OPPOSITION No B 3 063 041

Guaguas Municipales, SA, Calle Arequipa S/N, 35008 Las Palmas de Gran Canaria, Spain (opponent), represented by Ricardo Alcaide Díaz-Llanos, Calle Pérez Galdós, Nº 26, 35002 Las Palmas de Gran Canaria, Spain (professional representative)

a g a i n s t

Shenzhen Youjike E-Commerce Co., Ltd, No.306,3/F, Block E, Huafeng Baoan Zhigu Science & Tech Park,No.4, Yintian Road, Xixiang, Baoan, Shenzhen, People’s Republic of China (applicant), represented by Arpe Patentes Y Marcas, S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 20/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 041 is partially upheld, namely for the following contested goods:

Class 9: Data transmission cables; Cell phones; Earphones; Battery chargers; Batteries, electric; Smartphones; Power adapters; Power banks; Computer keyboards; Mouse [computer peripheral].

2. European Union trade mark application No 17 889 216 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 17 889 216 ‘GUAGUA’, in Class 9. The opposition is based on, inter alia, Spanish trade mark registration No 3 624 528 . The opponent invoked Article 8(1)(a) EUTMR.

Preliminary remark

The opponent based its opposition on Article 8(1)(a) only. Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

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 Spanish trade mark registration No 3 624 528 .

a) The goods and services

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

Class 9: USB hardware; USB web keys; USB flash drives.

Class 16:

Paper stationery; Note books; Pocket books [stationery]; Writing tablets; Ball pens; Coloured pens.

Class 25: Tee-shirts; Caps being headwear; Sweat shirts; Visors; Handkerchiefs; Leisurewear; Fleeces.

Class 39: Transport; Road transport services for persons.

The contested goods are the following:

Class 9: Data transmission cables; Cell phones; Cases for smartphones; Covers for smartphones; Earphones; Battery chargers; Batteries, electric; Protective films adapted for smartphones; Armbands [luminous] for protection against accident or injury; Smartphones; Holders adapted for mobile phones; Power adapters; Power banks; Computer keyboards; Covers (Shaped -) for computers; Mouse [computer peripheral]; Mouse pads; Covers for personal digital assistants [PDAs]; Couplers (Acoustic -); Cabinets for loudspeakers.

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 opponent’s USB hardware is a broad category that includes, inter alia, USB chargers (and also for example connectors and cabling). Therefore, the contested battery chargers, which are electronic devices intended for accumulating electrical energy in a battery, overlap with the opponent’s USB hardware. 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 opponent’s USB hardware includes USB adaptors. Adaptors are devices that convert attributes of one electrical device or system to those of an otherwise incompatible device or system. Therefore, the contested power adapters overlap with the opponent’s USB hardware. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to these opponent’s goods.

The contested power banks are portable devices that can supply power from their built-in batteries via a USB power supply. The contested batteries, electric are devices that provide the power for electrical items. These goods and the opponent’s USB hardware can therefore be distributed through the same channels, target the same consumers and can to a certain extent even be manufactured by the same undertakings. Furthermore, they are complementary. Therefore, they are at least similar.

The contested data transmission cables are at least similar to the opponent’s USB hardware which also includes for example cabling, as described above. They may coincide in their nature (they both include an element which you stick into an electronic device), purpose (transferring data) and they can coincide in producer, end user and distribution channels.

The contested computer keyboards; mouse [computer peripheral] belong to the collection of physical components that constitute a computer system (i.e. computer hardware). They are all related to the opponent’s USB hardware in Class 9 since they can coincide in end consumers and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

The contested cell phones; smartphones are mobile phones which at least may offer some computing capabilities that, inter alia, enable their users to access the internet, store information and execute programs and applications. They have some similarities with the opponent’s USB hardware in Class 9, since they can coincide in end consumers and distribution channels. Therefore, they are at least similar to a low degree.

The contested earphones are devices placed in the ears for listening to audio signals such as music or speech. They are similar to a low degree to the opponent’s USB hardware, as they to some extent can be used in combination, distributed through the same channels and can target the same public.

The contested coupler’s (acoustic -) are interface devices for coupling audio-visual and communication apparatus and instruments. These goods do not have any relevant points in contact with the opponent’s USB devices in Class 9, neither with the opponent’s goods in Classes 16, 25 and 39. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable. Therefore, they are dissimilar.

