OPPOSITION No B 2 998 659

Groupe Canal+, SA, 1 place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Santarelli, 49 avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Shenzhen Valuelink E-Commerce Co., Ltd., 2nd Two-way ChangJiangPu, Heao Community, HengGang Street Office, Longgang District, Shenzhen City, People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 26/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 998 659 is upheld for all the contested goods, namely:

Class 9: Computers; car televisions.

2. European Union trade mark application No 17 117 615 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 117 615 for the word mark ‘VOLTCUBE’, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 8 699 291 for the figurative mark . 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.

1. The goods

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

Class 9: Decoders; remote controls; antennas satellite dishes.

The contested goods are the following:

Class 9: Computers; car televisions.

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 earlier mark is protected for, inter alia, decoders. A decoder is a code-breaking tool that is used to decode encryption methods of all kinds. It is a piece of hardware or software that converts coded data back into their original form. It is typically a device used to decode messages or signals sent in code, for example television signals from a satellite. Such a decoder or setup box, through which television signals are received, breaks these encoded signals down before presenting them in a form that can be displayed on screen.

The contested car televisions are similar to the opponent’s decoders. These goods are complementary and are sold in the same outlets. Furthermore, they are produced by the same undertakings and target the same public.

In addition, there is at least a low degree of similarity between the contested computers and the opponent’s decoders because, in today’s market reality, many households have a television or satellite decoder to which not only a television set but all types of computers and other devices are ‒ or can be ‒ connected, including through Wifi. Video and audio content is not only displayed on television sets but also on PCs, laptops, smartphones and any other device that has a screen. Therefore, the contested computers and the opponent’s decoders are not only IT products that can be produced and marketed by the same IT companies and can share the same distribution channels and sales outlets, but they can also be used together (13/08/2018, R 2187/2017-4, CamCube / LE CUBE (fig.), § 13-17).

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 similar to various degrees are directed at the public at large.

The degree of attention varies from average to high, depending on the price of the goods purchased.

3. The signs

	VOLTCUBE
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 mark is a figurative mark consisting of a white cross or a ‘plus’ sign (the ‘+’ device), placed against a black square background, and the verbal element ‘LE CUBE’ in rather standard grey upper case letters.

The contested sign is the word mark ‘VOLTCUBE’.

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 word elements of the marks are meaningful in French. Furthermore, the opponent claims that its trade mark has enhanced distinctiveness in France. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The word ‘CUBE’, included in both signs, will be understood by the relevant public as a solid object having six plane square faces in which the angle between two adjacent sides is a right angle. Although several of the goods in Class 9 can be cube shaped (05/02/2016, R 1657/2015-2, SCANCUBE), this is generally not the shape of the goods concerned (i.e. decoders); therefore, for these goods, the word ‘CUBE’ can be considered distinctive (13/08/2018, R 2187/2017-4, CamCube / LE CUBE (fig.), § 22).

The French definite article ‘LE’ is merely a basic grammatical device that is used to introduce the masculine noun that follows it. It is non-distinctive.

The ‘+’ device of the earlier mark is visually co-dominant with the verbal element, but it is weak, since it will be associated by the majority of the public with the mathematical sign for addition and as corresponding to the word ‘plus’; therefore, it will be perceived in relation to the goods in question as a laudatory element in that it generally indicates superior value or greater quantity (12/12/2014, T‑591/13, News+, EU:T:2014:1074, § 29). The fact that this element is placed against a black square does not change this finding (24/11/2016, R 1824/2015-2, Bild+ (fig.) / DEVICE OF A WHITE CROSS WITHIN A BLACK SQUARE (fig.), § 42-49). The use of backgrounds such as squares is quite common (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T‑37/16, CAFFÈ NERO, EU:T:2016:634, § 42).

It follows that the most distinctive element in the earlier mark is the word ‘CUBE’.

The component ‘VOLT’ in the contested mark will be understood as referring to a unit used to measure the force of an electric current. This component has no direct meaning in relation to the contested goods and therefore has an average degree of distinctiveness.

Although the average consumer normally perceives a mark as a whole and does 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). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers may break them down into smaller parts.

In the present case, the elements ‘VOLT’ and ‘CUBE’ are meaningful for the relevant public and the Opposition Division therefore considers that the public will dissect the contested sign into these individual elements.

