OPPOSITION No B 2 923 954

Westone Laboratories, Inc., 2235 Executive Circle, 80906, Colorado Springs, United States of America (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

Shenzhen Hongbo Audio Equipment Co. Ltd, F/2, Plant 2, Yongqi Tech. Park, Lezhujiao, Xixiang Sub-dist., Bao'an Dist., Shenzhen, Guangdong, Peoples’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27, 99-300, Kutno, Poland (professional representative).

On 29/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 954 is partially upheld, namely for the following contested goods:

Class 9: Cabinets for loudspeakers; Diaphragms [acoustics]; Headphones; Audio- and video-receivers; Microphones; Sound transmitting apparatus; 3D spectacles; Wires, electric; Coaxial cables; Computer peripheral devices.

2. European Union trade mark application No 16 371 403 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 371 403 for the figurative mark . The opposition is based on international trade mark registration No 1 216 986 designating the European Union for the word mark ‘WESTONE’. 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

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

Class 9: Earphones, parts and accessories thereof, headphones, parts and accessories thereof, other telecommunication machines and apparatus.

Class 40: Custom manufacture of earpieces designed to the specifications of the wearer.

The contested goods are the following:

Class 9: Cabinets for loudspeakers; Diaphragms [acoustics]; Headphones; Audio- and video-receivers; Microphones; Sound transmitting apparatus; 3D spectacles; Wires, electric; Coaxial cables; Protective films adapted for computer screens; Computer peripheral devices.

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.

The contested Cabinets for loudspeakers are at least similar to the opponent’s headphones, parts and accessories thereof due to their common purpose, namely reproduction of music. They may have the same producers, relevant public and distribution channels.

Headphones are identically contained in both lists of goods.

The contested Diaphragms [acoustics] are included in the broad category of, or overlap with, the opponent’s parts thereof [headphones]. Therefore, they are identical.

The contested Sound transmitting apparatus; Computer peripheral devices include, as broader categories the opponent’s headphones. 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 Wires, electric; Coaxial cables can be used in connection with the opponent’s other telecommunication machines and apparatus. These goods are similar as they can also coincide in manufacturer, distribution channels and relevant public.

The contested Audio- and video-receivers are included in the broad category of, or overlap with, the opponent’s other telecommunication machines and apparatus. Therefore, they are identical.

The contested Microphones are commonly available in the same shops as the opponent’s headphones. All these goods may be produced by the same companies, distributed through the same channels and on occasion can be used in combination. Therefore, they are similar.

The contested 3D spectacles are glasses that allow viewing in three dimensions for use in movie theatres, with smart televisions or gaming computers to which these goods are strictly complementarity. They are offered by the same companies producing other accessories, such as the opponent’s headphones. Consequently, these goods target the same public and follow the same distribution channels. It follows that these goods are similar.

The contested Protective films adapted for computer screens are dissimilar to the opponent’s goods in Class 9. Their nature and purpose are different as well as their methods of use. Furthermore, they are sold in different stores or sections of large department stores. In addition, they are neither complementary nor in competition and they do not normally originate from the same undertakings. Also, these contested goods are dissimilar to the opponent’s services in Class 40. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor complementary to, each other.

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 identical or similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

WESTONE
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 word mark, ‘WESTONE’. The contested sign is a figurative mark consisting of the word ‘WESTON’ written in black bold capitalised script.

The word ‘WESTONE’ of the earlier mark has no meaning and, therefore, its distinctiveness is average.

The contested sign ‘WESTON’ may be perceived by part of the relevant public as an English and Scottish surname. Part of the public, however, will not associate this word with any meaning. Whether or not the meaning of the word ‘WESTON’ is perceived, the distinctiveness of this word is average as it does not describe any characteristics of the goods in question.

In relation to the stylisation of the contested sign, account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). This applies especially to this case given that the typeface used is quite standard.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the word ‘WESTON’. The coinciding component is distinctive. However, they differ in the last additional letter ‘E’ of the earlier mark and in the stylisation of the contested sign.

Since the contested sign is fully included in the beginning of the earlier mark and they differ in only one letter at the end, the signs are visually and aurally highly similar. In addition, for part of the public, aurally the signs may even be identical.

Conceptually, neither of the signs has a meaning for part of 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.

Although part of the relevant public will perceive the meaning of the contested sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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 goods are partially identical, partially similar to various degrees and partially dissimilar.

The marks are visually similar to a high degree, aurally similar to a high degree or even identical for part of the public; a conceptual comparison is not possible for part of the public, while for others the signs are not conceptually similar. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attentiveness is average.

The consumer will perceive an overall impression of similarity between the signs since the differences between them, which are limited to the additional final letter, ‘E’ in the earlier mark, and to the stylisation of the contested sign, are insufficient to distinguish the signs. The high visual and aural similarities (or even aural identity for part of the public) outweigh the fact that signs are not conceptually similar for part of the public that may perceive the meaning of the contested sign. The overall impression that the signs will produce on the relevant public will be of similarity, without the differences between the marks being sufficient to counteract such an impression.

It must also be noted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 216 986.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various 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

Ewelina SLIWINSKA

Marzena MACIAK

Jakub MROZOWSKI

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.