The contested cases for smartphones; covers for smartphones; protective films adapted for smartphones; covers for personal digital assistants [pdas]; covers (shaped -) for computers; holders adapted for mobile phones; cabinets for loudspeakers; mouse pads have the intended purpose of covering or holding, and thus protecting, an item that is specified by the type of case/holder/cabinet. These goods are accessories and do not possess any internal or self-governing technology. In contrast, the opponent’s goods in Class 9 are electronic storage devices that allow connection through a USB port to a computer to transfer or store data, and also for example USB cables, USB readers or USB adapters. These goods do not have anything in common, but differ in natures, purposes, producers; distribution channels and methods of use. Neither are they complementary or in competition. Therefore, they are dissimilar to the opponent’s goods in Classes 9, 16, 25 and services in Class 39.

The contested armbands [luminous] for protection against accident or injury are protection devices for personal use against accidents. These goods have nothing in common with any of the opponent’s goods or services in Classes 9, 16, 25 or 39. They do not have the same nature, purpose, methods of use, producers/providers, end users or distribution channels, neither are they complementary or in competition. Therefore, they are dissimilar.

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.

In the present case, the goods found to be identical or similar to various degrees are directed at the public at large. The degree of attention is average.

c) The signs

	GUAGUA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier sign is a figurative mark, consisting of the verbal element ‘GUAGUAS’ in yellow slightly stylised upper case letters. Below are the verbal element ‘PARA TODO. PARA TODOS.’ in smaller, black, slightly stylised upper case letters. Above these verbal elements there is a filled yellow circle, with the stylised white letter ‘G’ inside.

The word ‘GUAGUAS’ of the earlier mark will be understood, at least by a part of the Spanish public, as plural form of bus; transport. As it is not descriptive or otherwise weak in relation to the relevant goods in Class 9, this element is distinctive. The verbal element ‘PARA TODO. PARA TODOS.’, is a Spanish expression meaning ‘For all. For everybody’ in English. It is however laudatory for the relevant goods and, therefore, this element is distinctive to only a low degree. The letter ‘G’ inside a yellow circle on top of the mark will be perceived as representing the first letter in the word ‘GUAGUAS’ below, and therefore it will be attributed less significance than the distinctive element ‘GUAGUAS’.

The yellow circle is a figurative element of a purely decorative nature; therefore it is less distinctive than the verbal elements in the mark.

This is also due to the fact 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 contested sign is a word mark, ‘GUAGUA’, and will be associated, at least by a part of the public, with the same meaning as described above, namely bus; transport. As it has no meaning in relation to the relevant goods, it is distinctive.

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

Visually, the marks coincide in the verbal element ‘GUAGUA’, which is distinctive. This element constitutes the entire contested sign and is fully included in the earlier sign. The marks differ in the additional letter ‘S’ of the element ‘GUAGUAS’ in the earlier mark, its weak verbal element ‘PARA TODO. PARA TODOS.’ and the letter ‘G’ on top and moreover, in the stylisation including the colours of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GUAGUA’, present identically in the distinctive verbal elements of both signs. The pronunciation differs in the sound of the letter ‘S’, forming plural nouns in Spanish, at the end of the word ‘GUAGUAS’, in the weak element ‘PARA TODO. PARA TODOS.’ and in the letter ‘G’ on top of the earlier mark. The latter is however not likely to be pronounced as it will only be perceived as the initial letter of the distinctive element ‘GUAGUAS’ below.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will, by a part of the public, be understood as ‘bus(es); transport’ in the verbal element ‘GUAGUA/S’, the signs are conceptually highly similar for this part of the public.

For the part of the public that will not perceive the meaning of the verbal element ‘GUAGUA/S’, one of the signs have no meaning. Therefore, the signs are not conceptually similar for this part of the public.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) 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).

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.

In the present case, the goods considered identical or similar to various degrees are directed at the public at large. The earlier mark has a normal degree of distinctiveness and the signs are visually similar to an average degree and aurally highly similar. Furthermore, the signs are conceptually highly similar for a part of the public, and not conceptually similar for the remaining part on the account of the meaning conveyed by the weak verbal element ‘PARA TODO. PARA TODOS.’

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).

Indeed, it is even highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 624 528.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark, even to only a low degree. The high similarity between the signs outweighs the low similarity of these goods.

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.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 2 461 193 for the figurative mark , registered for urban traveller transport services, in Class 39;

 Spanish trade mark registration No  3 632 317 for the figurative mark , registered for USB hardware; USB web keys; USB flash drives, in Class 9; Paper stationery; Note books; Pocket books [stationery]; Writing tablets; Ball pens; Coloured pens, in Class 16; Tee-shirts;

	Caps being headwear; Sweat shirts; Visors; Handkerchiefs; Leisurewear; Fleeces, in Class 25 and Transport; Road transport services for persons, in Class 39.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods and services are obviously not identical.

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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Anna ZIOŁKOWSKA

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.