Visually, the signs are similar, as they coincide in the element ‘CUBE’. They differ in the component ‘VOLT’ in the contested mark, in the weak element ‘LE’ and in the earlier mark’s figurative elements, that is, the ‘+’ device and the colours used.

It is true that consumers generally pay greater attention to the beginning of a mark than to its end (17/03/2004, T‑183/02 and T‑184/02, Mundicor, EU:T:2004:79, § 83). Nonetheless, the beginning of a mark cannot call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (26/062008, T‑79/07, Polaris, EU:T:2008:230, § 42).

Given the foregoing, and taking into account that the most distinctive element of the earlier mark is reproduced and will be perceived in the contested sign, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the component ‘CUBE’, present identically in both signs, and differ in the sounds of their differing elements, namely ‘LE’ in the earlier mark and ‘VOLT’ in the contested sign.

The Opposition Division considers that the figurative ‘+’ device of the earlier mark will not be pronounced, as, in general, it is through verbal elements that the public refers to marks.

Considering the foregoing, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering the limited impact of the elements ‘+’ and ‘LE’, the main concepts conveyed by the marks are those of the coinciding element ‘CUBE’ and the additional element ‘VOLT’ in the contested sign. Therefore, 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.

4. Distinctiveness of the earlier mark

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long-standing and intensive use in France in connection with some of the goods and services for which it is registered, namely decoders and associated services. 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 evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Attachment 4: packaging on which the earlier mark is reproduced. The date 31/12/2011 is legible.

• Attachment 5: a Wikipedia article, with a partial translation provided by the opponent, which states that ‘During September 2009, the advertising campaign for +Le Cube on television was run by Pauline Lefèvre, miss Weather Forecast of Canal+, who parodies advertisement for make-up products. In February 2009, Canal+ published the number of +Le Cube decoders proposed for rental on its commercial network: 165 000 subscribers among 10,2 million subscribers of CANAL+GROUP purchased this subscription.’

• Attachment 6: a guide to the ‘+Le Cube’ decoder and its features, which include access to numerous applications (such as Deezer, Radioline, La Chaîne Météo and My Junior Nickelodeon). This document is dated 28/10/2011. The document is in French but accompanied by a partial translation.

• Attachment 7: screenshots from videos presenting the ‘+Le Cube’ decoder that were posted on YouTube in 2013 (accompanied by a partial translation).

• Attachment 8: screenshots from the opponent’s website www.lesoffrescanal.fr obtained using the Wayback Machine; the screenshots are dated, inter alia, 01/05/2013, 02/07/2014, 05/04/2015 and 22/05/2015.

• Attachment 9: screenshots from the opponent’s website www.canalplus-caraibes.com. One page is dated 04/07/2014.

• Attachment 10: commercial brochures dated January and September 2015. In particular, it is stated that ‘+Le Cube is the best TV experience’ (the document is in French but accompanied by a partial translation).

• Attachment 11: images extracted from www.pluslecube.fr, dated between 2012 and 2014, describing the features of ‘+Le Cube’.

• Attachment 12: an advertising image published in Auto Plus magazine with the text: ‘The unique decoder 100% TV which reinvents the TV’. This advertisement refers to a promotional offer valid from 22/05/2013 to 25//06/2013.

• Attachment 13: screenshots from the opponent’s website www.pluslecube.fr, dated during 2012-2014, featuring the text ‘+ THE CUBE The new TV experience by canal + and canalsat’.

• Attachment 14: screenshots from a promotional video posted on YouTube in 2013. They are accompanied by the advertising company’s invoice.

• Attachment 15: screenshots from a promotional video posted on YouTube in May 2014.

• Attachment 16: screenshots from a parody video posted on YouTube in January 2015.

• Attachment 17: advertising brochures relating to the earlier mark. These brochures are not dated. They are in French but accompanied by the following translated text: ‘+Le Cube, THE HD WIFI DECODER WITH AN EXTERNAL DRIVE’.

• Attachment 18: images of the Satquiz game created by the opponent to promote the earlier mark. The extracts from the Wayback Machine give the date as 21/09/2012. They are ​​accompanied by an internal study on the number of participants in this game.

• Attachment 19: photographs of products intended to promote the earlier mark, accompanied by corresponding invoices. The invoices are dated 2010 and 2011.

