OPPOSITION No B 3 016 907

Anker Innovations Limited, Room 1318-19, Hollywood Commercial Center 610 Nathan Road, Mongkon, Kowloon, Hong Kong (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London, EC4Y 0DA, United Kingdom (professional representative)

a g a i n s t

Beijing Nebula Science and Technology Co., Ltd., Room 102, Block C, I M WAY (Zhizao Street), Haidian District, Beijing, 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 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 907 is partially upheld, namely for the following contested goods:

Class 9: Virtual reality game software; liquid crystal displays; computer software for processing digital images; closed circuit television systems (CCTV); portable media players; portable video cameras with built-in videocassette recorders; HD (high definition) televisions; cameras for monitoring and inspecting equipment in a nuclear power station; recording devices for sound and image carriers; webcams; rearview cameras for vehicles; video monitors; digital cameras for industrial use; remote controls; theft prevention installations, electric.

2. European Union trade mark application No 17 139 304 is rejected for all the above goods. It may proceed for the remaining goods.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 17 139 304, for the word mark ‘Nebula Empire’. The opposition is based on European Union trade mark registrations No 15 631 071 and No 16 128 861 for the word mark ‘NEBULA’. 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 the following:

European Union trade mark registration No 15 631 071 (earlier mark 1)

Class 9: Apparatus for recording, transmission or reproduction of sound; speakers; wireless headsets for smartphones; earphones and headphones; wireless transmitters and receivers; wireless adapters for computers and audio equipment; audio amplifiers; bass amplifiers; sound amplifiers.

European Union trade mark registration No 16 128 861 (earlier mark 2)

Class 9: Picture projectors; video projectors; LCD projectors; portable projectors; televisions; wearable electronic devices.

The contested goods are the following:

Class 9: Virtual reality game software; liquid crystal displays; computer software for processing digital images; closed circuit television systems (CCTV); portable media players; portable video cameras with built-in videocassette recorders; HD (high definition) televisions; tachographs; cameras for monitoring and inspecting equipment in a nuclear power station; recording devices for sound and image carriers; image intensifiers; webcams; rearview cameras for vehicles; video monitors; digital cameras for industrial use; remote controls; theft prevention installations, electric.

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.

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 contested HD (high definition) televisions are included in the broader category of the opponent’s televisions of earlier mark 2. Therefore, they are identical.

The contested closed circuit television systems (CCTV), webcams, portable video cameras with built-in videocassette recorders, rearview cameras for vehicles, digital cameras for industrial use, cameras for monitoring and inspecting equipment in a nuclear power station are all types of apparatus for recording images. The contested theft prevention installations, electric are electrical installations used to prevent or deter the unauthorised appropriation of items considered valuable. As such, they can include apparatus for recording images (e.g. a surveillance camera). Therefore, all these contested goods are similar to the opponent’s picture projectors, video projectors, LCD projectors, portable projectors and televisions of earlier mark 2, being types of apparatus for the reproduction of images, since they serve the purpose of displaying captured or pre-recorded images. Furthermore, they can have the same producers, relevant public and distribution channels.

The contested recording devices for sound and image carriers, video monitors and portable media players overlap with the opponent’s apparatus for recording, transmission or reproduction of sound of earlier mark 1, as the contested goods can be used for recording or reproducing sound. Therefore, they are identical.

The contested liquid crystal displays are flat-panel displays commonly used in the opponent’s televisions of earlier mark 2. The contested remote controls, albeit not a physical part of the opponent’s televisions, are generally sold together with them as an indispensable component allowing the opponent’s devices to be operated from a short distance. Therefore, the public may expect these contested goods to be produced by, or at least produced under the control of, the same manufacturer as the finished product. For example, even if these parts are manufactured by a subcontractor, they are often branded with the mark of the manufacturer of the end product, which, from the perspective of the end user, is a factor that suggests that the goods are complementary. Furthermore, these goods target the same public, are sold through the same distribution channels and may be produced by the same undertakings. Therefore, they are similar.

Computer software for processing digital images refers to computer programs that may be used to increase the functionality of the opponent’s picture projectors; video projectors; LCD projectors; portable projectors of earlier mark 2, insofar as the opponent’s goods are digital. Consequently, these goods target the same public and can be produced by or under the control of the same undertaking. They are complementary and they are distributed through the same channels. Consequently, they are similar.

Virtual reality game software is often used by consumers through dedicated consoles and other related hardware (e.g. 3D glasses) produced by or under the control of the same undertaking and generally bearing the same brand. The opponent’s picture projectors; video projectors; LCD projectors; portable projectors of earlier mark 2 are hardware devices that can be used in connection with video game consoles in home cinemas and can even be specifically designed for this purpose. As such, they can contribute to improving the gaming experience and making it seem more similar to the real world. Consequently, although these goods are different in nature, they can have similar purposes and target the same public, they can be used together and the consumers of these goods might think that they had the same source, namely a manufacturer of video games, dedicated consoles and other related hardware. Therefore, they are similar.

