OPPOSITION No B 2 943 820

PDJ (Shelf 7) Limited, Network House, Third Avenue, Globe Park, SL7 1EY Marlow, United Kingdom (opponent), represented by Gill Jennings & Every LLP, The Broadgate, Tower 20, Primrose Street, EC2A 2ES London, United Kingdom (professional representative)

a g a i n s t

Tecno Telecom (Hk) Limited, Rms 05-15 13a/F South Tower World Finance Ctr Harbour City, 17 Canton Rd TST KLN, Hong Kong (applicant), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, LS2 8PA Leeds, United Kingdom (professional representative).

On 30/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 943 820 is partially upheld, namely for the following contested goods:

Class 9: Mobile telephones; batteries, electric, for mobile telephones; chargers for electric batteries used for mobile telephones; hands-free kits for telephones; computer memory devices; headphones; video screens.

2. European Union trade mark application No 16 187 023 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 European Union trade mark application No 16 187 023 for the figurative mark . The opposition is based on European Union trade mark registration No 10 118 107 for the word mark TECNO. 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.

a) The goods and services

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

Class 9: Photographic apparatus and instruments except printers and parts of printers; magnetic and optical data carriers being parts or accessories for photographic apparatus; cameras; batteries and recharges for photographic apparatus; video tapes and audio tapes all relating to photographic apparatus and equipment; camera bags and cases; parts and fittings for all the aforesaid goods except for printers and/or computer printers; none of the aforesaid goods being electrical assemblies of high, medium or low voltage.

Class 36: Insurance services; provision of warranties and/or guarantees.

Class 37 Installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, telecommunications apparatus, equipment and accessories, and paging apparatus and equipment; installation, service, maintenance and/or repair of computer hardware and computer firmware; provision of information relating to installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, computer apparatus, equipment and accessories, telecommunications apparatus and accessories, paging apparatus and equipment; installation, service repair and/or maintenance services for consumer electronic products; installation, service, repair and/or maintenance services for photographic apparatus, equipment and accessories; all the aforementioned services limited to the photographic sector.

The contested goods are the following:

Class 9: Mobile telephones; batteries, electric, for mobile telephones; chargers for electric batteries used for mobile telephones; cabinets for loudspeakers; hands-free kits for telephones; connections for electric lines; computer memory devices; headphones; video screens; quantity indicators; inductors [electricity]; electric installations for the remote control of industrial operations; signalling panels, luminous or mechanical; wafers for integrated circuits.

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

The contested mobile telephones overlap with the opponent’s photographic apparatus and instruments except printers and parts of printers. Nowadays, multi-media electronic devices can combine all functionalities such as video camera, mobile phone, mobile computing platform etc. Therefore, they are considered identical to the opponent’s goods.

The contested computer memory devices overlap with the opponent´s magnetic and optical data carriers being parts or accessories for photographic apparatus. They have the same purpose and could be therefore in competition, target the same public and are usually distributed through the same commercial channels. Therefore, they are identical.

The contested batteries, electric, for mobile telephones; chargers for electric batteries used for mobile telephones are highly similar to the opponent´s batteries and recharges for photographic apparatus. They have the same nature, purpose, are often found in the same distribution channels/retail outlets and are usually produced by the same manufactures.

The contested hands-free kits for telephones; headphones are highly similar to the opponent´s photographic apparatus and instruments except printers and parts of printers. They have the same nature (electronic devices) and coincide in distribution channels and end users.

The contested video screens are similar to the opponent’s photographic apparatus and instruments except printers and parts of printers. They coincide in the distribution channels, target the same consumers and are produced by the same undertakings.

Contrary to the opponent´s opinion, the Opposition Division finds the rest of the contested goods, namely connections for electric lines; quantity indicators; inductors [electricity]; signalling panels, luminous or mechanical; wafers for integrated circuits electric installations for the remote control of industrial operations; cabinets for loudspeakers dissimilar to all the opponent´s goods and services. They have different purposes, target different consumers and are usually distributed through different commercial channels. All these goods, except cabinets for loudspeakers, are products directed at professionals, whereas the opponent’s goods are consumer electronic goods designed to be purchased and used by end users. Moreover, they are not likely to be produced or rendered by the same or economically linked undertakings producing any of the opponent´s goods or rendering the opponent´s services. They are neither complementary goods, nor in competition.

b) Relevant public — degree of attention

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention paid to the goods subject to purchase is deemed to vary from average to high depending on the price of the goods.

c) The signs

TECNO
Earlier trade mark	Contested sign

The relevant territory is 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).

Visually and aurally both signs coincide in the verbal element ‘tecno’, which constitutes the entire earlier mark and, by virtue of its central position, size and bold typeface is the dominant element of the contested sign. In addition, since reading takes place from left to right and from top to bottom, is the first element read and pronounced in the contested mark, which makes consumers focus their attention in this coinciding element first.

The second verbal element in the contested sign ´mobile´ is written with smaller type face, placed on secondary position below the common element, and read and pronounced in the last place. It is therefore of reduced impact for these reasons.

The common element ‘tecno’ may be perceived in different ways. Part of the public may recognize it as the name of an electronic music genre of the 90s, while another part may see in it a reference to something related to technology, despite the misspelling. In this late case, the said element is descriptive and non-distinctive given the nature of the goods. For the part of the public perceiving it only as a music genre, the element will be distinctive since it does not have any relation to the goods in question.

The similar conclusion could be drawn as regards the meaning of the second verbal element of the contested sign ‘mobile’. The vast majority of the consumers in the European Union will understand the internationally used term ´mobile´ as referring to a mobile telephone. Bearing in mind that the contested goods found to be identical or similar (to various degrees) to the opponent’s ones are mobile phones or goods related to them, this element provides information about their kind and/or purpose and it is therefore descriptive and non-distinctive.

A likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public perceiving the common verbal element as music genre since for this part of the public, the verbal element is distinctive, leading to the coinciding element having greater distinguishing force and resulting in a greater likelihood of confusion. As a consequence the opposition will proceed focusing on this part of the public.

From the perspective of the part of the public specified above, the signs are visually and aurally highly similar due to the coinciding distinctive element being the only one in the earlier mark and the dominant and only distinctive element in the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs share the concept of their coinciding word, ‘tecno’ and differ in the concept of the differing element in the contested sign, and to that extent, they are conceptually highly similar.

d) 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 the goods in question from the perspective of the public referred to above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to average or high degree and partly dissimilar. They are directed at the public at large whose degree of attention is deemed to be average or high.

The signs have been found visually, aurally and conceptually highly similar, for the reasons explained above.

For the part of the public taken into account the earlier mark is of average distinctive character.

The earlier mark is entirely reproduced in the contested sign, being its dominant and only distinctive element while its secondary element does not have counterpart in the earlier mark and is of reduced impact for the reasons explained above.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a graphically stylised version or sub-brand of the earlier mark, configured in a different way, denoting a product line, namely electronic consumer goods and parts for them. (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, 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 European Union trade mark registration No 10 118 107. 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 varying degrees 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

María del Carmen SUCH SÁNCHEZ

Meglena BENOVA

María Clara IBÁÑEZ FIORILLO

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.