• Attachments 20-22: internal documents claiming a high number of subscribers.

• Attachment 23: press articles mentioning the decoder ‘The Cube’, including from the following print and digital publications (accompanied by partial translations):

- Télé satellite numérique, February 2011, an article stating that ‘Le Cube is the CANAL+ premium device’;

- Audiovideohd.fr, 18/03/2011, an article indicating that Alice in Wonderland was to be broadcast that night for Canal+ subscribers with the ‘+ Le Cube’ decoder;

- Télé Cable Sat, 23-29/04/2011, an article entitled ‘The recorder decoders’, mentioning ‘+ The Cube’ and with an insert dedicated to these decoders;

- Echos du Net, 19/12/2017, an article entitled ‘+ The TNT Cube soon available, for the 1^st time with SFR’;

- Geosat, an article entitled ‘CANAL subscription via TNT +LE CUBE decoder’ (the article is not dated but a comment indicates that the date was 30/04/2012);

- Boursier.com, 31/10/2012, an article entitled ‘Canal+: soon to be an “triple play” offer’, in which it is stated that ‘The other offers would include the Canal+ decoder (+Le Cube)’;

- Les Echos.fr, 30/10/2012, an article entitled ‘Canal+ is thinking about triple play packages’;

- HD motion, 02/09/2013, an article entitled ‘Canal+/Canalsat: drop in hard drive of the +Le Cube TNT/Satellite decoders?’;

- HD motion, 14/10/2013, an article entitled ‘The new interface of the decoder TNT “+ The Cube” with OTT service, in beta test’;

- Next INpact, an article entitled ‘Canal+ intends to broadcast its channels directly by Internet’, stating that: ‘More than five years ago, Canal+ launched +Le Cube. This HD decoder was above all dedicated to satellite’s customers in order to offer new services, including the new ones. Since then, the decoder evolved and a TNT version has been developed’;

- Ariase.com, 06/05/2015, an article referring to the opponent’s mark ‘+ The Cube’ and stating that ‘Canal+ and Canalsat will provide HD on July 1^st’;

- Adsletfibre.fr, 06/07/2015, an article entitled ‘CANAL + and Canalsat on sale from 16.90 Euros / month’, in which the decoder ‘+ The Cube’ is mentioned (and an image is included);

- HD motion, 07/01/2015, an article entitled ‘Dezeer, now available via Canal’s +Le Cube decoder’;

- Univers Freebox, 28/04/2015, an article entitled ‘Free and Groupe Canal+ end the broadcast of their programs on AliceBox’, in which a press release from Canal + that mentions the opponent’s brand is reproduced;

- Univers Freebox, 20/08/2015, an article entitled ‘New update of the Android app myCanal’ in which the opponent’s mark ‘+ The Cube’ is mentioned;

- Télé satellite numérique, 11/02/2016, an article mentioning the opponent’s brand.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for decoders in Class 9.

It is settled case-law that ‘in making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations’ (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

In the present case, the Opposition Division considers that the evidence submitted shows that the earlier mark has been used for a sufficient amount of time and sufficiently intensively, and that it has enhanced distinctiveness. The opponent has provided the Opposition Division with sufficient information (including in attachments 7, 12, 14, 15, 16 and 19) to demonstrate that the mark has been promoted. Moreover, the opponent’s mark is frequently referred to in both the specialised and the general press, as can be seen from the press articles (attachment 23). Therefore, the Opposition Division considers that there is sufficient information, taken as a whole, to consider that the distinctiveness of the earlier mark has been increased by its use in relation to decoders.

5. Global assessment, other arguments and conclusion

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 signs are visually, aurally and conceptually similar to an average degree due to the presence of the coinciding element ‘CUBE’, which plays an independent distinctive role in both marks.

The contested goods are similar to various degrees to the opponent’s goods. The relevant public displays a degree of attention varying from average to high when purchasing the goods.

Moreover, 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).

The earlier mark has enhanced distinctiveness in relation to the relevant goods, namely decoders in Class 9. According to the case-law of the Court, the more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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). In the present case, the enhanced distinctiveness of the earlier mark and the degree of similarity between the signs will offset the low degree of similarity between some of the goods at issue.

Considering all the above, there is a likelihood of confusion on the part of the French-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 registration No 8 699 291. It follows that the contested trade mark must be rejected for all the contested 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.

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

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.