OPPOSITION No B 2 955 550

MPDV Mikrolab GmbH, Römerring 1, Mosbach, 74821, Germany (opponent), represented by MAS & P Miess Altherr Sibinger und Partner Rechtsanwälte Partnerschaftsgesellschaft, Kaiserring 48-50, Mannheim, 68161, Germany (professional representative)

a g a i n s t

Beijing MADV Technology Co. Ltd., No.80, Floor 4, Building 17, Yard 30, Shixing Street, Shijingshan District, Beijing, China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, Athens, 10556, Greece (professional representative).

On 17/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 955 550 is partially upheld, namely for the following contested goods:

Class 9: Time clocks [time recording devices]; downloadable image files; usb flash drives; audiovisual teaching apparatus; computer memory devices; computers; camcorders; remote control apparatus; electronic publications, downloadable; cameras [photography]; computer peripheral devices; computer programs [downloadable software]; stands for photographic apparatus; radios; cases especially made for photographic apparatus and instruments.

2. European Union trade mark application No 16 981 318 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 9: Chargers for electric batteries; optical lenses; batteries, electric; spectacles [optics].

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 981 318 , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 11 693 488 , European Union trade mark registration No 3 574 878 ‘MPDV’ (word mark) and German trade mark registration No 2 065 692 . 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 European Union trade mark registration No 11 693 488.

1. The goods and services

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

Class 9: Computer hardware and computer software, computer programs (recorded or downloadable), data processing equipment, electronic publications (downloadable), interfaces (interfaces or editors for computers).

Class 35: Professional business consultancy, organisation consultancy, personnel management consultancy, business management consultancy; efficiency experts; marketing, market research; opinion polling; public relation services; employment agencies, personnel recruitment; data processing for others; EDP consultancy, updating and maintenance of data and computer databases, computerised file management, organisational project management in the field of electronic data processing, systematisation and collating of data in computer databases.

Class 42: Development, creation, improvement and upgrading of programs for word processing, data processing and process control; Technical applications consultancy with regard to computers and computer programs, in particular for the capture and processing of business data in the fields of manufacturing, personnel and quality control; services of an internet services provider, namely computer programming for solving sector-specific problems on the internet, website creation and design; upgrading of computer software, computer programming, technical project planning, technical project management in the field of electronic data processing, maintenance of computer software, and computer data recovery; surveying.

The contested goods are the following:

Class 9: Time clocks [time recording devices]; downloadable image files; USB flash drives; radios; audiovisual teaching apparatus; computer memory devices; computers; chargers for electric batteries; optical lenses; batteries, electric; camcorders; remote control apparatus; stands for photographic apparatus; cases especially made for photographic apparatus and instruments; electronic publications, downloadable; cameras [photography]; computer peripheral devices; computer programs [downloadable software]; spectacles [optics].

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.

Computer programs [downloadable software]; electronic publications, downloadable are identically contained in both lists of goods (including synonyms).

The contested computers overlap with the opponent’s computer hardware. Therefore, they are identical.

The contested audiovisual teaching apparatus overlaps with the opponent’s data processing equipment. Therefore, they are identical.

Radios “receive, demodulate and amplify radio signals for sound broadcasting stations” (https://www.collinsdictionary.com/dictionary/english/radio_1, consulted on 07/09/2018), in addition to reading optical media and USBs or other data carriers, thereby performing data processing functions. It follows that the contested radios overlap with the opponent’s data processing equipment and are, therefore, identical.

The contested computer memory devices overlap with the opponent’s data processing equipment. Therefore, they are identical.

The contested camcorders; cameras [photography] include digital cameras and camcorders which capture images, video and sound in digital form rather than on photographic film (http://www.oed.com/view/Entry/52611#eid139046236, consulted on 12/09/2018). Many cameras are now included as part of other digital devices such as phones and tablets (https://www.collinsdictionary.com/dictionary/english/camera, consulted on 12/09/2018). In this context, the contested camcorders; cameras [photography] overlap with the opponent’s data processing equipment. Therefore, they are identical.

The contested computer peripheral devices are similar to the opponent’s computer software, as the contested goods are complementary to the opponents goods, can target the same end consumer and be made available to them via the same kinds of commercial channels.

The contested downloadable image files are similar to the opponent’s electronic publications (downloadable), as these goods can share the same nature, purpose and relevant publics. Furthermore, the producers of these goods and the distribution channels used can also coincide.

The contested time clocks [time recording devices] are similar to the opponent’s computer software; computer programs (recorded or downloadable), as these goods are complementary, can target the same public and are usually produced by the same companies.

The opponent’s data processing equipment includes, inter alia, modern data processing photographic apparatus and instruments. The contested stands for photographic apparatus; cases especially made for photographic apparatus and instruments are specialised casings and accessories for these technologically advanced instruments. They are often produced by the same companies which produce the technological apparatus itself. Therefore, they are complementary and can share the same providers and distribution channels as the opponent’s data processing equipment; data processing installations. Therefore, they are similar.

Remote access software is used to be able to control remote computers just as if the computer were right in front of the user (https://www.techopedia.com/definition/23696/remote-computer, consulted on 04/09/2018). It follows that the contested remote control apparatus is complementary to the opponent’s computer software; computer programs (recorded or downloadable). These goods may share manufacturers, as one could reasonably expect that the producers of the contested remote control apparatus would also produce the software or programs required for said equipment to function. Furthermore, these goods can target the same public and be made available for purchase through the same points of sale. Therefore, they are lowly similar.

The contested USB flash drives are complementary and can be produced by the same kind of commercial operators as the opponent’s computer software. Therefore, they are lowly similar.

