OPPOSITION No B 2 970 930

Karl Storz SE & Co. KG, Dr. Karl-Storz-Straße 34, 78532 Tuttlingen, Germany (opponent), represented by Murgitroyd & Company, Bernhard-Wicki-Str. 7, 80636 München, Germany (professional representative)

a g a i n s t

Thompso Laura, 10 Milne Close, Dukinfield, Cheshire East, SK16 4SN, United Kingdom, and Shanghai Shengming Wangluo Keji Youxian Gongsi, Putuo Qu, ZhenNan Lu, 2528hao 2ceng, 1zhuang, 2699shi, Shanghai 200331, People’s Republic of China (applicants).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 970 930 is upheld for all the contested goods.

2. European Union trade mark application No 16 947 814 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 947 814, ‘HAVE1SEE’. The opposition is based on international trade mark registration No 1 256 313 designating the European Union, . 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.

1. The goods

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

Class 9: Apertometers [optics]; batteries, electric; compact disc players; chips [integrated circuits]; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; encoded identification bracelets, magnetic; compact discs [read-only memory]; compact discs [audio-video]; computers; computer programmes [programs], recorded; computer operating programs, recorded; computer peripheral devices; computer programs [downloadable software]; computer software, recorded; computer keyboards; data processing apparatus; light regulators [dimmers], electric; floppy disks; disk drives for computers; dosimeters; DVD players; television apparatus; telephone apparatus; remote control apparatus; cinematographic cameras; film cutting apparatus; filters for respiratory masks; filters [photography]; fluorescent screens; cameras [photography];photovoltaic cells; photometers; printed circuit boards; printed circuits; global positioning system [GPS] apparatus; interfaces for computers; integrated circuit cards [smart cards]; cassette players; carriers for dark plates [photography]; switchboxes [electricity]; optical character readers; encoded magnetic cards; comparators; directional compasses; headphones; couplers [data processing equipment]; correcting lenses [optics]; laptop computers; bags adapted for laptops; loudspeakers; cabinets for loudspeakers; gauges; jigs [measuring instruments]; readers [data processing equipment]; light-emitting diodes [LED]; signs, luminous; light-emitting electronic pointers; magnetic tapes; magnetic tape units for computers; magnetic data media; magnets; disks, magnetic; solenoid valves [electromagnetic switches]; mathematical instruments; mouse [data processing equipment]; mouse pads; microphones; micrometer gauges; micrometer screws for optical instruments; microprocessors; microscopes; microtomes; portable telephones; modems; monitors [computer hardware]; teeth protectors; navigation apparatus for vehicles [on-board computers]; navigational instruments; notebook computers; objectives [lenses] [optics]; instruments containing eyepieces; eyepieces; optical goods; optical apparatus and instruments; optical data media; fibre [fiber (Am.)] optic cables; optical fibers [fibres] [light conducting filaments]; optical condensers; optical lamps; optical lenses; optical discs; optical glass; oscillographs; radio pagers; apparatus and instruments for physics; prisms [optics]; projection apparatus; projection screens; cell phone straps; satellite navigational apparatus; computer memory devices; cases especially made for photographic apparatus and instruments; furniture especially made for laboratories; stereoscopes; stereoscopic apparatus; pocket calculators; sound recording apparatus; tape recorders; sound recording carriers; sound transmitting apparatus; sound reproduction apparatus; portable media players; walkie-talkies; personal stereos; filters for ultraviolet rays, for photography; teaching apparatus; audiovisual teaching apparatus; USB flash drives; videotapes; video screens; camcorders; video cassettes; video recorders; video game cartridges; intercommunication apparatus; meters; counters; time recording apparatus; time switches, automatic; cell switches [electricity]; processors [central processing units]; industrial endoscopes; video and audio equipment and systems consisting thereof; endoscopes, except for medical purposes; exoscopes, except for medical purposes.

