OPPOSITION No B 2 907 932

Magix Software GmbH, Quedlinburger Str. 1, 10589, Berlin, Germany (opponent), represented by Dennis Gehnen, Karlsruher Strasse 16, 10711, Berlin, Germany (professional representative)

a g a i n s t

Foneric Technology Co., Ltd., 4F, Fuxing Building, No.6 Binglang Road, Futian Free Trade Zone, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556, Athens, Greece (professional representative).

On 04/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 907 932 is partially upheld, namely for the following contested goods:

Class 9: Camcorders; Headphones; Baby monitors; Video baby monitors; Monitoring apparatus, electric; Covers for smartphones; Electric door bells; Cabinets for loudspeakers; Audio- and video-receivers; Audio and video receivers; Sound transmitting apparatus; sensors and detectors.

2. European Union trade mark application No 16 500 621 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 9: Plugs, sockets and other contacts [electric connections].

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 500 621, . The opposition is based on European Union trade mark registration No 15 598 311, ‘MAGIX’. 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: Software, Including for mobile terminals, In particular in relation to the creation and editing of audio, video and other multimedia files and for the creation and editing of audio, music, video, MIDI and multimedia and metadata; Computer software for sound development, generation and editing; Recorded audio loops; Interfaces (for computers); Apparatus for receiving, recording, transmission, processing, transforming, output and reproduction of data, speech, text, signals, sound and images, including multimedia apparatus; Apparatus, including multimedia apparatus, for connecting and controlling audio, video and telecommunications apparatus and computers, including apparatus with electronic program guides; Software manuals in electronic format.

Class 15: Electronic musical apparatus and instruments; Electronic keyboards [musical instruments]; Electronic synthesizers.

Class 38: Providing access to audio, music, photograph, video and other multimedia files via the internet; Electronic transmission of news and information, in particular information on music, musical events and concerts.

Class 41: Audio and video production, and photography; Education services relating to the application of computer software; Providing digital music from the internet; Providing on-line electronic publications, not downloadable; Providing on-line interactive computer games.

Class 42: Providing of software updates via the internet; Providing information, advice and consultancy services in the field of computer software; Shared website hosting; Computer advisory and consultancy services; Computer software consultancy; Technical support in the field of computer hardware; Technical support in the field of computer software, Technical support in the field of document management; Providing information in relation to computers and computer software via the internet; Hosting services and software as a service and rental of software.

Class 45: Licensing of intellectual property rights (for others).

The contested goods are the following:

Class 9: Camcorders; Headphones; Baby monitors; Video baby monitors; Monitoring apparatus, electric; Plugs, sockets and other contacts [electric connections]; Covers for smartphones; Electric door bells; Cabinets for loudspeakers; Audio- and video-receivers; Audio and video receivers; Sound transmitting apparatus; sensors and detectors.

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 terms ‘in particular’ and ‘including’, 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).

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 camcorders; headphones; baby monitors; video baby monitors; monitoring apparatus, electric; electric door bells; audio- and video-receivers; audio and video receivers; sound transmitting apparatus; sensors and detectors are included in the broad category of the earlier apparatus for receiving, recording, transmission, processing, transforming, output and reproduction of data, speech, text, signals, sound and images. Therefore, they are identical.

The opponent’s apparatus for receiving, recording, transmission, processing, transforming, output and reproduction of data, speech, text, signals, sound and images include smartphones. Therefore, the contested covers for smartphones are considered similar to these opponent’s goods, as they are complementary, have the same relevant public and distribution channels.

The contested cabinets for loudspeakers are enclosures, boxes, in which the loudspeakers are mounted. Since the opponent’s apparatus for receiving, recording, transmission, processing, transforming, output and reproduction of data, speech, text, signals, sound and image include loudspeakers, these goods are considered similar. They are complementary and coincide in producers, distribution channels and relevant public.

The contested plugs, sockets and other contacts [electric connections] are electrical components normally used by electricians in the electrical field, whose common characteristics is that they are electrical or electricity-related devices used to transmit electricity. When comparing these contested goods and the opponent’s goods in Class 9 and 15, the Opposition Division cannot find them similar. The fact that the opponent’s goods needs electricity in order to be used is not sufficient for finding similarity between them, as it is a common characteristic of a plethora of goods and apparatus today. The purpose and end users of the opponent’s goods are different to those of the applicant’s goods, which are goods aimed at the transmission of sound or images and the treatment of data. Furthermore, these goods are not in competition with each other and they have different distribution channels. Therefore, these goods are dissimilar. These contested goods are also dissimilar to all the opponent’s services in Classes 38, 41, 42 and 45, since they do not have the same nature, purpose, methods of use, distribution channels, producers/providers or relevant public. They are neither complementary, nor in competition.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

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.

3. The signs

MAGIX
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.

Therefore, in order not to examine the perception of the conflicting signs in respect of all the relevant languages, the examination will be limited to the English-speaking part of the public.

The earlier mark is a word mark, ‘MAGIX’.

The contested sign is a figurative sign, consisting of the verbal element ‘dB’ in white, slightly stylised letters on a black circular background. To the right of this figurative element are the letters ‘MAGIX’ in black slightly stylised letters.

The element ‘MAGIX’ has no meaning for the relevant public and is, therefore, distinctive. However, a part of the public may perceive this verbal element as a misspelling of the word ‘MAGICS’, which is plural form of the word magic, meaning, inter alia, ‘the power to use supernatural forces to make impossible things happen’ (information extracted from Collins English dictionary on 27/05/2018 at https://www.collinsdictionary.com/dictionary/english/magic). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The verbal element ‘dB’ will be understood as an abbreviation for the word decibel (or decibels) by the relevant public (information extracted from Collins English dictionary on 29/05/2018 at https://www.collinsdictionary.com/dictionary/english/db). This is a unit for, inter alia, measuring sound in relation to the threshold of hearing, in ratios of power or intensity. Bearing in mind that some of the relevant goods are transmitters of sound, this element is weak for camcorders; headphones; baby monitors; video baby monitors; monitoring apparatus, electric; electric door bells; audio- and video-receivers; audio and video receivers; sound transmitting apparatus.

The element of the black circle in the contested sign is a less distinctive figurative element of a purely decorative nature.

The element ‘MAGIX’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the verbal element ‘MAGIX’, which constitutes the whole earlier mark. It is distinctive and also dominant in the contested sign. However, the marks differ in the letters ‘dB’ (which are weak for part of the goods) and in the stylisation of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MAGIX’, which are distinctive and present identically in both signs. This coinciding element is distinctive. The pronunciation differs in the sound of the letters ‘dB’ of the contested sign, which are weak for part of the goods.

Therefore, the signs are aurally highly similar.

Conceptually, for a part of the public that will perceive only the meaning of the verbal element ‘dB’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public that will perceive (also) a meaning in the verbal element ‘MAGIX’ as described above, the signs will be associated with a similar meaning, and the signs are conceptually highly similar.

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 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

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).

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.

In the present case, the goods are identical, similar and dissimilar. The degree of attention is average to high.

The signs are visually and aurally highly similar, and for part of the public also conceptually highly similar. The distinctiveness of the earlier mark is normal.

Taking into account all the circumstances of the case, the differences between the marks are not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods come from the same undertaking or at least 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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).

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

Loreto URRACA LUQUE

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.