OPPOSITION No B 2 873 555

Yanna Chen, 402, Building 8, No.1112, Cuizhu Road, Luohu District, Shenzhen, Guangdong, People's Republic of China (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Xiamen Jianwu Industrial Co. Ltd., 3/F-1 (plant), No.288 Qianpuxisan Rd., Siming Dist, 361000 Xiamen, People's Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 09/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 873 555 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 224 123 (figurative mark ), namely against all the goods in Classes 9 and 11. The opposition is based on European Union trade mark registration No 14 966 071 (figurative mark ). 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

The goods on which the opposition is based are, after partial refusal of the earlier mark, the following:

Class 9: Cell phone cases; Filters [photography]; Communication hubs; Blank USB cards; Telescopes; Stands adapted for mobile phones; Computer carrying cases; Cases for MP3 players; Cases for digital media players; Loudspeaker stands [adapted for]; Stands for photographic apparatus; Optical lenses.

Class 28: Toys; Christmas trees of synthetic material; Fishing tackle.

The contested goods are, after partial refusal of the contested application, the following:

Class 9: Encoded key cards; Encoded identification bracelets, magnetic.

Class 28: Lamps; Diving lights; Ultraviolet ray lamps, not for medical purposes; Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under 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

The contested encoded key cards; encoded identification bracelets, magnetic are safety products and serve for the identification and/or access to locked areas. By contrast the opponent’s goods in class 9 are accessories such as stands and cases for a variety of products, optical devices, blank USB cards and communication hubs. The goods serve clearly different needs. The mere fact that the contested goods and in particular the opponent’s communication hubs; blank USB cards may contain electronic data cannot alter this finding, since the purpose is clearly different (access control and identification vs data storage per se). The goods differ in their producers, distribution channels and relevant public. Furthermore, there are not complementary nor in competition. They are, therefore, dissimilar.

The same finding applies in relation to the opponent’s goods in Class 28 which are toys, Christmas trees and fishing tackle, since neither those goods coincide in any relevant factor.

Contested goods in Class 11

The contested lamps; diving lights; ultraviolet ray lamps, not for medical purposes; refrigerators; air deodorising apparatus; heating apparatus, electric; anti-splash tap nozzles; taps [faucets]; mixer taps for water pipes; bath fittings; sanitary apparatus and installations; hand drying apparatus for washrooms; water flushing installations; water purification installations; heating cushions [pads], electric, not for medical purposes; heating pads [cushions], electric, not for medical purposes are apparatus and installations for lighting, heating, cooling, ventilating, water supply and sanitary purposes. As explained above, the opponent’s goods in Class 9 are of a clearly different nature and serve clearly different purposes. They differ in their producers, distribution channels and relevant public. Furthermore, there are not complementary nor in competition. They are, therefore, dissimilar.

The same finding applies in relation to the opponent’s goods in Class 28 which are toys, Christmas trees and fishing tackle, since neither those goods coincide in any relevant factor.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Konstantinos MITROU

Lars HELBERT

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.