OPPOSITION No B 3 029 025

Hands (IP) Holdings Pty Ltd, 8/14 Rodborough Road, 2086, Frenchs Forest, Australia (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008, Barcelona, Spain (professional representative)

a g a i n s t

23 Mont Company S.L, C/ Prado Del Castrillo 2D, 28400, Collado Villalba, Spain (applicant), represented by Fernando J. Santiago Ollero, Pedro Sarmiento de Gamboa nº 12 Bajo, 36003, Pontevedra, Spain (professional representative).

On 16/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 025 is partially upheld, namely for the following contested goods and services:

Class 9: Headsets for mobile telephones; hands-free kits for cell phones; hands-free kits for telephones; auxiliary speakers for mobile phones; mobile telephone batteries; usb cables for cellphones; gender changers [cable adapters] for cell phones; covers for smartphones; telephone headsets; cell phone covers; mobile phone connectors for vehicles; cell phone straps; flip covers for mobile phones; external memories for cellphones; phone plugs; docking stations for mobile phones; cases for telephones; usb flash drives; selfie sticks used as smartphone accessories; displays for mobile phones; protective films adapted for smartphones; holders adapted for mobile phones; encoded telephone cards; memory cards; keyboards for mobile phones; chargers for mobile phones; telephone connecting cords; mobile phone docking stations.

Class 35: Retail services in relation to mobile phones; retail services relating to food preparation implements; retail service in relation to wearable computers; wholesale services in relation to food preparation implements; wholesale services in relation to cleaning articles; retail services in relation to cleaning articles; retail services in relation to domestic electrical equipment.

2. European Union trade mark application No 17 529 108 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 529 108, namely against all the goods in Class 9 and some of the services in Class 35. The opposition is based on the opponent’s European Union trade mark registration No 15 113 905 ‘MYONIX’ and European Union trade mark registration No 13 979 901 . 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.

1. The goods and services

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

European Union trade mark registration No 15 113 905

Class 9: Digital televisions; electrical apparatus incorporating televisions; high definition televisions; liquid crystal display (LCD) televisions; plasma televisions; televisions; televisions combined with radios; televisions incorporating clocks with light emitting diode digital displays; televisions incorporating high definition tuners; televisions incorporating video recorders; apparatus for use in audio-visual communication; DVD players; DVD recorders; portable DVD players; personal video records; DVD micro system; set top boxes; eBook readers; computers’ accessories including monitors, wireless keyboard, software; speakers; tablets; portable scanners and scanners; printers; global positioning systems (GPS); MP3 players and accessories including speaker docks and portable speaker docks; turn table; radios and digital radios; car radios; CB radio; portable digital audio broadcasting radios; webcams; USB sticks; external hard drives; Wi Fi signal boosters; TV antenna, universal remote control; walkie talkies; electronic baby monitoring (listening) devices; turntables; earphones and headphones; mobile phones.

European Union trade mark registration No 13 979 901

Class 7: Electric kitchen machines for food preparation (other than cooking); machines for the preparation of foodstuffs (electric, kitchen), other than cooking; machines for use in the preparation of food (not cooking); machines for use in the processing of foodstuffs (not cooking or refrigerating), vacuum cleaners; electric blenders; steam cleaners; juicers; none of the aforesaid goods being dedicated to the field of professional imaging.

Class 11: Apparatus for cooking; appliances for cooking; commercial cooking apparatus; cooking appliances; cooking ovens; cooking units; cooking utensils, electric; electric domestic cooking appliances; electrical appliances for cooking; electrical cooking apparatus; electrical cooking utensils; gas cooking appliances; microwave ovens (cooking apparatus); kitchen appliances; toaster, kettle, cookers, fans, heaters, microwave ovens, foot spa, coffee maker, frying pans electric, popcorn maker, electric blankets; none of the aforesaid goods being dedicated to the field of professional imaging.

