OPPOSITION No B 3 026 484

Meizu Technology Co., Ltd., Meizu Technology Building, Technology & Innovation Coast, null, Zhuhai City, Guangdong Province, People’s Republic of China (opponent), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative)

a g a i n s t

Grigorius Holdings SIA, Juglas street 31-8, 1064 Riga, Latvia (applicant).

On 06/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 026 484 is upheld for all the contested goods and services, namely:

Class 9: Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films.

Class 38: Telecommunication services; communication services for the electronic transmission of voices; transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services.

2. European Union trade mark application No 16 519 019 is rejected for all the contested goods and services. It may proceed for the remaining non-contested goods.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 519 019, `MIZU´ (word mark) namely against all the goods and services in Classes 9 and 38. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 326 631,  (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.

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 international trade mark registration designating the European Union No 1 326 631,  (figurative). It has a broader scope of protection than the other earlier marks.

a) The goods and services

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

Class 9: Computer operating programs, recorded; data processing apparatus; computer hardware; computer software applications downloadable; downloadable image files; computer peripheral devices; tablet computers; time recording apparatus; photocopiers [photographic, electrostatic, thermic]; scales; measures; electronic notice boards; smartphones; hands free kits for phones; Global Positioning System [GPS] apparatus; network communication equipment; transponders; cases for telephone; electro-dynamic apparatus for the remote control of signals; branch boxes [electricity]; switchboards; monitoring apparatus, electric; television apparatus; headphones; earphones; camcorders; portable media players; cabinets for loudspeakers; audio-and video-receivers; cameras [photography]; air analysis apparatus; material for electricity mains [wires, cables]; power plug converter; plugs, sockets and other contacts [electric connections]; remote control apparatus; switches, electric; time switches, automatic; power bank (rechargeable battery); batteries, electric; chargers for electric batteries.

The contested goods and services are the following:

Class 9: Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films.

Class 38: Telecommunication services; communication services for the electronic transmission of voices; transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services.

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

All the contested goods can be divided in categories of goods belonging to the market sector of computer components and parts, and computer networking and data communications equipment.

The opponent’s goods cover products belonging to the same sector of computer components and parts, and computer networking and data communications equipment. Even if it cannot be excluded that some of the contested goods would coincide with the opponent’s goods in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods or that they are even identical, these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same relevant public and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar to the opponent’s goods.

It follows, therefore, that all the contested goods are at least similar to a low degree to the opponent’s goods.

Contested services in Class 38

The contested telecommunication services; communication services for the electronic transmission of voices; transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services; operation of telecommunications systems are similar to the opponent’s data processing apparatus in as much as they have the same purpose and distribution channels. They are complementary and they coincide in end user.

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 and services found to be at least similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	MIZU
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 consisting of the verbal element ‘MEIZU’, written in a slightly stylised typeface. This element has no meaning in relation to the relevant goods and it is therefore distinctive to an average degree.

The Opposition Division does not share the applicant’s argument that the element that composes the contested mark `MIZU´ is an internationally recognized Japanese word for “water” and that it will be immediately recognized by the relevant public ‘due mainly to the proliferation of Japanese restaurants and culture throughout the EU’. Although this argument cannot be put entirely aside, this meaning would only be seen by a minor part of the public, if any. In any event, in such a case, the meaning would not have any relation with the goods and services at issue and, therefore, it would be distinctive. For the majority of the public, it does not have any meaning and it is therefore also distinctive.

Visually and aurally, the signs coincide for a significant part of the relevant public in four letters/sounds out of five of the earlier mark, namely ‘M*IZU’. However, they differ in the letter/sound `E’ of the earlier mark. Moreover, the marks slightly visually differ in the stylisation of the earlier mark. All in all, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the majority 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. For the minor part of the public, if any, that will perceive the meaning of “mizu”, the signs are not conceptually similar since the other sign has no meaning.

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 essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). 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 a 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 contested goods and services have been found to be at least similar to a low degree to goods of the opponent.

Taking into account the high degree of visual and aural similarity, the neutral outcome of the conceptual comparison (for the majority of the public), the average degree of distinctiveness of the earlier trade mark, there is, even taking into account a high degree of attention of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

This also applies to the goods and services that are only similar to a low degree because of the visual and aural similarities between the signs. This applies even more so for the public with only an average degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 326 631,  (figurative mark). It follows that the contested trade mark must be rejected for all the contested goods and services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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, 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

Saida CRABBE

Inés GARCIA LLEDO

Alicia BLAYA ALGARRA

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.