OPPOSITION No B 3 013 763

Koninklijke Philips N.V., High Tech Campus 5, 5656 AE, Eindhoven, Netherlands (opponent), represented by Algemeen Octrooi- en Merkenbureau B.V., Professor Dr. Dorgelolaan 30, 5613 AM, Eindhoven, Netherlands (professional representative)

a g a i n s t

Shenzhenshi Anding Xinxi Jishu Youxian Gongsi, Shenzhenshi Guangming Xingqu Gongming Jiedao Citianpu Shequ Aidimengtuo Gongyeyuan B Dong 3 Lou, Shenzhen, Peoples’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 20/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 013 763 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 225 202 for the word mark ‘PHIPUDS’. The opposition is based on European Union trade mark registration No 205 971 for the word mark ‘PHILIPS’ and international trade mark registration No 991 346 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 205 971:

Class 8: Hand tools and instruments, not being drivers and bits for driving screws, bolts and rivets having recessed heads; cutlery, forks and spoons; side arms; welding tongs; dies; shaving apparatus, hair-clippers; parts and accessories of the said goods not included in other classes.

International trade mark registration No 991 346:

Class 8: Hand tools and instruments, not being drivers and bits for driving screws, bolts and rivets having recessed heads; cutlery, forks and spoons; sidearms; razors, hair-clippers; parts of the aforesaid goods not included in other classes.

The contested goods are the following:

Class 8: Razors; Curling tongs; Razors, electric or non-electric; Hair clippers for personal use, electric and non-electric; Depilation appliances; Electric hair clippers; Electric hair straighteners; Nail polishers (Electric -); Nail polishers (Non-electric -).

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

PHILIPS EUTM No 205 971 IR No 991 346	PHIPUDS
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 earlier EUTM No 205 971 is a word mark consisting of ‘PHILIPS’ and the earlier IR No 991 346 is a figurative mark consisting of the verbal element ‘PHILIPS’ written in bold upper case stylised typeface. The contested sign is a word mark consisting of ‘PHIPUDS’.

The word ‘PHILIPS’ composing the earlier marks will be perceived by part of the relevant public as a surname. Since it has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal. For the remaining part of the public, the earlier marks have no meaning and, therefore, their distinctiveness is average as well.

The verbal element composing the contested sign, ‘PHIPUDS’, does not have any meaning and, therefore, its distinctiveness is average.

The earlier figurative mark has no elements which could be considered more dominant (visually eye-catching) than other elements.

Visually, all the marks contain seven letters of which the first three (‘PHI’) and the last (‘S’) are identical. The signs contain additional letter ‘P’, however it occupies different positions within the signs, namely the sixth in the earlier marks and the fourth in the contested sign. The marks differ in the letters ‘LI’ of the earlier marks and ‘UD’ of the contested sign. The opponent claims that these dissimilar letters are visually similar. The Opposition Division disagrees with this opinion because the overall shape of these letters and the particular distribution of lines of which the letters are composed are dissimilar. As regards the earlier IR, the signs differ additionally in the stylisation of the earlier mark.

Although it is true, as claimed by the opponent, that the signs coincide in their beginnings, which is the part that first catches the consumer’s attention, it must be recalled that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by the marks. In this regard, it is important to point out that the coinciding letters described above do not constitute an independent component in neither of the marks under comparison. Indeed, consumers will not artificially dissect the overlapping letters, in particular as such coinciding sequences do not form meaningful elements per se.

As regards the relevance of the letters in common, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T 402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C 193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The conflicting marks produce an overall visual impression which is quite removed from one another. The series of letters ‘PUD’ in the contested mark can clearly be distinguished from the sequence of letters ‘LIP’ of the earlier marks. Although the signs coincide in their beginnings where the consumers’ attention is focused, as well as in their final letter (‘S’), the signs have different composition of their central parts that create distance between the signs. Therefore, the signs can be considered visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the marks coincides in the sound of the letters ‘PHI*S’, present identically in the signs. The pronunciation differs in the sound of the letters composing the second syllable of the signs, namely ‘LIP’ of the earlier marks and ‘PUD’ of the contested sign. The pronunciation of these letters creates different overall impression of the conflicting signs. Therefore, the signs can be considered aurally similar only to a low degree.

