OPPOSITION No B 2 641 747

DSG Retail Limited, 1 Portal Way, W3 6RS London, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, EC4R 3TT London, United Kingdom (professional representative)

a g a i n s t

Kuveyt Türk Katilim Bankasi Anonim Sirketi, Büyükdere Caddesi. No: 129, Esentepe, Sisli, Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 641 747 is partially upheld, namely for the following contested goods:

Class 9: Nautical, photographic, cinematographic, signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, accumulating, or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; cash registers, calculating machines, data processing equipment, computers; encoded magnetic cards; automated teller machines (ATM); card readers for credit cards; chip cards; smart cards; credit card terminals, encoded tank cards, encoded debit cards.

2. European Union trade mark application No 13 768 809 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 768 809 for the figurative mark , namely against all the goods in Class 9. The opposition is based on United Kingdom trade mark registration No 2 561 734 and international trade mark registration Nº 1 086 584, both for the word mark ‘ARKITECT’. The opponent invoked Article 8(1)(b)EUTMR.

Substantiation of the earlier international trade mark registration Nº 1 086 584

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

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

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was accompanied by two extracts of the United Kingdom Intellectual Property Office regarding the two earlier trade marks on which the opposition is based.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier International trade mark registration No 1 086 584 because, even if the database mentioned is an official database, it does not serve for substantiating an International trade mark registration.

In this regard, the database accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994) is ‘Global Brand Database’, the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection (emphasis added).

After an extension of the cooling-off period and opting out, on 03/11/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 22/01/2018.

The opponent did not submit any further evidence concerning the substantiation of the earlier International trade mark registration Nº1 086 584. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 9: Computers; computer hardware; computer peripherals; computer printers; apparatus and instruments, all for use with computers; photographic, cinematographic and optical apparatus and instruments; loudspeakers; headphones; cameras, digital cameras; digital photo frames; tripods; flashguns; lenses; camcorders; calculating machines; dictating machines; data processing equipment; apparatus and instruments for recording, transmission or reproduction of sound, images or visual signs; photocopiers; fax machines; television and wireless receiving and reproducing apparatus; radios; clock radios; video recording and reproducing apparatus and instruments; pre-recorded video and audio tapes, compact discs, DVDs, CD-ROMs; discs and diskettes, tapes, videos and other media bearing or for the recordal of sound, images, software and information; computer and video games; satellite dishes; satellite navigation systems; pedometers; electronic publications (downloadable); multimedia apparatus and instruments; printers, chips, interfaces, PC card modems; modems; scanners; telecommunications apparatus, including telephones, mobile telephones; answering machines; microphones; monitors; speakers; sound cards; disk drives; joysticks; computer mouses; wrist rests; mouse mats; diskette storage boxes; batteries; binoculars; irons; magnetic or encoded loyalty cards; stands for audio visual equipment; wall mounting apparatus for audio visual equipment; computer carrying cases and bags; parts and accessories for all the aforesaid goods.

The contested goods are the following:

Class 9: Nautical, photographic, cinematographic, weighing, signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus; encoded magnetic cards; automated teller machines (ATM); card readers for credit cards; chip cards; smart cards; credit card terminals, encoded tank cards, encoded debit cards.

Photographic and cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; compact discs, DVDs; calculating machines, data processing equipment, computers are identically contained in both lists of goods.

The contested nautical apparatus and instruments are included or overlap with the opponent´s apparatus and instruments for transmission or reproduction of sound. Therefore, they are identical.

The contested signalling apparatus and instruments are similar to the the opponent´s apparatus and instruments for reproduction of sound as they share the same distribution channels, relevant public and producer.

The contested magnetic data carriers, recording discs; and other digital recording media overlap with, the opponent’s DVDs, CD-ROMs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested encoded magnetic cards; card readers for credit cards; chip cards; smart cards; credit card terminals, encoded tank cards, encoded debit cards are all devices or cards that contain an embedded computer chip that stores and transacts data. This data is usually associated with either value, information, or both and is stored and processed within the card's chip. Consequently, these goods are included in the opponent’s other media bearing or for the recordal of sound, images, software and information; Therefore, they are identical.