The contested goods are the following:

Class 9: Mobile telephones; electronic tags for goods; tablet computers; blank USB flash drives; bags adapted for laptops; smartglasses; smartwatches; sleeves for laptops; protective films adapted for computer screens; global positioning systems (GPS); cell phone straps; smartphones; wearable activity trackers; covers for smartphones; cases for smartphones; cabinets for loudspeakers; headphones; electronic book readers; protective cases for tablet computers; mobile phone display screen protectors in the nature of films.

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

Bags adapted for laptops; cabinets for loudspeakers; headphones; cell phone straps are identically contained in both lists of goods.

Global positioning systems (GPS) are identically contained in both lists of goods, (including synonyms).

The contested blank USB flash drives are included in the broad category of the opponent’s USB flash drives. Therefore, they are identical.

Mobile telephones are identically contained in both lists of goods (including synonyms), namely as portable telephones in the opponent’s list of goods.

The contested tablet computers are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested smartphones are included in the broad category of the opponent’s telephone apparatus. Therefore, they are identical.

The contested smartglasses are included in the broad category of the opponent’s optical apparatus. Therefore, they are identical.

The contested smartwatches are wearable computers in the form of a wristwatch. The opponent’s computers are devices that can be instructed to carry out an arbitrary set of arithmetical or logical operations automatically. The aforementioned contested goods use digital communication technology to provide many of the functions of a computer. Therefore, the contested smartwatches and the opponent’s computers have similar methods of use. They can have the same producers and distribution channels, and they target the same relevant public. Furthermore, they are in competition. Therefore, they are similar to a high degree.

The contested wearable activity trackers are wearable computers; they can be used to monitor the user’s movements, for example to track activities such as working, cycling or swimming or to collect data on calorie consumption, heartbeat or quality of sleep. They are similar to the opponent’s portable telephones, since they target the same relevant public and can have the same producers and distribution channels. Therefore, they are similar to a low degree.

The contested electronic tags for goods are electronic monitoring devices attached to items allowing their whereabouts to be monitored. Electronic tags store data and make use of computer technology; therefore, they are similar in nature and purpose to the opponent’s computers. They can have the same distribution channels and relevant public. Furthermore, they are complementary. Therefore, they are similar.

The contested electronic book readers are mobile electronic devices that are designed primarily for the purpose of reading e-books and digital editions of periodicals. They take a similar form to the opponent’s notebook computers. Electronic book readers can connect to the internet through Wi-Fi, and the built-in software can link to a digital library or an e-book retailer. Therefore, the contested electronic book readers and the opponent’s notebook computers have similar natures. They target the same relevant public, are usually distributed through the same channels and can have the same producers. Furthermore, they may be in competition. Therefore, they are similar.

The contested covers for smartphones; cases for smartphones, mobile phone display screen protectors in the nature of films and the opponent’s sound transmitting apparatus have the same distribution channels and target the same relevant public. They can also have the same producers. Therefore, they are similar to a low degree.

The contested sleeves for laptops; protective cases for tablet computers; protective films adapted for computer screens and the opponent’s computers target the same relevant public. They are distributed through the same channels. Furthermore, they are complementary. Therefore, they are similar to a low degree.

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

The degree of attention will vary from average to high, depending on the price, nature and degree of sophistication of the goods.

3. The signs

	HAVE1SEE
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier trade mark is a figurative mark consisting of the verbal element ‘HAVe1’ depicted in a standard white typeface on a black rectangular background. The letters ‘HAV’ are in upper case and the letter ‘e’ is in lower case.

The verbal element ‘HAVe1’ will be perceived by the English-speaking part of the public as meaning ‘have one’ or ‘take one’. However, it will be meaningless for the remaining part of the public, although both the English-speaking and non-English-speaking parts of the public will perceive the numeral 1. For the English-speaking part of the public, the element ‘HAVe1’ might be allusive in relation to the relevant goods and its distinctiveness is lower than average. However, for the remaining part of the public, the verbal element ‘HAVe1’, taken as a whole, is of average distinctiveness.

