OPPOSITION No B 3 041 350

Ice IP S.A., Rue des Tilleuls, 3, 8832 Rombach, Luxembourg (opponent), represented by Petosevic Eood, 14, Saborna str., floor 3, office 6, 1000 Sofia, Bulgaria (professional representative)

a g a i n s t

AINMT Holdings AB, Åsögatan 108, 11829 Stockholm, Sweden (applicant), represented by Advokatfirman Marlaw AB, Riddargatan 7A, 5 tr, 114 35 Stockholm, Sweden (professional representative).

On 05/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 041 350 is upheld for all the contested goods, namely

Class 9: Transmitters [telecommunication]; Telecommunications equipment; Electronic data carriers; Recording memory discs; Blank magnetic data carriers; Magnetic data media; Optical data media; SIM cards; Encoded magnetic cards; Integrated circuit chips; Electronic apparatus for use in telecommunications, telephone exchanges, number displays and pagers; Electronic apparatus for the remote control of signals; Transmitters of electronic signals; Telephone transmitters; Electronic telephone directories; Magnetic and optical data carriers; Apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; Data processing equipment; Base stations (telecommunications); Telecommunications systems; Computer software for use in telecommunications; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches.

2. European Union trade mark application No 17 395 203 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 395 203 (figurative mark), namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 16 923 575   (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.

a) The goods

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

Class 9: Electrical adapters; Adding machines; Timetables (Electronic -); Enlarging apparatus [photography]; Decorative magnets; Alarms; Computer software applications, downloadable; Baby monitors; Smart rings; Personal stereos; Portable media players; Scales; Bathroom scales; Beacons, luminous; Videotapes; Speaker enclosures; Interactive touch screen terminals; Life buoys; Abacuses; Directional compasses; Push buttons for bells; Encoded identification bracelets, magnetic; Connected bracelets [measuring instruments]; Covers for electric outlets; Digital photo frames; Pocket calculators; Calculating machines; Cinematographic apparatus; Camcorders; Thermal imaging cameras; Wearable activity trackers; Identity cards, magnetic; Encoded magnetic cards; Smart cards [integrated circuit cards]; Printed circuit boards; Memory cards for video game machines; Encoded key cards; Video game cartridges; Toner cartridges, unfilled, for printers and photocopiers; Protective helmets for sports; Virtual reality headsets; Video cassettes; Pince-nez chains; Juke boxes for computers; Battery chargers; Chargers for electronic cigarettes; Computer keyboards; USB flash drives; Collectors, electric; Diving suits; Commutators; Meters; Covers for smartphones; Covers for personal digital assistants [PDAs]; Covers for tablet computers; Cell phone straps; Eyeglass cords; Electronic pens; Animated cartoons; Recording discs; Disks, magnetic; Discs (Compact -) [audio-video]; Cd roms; Optical discs; Telephone receivers; Screens [photography]; Video screens; Squares for measuring; Cases especially made for photographic apparatus and instruments; Containers for contact lenses; Spectacle cases; Cases for smartphones; Downloadable music files; Downloadable image files; Gloves for divers; Global Positioning System [GPS] apparatus/ Global Positioning System [GPS] apparatus; Holograms; Sleeves for laptops; Printers for computers; Computer hardware; Intercommunication apparatus; Binoculars; Magic lanterns; Lasers, not for medical purposes; Bar code readers; Optical character readers; Readers [data processing equipment]; Optical lenses; Contact lenses; Electronic book readers; Recorded computer software; Games software; Magnifying glasses; Opticians' goods; Anti-glare glasses; Spectacles [optics]; Eyepieces (Instruments containing -); Sunglasses; Sports glasses; 3D spectacles; Smartglasses; Divers' masks; Computer memory devices; Measuring instruments; Smartwatches; Spectacle frames; Navigational instruments; Vehicles (Navigation apparatus for -) [on-board computers]; Satellite navigational apparatus; Hands free kits for phones; Objectives [lenses] [optics]; Optical apparatus and instruments; Computers; Notebook computers; Laptop computers; Smartphones; Peripherals adapted for use with computers; Weighing apparatus and instruments; Baby scales; Letter scales; Scales with body mass analysers; Blueprint apparatus; Photocopiers; Cameras; Stands for photographic apparatus; Electric batteries; Solar batteries; Spectacles [optics]; Electronic key fobs being remote control apparatus; Speaking-tubes and megaphones; Plugs, sockets and other contacts [electric connections]; Recorded computer programs; Computer operating programs, recorded; Computer programs [downloadable software]; Projection apparatus; Teeth protectors; Mouth guards for sports; Head guards for sports; Integrated circuit chips; DNA chips; Vehicle radios; Slide-rules; Rulers [measuring instruments]; Square rulers for measuring; Answering machines; Wrist rests for use with computers; Egg timers [sandglasses]; Bags adapted for laptops; Signals, luminous or mechanical; Sirens; Bells [warning devices]; Electric door bells; Mouse [computer peripheral]; Stroboscopes; Monitoring apparatus, electric; Tablet computers; Walkie-talkies; Mouse mats; Facsimile machines; Remote control apparatus; Cordless telephones; mobile phones (portable phones); Telephone receivers; Binoculars, telescopes; TV sets; Thermometers, not for medical purposes; Downloadable ring tones for mobile phones; Electronic pocket translators; Data processing apparatus; Transistors [electronic]; Camera tripods; Neon signs; Optical glass; Measuring glassware; Correcting lenses [optics]; Lenses for eyeglasses; Video telephones.

