OPPOSITION No B 3 047 942

Panda Security, S.L., Gran Vía de Don Diego López de Haro, 4, 48001 Bilbao (Vizcaya), Spain (opponent), represented by Alexander Zuazo & Asociados, Capitán Haya, 51-4º, oficina 8, 28020 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Guangrenxing Technology Co., Ltd., 609, Yuanmeng Technology Bldg., Meiban Avenue, Minzhi St., LongHua New Dist., Shenzhen, People’s Republic of China (applicant), represented by AL & Partners S.r.l., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 27/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 942 is upheld for all the contested goods, namely:

Class 9: Computer mice; laptop computers; computer peripheral devices.

2. European Union trade mark application No 17 571 712 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 571 712 for the word mark ‘PANDAWILL’, namely against some of the goods in Class 9. The opposition is based on, inter alia, international trade mark registration No 1 027 040 designating the European Union for the word mark ‘PANDA’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 1 027 040 designating the European Union for the word mark ‘PANDA’.

1. The goods

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

Class 9: Antivirus computer programmes; antivirus software and hardware; antimalware computer programmes; antimalware software and hardware; computer security programmes; computer security software and hardware; computer threat prevention computer programmes; computer threat prevention software and hardware.

The contested goods are the following:

Class 9: Computer mice; laptop computers; computer peripheral devices.

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 computer mice; laptop computers; computer peripheral devices and the opponent’s computer security software and hardware are complementary and have the same distribution channels. Moreover, they target the same end users and are produced by the same undertakings. Therefore, they are at least similar.

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 at least similar are directed at the public at large, as well as at a professional public with specific technical knowledge or expertise, such as in the IT field.

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

3. The signs

PANDA	PANDAWILL
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).

Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that the public is likely to break a word into word elements which for him have a specific meaning or which resemble words know to him (see, by analogy, 13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). In the present case, although the element ‘PANDAWILL’ as a whole has no meaning, the relevant public will split the sign into two elements, namely ‘PANDA’ and ‘WILL’, because the first will be understood as ‘a large bearlike mammal with characteristic black and white markings, native to certain mountain forests in China. It feeds almost entirely on bamboo and has become increasingly rare’ (information extracted from Oxford English Dictionary on 21/02/2019 at https://en.oxforddictionaries.com/definition/panda). This common element in both signs has no connection whatsoever with the goods in question and is therefore distinctive.

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 other element perceived in the contested sign, ‘WILL’, could add an additional concept for the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as French, Italian and Spanish, for which the element ‘WILL’ is meaningless and hence distinctive.

Visually and aurally, the signs coincide in ‘PANDA’, that is the whole earlier trade mark which is included at the beginning in the contested sign and plays and independent distinctive role therein, as explained above. However, they differ in the additional distinctive verbal element perceived in the contested sign, ‘WILL’. 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.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same meaning mentioned above and the remaining element perceived in the contested sign is meaningless, the signs are conceptually highly similar.

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 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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §16).

In the present case, the goods at issue are at least similar and they target the public at large and professionals with a degree of attention that may vary from average to higher than average.

The conflicting signs are conceptually similar to a high degree and visually and aurally similar to an above average degree. Furthermore, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image. Indeed, the contested sign reproduces the entirety of the earlier mark and simply adds the letters ‘WILL’ to it.

In the present case, the differences between the conflicting signs are not sufficient to counteract their similarities, since the differences are confined to one element which is placed at the end of the contested sign. In this way, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word 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). It is, therefore, conceivable that the relevant public, even displaying a higher than average degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the French‑, Italian- and Spanish-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 international trade mark registration No 1 027 040 designating the European Union. 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 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 ‘PANDA’ 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 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

Marta GARCÍA COLLADO

Carlos MATEO PEREZ

Monika CISZEWSKA

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.