OPPOSITION No B 3 066 669

Giorgio Armani S.p.A., Via Borgonuovo, 11, 20121 Milan, Italy (opponent), represented by Jacobacci & Partners, S.L.U., Calle Génova, 15 - 1°, 28004 Madrid, Spain (professional representative)

a g a i n s t

Guangdong Oppo Mobile Telecommunications Corp. Ltd., No.18 Haibin Road Wusha, Chang'an, Dongguan, Guangdong, People’s Republic of China (applicant), represented by Domingo Galletero Company, Calle Pérez Medina, nº 23, Entlo. Dcha, 03007 Alicante, Spain (professional representative).

On 10/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 667 is upheld for all the contested goods.

2. European Union trade mark application No 17 927 703 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 17 927 703 for the word mark ‘AX19’. The opposition is based on European Union trade mark registration No 15 742 653 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Spectacles, sunglasses, lenses and frames therefor, contact lenses, cases for glasses and spectacles, chains and cords for glasses and spectacles, parts and fittings for all the aforesaid goods; covers for portable multimedia players; covers for mobile phones; covers for DVDs; covers for CDs; covers for computer cables; covers for audio reproduction devices; covers for palmtops; covers for electronic agendas; covers for photographic cameras and covers for film cameras; cellular phones; smartphones; wireless communication devices featuring telecommunication functionality to allow the transmission of text, data, audio, image and video files; electronic monitoring devices comprised of microprocessors and accelerometers, for identifying, storing, reporting, monitoring, uploading and downloading data and information for personal physical fitness and training purposes; downloadable applications and software for smart watches and mobile devices, for processing, reviewing and editing data, to enable users to control the presentation and information available from the devices; wearable sensors for personal physical fitness and training purposes to gather biometric data and also including monitors and displays sold as a unit; smartwatches; wearable activity trackers; pedometers.

The contested goods are the following:

Class 9: Smartphones; cell phones; smartphone software applications, downloadable; tablet computers; batteries, electric; bags adapted for laptops; materials for electricity mains [wires, cables]; USB cables; covers for smartphones; protective films adapted for smartphones; headphones; electrical adapters; virtual reality headsets; smartwatches; cameras [photography].

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 contested covers for smartphones overlap with the earlier covers for mobile phones. Therefore, they are identical.

Cell phones; smartwatches; smartphones are identically contained in both lists of goods (including synonyms).

The contested smartphone software applications, downloadable include, as a broader category the earlier electronic monitoring devices comprised of microprocessors and accelerometers, for identifying, storing, reporting, monitoring, uploading and downloading data and information for personal physical fitness and training purposes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested tablet computers are similar to a high degree to the earlier smartphones because they not only coincide in their method of use, but they are also in competition and they have the same distribution channels, relevant public and producer.

The contested protective films adapted for smartphones are similar to a high degree to the earlier covers for mobile phones because they have the same intended purpose, i.e. to protect phones, and they coincide in distribution channels, relevant public and producer.

The contested cameras [photography] and the earlier smartphones have a different nature and a different intended purpose. However, they share distribution channels, relevant public and producer. Furthermore, they are in competition with each other, because these products may well be used as substitutes for one another. Consequently, they are considered to be similar.

The contested bags adapted for laptops are similar to the earlier covers for palmtops because they coincide in distribution channels, relevant public and producer.

The contested batteries, electric; materials for electricity mains [wires, cables]; USB cables; headphones; electrical adapters; virtual reality headsets are similar to the opponent smartphones because, though of a different nature, they not only share a certain degree of complementarity, but they also coincide in distribution channels, relevant public and producer.

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 is considered to be average.

3. The signs

	AX19
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 earlier mark is made of the two black capital letters ‘AX’ separated by a thin vertical line slightly larger than their height. The contested sign is a word mark consisting of the elements ‘AX19’.

As regards the elements ‘AX’ and ‘AX19’, per se they do not have any meaning in relation to the goods in Class 9. It is true that the number ‘19’ might indicate several concepts, such as, for instance, the number of the model, or a position in a classification or a series. In any case, in the lack of a clear and direct meaning, the Opposition Division deems that this numeral, as well as the letters ‘AX’, are normally distinctive.

As regards the earlier sign, it is composed of a distinctive verbal element and a figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

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

Visually, the signs coincide in the distinctive elements ‘AX’. However, they differ in the less distinctive and simple figurative element of the earlier mark and in the numeral ‘19’ of the contested sign.

Consequently, 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 coincides in the sound of the letters ‘AX’, which form a normally distinctive element in both signs. The pronunciation differs in the sound which derives from the pronunciation of the numeral which is part of the contested sign.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign’s numeral as explained above, the other sign has no meaning per se in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. 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).

The goods in Class 9 covered by the trade marks in dispute have been found partly identical, partly similar to varying degrees. They are directed at the public at large whose degree of attention is considered to be average.

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).

As regards the signs they are visually and aurally similar to an average degree. In fact, they are made of the same verbal elements, namely the two letters ‘AX’ and, in the case of the earlier mark, also of a less distinctive figurative element. The contested sign also contains an additional numeral, namely ‘19’, which is per se normally distinctive but necessarily plays a sort of ancillary role with respect of the two letters ‘AX’ that precede it. The distinctiveness of the earlier mark is normal.

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).

As the goods are identical and similar to varying degrees and between the signs there is an average degree of visual and aural similarity and in the absence of any other factor, and in spite of the difference in the additional numeral of the contested sign, it cannot be excluded that the public might associate the trade marks in dispute.

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 possibly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates. This is due, in particular, to the fact that the core of the signs is overall the same, namely the sequence of the two same letters ‘AX’.

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 European Union trade mark registration No 15 742 653. 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.

The Opposition Division

Riccardo RAPONI

Andrea VALISA

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.