OPPOSITION No B 2 894 114

Sky limited, Grant Way, TW7 5QD Isleworth, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang Pośniak i Sawicki Sp.k., Emilii Plater 53, 00-113 Warsaw, Poland (professional representative)

a g a i n s t

Samsung Electronics Co. LTD., 129 Samsung-ro Yeongtong-gu - Suwon-si Gyeonggi-do, Republic of Korea (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 13/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 114 is upheld for all the contested goods.

2. European Union trade mark application No 16 316 721 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 316 721 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 15 869 951 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier mark. In relation to other earlier rights, the opponent also invoked Article 8(4) 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.

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 15 869 951 for the figurative mark .

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images.

The contested goods are the following:

Class 9: Televisions.

The contested televisions are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

b) 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 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.

c) The signs

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 earlier mark is a figurative mark composed of a circular device with a shiny element in its lower right part. Although it is not unlikely that part of the relevant public will perceive the earlier mark as a purely figurative sign, as argued by the applicant, the Opposition Division is of the opinion that there a substantial part of the public that will perceive the earlier mark as a highly stylised letter ‘Q’. This is due to the shape of its elements and the fact that consumers will try to read elements that resemble letters. The applicant argues that the opponent did not describe its mark as the letter ‘Q’ in the description of the mark at the time of registration. However, this is not relevant as it is the perception of the relevant public that matters when examining whether a likelihood of confusion exists.

For the purposes of this comparison and for reasons of procedural economy, the Opposition Division will assess the signs from the perspective of the earlier mark being perceived as the letter ‘Q’, as that is also the most likely scenario for a substantial part of the relevant public.

As far as the distinctiveness of the single letter ‘Q’ is concerned, according to the General Court, a single letter or a single numeral may indeed be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). Distinctiveness must be assessed with reference to the goods concerned. The letter ‘Q’ has no meaning in relation to the relevant goods in Class 9, and therefore it is distinctive.

The contested sign is a figurative mark. The first letter ‘Q’ is the dominant element as it is the most eye-catching and depicted significantly larger than the following elements ‘QLED TV’.

As regards the less dominant element ‘QLED’, although it is composed of one verbal element, the 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). Therefore, the relevant public will dissect this element into the letter ‘Q’ and the word ‘LED’, this is also because it is followed by the element ‘TV’, which all together form the meaningful expression ‘LED TV’ commonly known throughout the European Union as referring to ‘a flat panel LCD TV set that uses LED’s (light emiting diodes) for its backlight source rather than the earlier cold cathode fluorescent lamps’. Taking into account the relevant goods in Class 9, which are televisions, the elements ‘LED TV’ are non-distinctive.

The letter ‘Q’ (appearing twice) will be perceived as such, without any relevant meaning in relation to the goods in Class 9, and is distinctive, as mentioned above. Therefore, the two depictions of the letter ‘Q’ are the most distinctive elements in the contested sign.

Visually, the signs coincide in the letter ‘Q’, which is the sole element in the earlier mark and the first and (although appearing twice), most distinctive element in the contested sign. 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. However, the signs differ in the rather high stylisation of the earlier mark, the repetition of the letter ‘Q’ and the non-distinctive elements ‘LED TV’ in the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘Q’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘Q’ in the contested sign and the additional elements ‘LED TV’, which are, however, non-distinctive and have less impact.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the single letter ‘Q’ — appearing twice in the contested sign — while the additional elements ‘LED TV’ in the contested sign are non-distinctive, the signs are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has a normal degree of inherent distinctiveness. The relevant public is the public at large and the level of attention varies from average to high.

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 goods in question are identical.

The signs are visually similar to a low degree, aurally similar to an average degree and conceptually similar to a high degree.

Taking into account the identity between the goods, there is a likelihood of confusion for the English-speaking part of the relevant public, even taking into account a high degree of attention for some of the relevant goods, because the differences between the signs are confined to the stylisation of the earlier mark, the mere repetition of the letter ‘Q’ and additional non-distinctive elements in the contested sign.

The applicant argues that even if the earlier mark is perceived as the letter ‘Q’, there is a striking difference in the overall graphic representation of the marks that will avoid any likelihood of confusion. This argument must be set aside as, according to the abovementioned interdependence principle, the lower visual similarity, due to the rather high stylisation of the earlier mark and repetition of the letter ‘Q’ in the contested sign, is counterbalanced by the average aural similarity and high conceptual similarity, as well as by the identity of the goods.

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 sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, ‘Fifties’, EU:T:2002:262, § 49).

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.

Most of the previous cases referred to by the applicant are not relevant to the present proceedings as in most of the cases at least one of the signs was much more stylised than the earlier mark of the present case, which produced a lower visual similarity, and the relevant goods in some of those cases were generally bought after a visual inspection (Classes 18 and 25) and therefore the visual differences were considered more important (for example 06/06/2017, B 2 668 260; 20/09/2018, B 2 914 813; 12/06/2007, R 1418/2006‑2, F (FIG. MARK) / F).

Furthermore, 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 some of 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.

The opponent also refers to a previous national decision to support its arguments, namely to UKIPO decision No O/585/18 of 24/09/2018. However, as argued by the applicant, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office, since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The previous case referred to by the opponent is relevant to the present proceedings as it concerns a conflict between the same parties and the same or similar signs ( , Q and Q QLED TV). Even if the Opposition Division is not bound by that decision, it supports the findings in this case.

The applicant further argues that it owns various EUTM’s including the single letter ‘Q’. The assessment of the likelihood of confusion according to Article 8(1)(b) EUTMR as one of the relative grounds for refusal in inter partes proceedings must be based solely on the individual assessment of the signs in question — the opponent’s earlier marks specified in the opposition, and the contested sign of the applicant — as the likelihood of confusion is assessed in relation to these specific signs. The applicant’s previous trade mark registrations are irrelevant for the present opposition proceedings (21/04/2005, T‑269/02, Ruffles, EU:T:2005:138, § 25; 06/11/2007, T‑90/05, Ω Omega, EU:T:2007:328, § 44-48).

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 trade mark registration No 15 869 951. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European trade mark registration No 15 869 951 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(4) and Article 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

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.