The contested goods and services are the following:

Class 9: Headsets for mobile telephones; hands-free kits for cell phones; hands-free kits for telephones; auxiliary speakers for mobile phones; mobile telephone batteries; usb cables for cellphones; gender changers [cable adapters] for cell phones; covers for smartphones; telephone headsets; cell phone covers; mobile phone connectors for vehicles; cell phone straps; flip covers for mobile phones; external memories for cellphones; phone plugs; docking stations for mobile phones; cases for telephones; usb flash drives; selfie sticks used as smartphone accessories; displays for mobile phones; protective films adapted for smartphones; holders adapted for mobile phones; encoded telephone cards; memory cards; keyboards for mobile phones; light-emitting diodes [led]; chargers for mobile phones; telephone connecting cords; mobile phone docking stations.

Class 35: Retail services in relation to mobile phones; retail services relating to food preparation implements; retail service in relation to wearable computers; wholesale services in relation to food preparation implements; wholesale services in relation to cleaning articles; retail services in relation to cleaning articles; retail services in relation to domestic electrical equipment.

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

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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 9

The contested usb flash drive is a synonym of the opponent’s USB sticks of earlier European Union trade mark registration No 15 113 905. Therefore, they are identical.

The contested auxiliary speakers for mobile phones are included in the broad category of the opponent’s speakers of earlier European Union trade mark registration No 15 113 905. Therefore, they are identical.

The contested memory cards are electronic flash memory data storage devices used for storing digital information. These goods are similar to a high degree to the opponent’s external hard drives of earlier European Union trade mark registration No 15 113 905, as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested headsets for mobile telephones; hands-free kits for cell phones; hands-free kits for telephones; mobile telephone batteries; usb cables for cellphones; gender changers [cable adapters] for cell phones; covers for smartphones; telephone headsets; cell phone covers; mobile phone connectors for vehicles; cell phone straps; flip covers for mobile phones; external memories for cellphones; phone plugs; docking stations for mobile phones; cases for telephones; selfie sticks used as smartphone accessories; displays for mobile phones; protective films adapted for smartphones; holders adapted for mobile phones; encoded telephone cards; keyboards for mobile phones; chargers for mobile phones; telephone connecting cords; mobile phone docking stations comprise a wide range of accessories specifically designed for mobile phones. These goods are similar to the opponent’s mobile phones of earlier European Union trade mark registration No 15 113 905, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested light-emitting diodes [led] are two-lead semiconductor light sources. This good is considered dissimilar from all the opponent’s goods and services in Classes 7, 9 and 11 since they have different natures, purposes, methods of use, distribution channels and points of sale. They are neither complementary nor in competition; they do not target the same consumers and they are not likely to come from the same kinds of undertakings. The mere fact that some of the opponent’s goods, such as televisions incorporating clocks with light emitting diode digital displays of earlier European Union trade mark registration No 15 113 905, can incorporate the contested light-emitting diodes [led] does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61).

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods (judgment of 05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they are similar in that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark must be identical in order to find similarity. They must either be exactly the same goods or fall under the natural and usual meaning of the category. Taking this principle into account, the following comparisons can be made.

The contested retail services in relation to mobile phones are similar to a low degree to the opponent’s mobile phones of earlier European Union trade mark registration No 15 113 905.

The contested retail service in relation to wearable computers is similar to a low degree to the opponent’s tablets of earlier European Union trade mark registration No 15 113 905.

The contested retail services relating to food preparation implements; wholesale services in relation to food preparation implements are similar to a low degree to the opponent’s machines for use in the preparation of food (not cooking) of European Union trade mark registration No 13 979 901.

The contested wholesale services in relation to cleaning articles; retail services in relation to cleaning articles are similar to a low degree to the opponent’s steam cleaners of European Union trade mark registration No 13 979 901.

The contested retail services in relation to domestic electrical equipment are similar to a low degree to the opponent’s electric domestic cooking appliances of European Union trade mark registration No 13 979 901.

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

The degree of attention is considered to be average.

