OPPOSITION No B 3 050 951

Nisha Satish Raisinghani Raisinghani, Josep Luis Sert N. 4, 08850 Gava, Barcelona, Spain (opponent), represented by Olten Patentes y Marcas, Rambla de Catalunya, 66, Planta 6ª, GH, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Beijing Sogou Technology Development Co., Ltd., Level 9, Sohu.com Internet Plz, No. 1 Unit Zhongguancun East Road, Haidian District, 100084 Beijing, People’s Republic of China (applicant), represented by Prinz & Partner Mbb Patent- Und Rechtsanwälte, Rundfunkplatz 2, 80335 München, Germany (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 951 is upheld for all the contested goods, namely:

Class 9: All goods in this class.

2. European Union trade mark application No 17 690 223 is rejected for all the contested goods. It may proceed for the remaining goods and 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 17 690 223 , namely against all the goods in Class 9. The opposition is based on Spanish trade mark registration No 3 645 583 for the word mark ‘SOGO’. 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

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; coin-operated mechanisms; cash registers; calculating machines; data processing equipment; software; computers; fire extinguishers.

The contested goods, further to a limitation filed on 17/05/2019, are the following:

Class 9: Computer hardware and computer peripherals; wearable action trackers; magnetic coded identification bracelet; intelligent watches (data processing); monitor; electronic monitoring device; camera (photography); apparatus for speech recording and replaying; portable media players; on-line bracelet (measuring instrument); electronic recorder; e-book reader; telecontroller equipment; computer software (recorded); downloadable software; electronic publications (downloadable); computer application software for handheld computers; software for voice, speech and command recognition, conversion; computer game software for use on computer, mobile and cellular phones; computer search engine software; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; data processing apparatus; downloadable software for accessing, browsing and searching online databases; global positioning system (GPS) and equipment; all of the aforesaid goods only in connection with digital voice recorder in the form of pen, electronic translating machine in the form of pen, electronic translating machine, smart watch, internet search engine, input method editor and browser; network communication equipment; mobile phones; alarm; battery; shell for mobile phone; humanoid robots with artificial intelligence and teaching robots, both for personal, educational and hobby use and structural parts therefor.

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 limitation ‘all of the aforesaid goods only in connection with digital voice recorder in the form of pen, electronic translating machine in the form of pen, electronic translating machine, smart watch, internet search engine, input method editor and browser’ refers to how the goods listed before and therefore affected by it are used, that is, it clarifies that these goods are to be used in connection with digital voice recorder in the form of pen, electronic translating machine in the form of pen, electronic translating machine, smart watch, internet search engine, input method editor and browser, but it does not alter the actual goods themselves. Therefore, this limitation will be taken into account, but will not be mentioned together with each good compared in the comparison of the goods.

Identity between the goods exists not only when the goods and services completely coincide (the same terms or synonyms are used), but also when and insofar as the contested mark’s goods/services fall within the earlier mark’s broader category, or when and insofar as — conversely — a broader term of the contested mark includes the more specific goods/services of the earlier mark. There might also be identity when two broad categories under comparison partly coincide (overlap).

The contested goods listed below are identical to the opponent’s goods specified in each case for the following reasons:

• alarm is included in the broad category of the opponent’s signalling apparatus and instruments;

• magnetic coded identification bracelet is included in the broad category of the opponent’s magnetic data carriers;

• battery is included in the broad category of the opponent’s apparatus and instruments for accumulating electricity;

• on-line bracelet (measuring instrument) is included in the broad category of the opponent’s measuring instruments;

• electronic monitoring device; telecontroller equipment are included in the broad category of the opponent’s checking [supervision] apparatus and instruments as the latter cover monitoring apparatuses and instruments;

• computer software (recorded); downloadable software; computer search engine software; computer application software for handheld computers; software for voice, speech and command recognition, conversion; computer game software for use on computer, mobile and cellular phones; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; downloadable software for accessing, browsing and searching online databases are included in the broad category of the opponent’s software;

• data processing apparatus is synonymous to the opponent’s data processing equipment;

• network communication equipment; mobile phones; portable media players; computer hardware and computer peripherals; wearable action trackers; intelligent watches (data processing); monitor; camera (photography); apparatus for speech recording and replaying; electronic recorder; e-book reader; global positioning system (GPS) and equipment; humanoid robots with artificial intelligence and teaching robots, both for personal, educational and hobby use and structural parts therefor are included in, or at least overlap with, the broad category of the opponent’s data processing equipment.

The contested electronic publications (downloadable) are similar to the opponent’s software. The contested goods are electronic versions of traditional media, such as e-books, electronic journals, online magazines, online newspapers. It is rather common in the market to distribute books, magazines and newspapers to consumers through digital reading devices by means of software (apps) in the form of electronic publications. Consequently, there is a complementary relationship between software/apps and downloadable electronic publications. Their producers can be the same, they follow the same distribution channels and the public is also generally the same.

The contested shell for mobile phone is similar to a low degree to the opponent’s data processing equipment as the latter broad category includes mobile phones, for which the contested goods are specifically made. These goods usually coincide in their producer, relevant public and distribution channels.

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 or similar to varying degrees are mainly directed at the public at large. 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

SOGO
Earlier trade mark	Contested sign

The relevant territory is Spain.

Both marks consist of meaningless, and therefore distinctive, verbal elements ‘Sogo’ in the earlier mark and ‘Sogou’ in the contested sign, which also contains some meaningless Asian characters, which are also distinctive.

Aurally, the signs are highly similar, since they only differ in the additional last letter of the contested sign, whereas conceptually, they cannot be compared as the words ‘Sogo’ and ‘Sogou’ have no meaning for the Spanish-speaking public. The Asian characters will not be associated with any meaning other than an indication of Asian script. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the only differences are the figurative depiction of the word elements in both signs, that is, the standard typeface in the earlier mark and the slightly stylised depiction in the contested sign, as well as the additional last letter ‘u’ and the Asian characters in the contested sign.

As the earlier mark is a word mark, it is the word as such that is protected and not its written form. Therefore, the case in which word marks are written is irrelevant (27/01/2010, T‑331/08, Solfrutta, EU:T:2010:23, § 16).

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

4. Distinctiveness of the earlier mark

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

The goods are partly identical and partly similar (including to a low degree) and mainly target the general public with the degree of attention that may vary from average to higher than average. The signs are visually similar, aurally highly similar and the conceptual aspect does not influence the comparison. The distinctiveness of the earlier mark is normal.

The Opposition Division considers that in light of the factors established above, there is a clear likelihood of confusion between the signs. Even in the case of the low degree of similarity of the goods and any possible higher degree of attention of the relevant public, the similarities between the signs are striking.

It is also important to keep in mind that 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). The principle is without doubt applicable in the present case where the differing figurative aspect has a limited impact.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 645 583. 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, 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

Michal KRUK

Helen Louise MOSBACK

Carlos MATEO PÉREZ

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.