OPPOSITION No B 3 052 628

Fiducial, 41, rue du Capitaine Guynemer, 92 400 Courbevoie, France (opponent),

a g a i n s t

Zhao Xiang You, No.127, Station South Rd. Kunyang Town, Pingyang County, 325400 Wenzhou Zhejiang, China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 29/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 628 is upheld for all the contested goods.

2. European Union trade mark application No 17 802 521 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 802 521 . The opposition is based on French trade mark registration No 4 172 008 . 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, inter alia, the following:

Class 9: Nautical apparatus and instruments; measuring apparatus and instruments; batteries, electric; apparatus for the recording, the transmission, the reproduction of sound or images; recording substrates [magnetic] ; other digital recording media; data processing equipment; computers ; tablet computers; smartphones; electronic book readers; computer software, recorded; mobile applications; computer software applications, downloadable; computer programs [downloadable software] ; peripherals adapted for use with computers; wires, electric; eyeglasses; readers [data processing equipment].

The contested goods are the following:

Class 9: Notebook computers; computer peripheral devices; cellular phones; humanoid robots with artificial intelligence; computer software applications, downloadable; wearable activity trackers; camcorders; eyeglasses; digital photo frames; chargers for electric batteries; smartphones; in-car telephone handset cradles; cases for smartphones; covers for smartphones; protective films adapted for smartphones; headsets; navigational instruments; materials for electricity mains [wires, cables]; batteries, electric; mains chargers.

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 computer software applications, downloadable; eyeglasses; smartphones; batteries, electric are identically contained in both lists of goods (including synonyms).

The contested computer peripheral devices are identical to the opponent´s peripherals adapted for use with computers, since they consist of the same or synonymous expressions.

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

The contested navigational instruments are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

The contested materials for electricity mains [wires, cables] include, as a broader category, the opponent’s wires, electric. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent´s goods.

The contested notebook computers are included in the broad category of the opponent´s computers. Therefore, they are identical.

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

The contested cellular phones are similar to a high degree to the earlier computers because they coincide in producer, method of use, end user and they coincide in distribution channels. Furthermore, they are in competition.

The contested mains chargers and chargers for electric batteries are similar to a high degree to the earlier batteries, electric as they coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested humanoid robots with artificial intelligence consist of highly advanced robots shaped to resemble the human body and may be designed for functional purposes, such as interacting with human tools and environments, for experimental, such as the study of locomotion or for other purposes. These highly technical goods use central processing units and specific computer software in order to function and operate and may also be used with different software options or updates, to program further functions or more advanced tasks into them. As a result, these contested goods can target the same relevant public as the opponent’s computer software and since computer software is essential for the performance, function and operational capability of humanoid robots with artificial intelligence, they are also complementary. Moreover, in view of the highly technical nature of humanoid robots with artificial intelligence, computer software for such goods is likely to be distributed through the same trade channels and be produced by the same undertakings. In consequence, these contested goods are similar to the opponent’s computer software, recorded.

The contested digital photo frames are picture frames that display digital photos without the need of a computer or printer. These goods differ from traditional photo frames in that they are in fact electronic devices that normally use a software application and come with a range of features. Some may play videos as well as display photographs and may utilize a Wi-Fi connection, etc. Consequently, these contested goods are similar to the earlier computer software, recorded. These goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested in-car telephone handset cradles; cases for smartphones; covers for smartphones; protective films adapted for smartphones; are accessories that are complementary to the opponent´s smartphones. These goods are, moreover, brought to the market by the same producers, they target the same public and they have the same distribution channels. Furthermore, they are complementary. Consequently, these contested goods are similar to the opponent´s smartphones.

The contested wearable activity trackers are lowly similar to the earlier smartphones because they may coincide in producer and distribution channels and may have the same end user.

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 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

Earlier trade mark	Contested sign

The relevant territory is France.

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 likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The coinciding letter ´V´ at the beginning of both marks will not be associated with any meaning in relation to the goods, and is therefore distinctive.

The differing elements ´mobility´ and ´mobile´ are very close in spelling and/or pronunciation to the French word ´mobilité´ which refers to the ability to move physically from place and position. Therefore, it is likely that the relevant public will attribute the concept of the French word described to the differing elements referred to. Bearing in mind that the relevant goods are related to telecommunications, IT and apparatus and instruments, from the perspective of these consumers ´mobility´ and ´mobile´ are weak, as they indicate their purpose and/or subject matter (for example, they allow the user of the goods to use them from and to different places). They are therefore of reduced impact. The figurative element, a three coloured arch, of the earlier mark is of decorative nature with a low degree of distinctiveness. The stylisation of the typeface of both marks is minimal and of reduced impact.

The differences are found in elements of reduced impact, and the coincidences are found in distinctive elements.

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. It is therefore relevant to note that in our case the main coincidences are found in the first parts read and pronounced in both signs.

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 and/or typeface (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case the coincidences are found in the verbal elements.

Visually and aurally, the signs coincide in ´V´ and in the sequence of the letters ´m-o-b-i-l´ (and their sound). In addition, the signs coincide visually in their structure, namely a single letter followed by a separation (hyphen/dot) and a word.

They differ in their last letters, namely ´-ity´ in the earlier mark and ´-e´ in the contested sign, and their respective sounds. In addition, they differ visually in the figurative element of decorative nature of the earlier mark and in colour and typeface.

The coincidences between the signs are found in the elements considered of greater weight within the signs and the dissimilarities are found in the parts/characteristics of the signs of reduced weight, for the reasons explained above.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the concept of the letter ´V´ followed by terms that are perceived as having the concept of the French word ´mobilité´, and since the figurative element of the earlier mark lacks any concept, the signs are conceptually at least highly similar.

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.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

The goods are partly identical and partly similar to varying degrees, they target the public at large and their degree of attention may vary from average to high.

The signs are visually and aurally at least similar to an average degree and conceptually similar to at least a high degree. Furthermore, the distinctiveness of the earlier mark is normal.

The commonalities between the signs are in the elements that have greater impact and the differences are found in the elements considered secondary for the reasons explained above. Therefore, it is considered that the commonalities between the signs, together with the identity and similarity between the goods, are clearly enough to counteract their dissimilarities.

Considering all the above, there is a likelihood of confusion on the part of the public referred to in section c) of this decision.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 17 802 521. It follows that the contested sign 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 (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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Marcel DOLIESLAGER

María Clara IBÁÑEZ FIORILLO

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.