OPPOSITION No B 3 036 491

Sky limited, Grant Way, TW7 5QD, Isleworth, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang Pośniak i Sawicki Sp.k., Emilii Plater 53, 00-113, Warsaw, Poland (professional representative)

a g a i n s t

Samsung Electronics Co. Ltd., 129 Samsung-ro Yeongtong-gu - Suwon-si Gyeonggi‑do, Republic of Korea (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 12/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 036 491 is upheld for all the contested goods.

2. European Union trade mark application No 17 407 107 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 of European Union trade mark application No 17 407 107 for the word mark ‘Q CONTRAST ELITE’. The opposition is based, inter alia, on European Union trade mark registration No 15 869 951 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier mark. In relation to other earlier rights, the opponent also invoked Article 8(4) 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 trade mark registration No 15 869 951 for the figurative mark .

1. The goods

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images.

The contested goods are the following:

Class 9: Televisions.

The contested televisions are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

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 are directed at the public at large.

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.

3. The signs

	Q CONTRAST ELITE
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.

As the elements ‘CONTRAST’ and ‘ELITE’ in the contested sign are meaningful in certain languages, for example in English, and at best weak (if not, non-distinctive) in relation to the relevant goods in Class 9, for the reasons explained below, 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 composed of a circular device, intersected by a shiny element in its lower right part. Although it is possible that part of the relevant public will perceive the earlier mark as a purely figurative sign, as argued by the applicant, the Opposition Division is of the opinion that there is however a substantial part of the public that will perceive the earlier mark as a highly stylised letter ‘Q’, due to the shape of its elements and the fact that consumers try to read elements that resemble letters. The fact that the opponent did not describe its mark as the letter ‘Q’ in the description of the mark at the time of registration, as argued by the applicant, is not relevant as it is the perception of the relevant public that matters when examining if a likelihood of confusion exists.

For the purposes of this comparison and for reasons of procedural economy, the Opposition Division will assess the signs from the perspective of the earlier mark being perceived as the letter ‘Q’, as this is also the most likely scenario for a substantial part of the relevant public.

Regarding the distinctiveness of the single letter ‘Q’, according to the General Court, a single letter or numeral may indeed be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). The distinctiveness has to be assessed with reference to the goods concerned. The letter ‘Q’ has no meaning in relation to the relevant goods in Class 9 and, therefore, it is distinctive.

The contested sign is a word mark ‘Q CONTRAST ELITE’. The letter ‘Q’ will be perceived as such, without any relevant meaning in relation to the goods in Class 9, and is distinctive, for the same reasons mentioned above regarding the earlier mark. The element ‘Contrast’ will be perceived as ‘the difference between tones in a television picture, photograph, etc.’ (information extracted from Oxford Dictionaries on 03/07/2019 at https://www.lexico.com/en/definition/contrast). Taking into account the relevant goods in Class 9, which are televisions, this element is weak as it has a low degree of distinctiveness, if any at all. The element ‘ELITE’ will be perceived as ‘a select group that is superior in terms of ability or qualities to the rest of a group or society’. This term is laudatory as it alludes to the fact that the goods target an ‘elite’ public or that they are of a superior quality. Therefore, it is also a weak element. Therefore, the letter ‘Q’ is the most distinctive element in the contested sign for this part of the relevant public.

Visually, the signs coincide in the letter ‘Q’, being the sole element in the earlier mark and the first and most distinctive element in the contested sign. 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. However, the signs differ in the rather high stylisation of the earlier mark and in the weak elements ‘CONTRAST’ and ‘ELITE’ in the contested sign.

Therefore, the signs are visually at least similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘Q’, present identically in both signs. The pronunciation differs in the sound of the elements ‛CONTRAST’ and ‘ELITE’ of the contested sign, which are, however, weak, and have less impact.

Therefore, the signs are aurally at least similar to an average degree.

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 on account of the single letter ‘Q’, while the additional elements ‘CONTRAST’ and ‘ELITE’ in the contested sign are weak, the signs are conceptually at least 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 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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 a 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 (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).

The earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large and the level of attention varies from average to high.

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).

The conflicting goods are identical.

The signs are visually at least similar to a low degree. Aurally and conceptually, they are at least similar to an average degree.

Taking into account the identity between the goods, there is a likelihood of confusion for the English-speaking part of the relevant public, even taking into account a high degree of attention for some of the relevant goods, because the differences between the signs are confined to the stylisation of the earlier mark and additional weak elements in the contested sign.

The applicant argued that even if the earlier mark is perceived as the letter ‘Q’, there is a striking difference in the overall graphic representation of the marks which will avoid any likelihood of confusion. This argument has to be set aside, since the contested sign is a word mark, which protects the verbal elements as such and not their written form, for which it can be used on the market in a representation that is identical or very similar to the earlier mark. Moreover, the lower visual similarity, due to the rather high stylisation of the earlier mark, is counterbalanced by the at least average aural and conceptual similarity, as well as by the identity of the goods (according to the abovementioned interdependence principle).

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.

Indeed, it is 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant referred to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, most of the previous cases referred to by the applicant are not relevant to the present proceedings as, in most of the cases, at least one of the signs was much more stylised than the earlier mark in the present case, which produced a lower visual similarity, and the relevant goods in some of those cases were generally bought after a visual inspection (Classes 18 and 25) for which the visual differences were considered more important (06/06/2017, B 2 668 260; 20/09/2018, B 2 914 813 and 12/06/2007, R1418/2006-2).

Furthermore, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if some of the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The opponent also referred to a previous national decision to support its arguments, namely UKIPO decision No O/585/18 of 24/09/2018. However, as argued by the applicant, decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office, since the European Union trade mark regime is an autonomous system that applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The previous case referred to by the opponent is relevant to the present proceedings as it concerns a conflict between the same parties and the same or similar signs ( , Q and Q QLED TV). Even if the Opposition Division is not bound by that decision, it supports the findings of the Opposition Division in this case.

The applicant further argued that it owns various EUTMs including the single letter ‘Q’. The assessment of the likelihood of confusion according to Article 8(1)(b) EUTMR as one of the relative grounds for refusal in inter partes proceedings has to be based solely on the individual assessment of the signs in question, namely the earlier marks of the opponent specified in the opposition and the applicant’s contested sign, as the likelihood of confusion is assessed in relation to these specific signs. The applicant’s previous trade mark registrations are irrelevant to the present opposition proceedings (21/04/2005, T‑269/02, Ruffles, EU:T:2005:138, § 25; 06/11/2007, T‑90/05, Ω Omega, EU:T:2007:328, § 44-48).

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 trade mark registration No 15 869 951. It follows that the contested trade mark must be rejected for all the contested goods.

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 extensive use 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 European trade mark registration No 15 869 951 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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 grounds of the opposition, namely Article 8(4) and 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

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

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.