3. The signs

(EUTM No 13 979 901) MYONIX (EUTM No 15 113 905)
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 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.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The signs’ common element ‘ONIX’ is meaningful in certain territories, for example in those countries where English is understood, and it will be perceived as a misspelling of the English word ‘onyx’, that is to say ‘a stone which can be various colours. It is used for making ornaments, jewellery, or furniture’ (information extracted from Collins Dictionary on 15/01/2019 at https://www.collinsdictionary.com/dictionary/english/onyx). Moreover, the initial two letters ‘MY’ of the earlier European Union trade mark registration No 15 113 905 will be perceived as the first-person possessive determiner of the next word ‘ONIX’, defined above. Taking into account that these meanings may enhance the conceptual similarities between the signs, the Opposition Division finds it appropriate to focus the comparison of the marks on the English-speaking part of the public, where the likelihood of confusion will be higher.

The verbal elements ‘ONIX’ and ‘MYONIX’ of earlier European Union trade mark registrations No 13 979 901 and No 15 113 905, respectively, are distinctive to a normal degree, since their meanings are not directly related to the relevant goods and services in a clear way that could impair their distinctiveness.

Visually, the signs coincide in the verbal element ‘ONIX’. However, they differ in the initial letters ‘MY’ of the earlier European Union trade mark No 15 113 905. Moreover, the signs also differ in their respective graphical stylisations. At any rate, this representation of the letters is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public, not being sufficient to obscure or camouflage the common letters in the marks.

Therefore, the earlier European Union trade mark No 13 979 901 is highly similar to the contested application while the earlier European Union trade mark No 15 113 905 is similar to an above-average degree to the contested sign.

Aurally, the signs coincide in the sound of the verbal element ‘ONIX’. However, they differ, as far as the earlier European Union trade mark No 15 113 905 is concerned, in the sound of the initial letters ‘MY’.

Therefore, the earlier European Union trade mark No 13 979 901 is aurally identical to the contested application while the earlier European Union trade mark No 15 113 905 is aurally similar to a high degree to the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Specifically, the earlier European Union trade mark No 13 979 901 is conceptually identical to the contested application, in that they both convey the concept of ‘onyx’. Conversely, the presence of the additional component ‘MY’ will be perceived as a possessive determiner related to the following word, ‘ONIX’, which has already been defined above. Therefore, the earlier European Union trade mark No 15 113 905 is conceptually similar to a high degree to the contested mark.

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 marks 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 marks are particularly distinctive by virtue of intensive use or 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 in their entirety 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 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 that can be made with the registered mark, and 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 (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 or services covered are from the same or economically linked undertakings.

In the present case the goods and services are partly identical, partly similar in various degrees and partly dissimilar. They target the general public that will pay an average degree of attention.

Earlier EUTM No 13 979 901 is visually similar to a high degree while aurally and conceptually identical to the contested application. In particular, the signs coincide in their sole verbal element ‘ONIX’, while differing only in their stylisation.

Moreover, earlier EUTM No 15 113 905 is visually similar to an above-average degree and both aurally and conceptually similar to a high degree to the contested application. In particular, the signs coincide in their verbal element ‘ONIX’ while differing in the earlier sign’s initial element ‘MY’ and in the contested sign’s stylisation. In terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In the present case, the differences between the signs are mainly confined to the earlier mark’s first letters, ‘MY’. However, the fact that these differing parts are positioned at the beginning of the signs cannot outweigh the overall similarity between the signs, particularly when the subordinate meaning of the element ‘MY’ in relation to the shared component ‘ONIX’ is considered.

Taking all of the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed visual, aural and conceptual similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical, highly similar or similar goods are likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the services that are similar to a low degree only, 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 assessed degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the services. Therefore, the opposition is successful, and the contested trade mark must also be rejected in relation to those services.

Considering all of the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking 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 15 113 905 and European Union trade mark registration No 13 979 901. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar in various 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.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Riccardo RAPONI

Aldo BLASI

Andrea VALISA

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.