OPPOSITION No B 3 016 444

SEBANG Global Battery Co., Ltd., 433, Seolleung-ro, 135-919, Gangnam-gu, Seoul, Republic of Korea (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Shenzhen Xiaoaibeihui Keji Youxiangongsi, Longhuaxinqu, Guanlanjiedao, Huanguannanlu, Chuangkedasha 3A Haofang, Shenzhen (Guangdong) 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 09/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 444 is partially upheld, namely for the following contested goods:

Class 9: Computer hardware; mouse [computer peripheral]; scales; binoculars; radios; mobile telephones; camcorders; headphones; tripods for cameras; optical goods; telescopes; sound transmitting apparatus; rechargeable electric batteries.

2. European Union trade mark application No 17 244 716 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 244 716 ‘BEBANG’, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 9 793 647 . 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 9 793 647.

1. The goods

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

Class 9: Batteries, accumulators; galvanic batteries, dry cells (batteries), high-voltage batteries, photovoltaic cells, nickel-cadmium batteries, wet cells, anode batteries, fuel cells, electric batteries, grids for batteries, casings for batteries, ignition batteries, solar energy batteries, including all the aforesaid goods for use in vehicles, lift trucks and golf buggies.

The contested goods are the following:

Class 9: Computer hardware; mouse [computer peripheral]; scales; binoculars; signal lanterns; radios; mobile telephones; camcorders; headphones; tripods for cameras; surveying instruments; teaching apparatus; optical goods; telescopes; electronic sensors; sound transmitting apparatus; protection devices for personal use against accidents; anti-theft warning apparatus; spectacles [optics]; rechargeable electric batteries.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, 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 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 rechargeable electric batteries are included in the broad category of the opponent’s electric batteries. Therefore, they are identical.

The contested mouse [computer peripheral]; binoculars; telescopes; tripods for cameras; optical goods; camcorders include a wide range of apparatus that may function through the use of electricity, for instance smart glasses, digital binoculars and cameras. The opponent’s accumulators are a type of apparatus intended for accumulating electricity and may be indispensable for the functioning of the contested goods. In particular, the goods at issue usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

Similarly, the contested sound transmitting apparatus; radios; mobile telephones; headphones are devices that may work through the use of electricity. These goods are similar to the opponent’s accumulators, as the latter are indispensable for the functioning of the former. In particular, they usually have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested computer hardware is similar to the opponent’s accumulators, given that these goods usually have the same relevant public and distribution channels and, furthermore, are complementary.

The contested scales are devices used for measuring weight. These goods are similar to a low degree to the opponent’s electric batteries, as they usually have the same producers, relevant public and distribution channels.

The contested spectacles [optics]; signal lanterns; surveying instruments; teaching apparatus; electronic sensors; protection devices for personal use against accidents; anti-theft warning apparatus are very specific devices that are dissimilar all the opponent’s goods. Notwithstanding may exist complementarities with some of the relevant goods, this factor is not enough for a finding of similarity. In particular, these goods have a different purpose, method of use and distribution channels. In addition, they have different producers and relevant public. Furthermore, they are not in competition.

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 various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

	BEBANG
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).

Whereas it cannot be excluded that part of the English-speaking public will perceive the last four letters in the signs (‘BANG’) as referring to a sudden loud noise, such as the noise of an explosion, a very substantial part of the public will perceive this part of the signs, and the signs as a whole, as meaningless. The Opposition Division will focus its assessment on this latter part of the public, as doing otherwise would require the consideration of multiple scenarios concerning small parts of the public, which would have no bearing on the final outcome of the case. In this regard, it must be taken into account that it is not necessary to establish that there is a likelihood of confusion for the entire relevant public (20/07/2017, T‑521/15, Diesel v EUIPO, EU:T:2017:536, § 69); it is sufficient that a significant part of the relevant public may be confused about the origin of the goods.

Visually, the signs coincide in the letters ‘EBANG’. However, they differ in their first letters, ‘S’ in the earlier mark and ‘B’ in the contested sign. The marks also differ in the earlier mark’s stylisation, which is not particularly striking, and colours, all of which will be perceived as ordinary means of bringing the verbal element to the attention of the public. This stylisation is not sufficient to obscure or camouflage the coinciding letters in the marks.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘EBANG’, present identically in both signs. The pronunciation differs in the sound of the marks’ first letters, ‘S’ in the earlier mark and ‘B’ in the contested sign.

Therefore, the signs are 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 appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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 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 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 goods are partly identical, partly similar to varying degrees and partly dissimilar. They target both the general public and a professional public; the degree of attention is considered average.

The signs are visually similar to an average degree and aurally similar to a high degree, as they coincide in the sequence of letters ‘EBANG’. The Opposition Division considers that the differences between the signs — which lie only in the signs’ first letters and the stylisation of the earlier trade mark — are clearly not sufficient to outweigh the visual and aural similarities between them, even more so because the signs lack any concept that could help the public to differentiate them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the goods that are similar only to a low degree, it must be kept in mind that 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 average degree of visual similarity and the high degree of aural similarity between the signs are clearly sufficient to offset the low degree of similarity between some of the goods. Therefore, the opposition is successful in relation to these goods, and the contested trade mark must also be rejected for them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 793 647.

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 earlier European Union trade mark registration No 9 016 429 ‘SEBANG LONGEST’.

The other earlier right invoked by the opponent is less similar to the contested mark, as it contains the additional word ‘LONGEST’, which is not present in the contested trade mark. Moreover, is covers the same scope of goods as the earlier trade mark compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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

María Belén IBARRA DE DIEGO

Aldo BLASI

Michele M. BENEDETTI-ALOISI

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.