The remaining contested chargers for electric batteries; optical lenses; batteries, electric; spectacles [optics] do not have any point of connection with the opponent’s goods in Class 9 or services in Class 35 (related to business consultancy, marketing and data processing) and Class 42 (computer programs relating to business and consultancy, website design and project planning). They have different natures, purposes and methods of use. Furthermore, the producers of the remaining contested goods do not habitually produce or provide any of the opponent’s goods and services and utilise different commercial channels to target different end users. These goods cannot be considered complementary or in competition with any of the opponent’s goods and services. Therefore, they are dissimilar.

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 and similar (to varying degrees) are directed at the public at large and at business customers with specific knowledge and expertise, for example in relation to the contested audiovisual teaching apparatus.

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

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 figurative mark is composed of an abstract graphical device in red and white, proceeded by the letters ‘mpdv’ in bold blue stylised lettering. A thin red line appears above and below the verbal and figurative elements, creating a label-like appearance. Owing to its size and bold typeface, the visually eye-catching verbal element ‘mpdv’ dominates the sign. The term ‘mpdv’ is devoid of meaning for the relevant public and has no relationship to the goods at issue, rendering it distinctive.

The contested mark is composed of a verbal element formed by the letters ‘MADV’ and the less distinctive figurative stylisation of the bold black typeface. Despite the referred stylisation, the lettering of the sign will promptly be recognized and read as consisting of the letters ‘MADV’. The element ‘MADV’ is not allusive or otherwise descriptive for the goods covered by the mark, nor does it have any inherent meaning in relation thereto; thus, it is distinctive. As the mark is composed of a sole verbal component, there are no elements which can be deemed clearly more dominant (visually eye-catching).

As correctly pointed out by the opponent, 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 the signs and will more easily refer to the signs in question by their verbal element that by describing their figurative elements (14/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Due to the meaningless nature of the sequences of four letters in both signs, they are likely to be perceived and pronounced by consumers as abbreviations, with an unknown meaning.

Visually, the signs coincide in three of the four letters comprising the distinctive verbal element in both signs ‘M*DV’, differing in only one letter, which appears in the same position in both signs.

The signs differ in the graphical device in the earlier sign, which has no counterpart in the contested sign. Whilst the contested sign features black lettering, the earlier sign contains blue lettering. Although the earlier sign features two red lines which have no counterpart in the contested sign, as they form a label-like structure, the public will not pay as much attention to this detail, nor will they perceive it as having a particularly strong trade mark function. In this regard, it must be highlighted that the verbal elements of the signs will be perceived as the main indicators of commercial origin of the relevant goods and, consequently, will be afforded more trade mark significance by consumers than the particular stylisation features of the signs.

Therefore, the considerable similarity arising from the common string of letters forming the distinctive verbal elements in both signs (and the dominant element in the earlier sign) constitutes a relevant coincidence which will have a significant impact for the consumers.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, both signs are likely to be perceived and pronounced as abbreviations with an unknown meaning, coinciding in the sound of the distinctive string of letters ‛M*DV’, present identically in both signs and constituting the dominant element in the earlier sign.

The pronunciation differs only in the sound of the second letter in both marks (‛P’ vs ‘A’). However, this difference does not alter the shared rhythm and number of syllables in both marks (both will be pronounced as a set of four sounds, corresponding to the pronunciation of an abbreviation composed of four letters). It must also be borne in mind that the public may pay less attention or fail to notice the difference in the second letter, surrounded by an otherwise identical string of letters.

Therefore, the difference in only one letter in the more dominant verbal components through which the public will refer to the marks renders the signs aurally highly similar.

Conceptually, neither of the signs has a meaning for 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.

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

The contested goods have been found partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and services; they are directed at both the general and professional public. The degree of attention of the relevant public may vary from average to high.

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 case at hand, the visual and aural similarities between the signs are considered to outweigh the low degree of similarity between some of the contested goods.

The only verbal element comprising the contested sign nearly entirely reproduces the dominant and distinctive element of the earlier sign, differing solely in one letter which appears in the same position in both signs, ‘M*DV’.

Although the earlier sign features an abstract graphical device which has no counterpart in the contested sign and the signs differ in the stylisation of their lettering, as explained above, these differences in stylisation and in ornamental figurative elements will not have a significant impact for consumers, who will focus essentially on the verbal elements of the signs as the indicators of commercial origin of the respective goods.

As previously noted, due to the fact that the earlier mark is entirely composed of consonants and the contested sign contains only one vowel, both signs are likely to be perceived and pronounced as abbreviations composed of four letters, even if the public is not aware of the meaning of the referred abbreviations. Therefore, the coincidence in three out of four letters, placed in the same positions, in their distinctive verbal elements is a rather significant one.

The difference in a single letters in such a context (verbal elements perceived as an abbreviation composed of four letters) may indeed be overlooked by consumers as it appears in the middle part of said abbreviations and, in any case, is not sufficient to offset the overall similarities resulting from the coincidence in the remaining letters of the signs and from their identical length and structure.

The elements ‘mpdv’ and ‘MADV’ are devoid of meaning for the relevant public; therefore, the aural and visual similarities between the signs are not offset by differing concepts that would help to distance the marks in the public’s mind.

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).

As the distinctive elements in the signs differ in only one letter and otherwise present a similar overall structure and phonetic similarity (as abbreviations) and bearing in mind the principle of imperfect recollection referred above, the Opposition Division finds that is a likelihood of confusion exists on the part of the public in relation to identical and similar goods.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) 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.

The opponent has also based its opposition on the earlier European Union trade mark registration No 3 574 878 for the word mark ‘MPDV’ and the earlier German trade mark registration No 2 065 692 .

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to the dissimilar goods at issue for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Liliya YORDANOVA

Gueorgui IVANOV

Anna MAKOWSKA

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.