OPPOSITION No B 2 518 465

2direct GmbH, Langenstück 5, 58579 Schalksmühle, Germany (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative).

a g a i n s t

Hubin Liu, No.1, Zhongshan North Road, Meijiang Town, Ningdu County, Ganzhou, Jiangxi, People’s Republic of China (applicant), represented by Champion Intellectual Property Management Limited, Suite 10086, 6 Slington House, Rankine Road, Basingstoke, Hampshire RG24 8PH, United Kingdom (professional representative).

On 23/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 518 465 is partially upheld, namely for the following contested goods:

Class 9: Computer peripheral devices; couplers [data processing equipment]; USB flash drives; audio- and video-receivers; cabinets for loudspeakers; enlarging apparatus [photography]; optical lenses; 3D spectacles; chargers for electric batteries; integrated circuits; transmitters of electronic signals; electric cables and wires.

2. Community trade mark application No 13 727 821 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 all the goods of Community trade mark application No 13 727 821. The opposition is based on Community trade mark registration No 5 666 581. 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: Photographic cameras; motion picture apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data-processing equipment and computers; computer peripheral devices; apparatus, devices and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

The contested goods are the following:

Class 9: Computer peripheral devices; couplers [data processing equipment]; USB flash drives; pedometers; audio- and video-receivers; weighing machines; surveying chains; light-emitting electronic pointers; cabinets for loudspeakers; enlarging apparatus [photography]; surveying apparatus and instruments; optical lenses; 3D spectacles; chargers for electric batteries; integrated circuits; anti-glare glasses; transmitters of electronic signals; electric cables and wires; Electrical and electronic burglar alarms; Phone covers [specifically adapted].

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

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.

Contested goods in Class 9

Computer peripheral devices are identically contained in both lists of goods.

The contested couplers [data processing equipment] are included in the broad category of the opponent’s data-processing equipment. Therefore, they are identical.

The contested USB flash drives are included in the broad category of the opponent’s computer peripheral devices. Therefore, they are identical.

The contested audio- and video-receivers are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested chargers for electric batteries; transmitters of electronic signals; electric cables and wires are included in the broad category of the opponent’s apparatus, devices and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested cabinets for loudspeakers are enclosures in which speaker drivers and associated electronic hardware, such as crossover circuits and amplifiers, are mounted. These goods are indispensable parts of loudspeakers, which are included in the opponent’s apparatus for recording, transmission or reproduction of sound. Therefore, they are complementary. Moreover, the goods under comparison have the same general purpose and the same commercial origin. Therefore, they are similar.

The contested 3D spectacles have similarities with the opponent’s motion picture apparatus. 3D spectacles are glasses using a variety of techniques to permit the wearer to view three dimensions based on a two dimensional image. They are used in cinemas in conjunction with special projectors to give cinemagoers the illusion of depth of field. Therefore, they are complementary, may come from the same manufacturer, target the same consumer and will be sold via the same distribution channels. Therefore, they are similar.

The contested integrated circuits have several points of contact with the opponent’s data-processing equipment and computers; computer peripheral devices. Firstly, integrated circuits play a large and primary role in the functioning of many devices including the opponent’s computers and many of the peripheral devices. Therefore, they are complementary. Furthermore, certain devices such as network cards, video cards, etc., are sold as an integrated circuit board for installation and operation in a computer. Therefore, the goods may have a similar purpose, are manufactured by the same or similar companies and are directed at the same customers. Therefore, they are similar.

The contested enlarging apparatus [photography]; optical lenses have links with the opponent’s photographic cameras. These goods either are explicitly included in the field of photography (the enlarging apparatus and the cameras) or include goods which can be (all cameras have optical lenses but not all optical lenses are for cameras). Therefore, they can have a similarity of purpose (namely to capture and manipulate photographic images), can be manufactured by the same or similar companies and are directed at the same customers via the same outlets and distribution channels. Therefore, they are similar.

