contain copies of promotional posters of various product. Some of these provide the dates when they were printed (e.g. in Document 122, this is in 2011 in China). It is not known when and how many of these documents were circulated;

• Each exhibit also includes the results on Google searches – under the name ‘ZOOM G3’ this returned nearly 17,000,000 hits. It is not clear what this data means. The searches were undertaken in late 2014, well outside the relevant date and, given they are word-wide hits it is not known to what country they refer. The evidence shows that the opponent undertakes trade in the USA, China and Japan (at least) and the source of these hits would assist in making them more probative. Further, many of the hits could be reproducing the same piece or related piece, of information. None if this is known. As this material stands, it serves little purpose;

• The opponent states that it has received several prizes for its products, pointing to poorly reproduced copies of various SOUNDCHECH magazine awards for its recorder products from 2008, 2010, 2011, 2012, and from KEYS dates 2010 and 2012. The latter near illegible and it is not explained what they signify. What are the prizes for? What is the circulation of these documents? Was was the value of these prizes? None of this is explained;

• There is a reference to Musikmesse International Press Award (MIPA) coupled with website addresses, which the Board has been unable to open.

74. The acceptance of this new material is questioned by the applicant. It is now well established in case law that the Boards of Appeal enjoys discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time-limits set or specified by the Opposition Division (03/10/2013, C-120/12 P, Proti Snack, EU:C:2013:638, § 32). As stated in 8/06/2010, EURO CERT (Fig) / EUROCERT, R-1076/2009-2, this discretion is exercisable where the material is additional and where the material is probative (genuinely relevant to the outcome of the opposition) where the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (03/10/2013, C-120/12 P, Proti Snack, EU:C:2013:638, § 38;12/12/2007, T 86/05, Corpo livre, EU:T:2007:379; 05/03/2009, C‑90/08 P, Corpo livre, EU:C:2009:135).

75. None of that applies here. The new material has little or no value in changing the conclusion that the Board has come to – in agreement with the contested decision – that there is insufficient material here to consider that the earlier marks of the opponent have, over time, developed a marketplace strength as recognisable brands. The Board has the following comments, as follows.

76. First, the impression one gets of the evidence is that the products are directed to a narrow segment of consumers – professional and aspiring musicians, music recording specialists and the like – while the specifications of the opponent are not so limited, and neither are the goods for which use has been proved. A reputation amongst professionals has not been shown based on the material submitted and is certainly insufficient in respect of the wider public.

77. Second, the turnover of the opponent’s business over the relevant period is actually rather low. As is the advertising spend. In the UK this amounts to some GBP 2 - 3 million per annum over the relevant period, with some GBP 60,000 expenditure on advertising. In Germany there is less information. Data is provided for (in EUR) for 2013 and 2014, though the relevant dates is from 11 June 2008 to 10 June 2013. The total for 2013 is around EUR 8M, with an advertising spend of about EUR 190 000. These figures are simply not high enough to establish reputation, such that the public has the necessary ‘threshold knowledge’ in what is a vast marketplace.

78. Added to this, despite the large amount of documentation submitted, the advertising presence amongst average consumers is not significant – for example, Documents 11 to 51, for example, record 40 advertisements over 5 years, most of which appear, intermittently, in one specialist magazine in Germany.

79. Finally, there is a notable lack of convincing third party endorsement of the opponent’s products that would allow the Board to make reasonable assumptions about the knowledge the opponent has amongst its customers – music business professionals and the wider public.

80. None adds up to a reliable basis on which to claim a reputation for the purposes of Article 8(5) EUTMR, under the ‘ZOOM’ earlier rights for the goods concerned. Instead, the picture that emerges from a consideration of the totality of the opponent’s submitted material is that the opponent in the EU established a modestly successful, specialist business that has a reputation amongst a relatively small customer base in the European Union. As the contested decision concluded, there is little to support a reputation of the marks claimed by the opponent as required by case law.

81. No doubt the opponent would refer to the comment in Documents 3 and 4 consisting of the two product guides for Sound & Service GmbH. In the view of the Board, there is a certain amount of hyperbole include in these comments. They are, after all, sales promotion vehicles and appear to be prone to some ‘overstatement’, being possibly penned by the opponent itself, on behalf of Sound & Service GmbH’s publication. In practice, the opponent’s product range remains actually quite limited.

