OPPOSITION No B 2 961 756

Shenzhen Royole Technologies Co.,Ltd., Building #43, Dayun Software Town, No.8288 Longgang Road, Henggang Street, Longgang District, Shenzhen, Guangdong, People’s Republic of China (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Federico Ruiz and Llorenç Herrera Aznar, P.O.Box 257, 43840 Salou, Spain (applicants), represented by Bettina Clefsen, Kleine Johannisstr. 10, 20457 Hamburg, Germany (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 961 756 is partially upheld, namely for the following contested goods:

Class 9: Information technology and audio-visual, multimedia and photographic devices; measuring instruments, indicators and controllers; optical devices, enhancers and correctors; scientific research and laboratory apparatus, educational apparatus and simulators; information technology and audiovisual equipment.

Class 28: Fairground and playground apparatus; sporting articles and equipment; toys, games, playthings and novelties.

2. European Union trade mark application No 16 932 411 is rejected for all the above goods. It may proceed for the remaining goods and the uncontested goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 932 411 ‘Moon Village’, namely against all the goods in Classes 9 and 28. The opposition is based on European Union trade mark registration No 15 573 223 , for the goods in Classes 9 and 28. The opponent invoked Article 8(1)(b) and Article 8(5) 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 the following:

Class 9: Portable media players; computer game software; video screens, near-eye display; teaching apparatus; batteries, electric; headphones; data cables; mains chargers; head-mounted display apparatus for the use of media player; near-eye glasses for the use of media player; virtual reality headsets and helmets adapted for use in playing video games; augmented reality headsets and helmets adapted for use in playing video games.

Class 28: Head-mounted video game machines; head-mounted controllers for video game consoles; video game apparatus, including virtual reality head-mounted display and headsets; video game apparatus, including augumented reality head-mounted display and headsets; auxiliary game apparatus for head-mounted video game consoles; body-building apparatus adapted with head-mounted video game consoles.

The contested goods are the following:

Class 9: Diving equipment; information technology and audio-visual, multimedia and photographic devices; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; safety, security, protection and signalling devices; scientific research and laboratory apparatus, educational apparatus and simulators; information technology and audiovisual equipment.

Class 28: Fairground and playground apparatus; sporting articles and equipment; toys, games, playthings and novelties.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus. Therefore, they are identical.

The contested measuring instruments, indicators and controllers; scientific research and laboratory apparatus overlap with the opponent’s teaching apparatus. Therefore, they are identical.

The contested optical devices, enhancers and correctors include, as a broader category, or overlap with, the opponent’s near-eye glasses for the use of media player. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested information technology and audio-visual, multimedia and photographic devices; information technology and audiovisual equipment include, as a broader category the opponent’s portable media players. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested diving equipment; detecting and monitoring instruments; navigation, guidance, tracking, targeting and map making devices; safety, security, protection and signalling devices are dissimilar to the opponent’s goods in Classes 9 and 28 as they have different natures and purposes. They are not complementary nor in competition. They do not share the same distribution channels or the end user. Usually, they are produced by different companies.

Contested goods in Class 28

The contested toys, games, playthings and novelties includes, as a broader category or overlap with the opponent’s video game apparatus, including virtual reality head-mounted display and headsets. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fairground and playground apparatus; sporting articles and equipment includes, as a broader category the opponent’s body-building apparatus adapted with head-mounted video game consoles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 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.

c) The signs

	Moon village
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.

The coinciding element ‘MOON’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom.

The earlier mark is a figurative mark reproducing the word ‘MOON’ written in bold upper case letters, a slightly white curved line which crosses the word in the middle. The contested mark is a word mark, ‘Moon village’.

The coinciding element ‘MOON’ will be understood as ‘the object that you can often see in the sky at night; it goes round the Earth once every four weeks, and as it does so its appearance changes from a circle to part of a circle’ by the relevant public (information extracted on 20/12/2018 from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/moon). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Moreover, the verbal element ‘village’ of the contested sign will be associated with ‘a group of houses, together with other buildings such as a church and a school, in a country area’ (information extracted on 20/12/2018 from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/village). As the applicant sustains, the contested mark could be perceived as a village which (theoretically) is on the moon. As the verbal element ‘village’ as such or in combination with the verbal element ‘moon’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, namely white curved line which crosses the verbal element in the middle.

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

Visually, the signs coincide in the verbal element ‘MOON’ which is the only verbal element and the most distinctive in the earlier mark and the first verbal element of the contested mark. 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. The signs differ in the additional verbal element ‘village’ of the contested mark, as well in the stylisation of the earlier mark found to be of a decorative nature.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MOON’, present identically in both signs. The pronunciation differs in the sound of the word ‛VILLAGE’ of the contested mark, which has no counterpart in the earlier mark.

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

Conceptually, reference is made to the above analysis concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average 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 trade mark has a reputation in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Exhibit 1: Participation of Royole Corporation as exhibitor in the IFA Consumer Electronics Unlimited Fair for 01-06/09/2017, no mention concerning the ‘MOON’ trade mark being done.

 Exhibit 2: List of orders from 2015 and copy of several cash orders as proof of use of sales done in different cities, one being for Hamburg, Germany, and the rest for address in several countries outside the European Union as Switzerland and the United States of America; only one order address to a customer from Switzerland mentions ‘Moon black 32G’, the rest of the orders having no mention about the ‘MOON’ trade mark or the goods sold.

 Exhibit 3: Brochures and posters of ‘MOON’ goods in English.

 Exhibit 4: Awards for ‘ROYOLE MOON’ 3D virtual mobile theatre in 2017 in the European Union Design Award and in the International Design Award.

 Exhibit 5: Pictures of the ‘MOON’ goods such as 3D virtual mobile theatre.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a 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.

e) Global assessment, other arguments and conclusion

The goods are partly identical or similar and partly dissimilar and 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.

There are visual, aural and conceptual similarities between the signs under comparison in that they both contain the verbal element ‘MOON’, which is the only verbal element of the earlier mark and the first verbal element of the contested mark. They differ in the word ‘VILLAGE’ of the contested mark, as well as in it the stylisation of the earlier mark, which is of a decorative nature.

As mentioned above, consumers generally tend to focus on the first element of a sign when they encounter a trade mark. Therefore, the identical first verbal elements, ‘MOON’, of the marks at issue should be taken into account when assessing the likelihood of confusion between the marks.

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).

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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ’MOON’. In support of its argument the applicant refers to several trade mark registrations in France, Italy and the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Although the applicant submitted some extracts from webpages where marks containing ‘MOON’ are displayed, this evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ’MOON’. Under these circumstances, the applicant’s claims must be set aside.

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 No 15 573 223. 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.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division concluded, in the previous section, that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation and, therefore, the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) 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. 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

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

Rhys MORGAN

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.