Conceptually, although part of the public in the relevant territory will perceive the meaning of the earlier marks as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

However for the remaining part of the public, the earlier marks have no meaning. Therefore, neither of the signs has a meaning for that part of 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 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.

According to the opponent, the earlier trade marks have reputation in the European Union in connection with Class 8 (of the earlier EUTM No 205 971): Hand tools and instruments, not being drivers and bits for driving screws, bolts and rivets having recessed heads; cutlery, forks and spoons; side arms; welding tongs; dies; shaving apparatus, hair-clippers; parts and accessories of the said goods not included in other classes and for Class 8 of the IR No 991 346: Hand tools and instruments, not being drivers and bits for driving screws, bolts and rivets having recessed heads; cutlery, forks and spoons; sidearms; razors, hair-clippers; parts of the aforesaid goods not included in other classes. 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:

• Annex A- a printout concerning the Chinese registration for FEILIPU;

• Annexes B1 and B2 –internet printouts from www.amazon.com, www.walmart.com, among others, showing beauty and personal care products;

• Item 1 -Extracts of the ‘Best Global Brands’ reports for the opponents’ mark ‘PHILIPS’ for the years 2015-2017;

• Item 2 - Extracts from the opponent’s website at www.philips.com referring to the history of the opponent’s company and its trademarks; extracts from the Wikipedia referring to ‘Philishave’;

• Item 3 - Extracts of the annual reports for the years 2016 and 2017 referring to turnover and sales volumes of Philips Group;

• Item 4 – Affidavit issued by the Manager Brand Protection Koninklijke Philips N.V, Jan de Visser, issued on 10/05/2018 including sales figures for ‘beauty care products’ for 2008-2017;

• Item 5 – The above-mentioned affidavit including market share figures – it shows total market figures for 2012-2017 for the following categories: men’s shaver; beard trimmer, body groomer, men's laser/ipl, detail trimmer, multigrooming kit, hybrid groomer, hair clipper; disc, ladies' e-lysis, epilator, ladies' shaver, ladies' trimmer, ladies' trim&shape, ladies' las/ipl, wax; curling, straightener, crimper, crimp./straight., curling/waving wand, funstyler/other, heated curling brush, heated rollers, hot air styler, ionic hairbrush, multi styler, rotating brush, heated straightening brush, straight.+tong, tong, tong+brush, n.a., pistol grip, hood. The total market figure for each year covers European and non-European countries, namely Austria, Belgium, Croatia, Czech Republic, Denmark, Finland, France, Germany, Great Britain, Hungary, Italy, Netherlands, Poland, Romania, Russia, Slovakia, Slovenia, Spain, Sweden, Switzerland;

• Item 6 – Undated extract attached to the above affidavit including a table referring to Philips Brand Preference showing the following categories: personal care; health and wellness; domestic appliances; coffee; sleep and respiratory care;

• Item 7 – Tables included in the above-indicted affidavit referring to media spending from 2015 until January-April 2018 for the category of ‘male grooming’: shaving, grooming; MG range’. Only the figures for the category of ‘shaving’ include reference to the relevant EU territories for the years from 2016 until January-April 2018; extracts from www.youtube.com showing Philips AquaTouch Shaver and Shaver series 700;

• Item 9 – Extracts showing awards/certificates for the opponent’s products; it includes, among others, ‘good design award’ which is a design evaluation system in Japan, Australian design awards, China’s most successful design award, Singapore Good Design;

• Item 10 – Extracts from the opponent’s website at www.philips.com showing lines of products under the category of ‘personal care’;

• Item 11 – An extract from the opponent’s website at www.philips.com – ‘Philips- Location selector’; extracts from www.mediamarkte.de and www.amazon.fr; list of retailers of the opponent’s products in the EU countries;

• Item 12 - List of the opponent’s trade mark registrations for PHILIPS in Class 8.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Despite providing certain indications on the degree of recognition of the earlier trade marks by the relevant public, the evidence falls short on giving sufficient information originating from independent sources that would allow the Opposition Division to draw solid conclusions about the degree of recognition of the earlier marks in relation to the relevant goods at issue.

The evidence emanates almost in its entirety from the opponent directly and contains information originating mainly from the opponent’s annual reports, its websites, the Wikipedia or tables including revenues contained in the affidavit. As far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements coming from the sphere of the opponent itself or its employees and statements drawn up by an independent source, following the established case-law (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T-463/1, MB, EU:T:2014:935, § 54). Statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240; 31/08/2010, B 1 568 610). Such evidence cannot in itself sufficiently prove repute and, in general, further material is necessary. Therefore, the probative strength of the further material submitted is very important.

