OPPOSITION No B 2 624 586

Ioannis Anapoliotakis, 62 Martiron Ar. 53, Irakleio, Kritis, Greece (opponent), represented by Ilias Lardas, 342 Kifissias Avenue, 15451, Athens (Attiki), Greece (professional representative)

a g a i n s t

Κουράκης Γεώργιος και Σια Ο.Ε., 5ο χλμ. Ηρακλείου-Μοιρών Αριθ. 114, 71500 Ηράκλειο, Greece (applicant).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 624 586 is upheld for all the contested goods.

2. European Union trade mark application No 14 633 011 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 633 011. The opposition is based on, inter alia, European Union trade mark registration No 5 856 869. The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 8(4) EUTMR, the latter in relation to a non-registered trade 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 856 869.

1. The goods and services

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

Class 38: Telecommunications.

The contested goods are the following:

Class 9: Phone extension leads; Phone plugs; Computer stylus; Leather cases for mobile phones; Smartphones; Smartphones in the shape of a watch; Solar battery chargers; Cases adapted for mobile phones; Carriers adapted for mobile phones; Cases adapted for computers; Phone covers [specifically adapted]; SIM cards; Cell phone straps; Keyboards for mobile phones; Travel adaptors for electric plugs; Display screen protectors in the nature of films for mobile phones; Hands free kits for phones; Devices for hands-free use of mobile phones; Radiotelephones; Holders adapted for mobile phones; Phone extension jacks; Filter screens for computer screens; Tablet computers; Battery chargers for use with telephones; Battery chargers; Mobile telephone batteries.

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.

The Nice Classification serves purely administrative purposes and, as such, does not in itself provide a basis for drawing conclusions as to the similarity of goods and services. Furthermore, goods/services listed in different classes are not necessarily considered dissimilar (16/12/2008, T‑259/06, Manso de Velasco, EU:T:2008:575, § 30-31).

By their nature, goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.

Tablet computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information.

Smartphones; smartphones in the shape of a watch; radiotelephones are devices that convert voice and other sound signals into a form that can be transmitted to remote locations and that receive waves and convert them back into sound signals.

Telecommunication services allow people to communicate with one another by remote means.

Consumers use smartphones; smartphones in the shape of a watch; radiotelephones; tablet computers when they want to communicate with others.

There is a link between these goods in Class 9 (telecommunication apparatus) and the services in Class 38 (telecommunication services). They are similar because they are complementary, and even though their nature is different, their purposes and distribution channels are the same.

It is common for companies offering certain services to offer related goods at the same time. For instance, companies offering telecommunications services, which are included in the opponent’s list of services, frequently offer not only mobile phones and computers but also all their accessories, such as the contested phone extension leads; phone plugs; computer stylus; leather cases for mobile phones; solar battery chargers; cases adapted for mobile phones; carriers adapted for mobile phones; cases adapted for computers; phone covers [specifically adapted]; SIM cards; cell phone straps; keyboards for mobile phones; travel adaptors for electric plugs; display screen protectors in the nature of films for mobile phones; hands free kits for phones; devices for hands-free use of mobile phones; holders adapted for mobile phones; phone extension jacks; filter screens for computer screens; battery chargers for use with telephones; battery chargers and mobile telephone batteries. Therefore, these contested goods are similar to a low degree to the opponent’s services. Although the natures of the contested goods and the opponent’s services are different, the goods and services can have the same distribution channels and target public.

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 similar to varying degrees are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

	NORTONLINE
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 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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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, C‑514/06 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.

The common elements ‘NORTON’ and ‘LINE’ are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public of the United Kingdom.

The earlier sign is figurative and it is composed of the word ‘NORTON’ depicted in large stylised upper case bold characters in dark blue. There is an orange horizontal line underneath the first four letters of this verbal element and the word ‘LINE’ is underneath the last two letters, ‘ON’. The letters of the word ‘LINE’ are stylised in the same way but are smaller and orange. Under the orange line the much smaller words ‘MOBILE SPECIALISTS’ are depicted in grey title case letters.

The contested sign is a word mark, ‘NORTONLINE’.

With regard to the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The element ‘NORTON’, present in both signs, will be understood by part of the public as a surname. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. For the remaining part of the public, it has no meaning and is, therefore, distinctive.

The element ‘LINE’, present in both signs, will be associated with a range of products or services and, therefore, it is considered non-distinctive.

The element ‘MOBILE’ of the earlier sign will be associated with mobile communication, mobile telecommunication or something provided on a mobile platform. Bearing in mind that the relevant services are telecommunication services, this element is non-distinctive for these services.

The element ‘SPECIALISTS’ of the earlier sign will be associated with experts. Bearing in mind that the relevant services are telecommunication services, this element is non-distinctive for these services, as it indicates that these services are rendered by experts in the field.

The words ‘NORTON’ and ‘LINE’, together with the figurative element of the earlier sign, dominate the sign by virtue of their central position and size, overshadowing the significantly smaller words ‘MOBILE SPECIALISTS’.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive element ‘NORTON’ and in the element ‘LINE’, which, although it is non-distinctive, adds to the overall similarity. However, they differ in the non-distinctive verbal elements ‘MOBILE SPECIALISTS’, which clearly have less visual impact, the space or lack of space in the word ‘NORTONLINE’ and the graphic depiction of the earlier sign.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‛NORTON LINE’, present identically in both signs (the presence or absence of a space between these words does not constitute a significant aural difference). The pronunciation differs in the sound of the non-distinctive words ‛MOBILE SPECIALISTS’ of the earlier sign, which have no counterparts in the contested mark.

Therefore, the signs are aurally highly similar, as they coincide in the distinctive word ‘NORTON’ and differ in non-distinctive elements.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Overall, both signs will be perceived as meaning ‘the line of Norton’. The horizontal line in the earlier sign will be perceived as such. The expression ‘MOBILE SPECIALISTS’ means ‘experts in mobile telecommunication’ and, therefore, due to its descriptive character, it will not be perceived as an indication of the origin of the services.

As both signs will be perceived as ‘the line of Norton’, 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 as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are similar to varying degrees to the opponent’s services and they target the public at large, whose degree of attention varies from average to high.

Account must also be taken of the principle that likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

In view of the foregoing, and particularly because the visual and aural similarity between the marks results from the distinctive element, ‘NORTON’, in combination with the non-distinctive element ‘LINE’, which, moreover, dominate the overall impression of the earlier sign, the Opposition Division is of the opinion that the similarities cannot be outweighed by the dissimilarities, which arise from non-distinctive elements in the earlier sign, and that the relevant public would believe that the goods found to be similar to varying degrees, even those that are similar only to a low degree, came from the same undertaking or from economically linked undertakings.

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Furthermore, the applicant invokes arguments regarding bad faith, registration contrary to the principles of morality, acquiescence of the opponent and past disputes between the parties. These arguments are not relevant in opposition proceedings under Article 8(1) and 8(4) EUTMR.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 European Union trade mark registration No 5 856 869. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 5 856 869 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(4) EUTMR.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Steve HAUSER

Katarzyna ZANIECKA

Catherine MEDINA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.