OPPOSITION No B 3 048 021

Shenzhen Honor Electronic Co., Ltd., No C7, C8 Fuyuan Industry Park No 111 Zhoushi Road, Xixiang Street, Baoan District, Shenzhen, Guangdong, People’s Republic of China (opponent), represented by Westphal, Mussgnug & Partner, Patentanwälte mbB, Werinherstrasse 79, 81541 München, Germany (professional representative)

a g a i n s t

Trulyway Electronic Development Co., LTD, Room 1108, A Building, Hongshengyuan Industrial park, NO 339 of Bulong Rd., Bantian Street, Longgang District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Beetz & Partner mbB, Steinsdorfstr 10, 80538 München, Germany (professional representative).

On 08/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 021 is partially upheld, namely for the following contested goods:

Class 9: 3D spectacles; cabinets for loudspeakers; virtual reality headsets; horns for loudspeakers; thermometers, not for medical purposes; charging stations for electric vehicles; battery chargers; batteries, electric; smart glasses; smart watches; batteries for lighting; solar batteries; data cables; power banks; protective films adapted for smartphones.

2. European Union trade mark application No 17 628 306 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 628 306 for the figurative mark . The opposition is based on European Union trade mark registration No 15 368 384 for the 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: Bags adapted for laptops; remote control apparatus; regulating apparatus, electric; chargers for electric batteries; computer peripheral devices; monitoring apparatus, electric; inverters [electricity]; electric apparatus for commutation; distribution boxes [electricity]; electro-dynamic apparatus for the remote control of signals.

The contested goods are the following:

Class 9: 3D spectacles; cabinets for loudspeakers; virtual reality headsets; horns for loudspeakers; thermometers, not for medical purposes; charging stations for electric vehicles; battery chargers; batteries, electric; smart glasses; smart watches; batteries for lighting; solar batteries; data cables; power banks; protective films adapted for smartphones.

Class 11: Air humidifiers; electric fans for personal use; pocket warmers; portable electric fans; USB-powered desktop fans; USB-powered humidifiers for household use; humidifiers for household use; ventilation [air-conditioning] installations and apparatus; gas scrubbing apparatus; street lamps; air purifying apparatus and machines; lighting apparatus and installations.

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 thermometers, not for medical purposes are instruments for measuring temperature that are widely used in scientific research and industry to monitor different processes. As such they overlap with the opponent’s monitoring apparatus, electric. Therefore, they are identical.

The contested battery chargers include, as a broader category, the opponent’s chargers for electric batteries. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested charging stations for electric vehicles are power supplies for recharging electric vehicles. Notwithstanding the broad range of the charging stations (from portable devices and wallboxes to community infrastructures), these goods have the same purpose and method of use as the opponent’s chargers for electric batteries. They can be distributed through the same channels, target the same consumers, and be produced by the same undertakings. Therefore, they are at least highly similar.

The contested batteries, electric; batteries for lighting; power banks are devices that provide power for electrical items and for different battery-powered items that have a USB interface, such as mobile phones. These goods and the opponent’s chargers for electric batteries can be distributed via the same channels, target the same consumers and can be manufactured by the same undertakings. They are also complementary. Therefore they are highly similar.

The contested 3D spectacles; cabinets for loudspeakers; virtual reality headsets; horns for loudspeakers; data cables are audio-visual devices for use, inter alia, with computers (gaming or otherwise) and media that allow the transfer of data from a transmitter to a receiver (including, inter alia, Ethernet cables and USB cables). These goods can be offered by the same undertakings that produce other computer accessories, such as the opponent’s computer peripheral devices. These goods also target the same public and have the same distribution channels. Therefore, these goods are similar.

The contested smart glasses and smart watches are small computing devices (also known as wearable computers) in the form of spectacles and wristwatches. As such, they may control or retrieve data from other instruments or computers, which means that they share commonalities with the opponent’s computer peripheral devices. These goods can be complementary (as peripherals, such as digital cameras, can supplement the functions performed by the contested goods). They also share distribution channels, target the same public and can be produced by the same undertakings. Therefore, they are similar.

The contested protective films adapted for smartphones and the opponent’s bags adapted for laptops have the same main purpose and share the same distribution channels. These goods target the same consumers and may be produced by the same undertakings. Therefore, they are similar.

The contested solar batteries are devices that turn solar energy into electricity. As such they are at least similar to a low degree to the opponent’s chargers for electric batteries, as these goods can be distributed via the same channels, target the same consumers and be manufactured by the same undertakings.

Contested goods in Class 11

The contested goods in Class 11 are apparatus and installations for lighting, heating, ventilating and purifying or humidifying the air.

The fact that USB-powered desktop fans; USB-powered humidifiers for household use are USB-powered devices designed to be plugged into a computer’s USB port, does not turn these goods into computer peripheral devices, contrary to the opponent’s arguments. The opponent’s goods in Class 9 are ancillary devices that transfer information to and from the computer, adding functions as part of a computing network (for example, a mouse, printer, scanner, or one of the other examples given earlier). This definition cannot be extended to cover fans and humidifiers as these devices do not add functionality to a computer network system.