82. The Board supports the finding of the contested decision that the amount shown is not sufficient to support a claim based on enhanced distinctiveness under Article 8(1)(b) EUTMR, or to argue reputation under Article 8(5) EUTMR.

Comparison of the marks

83. The signs to be compared are:

    ZOOM	ZOOM
    Earlier marks	Contested sign

84. Given the earlier marks are both EUTMs, the average consumer in this case is a consumer in the Member States.

85. The word marks are identical. There is little to be said of the figurative characteristics of the earlier – this figurative component has little effect on the similarity between the marks at issue.

Comparison of the goods and services

86. The goods of the applicant are the following:

Class 9 – Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables; carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; and battery chargers and power banks; none of the aforementioned products relating to music technology products.

87. These goods are essentially accessories of a specific kind: ‘cord and cable management devices’ and ‘carrying cases for electronic equipment’, and the more specific ‘battery chargers and power banks’. Before revisiting the issue of the similarity of goods in this case, there is also the limitation supplied with the applicant’s specification – and the extent to which this alters the nature of the goods applied for.

88. A limitation is not a ‘magic formula’ that can make similar goods dissimilar. It must have some ‘real world’ effect on the specification it limits. In 29/03/2016, R 108/2015-4, VIVID / VIVI, § 16, 17, the Fourth Board found:

‘The disclaimer ‘all the aforementioned products are meant for the adult entertainment industry’ is unspecific and concerns only the target public of the goods but it does not constitute a limitation of the goods as such. It has thus no impact on the comparison of the goods as regards their nature, purpose and method of use … the contested goods … are similar to an average degree to the goods ‘computer games and computer games software, all the aforesaid goods being for use by children’ of the earlier mark in Class 9. The goods have a similar or even the same nature, this is not affected by the limitation of the contested goods. For instance video and computer games remain video and computer games, irrespective of whether they are destined for children or for adults. The same applies to the purpose and method of use of the goods which is similar or the same. The goods may also come from the same provider. Even taking into account the limitations of the goods, the goods are purchased most likely by adults. Therefore, the goods can also target the same end-users’.

89. In this matter also, the limitation appears to make a distinction that has no difference in practice for some of the contested goods. Taking cable management devices as an example, ‘music’ cabling of the better sort may indeed benefit from some form of shielding material which a simple electric cable would not, but there no reason to believe that items such as cable ties, holders, wraps and clips would need to be of a specific nature where they to be use on such music technology accessories as opposed to other types of cabling. The applicant seems to be aware of this point when its states that ‘music technology products do not constitute the applicant’s core business’ (emphasis added), suggesting music technology products might constitute some of its business. In the view of the Board, the effect of the limitation has on the nature of the contests goods appears to be rather neutral and should be considered on a case by case basis.

90. With these considerations in mind, the Board will now approach the comparison of the goods at issue. In assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods and services concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods.

91. It may be the case that cable and wire has been found to be similar to sound recording devices (11/12/2014, R 610/2014-2, BQ CABLE (fig) / bq (fig), § 53ff; 23/11/2011, T‑216/10, Monster Rock, EU:T:2011:691, § 24ff), but the items in this matter are one step removed from each other, again.

92. Sound recording devices and the other of the opponent’s goods may be similar to cabling; while cabling may be similar to cable management devices, but there is no relay of similarity along this chain. In the view of the Board, the actual goods being compared are dissimilar. As an example, take the opponent’s handheld recorders and a cable tie or wrap: their nature, purpose and method of use is not the same – one is used to record sound and video, the other to tidy and organise cabling and wire for aesthetic and safety reasons. Their distribution channels are not the same (there is no evidence to show that the sellers of portable recorders also sell cable clips or brackets). Finally, the goods are not in competition or complementary.

93. Particularly in terms of ‘complementarity’ there is not the close connection between the goods such that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for their supply lies with the same undertaking (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 82). Cable ties and wraps are commoditised and their makers and suppliers fissiparous and consumers know this.

94. In terms of ‘stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ the contested decision found similarity for ‘stands’ that are used with goods identical to those goods of the opponent (for which use has been shown). That is, ‘media players and handheld devices’, which subsume the opponent’s handheld recorders. The Board is inclined to agree, though the nature and purpose of such goods are different, ‘stands’ tend to be used with the opponent’s recording devices, are complementary and are sourced from the same supplier. These goods are similar.

