OPPOSITION No B 3 047 750

Xdynamics Limited, Unit 216-217, Photonics Centre, Science Park, Hong Kong (opponent), represented by Ipulse, 26 Mallinson Road, SW11 1BP London, United Kingdom (professional representative)

a g a i n s t

xoDynamics GmbH, Koppstraße 42, 81378 München, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 München, Germany (professional representative).

On 10/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 750 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 367 202 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 17 367 202 . The opposition is based on the following earlier rights:

 European Union trade mark registration No 16 011 272 for the word mark ‘XDYNAMIX’;

 European Union trade mark registration No 16 011 314 for the word mark ‘XDYNAMICS’.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to both earlier rights.

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 16 011 272 for the word mark ‘XDYNAMIX’, since this covers a broader scope of goods.

a) The goods and services

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

Class 9: Software systems for drones and unmanned aerial vehicles (UAVs); instructional and teaching apparatus and instruments.

The contested goods and services are the following:

Class 9: Sensory software; virtual reality software; virtual reality game software; virtual reality glasses; virtual reality hardware; virtual reality headsets; headsets for virtual reality games; all of the aforesaid goods for educational purposes, in particular medical educational purposes.

Class 42: Design and development of virtual reality software; design, planning and development of software for computer games and virtual reality software; hosting multimedia educational content; software as a service [SaaS]; hosting services and software as a service and rental of software; application service provider [ASP], namely, hosting computer software applications of others.

An interpretation of the wording of the list of goods and services is required to determine their scope of protection.

The term ‘in particular’, used in the applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the word ‘namely’, used in the applicant’s and the opponent’s lists of services, serves to show the relationship of individual services to a broader category, it is exclusive and restricts the scope of protection only to the services specifically listed.

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 goods in Class 9 are all various kinds of software and hardware for educational purposes. As such, those consisting of hardware (i.e. virtual reality glasses; virtual reality hardware; virtual reality headsets; headsets for virtual reality games) are identical to the opponent’s instructional and teaching apparatus and instruments in Class 9, either because the latter constitute a broad category that includes the contested goods, or because they overlap. They are therefore identical.

The contested goods consisting of software for educational purposes (i.e. sensory software; virtual reality software; virtual reality game software) are similar to an average degree to the opponent’s instructional and teaching apparatus and instruments, since they are all for purposes related to education, are complementary, coincide in distribution channels/points of sale, can target the same consumers and can come from the same kind of undertakings.

The contested services in Class 42 listed above consist mainly of IT-related services (e.g. programming, hosting, etc.), offered by specialised companies in the field of IT. They are closely related to software (e.g. the opponent’s software systems for drones and unmanned aerial vehicles (UAVs)). This is because manufacturers of software will also commonly provide software-related services (as a means of keeping the system updated, for example) and other IT-related services, such as hosting services. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, the contested services in Class 42 are considered similar to at least a low degree to the opponent’s various types of software in Class 9.

The applicant argues that the products and services compared above are different because they are directed at different consumers. However, this is not supported by any evidence and a mere statement is not enough to contradict the findings above on identity and similarity to at least a low degree.

b) 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 and services found to be identical or similar (to varying degrees) are directed at professionals. The degree of attention paid by them during the purchase is deemed to be above average, since the goods and services concerned are not purchased daily, can be high-priced and may require some professional/technical knowledge in order to be used properly.

c) The signs

XDYNAMIX
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).

Part of the public may recognise ‘dynamix’ and ‘dynamics’ as having the concept of the English adjective ‘dynamic’ used to describe something/someone full of energy, ideas and/or very active. As a consequence, consumers will mentally divide the signs into ‘X-dynamix’ and ‘xo-Dynamics’, as they will break them down into elements that suggest a concrete meaning, or that resemble words that they already know. For these consumers, the concept of ‘dynamic’ can be seen as allusive or evocative of the characteristics of the goods and services involved. Therefore, ‘dynamix’ and ‘dynamics’ would be of lower than average distinctive character, making their beginnings ‘X’ and ‘xo’ respectively, together with the figurative element of the contested sign, the most distinctive parts of the marks.

However, it cannot be excluded that another part of the public perceives the marks as meaningless invented terms, in which case all of their elements have an average degree of distinctive character.

The signs have no elements that are more dominant (eye-catching) than others. However, as regards the contested mark, it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element of the contested sign will have a stronger impact than the figurative element accompanying it, despite the bigger size of the latter.

Visually, the signs coincide in their entire sequence of letters (‘XDYNAMI’ / ‘x*Dynami’) with the exception of the additional letter ‘o’ in the contested sign and of the ending letters (‘x’ of the earlier mark and ‘cs’ of the contested sign). They also differ in the colour and typeface of the contested sign, despite the fact that it is not particularly stylised or of striking colours, and in the figurative element of the latter, which is a geometrical shape formed by cubes.

For these reasons, it is considered that the signs are visually similar to an average degree.

Aurally, the differing endings ‘x’ and ‘cs’ are pronounced identically or the difference between them is very hard to perceive. Consequently, the aural difference between the signs is therefore limited to the letter ‘o’ of the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, part of the public may perceive both marks as containing the same concept (i.e. that referred to above of ‘dynamic’) and the remaining elements ‘X’ and ‘Xo’ as having the concepts of the letters they represent or being perceived as void of any concept. The figurative element of the contested sign has the concept of a geometrical shape. From this perspective, the signs are conceptually highly similar.

Another part of the public will perceive the verbal elements of the marks as meaningless invented terms, and will only perceive the concept of the figurative element in the contested sign. From this perspective, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

d) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of an element that, for part of the public, can be seen as having a lower than average distinctive character, as stated in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services compared are partly identical and partly similar (to varying degrees), they target professionals, and the degree of attention paid by them is deemed to be above average.

The signs are visually similar to an average degree, aurally highly similar and conceptually either highly similar or not similar.

The earlier mark is of average distinctive character.

The signs coincide in almost the entirety of the sequence of letters forming the only element in the earlier mark and the element with greater impact in the contested sign (i.e. the only verbal element). In addition, the differing letters are either preceded and followed by coinciding letters (i.e. letter ‘o’ of the contested sign) and their visual and aural impact is clearly diluted and reduced, or they are pronounced identically or almost identically (i.e. the differing endings ‘x’ and ‘cs’).

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).

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 this case, it is considered that the significant coincidences between the marks, together with the identity and similarity (to varying degrees) of the goods compared, are clearly enough to counteract their dissimilarities, and to conclude that there is a likelihood of confusion on the part of the public. This is also true for the services found to be similar to at least a low degree since the coincidences between the marks are clearly enough to outweigh their ‘at least low’ degree of similarity.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 011 272 for the word mark ‘XDYNAMIX’. It follows that the contested sign must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right referred to above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) 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 (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

María Clara IBÁÑEZ FIORILLO

María del Carmen SUCH SANCHEZ

Manuela RUSEVA

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.