The contested image intensifiers are optical enhancement devices allowing other devices, such as night vision devices and medical imaging devices, to function by converting low levels of light into visible light. They are optical instruments with a very specific function that are included in highly specialised goods. Consequently, they are dissimilar to the opponent’s picture projectors; video projectors; LCD projectors; portable projectors; televisions of earlier mark 2. Although it cannot be excluded that a projector or other piece of apparatus for image reproduction might be used to reproduce images recorded using a specialised device equipped with an image identifier, these goods are not complementary in the sense that one is indispensable for the use of the other such that the consumer might think that they originated from the same undertaking. Taking all the above into account, they have different natures and purposes, they target different publics and they are neither complementary nor in competition. Moreover, the consumer would not expect them to be produced by the same producers and they are distributed through different specialised channels.

Furthermore, these contested goods have no similarities, in terms of their nature, usual origin or method of use, to the remaining goods of earlier mark 2, namely wearable electronic devices or the goods of earlier mark 1, namely apparatus for recording, transmission or reproduction of sound; speakers; wireless headsets for smartphones; earphones and headphones; wireless transmitters and receivers; wireless adapters for computers and audio equipment; audio amplifiers; bass amplifiers; sound amplifiers. In addition, the contested goods and the opponent’s goods mentioned above are neither in competition nor complementary to one another. Therefore, they are dissimilar.

The contested tachographs are devices fitted to a vehicle that automatically record its speed and distance and, as such, they are included in the broad category of measuring, detecting and monitoring instruments. These contested goods have no similarities, in terms of their nature, usual origin or method of use, to the goods of the earlier marks, which are (i) apparatus for recording, transmission or reproduction of sound; (ii) apparatus for reproduction of images; (iii) wireless transmitters, receivers and adapters; (iv) wearable electronic devices; and (v) audio devices. In addition, the contested goods and the opponent’s goods are neither in competition nor complementary to one another. 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, some of the goods found to be identical or similar (e.g. virtual reality game software, portable video cameras with built-in videocassette recorders) target the public at large, some (e.g. digital cameras for industrial use) target business customers with specific professional knowledge or expertise, and others (e.g. closed circuit television systems (CCTV)) target both a specialised public and the general public, since such goods may be purchased directly for private use.

Therefore, the degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

NEBULA	Nebula Empire
Earlier trade marks	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.

Both marks are word marks. In the case of word marks, it is the word as such that is protected, not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The element ‘NEBULA’ is both the sole element constituting the earlier marks and the first of two elements (the second being ‘Empire’) constituting the contested sign.

The coinciding element ‘NEBULA’ is an English word referring to a cloud of dust and gas in space. The second element of the contested sign, ‘Empire’, is also an English word, and its meaning (i.e. ‘a group of countries ruled by a single person, government, or country’) will be easily grasped by the English-speaking part of the public. Since these verbal elements are meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the likelihood of confusion may be higher.

Since the coinciding element ‘NEBULA’ and the additional element ‘Empire’ in the contested sign have no meaning related to the relevant goods, they are distinctive.

Visually and aurally, the signs are similar to the extent that they coincide in the element ‘NEBULA’, which constitutes the earlier marks in their entirety and the first element of the contested sign. However, the signs differ in the second element, ‘Empire’, of the contested sign, which has no counterpart in the earlier marks.

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.

It is also important to note that, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).

Furthermore, although ‘Empire’ is a distinctive element in itself, the coinciding element ‘Nebula’ retains an independent distinctive role within the contested mark, as it bears no relation to the relevant goods (see, by analogy, 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30).

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

Conceptually, the signs are similar to the extent that the coinciding element ‘NEBULA’ will be understood, as explained above, as referring to a cloud of dust and gas in space. The signs differ in the additional element, ‘Empire’, of the contested sign, which, in connection with the preceding element ‘NEBULA’, will convey the idea of an empire of clouds of dust and gas in space.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

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.

In the present case, the contested goods are partly identical or similar and partly dissimilar to the opponent’s goods. The earlier marks have a normal degree of distinctiveness. The degree of attention of the public varies from average to higher than average. However, 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 signs in question are visually, aurally and conceptually similar to an average degree for the part of the public on which the comparison is focused.

In the light of the foregoing, the degree of similarity between the marks at issue is sufficient to consider that a substantial part of the relevant public could reasonably believe that the identical or similar goods bearing the word mark ‘Nebula Empire’ came from the same undertaking as those bearing the earlier word marks ‘NEBULA’, or that they came from economically linked undertakings.

In particular, due to the commonality in the element ‘Nebula’, which is the first element of the contested sign and the sole element of the earlier marks, when consumers encounter the contested mark in relation to goods that are identical or similar to those of the earlier marks, they may think that the word ‘Empire’ merely indicates a new line of the opponent’s ‘NEBULA’-branded products.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the significant part of the English-speaking part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 15 631 071 and No 16 128 861. 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 that the contested mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.

The rest of the goods are dissimilar to the opponent’s goods. 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.

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

Alicia BLAYA ALGARRA

Rosario GURRIERI

Adriana VAN ROODEN

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.