The contested goods are, after limitations, the following:

Class 9: Transmitters [telecommunication]; Telecommunications equipment; Electronic data carriers; Recording memory discs; Blank magnetic data carriers; Magnetic data media; Optical data media; SIM cards; Encoded magnetic cards; Integrated circuit chips; Electronic apparatus for use in telecommunications, telephone exchanges, number displays and pagers; Electronic apparatus for the remote control of signals; Transmitters of electronic signals; Telephone transmitters; Electronic telephone directories; Magnetic and optical data carriers; Apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; Data processing equipment; Base stations (telecommunications); Telecommunications systems; Computer software for use in telecommunications; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches.

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 encoded magnetic cards; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of the opponent’s encoded magnetic cards. Therefore, they are identical.

The contested integrated circuit chips; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of the opponent’s integrated circuit chips. Therefore, they are identical.

The contested data processing equipment; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of the opponent’s data processing apparatus. Therefore, they are identical.

The contested apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of, or overlap with, the opponent’s computers. Therefore, they are identical.

The contested computer software for use in telecommunications; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of, or overlap with, the opponent’s computer programs [downloadable software]. Therefore, they are identical.

The contested telecommunications equipment; telecommunications systems; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches include, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested electronic apparatus for use in telecommunications; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches include, as broader categories, the opponent’s telephone receivers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested electronic apparatus for the remote control of signals; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are included in the broad category of, or overlap with, the opponent’s remote control apparatus. Therefore, they are identical.

The contested electronic telephone directories; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are software that can be downloaded on a computer. Thus, they are included in the broad category of, or overlap with, the opponent’s computer programs [downloadable software]. Therefore, they are identical.

The contested electronic data carriers; recording memory discs; blank magnetic data carriers; magnetic data media; optical data media; SIM cards; magnetic and optical data carriers; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are devices (such as for example optical discs, USB flash drive, floppy discs or magnetic tape on credit cards) that is used to store and transport data. They are at least similar to the opponent’s computer memory devices which are any physical devices capable of storing information temporarily or permanently. The goods have the same nature, producers, distribution channels and consumers.

The contested transmitters [telecommunication]; transmitters of electronic signals; base stations (telecommunications); none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are telecommunications apparatus/equipment and as such, at least similar to the opponent’s telephone receivers. They are all apparatus for communication and therefore have the same broader nature and purpose. They can have the same producers, distribution channels and relevant public.