The black rectangular background cannot serve to indicate the origin of the goods and it has no trade mark significance. Therefore, it is non-distinctive.

According to case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 74). In the case of word marks, it is irrelevant whether the mark is depicted in lower or upper case letters.

The contested sign is a one-word mark, ‘HAVE1SEE’; taken as a whole, it has no meaning for the relevant public. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case, a part of the relevant public will perceive the presence of the numeral 1 in the word ‘HAVE1SEE’ but will perceive the remaining elements ‘HAVE’ and ‘SEE’ as meaningless. Therefore, for that part of the public the element ‘HAVE1SEE’ of the contested mark has no relation to the relevant goods and is of average distinctiveness.

However, the English-speaking part of the public will perceive the elements ‘HAVE 1’ and ‘SEE’ in the contested sign. As regards ‘HAVE 1’, the same conclusions reached above are applicable here for this part of the public. The element ‘SEE’ means, inter alia, ‘to be conscious of what is around you by using your eyes’ (information extracted from Cambridge Dictionary on 19/10/2018 at https://dictionary.cambridge.org/dictionary/english/see). Bearing in mind that the relevant goods include smartglasses, the element ‘SEE’ is weak for these goods; however, for the remaining goods it is not descriptive, allusive or otherwise weak and its distinctiveness is average.

Neither of the marks has any element that is dominant over others.

Taking into account that the coinciding element ‘HAVE 1’ is meaningful for the English-speaking part of the public, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public.

Visually, the signs coincide in the letters ‘HAVE’ and in the number ‘1’. However, they differ in the letters ‘SEE’, which appear at the end of the contested sign and have no counterpart in the earlier mark, as well as in the graphical depiction of the earlier 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. In the present case, when encountering the contested sign consumers will perceive it as containing the same letters and number as the earlier mark, ‘HAVE1’, which constitutes not only the contested sign’s beginning but also the majority of its characters. The difference between the signs lies only in the three letters at the end of the contested sign.

Taking into account that the beginning and the majority of characters of the contested sign reproduce the verbal element of the earlier trade mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HAVE’ and in the sound of the number 1, present identically in both signs. The pronunciation differs in the sound of the letters ‛SEE’ of the contested sign, which have no counterparts in the earlier mark. Taking into account that, when referring to the signs verbally, consumers will pronounce the sound ‘have1’ identically, and that this sound corresponds to the entire earlier mark and the beginning of the contested sign, the signs’ rhythms and intonations are similar.

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

Conceptually, reference is made to the considerations set out above. Since the signs have in common the element ‘HAVE 1’, they 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.

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 a meaning for 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 lower than average.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

In the present case, the goods are identical or similar (to various degrees). They target both the general public and business customers. The degree of attention of the relevant public may vary from average to high. The signs are visually, aurally and conceptually similar to an average degree.

The signs have in common the sequence of letters ‘HAVE1’, which form the entire earlier mark and the beginning of the contested sign. As explained above in section c) of this decision, the first part of a mark is the part that catches consumers’ primary attention, and generally it has a greater impact on consumers than the end of the mark. Although there are three differing letters at the end of the contested sign, the beginning, which has a greater impact on consumers, contains the same letters and number as the earlier mark, in the same sequence. Therefore, it cannot be excluded that the relevant consumer, even when paying a high degree of attention, may perceive the contested sign as a variation of the earlier mark.

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 undertaking or economically linked undertakings. Since it cannot be excluded that consumers may perceive the contested sign as a variation of the earlier trade mark, it cannot be excluded either that consumers may believe that the owner of the earlier mark manufactures a different line of identical or similar goods under the contested sign. 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).

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.

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. Taking into account the abovementioned principle of interdependence, this also applies to the goods found to be similar to a low degree, as the similarities between the signs described above offset the low degree of similarity between these goods.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 256 313 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicants are the losing parties, they 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

Carmen SÁNCHEZ PALOMARES

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.