The contested cash registers are mechanical or electronic devices for registering and calculating transactions at a point of sale. The contested automated teller machine (ATM) is an electronic telecommunications device that enables customers of financial institutions to perform financial transactions, such as cash withdrawals, deposits, transfer funds, or obtaining account information, at any time and without the need for direct interaction with bank staff. To that extent, these contested goods are included in the broad category of the opponent’s data-processing equipment. Therefore, they are identical

The contested apparatus and instruments for accumulating electricity overlap with the opponent´s batteries as the latter are devices that serve, inter alia, to accumulate electricity. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested teaching apparatus and instruments overlap with the opponent´s broader category of computers, being therefore, identical.

The contested apparatus and instruments for controlling electricity are highly similar to the opponent´s batteries as they share the same purpose, nature, relevant public and distribution channels.

The contested apparatus and instruments for conducting electricity are similar to the opponent´s apparatus and instruments for recording, transmission or reproduction of sound, images or visual signs as they share distribution channels, relevant public and might be complementary.

The contested life-saving apparatus and instruments and the opponent’s apparatus and instruments for reproduction of sound have certain points in common. These goods may have the same purpose, of ensuring safety. They can be sold through the same channels and their producers are often the same. Therefore, these goods are considered similar.

The contested mechanisms for coin-operated apparatus consist of mechanisms for machines that perform the function of recognising the coin introduced into the machine at issue and releasing the corresponding item or material, or activating the function appropriate to the money inserted into the machine.

The contested weighing apparatus and instruments are devices used in order to measure weight.

The contested fire-extinguishing apparatus is a device used to extinguish or control small fires, often in emergency situations.

These contested goods as well as the apparatus for switching, transforming, regulating have nothing in common with the opponent´s goods in Class 9. 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 above average depending on the price, sophistication, or terms and conditions of the goods and services purchased

3. The signs

ARKITECT
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both, the earlier and the contested marks are misspellings of the English word ‘architect’ who is a person who designs buildings the term being, in this case, wholly distinctive for the goods in conflict.

It is acknowledged that the contested sign is composed of a sole verbal element that even if misspelled will be associated with an obvious meaning in the relevant territory. Nevertheless, it cannot be ruled out that part of the relevant consumers, when perceiving the contested sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). This is further reinforced by the use of an upper case letter at the beginning of the terms ‘Archi’,‘Tech’ and ‘T’ of which the contested sign is composed. If and when perceived in such a way, consumers will grasp the play on words created with the combination of the prefix ‘Archi-’, the term ‘Tech’ and letter ‘T’. In this case, ‘Tech’ will be perceived as an abbreviation for ‘Technology’, which is weak for the conflicting goods in Class 9 that can be manufactured using technology, or use technology to enhance the quality of their performance.

The contested sign is depicted in a fairly standard typeface. As far as the earlier word mark is concerned, it is the word as such that is protected and not its written form. Therefore it is irrelevant whether the mark is depicted in upper or lower case letters.

The contested sign has no element that can be clearly considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘AR**ITEC*T’, which constitute seven out of the eight letters of the only verbal element of the earlier mark. However, they differ in the letter ‘K’ placed in the third position of the earlier mark versus ‘CH’ in the contested sign as well as in the additional second-to-last letter ‘h’ of the latter sign.

The signs also differ in the fairly standard stylisation and composition of the verbal element of the contested sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, taking into account that, in the relevant language, the differing letters ‘/CH/’ of the contested sign (appearing twice) are pronounced in the same way as the corresponding letters ‘/K/’ and ‘/C/’ of the earlier mark , the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referred to the profession of ‘architect’, the signs are conceptually identical.

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 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 average.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partially identical, partially similar and partly dissimilar. The signs are visually similar to an above average degree, while in the aural and the conceptual levels, the signs are identical. The earlier mark enjoys an average degree of distinctive character.

Account must also be taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Admittedly, there are certain differences between the signs. However, they are minor and their impact is not such as to enable a part of the public, whether the public at large or professionals, to safely distinguish between them in the context of identical or similar goods, even where the attention is higher.

Considering all the above, and particularly the consumer’s imperfect recollection, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 561 734.

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

COSTS

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

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

The Opposition Division

Eva Inés PÉREZ SANTONJA

Alexandra APOSTOLAKIS

Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.