The contested goods and the opponent’s goods have different natures and purposes. They are neither in competition with each other nor complementary, and are not usually found in the same sections of outlets.

The same reasoning can be applied to the opponent’s remote control apparatus; regulating apparatus, electric; chargers for electric batteries or monitoring apparatus, electric; inverters [electricity]; electric apparatus for commutation; distribution boxes [electricity]; electro-dynamic apparatus for the remote control of signals. The mere fact that the contested goods in Class 11 may use electrical battery chargers or include technology with control or monitoring functions does not render these goods similar. Indeed, the fact that a particular product is used as a part, element or component of another product is not sufficient, in itself, for the finished goods to be considered similar to the components themselves, as the natures, intended purposes and consumers of these goods may be completely different. The aforementioned parts are generally not visible in the finished products and are made by different undertakings from those involved in making the final goods. The simple fact that the contested goods operate using electricity does not make them similar to the opponent’s goods either, as there are many products operated by electricity that are very different from each other. The goods under comparison have very different purposes, belong to different fields of trade, involve different know-how in their production and are manufactured by different types of undertakings. Therefore, these goods are dissimilar.

The same finding of dissimilarity applies to the opponent’s bags adapted for laptops in Class 9, which are even more distant to the contested goods in Class 11 than those already compared above.

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.

The goods found to be identical or similar to varying degrees are directed at both the public at large and at business customers with specific professional knowledge or expertise (e.g. companies or public administrations looking for renewable energy or IT solutions and systems).

The level of attention may vary from average to above average, depending on the price, frequency of purchase, specialised nature or terms and conditions of the goods purchased.

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 component ‘POWER’ is an English word which means, inter alia, ‘energy that is produced by mechanical, electrical, or other means and used to operate a device’ (information extracted from Oxford Dictionaries Online on 08/03/2019 at https://en.oxforddictionaries.com/definition/power). This meaning may have an impact on the degree of distinctiveness of the component in relation to the relevant goods. 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 the Spanish-speaking part, for which ‘POWER’ will not raise any associations in this regard.

The earlier mark consists of the verbal element ‘ASPOWER’ depicted in upper-case letters below a figurative element that may be perceived either as a geometric, meaningless and distinctive figure or as a depiction of the symbol for electricity. In the latter case, the figurative element will be devoid of distinctive character in relation to some of the relevant goods (e.g. chargers for electric batteries) and weak in relation to the remainder. The verbal element will be perceived by the relevant public as an invented and meaningless word, and therefore, distinctive.

Regardless of the degree of distinctive character, 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). This principle is fully applicable to the present case and implies that the verbal element will carry more weight in the consumer’s perception.

The earlier mark has no element that could be considered clearly more dominant than any other.

The contested figurative sign consists of the verbal element ‘atpower’ depicted in standard lower-case letters. It will be perceived as an invented and meaningless word and is therefore distinctive.

Visually, the signs coincide in six out of the seven letters in their verbal elements (A*POWER). They differ in their second letters (‘S’ in the earlier mark, and ‘t’ in the contested sign), in the earlier mark’s figurative element and in their respective graphical elements (the latter introducing differences too subtle to be clearly noticed by the relevant public).

Therefore, taking into account the different perceptions of the earlier mark’s figurative element (and its degree of distinctiveness in each case), the signs are similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A*POWER’. The pronunciation differs in the sound of the signs’ second letters (i.e. ‘S’ versus ‘t’). Therefore, the signs are aurally highly similar.

Conceptually, a comparison is not possible. For the part of the public who does not attach any meaning to the earlier mark’s figurative element neither of the signs will have a meaning. The part of the public that sees a representation of the symbol for electricity in the earlier mark (which is at most weak and cannot indicate the commercial origin) will have their attention focused on the additional verbal elements, which have no meaning. Since a conceptual comparison is not possible, this aspect does not influence the assessment of the similarity of the signs.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence (for part of the relevant public) of a weak/non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to those of the opponent. The relevant goods target the public at large and a more specialised public, whose degree of attention may vary from average to above average. 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 with 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 earlier mark enjoys a normal degree of distinctiveness. The signs cannot be conceptually compared but are visually similar to at least an average degree, and aurally highly similar, as they contain invented words that coincide in six out of their seven letters and their sounds. The only differing letters (‘S’ versus ‘t’), given their positions in their respective elements, may easily be overlooked or misheard. The other differences between the signs are confined to weak/non‑distinctive or secondary elements and aspects, which are not enough to exclude the likelihood of confusion among the relevant public, even for that part of the public that pays a higher than average degree of attention in relation to some of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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 15 368 384. 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 found to be identical or similar to varying 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Alicia BLAYA ALGARRA

Chantal VAN RIEL

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.