Various pieces of information submitted refer to the situation of the company and/or of the ‘PHILIPS’ trade marks on the world market. This evidence is inadequate as demonstration that the trade marks at issue were known by a considerable number of relevant consumers of the goods concerned in the European Union before September 2017. In particular, several pieces of evidence submitted concern the leadership position of the opponent’s company (for example, that it was ranked in the 41^st position amongst the top 100 Best Global Brands in 2016 and 2017). Therefore, it is not accurate to prove reputation of the marks at issue for the relevant goods in Class 8.

The figures for advertising and revenues are found in tables attached to the affidavit, and they are not supported by any further evidence from independent third parties. The market share figures correspond globally to European and non-European countries. The overall data on a global level does not make it possible to draw conclusions as to the perception of the marks at issue on the European market. The submitted media spending figures does not show the relevant territory they refer to, with exception of ‘shaving’. These, nonetheless, refer to a very limited period of time, namely from 2016 until April of 2018.

As to the number of the opponent’s registration in Europe or worldwide, in itself it is a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations may indirectly attest to an international circulation of the brand, but cannot decisively prove in itself a reputation. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant ‘to the extent that they reflect use or recognition of the mark’.

As to the awards granted to the opponent’s products, they reveal certain quality aspects of the opponent’s products, but as a rule they are not sufficient in themselves to establish reputation as they cannot give first-hand information about trade mark awareness.

On 31/10/2018 the opponent further submitted an untranslated copy of a German Court Decision issued on 19/07/2018 in a conflict concerning the opponent and a third party - Whenzou Pritech Industrial Co and Elaine’s warm House and the same marks as in the present case. The opponent states that the Court of Hamburg prohibits by means of temporary injunctions the offering of products bearing the sign ‘PHIPUDS’. Since this evidence is not in the language of the proceeding, it seems to concern different kind of proceedings where other requirements apply, the Office does not take it into account.

In the absence of further objective evidence, the documents filed are insufficient to prove the degree of awareness of the opponent’s marks and cannot be deemed to reinforce the evidential value of the assertions made in the opponent’s submissions either. The materials submitted do not support a conclusion that the earlier marks were known by a significant part of the relevant consumers for the goods in Class 8 concerned. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the trade marks on which the opposition is based have 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 public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are assumed to be identical. The degree of distinctiveness of the earlier marks is average. The degree of attention of the relevant public is considered to be average.

As regards the conflicting signs, they have been found visually and aurally similar to a low degree. In addition, the signs are not conceptually similar. For part of the public a conceptual comparison is not possible, and in such a case, the conceptual aspect does not influence the assessment of the similarity of the signs.

The marks display a certain similarity given that they have the letters ‘PHI*-S’ in common. Although the signs also coincide in their further consonant ‘P’, given it is placed in a different order in the signs, it creates different perception within the signs.

The further two letters of the signs, namely ‘LI’ in the earlier marks and ‘UD’ in the contested sign are clearly different, both visually and phonetically. Contrary to the opponent’s allegations, these letters are phonetically evidently not similar. The sound of these letters is noticeably different and it will not go unnoticed. The differences between the signs in their middle parts are considered to have a decisive impact on the overall impression of the signs. The relevant public will grasp these differences and distinguish the signs from each other. Additionally, for part of the public, the signs are not conceptually similar.

Therefore, the Opposition Division finds that in the case at issue the arrangement of the central parts of the signs plays an important differentiating role creating different overall impression of the signs excluding a risk that the public might believe that the goods in question come from the same undertaking, or from economically-linked undertakings. That conclusion cannot be called into question, even if the end user only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26, and 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 28).

All these differences between the signs will not go unnoticed to consumers and are sufficient to justify the conclusion that they are unlikely to confuse the signs in question, even in relation to identical goods.

Therefore, based on a global assessment of all the relevant factors and considering that it has not been demonstrated that the earlier marks enjoy an enhanced distinctiveness in the relevant territory, it must be concluded that the differing elements of the marks are clearly perceptible and safely counteract the similarities between them, resulting in different overall impressions.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The Opposition Division will continue with the examination of the opposition under Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.