The contested electronic apparatus for use in telephone exchanges, number displays and pagers; none of the foregoing in the field of financial services; none of the foregoing to be used in or in relation to watches or smart watches are apparatus for communications systems. Therefore, they are at least similar to the opponent’s telephone receivers. They have the same nature and purpose in a broad sense, to communicate, and can have the same distribution channels and relevant public.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

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 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 common element ‘ICE’, and also the elements ‘watch’ and ‘group’, are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark, consisting of the verbal element ‘ICE WATCH’ – which has no specific meaning in English as a whole - in slightly stylised, black lower case letters depicted over two lines with a horizontal line in between. Above the lower case letter ‘I’ is a figurative element resembling a compass with a nail pointing obliquely to the right. The verbal element ‘WATCH’, meaning ‘looking and paying attention to’ or ‘small clock’ (information extracted from Collins English Dictionary on 20/06/2019 at https://www.collinsdictionary.com/dictionary/english/watch_1) is slightly weak for some of the goods, bearing in mind that these may relate to time, such as computers; computer programs [downloadable software], data processing apparatus. The figurative element on top of the letter ‘I’ will be perceived as a compass by at least a part of the public. As such, it has no meaning in relation to the relevant goods and is distinctive. For the part of the public that perceives it only as a fanciful element with no meaning, it is also distinctive. The horizontal line between the words ‘ICE’ and ‘WATCH’ is a less distinctive figurative element of a simply decorative nature.

The contested sign is also a figurative mark, consisting of the verbal element ‘ice group’ in slightly stylised lower case letters, with the dot over the initial letter ‘I’ replaced by a figurative element in yellow, resembling a small ice crystal. This figurative element has no meaning in relation to the relevant goods, and therefore, it is distinctive. The verbal element ‘GROUP’, contrary to the applicant’s claims, is non-distinctive since it will be perceived as a synonym for ‘family of companies’ and thus is devoid of distinctiveness. It merely informs that the entity offering the relevant goods belongs to a group called ‘ICE’, the latter being of a normal distinctiveness.

The word ‘ICE’, contained in both marks, will be perceived first and foremost as ‘water in the solid state, formed by freezing liquid water’ (information extracted from Collins English Dictionary on 20/06/2019 at https://www.collinsdictionary.com/dictionary/english/ice_1). It has no meaning in relation to the relevant goods and, therefore, it is distinctive.

The verbal element ‘ICE WATCH’ of the earlier sign is the dominant element, as it is the most eye-catching.

The verbal element ‘ICE GROUP’ of the contested sign is the dominant element, as it is the most eye-catching.

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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

Visually, the signs coincide in their first/on top, distinctive and, furthermore, in both marks co-dominant word ‘ICE’. However, they differ in the second words, ‘WATCH’ of the earlier mark, which is weak for some of the goods, and ‘GROUP’ of the contested sign, which is non-distinctive, and in the figurative elements of the marks including the stylisation and colours.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ICE’, which is distinctive and present identically in both signs. The pronunciation differs in the sound of the letters ‘WATCH’ (weak for some goods) of the earlier mark, which have no counterpart in the contested sign, and ‘GROUP’ (non-distinctive), which have no counterpart in the earlier sign.

Bearing in mind the lower weight attributed to the differentiating elements, as explained above, as well as the aural coincidence in their most conspicuous part, due to a normally distinctive and co-dominant common element; there is an aural similarity to a degree above average between the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in the distinctive word ‘ICE’, the signs are conceptually similar to a degree above average.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) 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).

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 identical or similar. The earlier mark enjoys a normal degree of distinctiveness and the degree of attention is average to high. The signs are visually similar to an average degree and aurally and conceptually similar to a degree above average.

The marks coincide in their first, distinctive and co-dominant verbal element ‘ICE’. Therefore, and although the signs display noticeable differences, these differences have a lesser impact for the relevant consumer than the coincidence in the element ‘ICE’.

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).

It is even highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-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 mark registration No 16 923 575. 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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.