OPPOSITION No B 2 993 130

Vinci, 1, Cours Ferdinand de Lesseps, 92500 Rueil-Malmaison, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

Beijing Jin Rui De Lu Technology Co. Ltd., No. 31 Yanqi Street, Yanqi Econonomic Development Zone, Huairou District, 101407 Beijing, People’s Republic of China (applicant), represented by Hoffmann Eitle Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative).

On 08/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 993 130 is upheld for all the contested goods.

2. European Union trade mark application No 17 091 307 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 and services of European Union trade mark application No 17 091 307 for the figurative mark , namely against all the goods and services in Classes 9, 38 and 42. However, on 30/10/2018, in opposition case No B 2 992 660, the Opposition Division rejected the contested sign for all the services in Classes 38 and 42 and part of the goods in Class 9. The opponent was informed and maintained the opposition against the remaining goods in Class 9. The opposition is based on the French trade mark registration No 16 4 315 313 for the word mark ‘VINCI Highways’ and the French trade name and company name ‘VINCI’. The opponent invoked Article 8(1)(b) and Article 8(4) 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, inter alia, the following:

Class 9: Scientific (other than for medical purposes), surveying, photographic, cinematographic, optical, weighing, measuring, signaling, 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, reproduction or processing of sound or images; Magnetic data carriers; automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer software (recorded programs); Peripheral devices for computers; Batteries, electric; Detectors; Diagnostic apparatus not for medical purposes; Smart cards, cards with microprocessors.

The contested goods are the following:

Class 9: Telephone receivers; telephone transmitters; identity cards, magnetic; chronographs [time recording apparatus]; tape recorders; cabinets for loudspeakers; diaphragms [acoustics]; audio- and video-receivers.

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.

The contested telephone receivers; telephone transmitters; audio- and video-receivers are included in the broad category of the earlier apparatus for transmission of sound or images. The contested identity cards, magnetic are included in the broad category of the earlier magnetic data carriers. The contested tape recorders are included in the broad category of the earlier apparatus for recording of sound. The contested chronographs [time recording apparatus] are included in the broad category of the earlier measuring apparatus and instruments. Therefore, all these contested goods are identical.

The contested cabinets for loudspeakers are similar to the earlier apparatus for reproduction of sound because they can coincide in producers and distribution channels. Furthermore they are complementary.

The contested diaphragms [acoustics] are transducers that vibrate to receive or produce sound waves. In a dynamic loudspeaker, a diaphragm is the thin, semi-rigid membrane attached to the voice coil, which moves in a magnetic gap, vibrating the diaphragm and producing sound. It can also be called a cone, although not all speaker diaphragms are coneshaped. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). However, similarity can be found if at least some of the main factors for a finding of similarity, such as having the same producer, having the same public and/or complementarity, are present. In the present case, the contested diaphragms [acoustics] are parts of loudspeakers and are important for the functioning of loudspeakers. Moreover, this component can be sold independently of the final product as a replacement part, in particular in the case of sophisticated and expensive loudspeakers. Therefore, the contested diaphragms [acoustics] are considered similar to a low degree to the opponent’s apparatus for reproduction of sound, which includes loudspeakers, as these goods can be produced and/or sold by the same undertakings and target the same purchasing public.

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 different degrees are directed at the public at large and at professionals. The degree of attention may vary from average to high, depending on the price and the specialised nature of the goods.

3. The signs

VINCI Highways
Earlier trade mark	Contested sign

The relevant territory is France.

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 element ‘Highways’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The common element ‘VINCI’ is also distinctive.

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.

Visually, the signs coincide in ‘VINCI’, albeit a slightly different stylisation in the contested sign which is, however, non-distinctive as it is an ordinary stylisation of letters. The signs differ in the additional element ‘Highways’ of the earlier mark. Since the contested sign is entirely included at the beginning of the earlier mark the signs are similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘VIN-CI’, present identically in both signs. The pronunciation differs in the additional syllables of the contested sign ‘HIGH-WAYS’. Since the signs coincide in their beginnings and the contested mark is fully included in the earlier one, the signs are similar to a high degree.

Conceptually, although it cannot be excluded that some consumers may associate either mark with the famous ‘Leonardo da Vinci’, an Italian polymath of the Renaissance, for the majority of the relevant consumers in France both signs will be perceived as fanciful meaningless terms. 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 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, the degree of similarity between the marks and between the goods or services identified (eleventh recital 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, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 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).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found partly identical, partly similar and partly similar to a low degree. The public’s degree of attentiveness may vary from average to high. The marks in dispute have been found to be visually and aurally similar to a high degree while the conceptual aspect does not influence the assessment of the similarity of the signs.

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).

Considering all the above, there is a likelihood of confusion on the part of the public, even for the goods similar to a low degree due to the similarities of the signs.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 16 4 315 313. 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 ground of the opposition, namely Article 8(1)(4) 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, 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

Gonzalo BILBAO TEJADA

Martin EBERL

Astrid WÄBER

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.