OPPOSITION No B 2 814 872

TrekStor GmbH, Berliner Ring 7, 64625 Bensheim, Germany (opponent), represented by Görg Partnerschaft von Rechtsanwälten MBB, Upper West Kantstraße 164, 10623 Berlin, Germany (professional representative)

a g a i n s t

Ineat Lille, Euratechnologies, 2 Allée de la Haye du Temple, 59160 Lomme, France (applicant), represented by Montesquieu Avocats, 14 rue du Vieux Faubourg CS 50012, 59042 Lille Cedex, France (professional representative).

On 27/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 814 872 is partially upheld, namely for the following contested goods:

Class 9: Timetables (electronic -); data processing equipment; interfaces for computers; computer software; computer programs; application software; servers for web hosting.

2. European Union trade mark application No 16 079 915 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 079 915 for the word mark ‘INEAT’, namely against all the goods and services in Classes 9 and 35. The opposition is based on European Union trade mark registration No 14 846 935, for the word mark ‘iBeat’. The opponent invoked Article 8(1)(b) EUTMR.

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 and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound and/or images, in particular television sets, mobile telephones, smart phones, video telephones, internal and external hard disks, USB flash drives, memory cards, compact disc players, playback devices for optical data carriers in the field of high-definition video content, DVD players, record players, hard disk recorders, headphones, cordless headphones, in-ear headphones, headphones with microphones, headphone consoles, headphone amplifiers, microphones, loudspeakers, printers, scanners, e-book readers, facsimile machines, video cameras, cinematographic and photographic cameras, digital picture frames, navigation devices, radios, tuners, amplifiers, tape recorders, pocket calculators; sunglasses.

Class 35: Retailing and retailing via the internet of apparatus for recording, transmission or reproduction of sound and/or images, in particular television sets, mobile telephones, smart phones, video telephones, internal and external hard disks, USB flash drives, memory cards, compact disc players, playback devices for optical data carriers in the field of high-definition video content, DVD players, record players, hard disk recorders, headphones, cordless headphones, in-ear headphones, headphones with microphones, headphone consoles, headphone amplifiers, microphones, loudspeakers, printers, scanners, e-book readers, facsimile machines, video cameras, cinematographic and photographic cameras, digital picture frames, navigation devices, radios, tuners, amplifiers, tape recorders, pocket calculators, sunglasses, luggage, bags, pocket wallets and other carriers of leather and imitations of leather, plastic and textiles, in particular rucksacks, bags, handbags, shoulder bags, belt bags, clothing, footwear, headgear, in particular T-shirts, shirts, hooded jumpers, pullovers, jackets, capes, baseball caps, caps, sweaters, trousers, jeans, socks, stockings, loafers, trainers, sports shoes, boots, shirts, blouses, shorts.

The contested goods and services are the following:

Class 9: Timetables (electronic -); data processing equipment; interfaces for computers; computer software; computer programs; application software; computer databases; servers for web hosting; electronic publications, downloadable.

Class 35: Business management and organization consultancy; document reproduction; computerised file management; computerised file management; compilation and gathering of information into computer databases; management and compilation of computerised databases; information relating to data processing; business consultancy relating to the administration of information technology.

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.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’ used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 9

The contested data processing equipment; servers for web hosting include, as broader categories or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound and/or images. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested timetables (electronic -); interfaces for computers; computer software; computer programs; application software are similar to the opponent’s photographic cameras. They can coincide in their provider and distribution channels. They target the same public and are complementary.

The contested computer databases; electronic publications, downloadable are dissimilar to all the opponent’s goods and services. In particular, with regard to electronic publications, although the earlier trade mark includes e-book readers, these give access to content and are not the content itself. The contested goods and the opponent’s goods and services have different providers and distribution channels and target a different public.

Contested services in Class 35

The contested business management and organization consultancy; document reproduction; computerised file management; computerised file management; compilation and gathering of information into computer databases; management and compilation of computerised databases; information relating to data processing; business consultancy relating to the administration of information technology are dissimilar to all the opponent’s goods and services. The opponent’s retailing services consist of the bringing together, and offering for sale, the mentioned goods, allowing consumers to satisfy different shopping needs. The contested services are different business services for supporting companies, for example services to help companies manage their business by setting out the strategy and/or direction of the company or advisory services in the field of technology and data processing. They relate to different fields of activity and, as they have a different purpose in relation to customer needs, they target a different public. They also have different providers and channels of distribution and are neither in competition nor complementary.

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 and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness will vary from average to high depending on the terms, sophistication and specialised nature of the goods.

3. The signs

iBeat	INEAT
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 elements ‘Beat’ and ‘NEAT’, present in the signs, are meaningful in certain territories, such as those countries where English or French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on part of the public which does not understand the abovementioned terms, such as the Spanish-speaking part of the public.

Although the verbal component of each sign consists of a single string of letters, account must be taken of the fact that relevant consumers, when perceiving a verbal 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).

Both signs are word marks. The earlier mark, ‘iBeat’, has no meaning as a whole. It contains one upper-case letter and four lower-case letters and could be split into the prefix ‘i’ and the element ‘Beat’, as the term ‘Beat’ might be associated by a part of the public with a certain type of music. However, even if the relevant public dissects the word, it has no meaning for the majority of the relevant public as this word is known only by a minority of this public that has special interest in the aforementioned type of music. Therefore, when examining the likelihood of confusion, the Opposition division will consider only the majority of the relevant public for which the word ‘Beat’ is meaningless.

The contested sign is the word ‘INEAT’, which is meaningless for the relevant public.

Both signs have no meaning in relation with the relevant goods and services, and they are, therefore, distinctive.

Visually, the signs coincide in the string of letters ‘i*eat’. However, they differ in their second letter – ‘b’ in the earlier mark and ‘N’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛i*eat, present identically in both signs. The pronunciation differs in the sound of their second letters, ‘B’ of the earlier sign and ‘N’ of the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning for the public in the relevant territory. 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 and 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous factors 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).

The goods are partly identical, partly similar and partly dissimilar and the services are dissimilar. The relevant public’s degree of attention will vary from average to high.

The signs are visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs. They are both one-word marks coinciding in four out of their five letters. Account is 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).

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. Other factors, such as the goods in question or whether the marks have a meaning or not, or whether they are word or figurative marks must be considered. In the present case, the previous cases referred to by the applicant (04/07/2019, B 3 020 198; 16/07/2019, B 2 454 737) are not relevant to the present proceedings. In the first case mentioned, the signs had a conceptual difference that counteracted their similarities, whilst in the second case the signs had additional figurative and distinctive elements that differentiated them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 846 935. 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.

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 and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.