OPPOSITION No B 2 979 311

M-net Telekommunikations GmbH, Emmy-Noether-Str. 2, 80992 Munich, Germany (opponent), represented by Graf Von Stosch Patentanwaltsgesellschaft Mbh, Prinzregentenstr. 22, 80538 Munich, Germany (professional representative)

a g a i n s t

Shenzhen M-Horse Technology Co. Ltd., F3 F5 building 37, YinTian Ind. Park YanTian Community, XiXiang St BaoAn Dist, Shenzhen, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción 7 Edificio América II Portal 2 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 979 311 is upheld for all the contested goods.

2. European Union trade mark application No 16 936 511 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 16 936 511 for the figurative mark . The opposition is based on, European Union trade mark registration No 14 380 786 for the word mark ‘M-net TVplus’ and European Union trade mark registration No 4 327 029 for the word mark ‘M-net’. The opponent invoked Article 8(1)(a) and (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 European Union trade mark registration No 14 380 786.

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission, processing and reproduction of sound, images or data; Magnetic data carries; Mechanisms for coin-operated apparatus; Calculating machines, data processing equipment and computers; Recorded and unrecorded data carriers of all kinds (included in class 9); Computer programs (recorded); Data recorded in electronic form (downloadable); Electronic publications (downloadable).

The contested goods are the following:

Class 9: Portable telephones; Navigational instruments; Peripheral devices (Computer-); Measuring instruments; Cabinets for loudspeakers; Cameras [photography]; Electric batteries; Electric converters; Mobile phones; Computers; Word processors; Scanners [data processing equipment]; Aerials; Global Positioning System [GPS] apparatus; Mobile phone straps; Personal stereos; Sound reproduction apparatus; Audiovisual teaching apparatus; Wires (Telephone-); Sound alarms; Chargers for batteries; Cases for mobile phones; Dust covers for computers; electronic chip cards; mobile phone covers.

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.

Navigational instruments; measuring instruments; computers are identically contained in both lists of goods (including synonyms).

The contested portable telephones; mobile phones; sound reproduction apparatus; personal stereos; sound alarms are included in the broad category of the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data. Therefore, they are identical.

The contested cameras [photography]; audiovisual teaching apparatus are included in the broad category of the opponent’s scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments. Therefore, they are identical.

The contested global positioning system [gps] apparatus ; word processors; scanners [data processing equipment] are included in the broad category of the opponent’s calculating machines, data processing equipment and computers. Therefore, they are identical.

The contested electric batteries; aerials; electric converters; chargers for batteries electronic chip cards are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested peripheral devices (Computer-) are similar to the opponent’s calculating machines, data processing equipment and computers. They can coincide in their provider and channels of distribution. They are complementary goods and target the same public.

The contested cabinets for loudspeakers are similar to the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data. They might coincide in their provider and channels of distribution. They are complementary goods and target the same public.

The contested mobile phone straps; wires (telephone-); cases for mobile phones; mobile phone covers are similar to a low degree to the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data. They might coincide in their provider and channels of distribution. Furthermore they target the same public.

The contested dust covers for computers are similar to a low degree to the opponent’s calculating machines, data processing equipment and computers. They might coincide in their provider and channels of distribution. Furthermore they target the same public.

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

The degree of attention for the relevant goods will be average.

c) The signs

M-net TV plus
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 common element ‘net’ is meaningful in certain territories, as an abbreviation of ‘network’, 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.

Although it is acknowledged that both signs’ verbal component consists of a single string of letters, account must be taken of the fact that, indeed, 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).

The earlier mark is the word mark ‘M-net TVplus’ and will be dissected as it is divided by a dash and its components ‘Net’ and ‘TVplus’ have a meaning. The letter ‘M’ has no meaning in relation with the relevant goods and has an average degree of distinctiveness The element ‘NET’, will be seen as a common abbreviation of ‘network’ meaning ‘A network of interconnected computers’. (information extracted from Lexico Dictionary on 25/06/2020 at https://www.lexico.com/definition/net), and it is no-distinctive in relation with part of the goods in Class 9, namely computers.

The verbal element TV, is the abbreviation for television and is allusive for a part of the goods, namely cinematographic apparatus and instruments, and therefore weak in relation with those goods. The term ‘plus’ merely informs the public that the goods and services concerned are of better quality or have something extra with respect to the normal standards of goods and services on the market. When pronouncing ‘plus’, the relevant consumers will perceive it as a purely laudatory, promotional message denoting, in general, a particular positive or appealing quality or function, and therefore it has an extremely low degree of distinctiveness for all the relevant goods and services (by analogy 15/11/2007, T‑38/04, Sunplus, EU:T:2007:341, § 42; 03/03/2010, T‑321/07, A+, EU:T:2010:64, § 41-42; 25/05/2017, R 1441/2016‑4, STAR PLUS / PLUS et al., § 17). Consequently, the term ‘plus’ cannot in any way fulfil the function of an indicator of origin and has a low degree of distinctiveness.

The contested sign is figurative and is composed of the verbal elements ‘M-NET’ in a black upper case standard script. These elements have already been described above. The term ‘Net’ will be associated with ‘network of computers’. Bearing in mind that part of the relevant goods are computer related, this element is non-distinctive for part of these goods, namely for ‛computers’.

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

Visually, the signs coincide in the first part of the earlier mark ‘M-NET’ which is the entire contested sign, and which has one element non-distinctive for part of the goods. However, they differ in the earlier mark’s second part ‘TV plus’, which has limited or no (plus) distinctiveness. The contested sign is figurative but its stylisation is rather standard.

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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘M-NET’ present identically in both signs, and which are the first part of the earlier mark and the entire contested sign. The pronunciation differs in the sound of the letters ‘TV’ and plus’, which have limited or no (plus) distinctiveness, and have less impact, and may even, not be pronounced.

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.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘Net’, (which is distinctive for part of the goods) and the letter ‘M’ included in both signs, will be associated with the meaning explained above. As the signs will be associated partly with a similar meaning, the signs are conceptually similar to a low degree.

As the signs have been found similar in the three aspects 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.

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, despite the presence of a non‑distinctive element in the mark for a part of the goods, as stated above in section c) of this decision.

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, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The goods are partly identical, partly similar and partly similar to a low degree. The public’s degree of attention is average and the earlier mark has normal distinctiveness.

The signs are visually similar to an average degree, aurally similar to a high degree, and conceptually similar to a low degree. The contested sign’s only element is entirely included in the earlier mark as its first element. Moreover the earlier mark is a word mark and the contested sign’s figurative stylization is rather standard. The importance of the visual and aural dissimilarities may be diminished by 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).

It is common for undertakings active on the market to use sub‑brands, that is to say signs that derive from a principal mark and that have an element in common, in order to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical or similar goods designated by the conflicting signs as different product line that come from the same undertaking or from economically linked undertakings.

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 Union trade mark registration No 14 380 786. It follows that the contested trade mark must be rejected for all the contested goods. The opposition is successful insofar as the goods that are similar to a low degree are concerned due to the important similarities of the signs.

As the earlier right European Union trade mark registration No 14 380 786 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(1)(a) 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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.