The remaining goods, namely pedometers; weighing machines; surveying chains; light-emitting electronic pointers; surveying apparatus and instruments; anti-glare glasses; electrical and electronic burglar alarms; phone covers [specifically adapted] are dissimilar to the opponent’s goods.

The contested goods are a wide range of devices: pedometers measure steps; weighing machines measure weight; surveying chains and surveying apparatus and instruments are devices used during the process of surveying a tract of ground, coastline, or any part of the earth's surface to determine its form, extent, and other particulars, so as to be able to delineate or describe it accurately and in detail; light-emitting electronic pointers are small handheld devices, with a power source (usually a battery) and a LED, which emit a beam of visible light and are intended to be used to highlight something of interest by illuminating it with a small bright spot of coloured light; anti-glare glasses are protection devices for the eyes; electrical and electronic burglar alarms are signalling devices; phone covers [specifically adapted] are cases designed to attach to, support, or otherwise hold a mobile phone.

The opponent’s goods are photographic cameras; motion picture apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data-processing equipment and computers; computer peripheral devices; apparatus, devices and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. The opponent’s goods have nothing in common with the contested goods. They have very different natures and purposes; they do not have the same producers, distribution channels or intended purpose. Furthermore, they are neither in competition nor complementary. Therefore, they are considered 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 and similar are directed at both the public at large and professionals working in various fields. The degree of attention may vary from average to high.

3. The signs

Logilink	Lonlink
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 word mark consisting of the letters ‘Logilink’.

The contested sign is a word mark consisting of the letters ‘Lonlink’.

As such the signs have no meaning in any of the relevant languages of the relevant territory. However, it is possible that the elements that make up the words could be understood in some parts of the relevant territory. For instance, ‘LOGI’ may be understood in some languages such as English, as referring to ‘LOGIC’, although in French it might be seen as referring to ‘logiciel’ (software). Likewise ‘LINK’ can be understood as the English word meaning, amongst others, one of the rings or loops forming a chain; a unit in a connected series of units; a unit in a transportation or communications system. Finally ‘LON’ could be understood by at least a part of the United Kingdom population as referring to London.

These meanings, if and were they perceived, may have an impact on the distinctiveness of the various elements. However, there is also a part of the relevant territory where not only do the signs as such have no meaning, but where the public will not perceive any meaning in the elements either, and they will see the signs as complete fanciful terms in their own right. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public. This is in line with current case law because the unitary character of the Community trade mark, means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, for this part of the public the signs have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in both being unitary word marks of a similar length (eight vs. seven letters long) and they share six letters, their first two letters, ‘L-O’, and their last four letters, ‘L-I-N-K’. However, they differ in their remaining letters, namely ‘G-I’ and ‘N’.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘L-O’ and ‘L-I-N-K’, present identically in both signs. The pronunciation differs in the sound of the letters ‘G-I’ of the earlier mark and ‘N’ of the contested sign, which have no counterparts in the other sign.

Therefore, the signs are similar to an average degree.

Conceptually, for the part of the public that will not perceive any meaning in the elements, and will instead see the signs as completely fanciful terms in their own right, then neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar.

The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the public may vary from average to high.

The signs have identical beginnings and endings, ‘LO’ and ‘LINK’, respectively. The different sequence of letters ‘GI’/’N’ is placed in the middle of the signs, where it is not as readily perceptible as if it were placed at the beginning or the end of the mark. Moreover, the signs are both unitary word marks of similar lengths. Likewise, apart from the differences between the letters, there are no additional elements or features to assist consumers in differentiating between the signs.

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,§ 26). Therefore, the differences in the exact arrangement of the elements may not be remembered accurately.

On the whole, the similarities between the marks prevail over the differences.

Considering all the above there is a likelihood of confusion on the part of the public where the signs and their elements have no meaning. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Community

trade mark registration No 5 666 581. 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 mark.

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Vita VORONECKAITĖ

Ric WASLEY

Pedro JURADO MONTEJANO

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.