OPPOSITION No B 3 071 166

Consolidated Artists B.V., Lijnbaan 68, 3012 EP Rotterdam, Netherlands (opponent), represented by Baker & Mckenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034 Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Caitong Technology Co. Ltd., 4/F, Bldg B, Shuitiandingfeng Science Park, Greatwall RD, Shuitian community, Shiyan ST, Bao'an DIST, 518000 Shenzhen, China (applicant), represented by Jannig & Repkow Patentanwälte Partg MBB, Klausenberg 20, 86199 Augsburg, Germany (professional representative).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 166 is upheld for all the contested goods.

2. European Union trade mark application No 17 938 017 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 17 938 017 for the word mark MANGO MEN. The opposition is based on, inter alia, European Union trade mark registration No 9 850 785 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

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 European Union trade mark registration No 9 850 785.

a) The goods

The goods on which the opposition is based are, among others, the following:

Class 9: Sunglasses, eyeglasses for sports practice; Frames (casings) for spectacles and sunglasses; Spectacle and sunglasses cases; Camcorders; Scientific (other than for medical purposes), nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; cameras (cinematographic cameras); Photography screens; Projection screens; Fluorescent screens; Video screens; Monitors (computer hardware); Radio, including for vehicles; receivers (audio, video); Television apparatus; Video recorders; Cassette players; Compact disc players; Readers (data processing equipment); DVD players; Optical character readers; Timetables (Electronic -); Pocket calculators; Electronic pocket translators; Satellite navigational apparatus; Navigation apparatus for vehicles (on board computers); Batteries, electric; Magnetic cards; Smart cards with chips; Compact discs (audio-video), Optical discs, Compact discs [read-only memory]; Compact discs with read-only memory and interactive compact discs; Optical and magnetic data media; Audio-visual teaching apparatus; Instructional and teaching material, in the form of CD-ROMs; Software [programas grabados]; Downloadable software; Electronic publications, downloadable; Exposed cinematographic film; Transparency projection apparatus; Transparencies [photography]; Data-processing apparatus and equipment; Computers; Peripherals adapted for use with computers; Computer memory devices; Modems; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers; Calculators; Clothing and footwear for protection against accidents, irradiation and fire; Protective helmets and masks; Diving suits, gloves for divers and divers' masks; Magic lanterns; Juke boxes, musical; Personal stereos; Headphones; Walkie-talkies; Telephone receivers; Telephones including mobile telephones; Carrying cases for portable telephones; Cases adapted for mobile phones; Battery chargers for portable telephones; Battery chargers for portable telephones for use in vehicles; Covers for mobile phones; Portable telephones including large keys and numbers intended to help people with sight and dexterity problems; Computer applications software for portable telephones; Computer software designed to enable the transmission of photographs to portable telephones; Devices for hands-free use of mobile phones; Digital cellular phones; Hands free kits for phone; Keyboard for cellular phone; Laptop computers; Straps for portable telephones; Radio pagers; Video telephones; Answering machines; Hands free kits for phones; Loudspeakers and cabinets for loudspeakers; Amusement apparatus adapted for use with an independent display screen or a monitor; Apparatus for games adapted for use with an external display screen or monitor; Facsimile machines; Make-up removing appliances electric; Electrical irons.

After a final decision in opposition case B 3 072 178 of 15/10/2019 the contested sign was partially rejected and the contested goods are the following:

Class 9: Headphones; Cases adapted for mobile phones; Range finders; Portable media players; Chargers for electric batteries; Meters; Satellite navigational apparatus; Cinematographic apparatus; Signal lanterns; Alarms; Chargers for mobile phones; Protective films adapted for computer screens; Speaker enclosures; Monitoring apparatus, electric; Selfie sticks [hand-held monopods]; Electricity mains (Materials for -) [wires, cables]; Rechargeable electric batteries; Car video recorders; Juke boxes, musical; Punched card machines for offices; Scales; Measuring rulers; Smartwatches; Batteries, electric; Data transmission cables; Notebook computers.

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 satellite navigational apparatus; cases adapted for mobile phones are identically contained in both lists of goods.

The contested chargers for electric batteries; chargers for mobile phones; rechargeable electric batteries; batteries, electric are identical to the opponent’s battery chargers for portable telephones; batteries, electric, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested headphones; portable media players; cinematographic apparatus; car video recorders; juke boxes, musical; speaker enclosures are included in the opponent’s broader category of apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

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

The contested signal lanterns; alarms rulers are included in the opponent’s broader category of signalling apparatus and instruments. Therefore, they are identical.

The contested range finders; meters; scales; monitoring apparatus, electric; measuring rulers are included in or overlap with the opponent’s broader category of measuring apparatus and instruments. Therefore, they are identical.

The contested smartwatches are similar to a high degree to the opponent’s computers because they usually coincide in producer, relevant public, distribution channels and method of use.

Protective films adapted for computer screens are similar to the opponent’s video screens; monitors (computer hardware) as they can have the same distribution channels and relevant public. Furthermore, they can be complementary.

The contested selfie sticks [hand-held monopods] are similar to the opponent’s telephones including mobile telephones as they can have the same distribution channels and relevant public. Furthermore, they can be complementary.

The contested punched card machines for offices are machines used to enter data into a card by punching holes. Prior to the actual period of computers the automatic data processing was handled mainly by punched card machines. They are at least similar to the opponent’s goods data-processing apparatus and equipment. They have a similar nature and purpose. Furthermore, they can have the same producer, distribution channels and relevant public.

The contested data transmission cables are similar to the opponent’s computers as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested electricity mains (Materials for -) [wires, cables] are concerned with conducting, accumulating, regulating or controlling electricity. They are similar to the opponent’s batteries, electric, which belong to the category of apparatus and instruments for accumulating and storing electricity, because they have essentially the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

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 are directed at the public at large as well as at business customers with specific professional knowledge or expertise.The degree of attention is average.

c) The signs

	MANGO MEN
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 verbal elements ‘MANGO’ and ‘MEN’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘MANGO’ included in both signs will be understood as the name of a fruit. This element is distinctive as has no direct and immediate relation with the relevant goods.

The element ‘MEN’ of the contested sign will be understood as the plural of man ‘an adult male human’. This element is considered distinctive for the relevant goods as a gender-specific division is not customary in the market sector of the goods concerned.

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

‘MANGO’ is the only verbal element of the earlier mark and the first element of the contested sign. 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.

Visually and aurally, the signs coincide in the distinctive element‘MANGO’ which is also the first element of the contested sign and the only verbal element of the earlier mark. However, they differ in the second element of the contested sign ‘MEN’ and (visually) in the slight typeface of the earlier mark which is purely decorative.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar. The degree of attention of the relevant public is average.

The earlier mark has a normal inherent degree of distinctiveness.

The marks are visually, aurally and conceptually similar to an average degree. In particular, the only verbal element of the earlier mark in entirely included as first element of the contested sign which is where consumer tend to focus its attention.

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).

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 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, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 9 850 785. It follows that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 9 850 785 leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(5) EUTMR.

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

Aldo BLASI

Francesca CANGERI

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.