OPPOSITION No B 3 063 838

ICC Imagine Communications Canada Ltd., Suite 1700, Park Place 666 Burrard Street, V6C 2X8 Vancouver, Canada (opponent), represented by Lorenz & Kollegen Patentanwälte Partnerschaftsgesellschaft mbB, Alte Ulmer Str. 2-4, 89522 Heidenheim, Germany (professional representative)

a g a i n s t

BKtel communications GmbH, Benzstr. 4, 41836 Hückelhoven, Germany (applicant), represented by Vomberg & Schart, Schulstr. 8, 42653 Solingen, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 063 838 is upheld for all the contested goods.

2. European Union trade mark application No 17 890 720 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 890 720 for the figurative mark . The opposition is based on European Union trade mark registration No 2 462 091 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK - PROOF OF USE

In its observations, the applicant denied that the earlier trade mark was used for computer software for controlling and monitoring the goods listed in Class 9 and argued that the opposition should be rejected if no use of the earlier mark for computer software is proven. It also referred to the decision in case No B 2 631 821 which concerned the proof of use of the earlier trade mark here.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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: Television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels; computer software for controlling and monitoring the aforesaid wares.

The contested goods are the following:

Class 9: Equipment, apparatus, components and assemblies consisting thereof for receiving, transmission and/or processing of sound, images and/or data, in particular for broadband communications installations, cables and/or antenna reception installations and antenna distribution installations; signal processing apparatus and signal processing modules; frequency translators; channel amplifiers, broadband amplifiers; demodulators; modulators; passive and active branch and distributor circuits, in particular for feedback-free interconnection or splitting of signals; decoders; encoders; supplies for electricity; head ends and head-end stations for processing analogue and digital radio and/or TV programmes; DVB transcoders; DVB-S2 transmodulators; DVB-T transmodulators; DVB-S2 multiplexers; DVB-T multiplexers; TV and DVB-T converters; VHF range amplifiers; TV modulators; control bus demultiplexers; encoders; input distributors; output collectors (output distribution busbars); software for programming and maintaining the aforesaid apparatus.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

All the contested goods (with one exception mentioned below) as well as the opponent’s goods are, essentially, various apparatus and instruments for recording, transmitting, reproducing or processing sound, images, data or signals and software relating thereto. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria or are even identical, these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are — at least — produced by the same companies, target the same end user and are sold through the same channels of distribution. They also have the same or similar nature and purpose of use. It follows, therefore, that these contested goods are at least similar to the opponent’s goods.

The contested supplies for electricity (‘Netzteile’ in German which is the first language of the contested application, see Article 147(3) EUTMR), are to be understood as chargers, adapters and the like used to supply electric power to other devices, such as the opponent’s routers or television, video and audio signal processing, switching and generating equipment. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary. Consequently, they are similar.

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 similar are directed mostly at business customers with specific professional knowledge or expertise, but some can also target at the public at large.

The degree of attention will be high because the goods are of a complex technological nature, are usually quite expensive and are bought quite rarely.

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 applicant argued that the word ‘NEO’ means ‘new, recent, modern’ and that it is, therefore, non-distinctive. It referred to several decisions of the Office refusing registration of various ‘NEO’ trade marks on absolute grounds (Article 7(1)(b) EUTMR or Article 7(1)(c) EUTMR). However, all these cases were based on the Greek meaning of ‘NEO’ where this term actually exists as a word on its own and is clearly non-distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Greek-speaking part of the public, such as the English-, French-, German-, Portuguese- or Spanish-speaking public.

For this part of the public, the word ‘NEO’ will not be perceived as a common standalone word as such but only as a prefix ‘neo-’ used in conjoined terms referring to something new or revived (e.g. neologism, neoliberalism). Therefore, the word ‘NEO’ alone, without any further context, is rather vague and imprecise, although it alludes to the idea of something new or revived. Moreover, when seen in connection with the relevant goods in Class 9, which are all complex technological devices, the word ‘NEO’ alone is not likely to be perceived by the relevant public as simply indicating that they are new. Consequently, for the part of the public specified above, the verbal element ‘NEO’ is allusive and, therefore, weak (see 26/02/2018, R 1951/2017‑5, NEO by era (fig.) / NEO (fig.) § 37). However, for the reasons mentioned above, it cannot be considered non-distinctive.

The applicant argued that the contested sign would be perceived as two letters ‘EO’ preceded by an image of a horseshoe. It also asserted that the public would perceive a stylised number ‘2’ in the contested sign. These claims appear to be far-fetched. The initial component of the contested sign will be clearly perceived as a letter ‘N’ and not as a horse shoe due to its stylisation, position (on the same line as ‘EO’) and closeness to the letters that immediately follow (‘EO’), creating together a single visual unit, namely the word ‘NEO’. Moreover, there is nothing in the contested sign that resembles the number ‘2’. Apart from the verbal element ‘NEO’, there is just an abstract (and distinctive) image in the form of a curve and two dots. Consequently, the applicant’s arguments must be set aside.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

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). Consequently, the verbal element ‘NEO’ of the contested sign has a greater impact than the figurative element in the form of a curve and two dots.

Visually, the signs coincide in ‘NEO’, which is the only element of the earlier mark and the only verbal element of the contested sign. However, they differ in the stylisation of the letters and in the figurative element representing a curve and two dots in the contested sign which has no counterpart in the earlier mark but which has a lesser impact than the verbal element ‘NEO’.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs fully coincides in the sound of the letters ‛NEO’.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, they are conceptually identical.

In view of the above findings, the overall impressions created by the marks are 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.

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 is composed of a weak word ‘NEO’ and a rather basic stylisation of the letters. Therefore, the degree of distinctiveness of the earlier mark must be seen as low.

e) Global assessment, other arguments and conclusion

The marks are visually similar to an average degree, aurally and conceptually identical, and the goods are either at least similar or similar. The earlier trade mark’s degree of distinctiveness is low and the level of attention of the relevant public will be high.

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 who pay 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).

Furthermore, 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.

Indeed, it is highly conceivable that the relevant consumer, even if highly attentive, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The contested sign is likely to be perceived by the public as a modification of the earlier trade mark based on the same core element ‘NEO’.

The low degree of distinctiveness of the earlier trade mark and the high degree of attention of the public are counteracted by the fact that the marks are highly similar.

Considering all the above, there is a likelihood of confusion on the part of the public of the European Union speaking English, French, German, Spanish or Portuguese. 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 European Union trade mark registration No 2 462 091. 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

Vít MAHELKA

Cindy BAREL

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.