95. The contested decision followed the same pattern in relation to carrying cases, finding similarity between the opponent’s recording devices and ‘carrying cases for media players and handheld devices’. For the same reasons, the Board agrees.

96. Finally, as for the applicant’s battery chargers and power banks, the contested decision found these to be dissimilar to the opponent’s products because they do not share the same nature, method of use, purpose and manufacturer.

97. ‘Power banks’ are becoming increasingly popular. They are essentially portable power supplies of small size but large capacity that can be used to extend the life of internal batteries in (for example) mobile phones ‘on the go’. There is no evidence that such items are used with the opponent’s products. Certainly their purpose is different and simply because they are an electricity supply and could be used with, for example, the opponent’s handheld recorders, does not mean they are the same or similar goods.

98. The Board is inclined to same conclusion with respect to battery chargers. The latter supplies energy into a secondary cell or rechargeable battery by pushing an electric current through it. Simply because the opponent’s products use electricity does not mean they are similar. The nature, purpose and method of use of these goods are not the same. There is little evidence that they are supplied by the same supplier. In fact, the evidence shows that the opponent provides in its accessory pack an ac adaptor (e.g. Document 126) and not a battery charger as such. In fact, as cited above, this material specifically states ‘The Q3HD is powered by two standard AA batteries …the unit is computable with NiMH batteries, which can be recharged using a commercially available charger’ indicating that the opponent’s products are not charged directly (as might be an iPhone) and that battery chargers are available ubiquitously, from diverse suppliers. The Board finds that these goods are different.

The relevant public

99. The nature of the opponent’s goods does not suggest that they are used by specialists – the products are targeted to music professionals and also the wider enthusiast – the relevant public thus includes the general public and the degree of attention granted to their purchase is thus assessed as average.

Overall assessment of a likelihood of confusion

100. Under Article 8(1)(b) EUTMR, the trade mark applied for is not to be registered ‘… if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark’.

101. It is established case law that a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 47; 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 52; and 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 23).

102. As stated in the contested decision, the marks are identical or highly similar and, in relation to the goods which have been found to be similar to the contested goods, the distinctiveness of the earlier mark may be regarded as normal. Given the analysis of the evidence as set out above, the opponent’s sign does not enjoy an enhanced distinctiveness as a consequence of the use that has been made of it.

103. 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 (2/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

104. Taking these factors together, the Board has little hesitation in confirming the contested decision in its entirety: for those goods for which similarity has been established, confusion is likely, given the identity or very close identity of the contested signs.

105. The applicant states that is does not share the same marketplace as the opponent, citing Exhibit DTMV 4, and pointing out that the applicant provides promotional products (clothing, bags, cases, games, housewares) direct to businesses and not to the end consumer) while the opponent is involved in music technology (Exhibit DTMV 5). It suggests that there can thus be no confusion as the relevant publics differ. The Board wishes to point out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The factual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination. In order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) EUTMR, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).

Article 8(5) EUTMR

106. Under Article 8(5) EUTMR, upon opposition of the proprietor of the earlier mark, a EUTM application shall be rejected if it is identical or similar to the earlier mark and applied for goods or services which are not similar to those protected by the earlier mark, where the earlier mark has a reputation in the Member State in which it is protected and where the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

107. These conditions are cumulative and the failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T-67/04, ‘Spa-Finders’, EU:T:2005:179, § 30).

108. As indicated supra the Board considers that the evidence submitted by the opponent does not establish a reputation of the earlier marks in the European Union with regard to any of the relevant goods.

109. As one of the necessary conditions for the opposition to be successful pursuant to Article 8(5) EUTMR has not been fulfilled, namely the existence of reputation of the earlier marks for which this ground of opposition was invoked, the opposition already fails on this ground.

110. In the light of these findings, the appeal is dismissed.

Costs

111. Since the opponent is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the fees and costs of the appeal proceedings. As far as the opposition proceedings are concerned, the decision of the Opposition Division regarding the costs is maintained. In accordance with Article 85(6) EUTMR and Rule 94(7)(d) CTMIR, the Board fixes the amount of costs to be reimbursed by the opponent to the applicant at EUR 550 for the representation costs with respect to the appeal proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear the applicant’s representation costs in the appeal proceedings in the amount of EUR 550;

3. Fixes the total amount of costs to be reimbursed at EUR 550.

Signed G. Humphreys

Signed A. Szanyi Felkl

Signed A. Pohlmann

Registrar: Signed H.Dijkema