OPPOSITION No B 3 075 161

Socultur, société par actions simplifiée unipersonnelle, 17 rue Archimède, 33700 Merignac, France (opponent), represented by Aletheia Conseil, 608 Chemin Champgravier, 69830 Saint Georges de Reneins, France (professional representative)

a g a i n s t

Shenzhen Sonirock Tech Co. Ltd., Room 201, Block A, No. 1, Qianwan 1st Road, Qianhai Shenzhen-Hongkong Cooperation Zone, Shenzhen, China (applicant), represented by Agency Arnopatents, Brivibas street 162/2-17, 1012 Riga, Latvia (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 161 is upheld for all the contested goods.

2. European Union trade mark application No 17 953 319 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 17 953 319 for the figurative mark . The opposition is based on international trade mark registration No 1 249 316 designating the European Union for the word mark ‘SHIVER’. 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.

a) The goods

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

Class 9: Apparatus for the recording, reproduction and transmission of sound or images, including digital; computers; digital and electronic tablet computers; computer peripheral devices; computer mice; mouse pads; photographic apparatus and instruments, including digital; cinematographic, optical, weighing, measuring, signalling, checking (supervision), and teaching apparatus and instruments; magnetic, digital and audiovisual recording media; media for the recording, transmission, reproduction, duplication and storage of sound and/or images, including digital; magnetic, optical or digital data media, printed or not; prerecorded or blank video cassettes and video discs, prerecorded or blank laser cassettes and laser discs, magnetic tape cassettes and sound recording discs, sound, digital and audiovisual recordings; digital compact discs, video discs, optical discs, digital optical discs; video digital versatile discs; magnetic cards, electronic cards; modems; USB flash drives; hard disc drives; memory cards; magnetic and electronic pens; electronic agendas and computerized personal organizers; digital media for compilation and for computerized editing, digitization of texts and/or still or animated images, and/or sounds (musical or non-musical) for interactive or other use; diskettes; television screens and apparatus, home cinema television sets; telephone apparatus; telecommunication apparatus; car radios; cabinets for loudspeakers, loudspeakers; amplifiers; headphones, stereo earphones; telephone receivers; high-fidelity sound systems; microphones; transparencies; exposed films; calculating machines; lenses for photography, sound alarms; personal stereos; digital personal stereos; ticket dispensers; fiber-optic cables; video camera; video recorders; disc players and digital video discs; printers; video projectors; audio tape recorders; chargers for mobile telephones; optical goods, spectacles (optics), boxes and cases for spectacles, spectacle frames; binoculars (optics); cases for photographic and video apparatus and instruments; protective bags for computers; briefcases and backpacks for laptops; carrying cases and sleeves for laptops and portable electronic devices (tablet computers, MP3 players, electronic book readers); cases and sleeves for mobile telephones, stands for photographic apparatus and video apparatus; tripods for photographic apparatus and video apparatus; electric cells and batteries; apparatus for charging electric accumulators; media players; film scanners; decorative magnets; television programs in the form of video cassettes; publications, guides, newspapers, magazines, non-fiction works, electronic academic and extracurricular works and textbooks (downloadable); digital music and images (downloadable) provided on-line from the internet or a computer database; electric cables; cabinets for loudspeakers, tone arms, needles and speed regulators for record players, record players; luminous signs, cassette and compact disc players; metronomes; acoustic tubes; sound cards; audio and video mixing tables, sound mixers; electrified rails for mounting spot lights, connection cables.

The contested goods are the following:

Class 9: Camcorders; microphones; loudspeakers; sound recording apparatus; earphones; cameras; cases especially made for photographic apparatus and instruments; selfie sticks [hand-held monopods]; computer software applications, downloadable; diaphragms [acoustics]; cabinets for loudspeakers; personal stereos; tripods for cameras; stands for photographic apparatus; cinematographic cameras; smartglasses; computer programs [downloadable software]; accumulators, electric; batteries, electric; headphones.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term including’, used in the opponent’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.

Camcorders; microphones; loudspeakers; sound recording apparatus; cases especially made for photographic apparatus and instruments; cabinets for loudspeakers; personal stereos; tripods for cameras; stands for photographic apparatus; accumulators, electric; batteries, electric; headphones are identically contained in both lists of goods (including synonyms).

The contested earphones include, as a broader category, the opponent’s stereo earphones. 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 cameras; diaphragms [acoustics]; cinematographic cameras are included in the opponent’s broad category of apparatus for the recording, reproduction and transmission of sound or images, including digital. Therefore, they are identical.

The contested selfie sticks [hand-held monopods] are at least highly similar to the opponent’s stands for photographic apparatus and video apparatus. They serve the same purpose (to hold a photographic or video apparatus), they can coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested smartglasses are similar to a high degree to the opponent’s computers. It is clear that a link exists between these goods and that they can be considered complementary to each other. These goods can be produced by the same manufacturers (a computer manufacturer will often also manufacture products specifically designed for use with computers) and they are normally sold through the same distribution channels. Moreover, they target the same public.

The contested computer software applications, downloadable; computer programs [downloadable software] are similar to the opponent’s computers as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

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 varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention, depending on the technical sophistication and price of the goods, may vary from average (e.g. for cases especially made for photographic apparatus and instruments) to high (e.g. for cameras).

c) The signs and the distinctiveness of the earlier mark

SHIVER
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). This applies by analogy to international registrations designating the European Union. 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 element constituting the entire earlier mark is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Italian- and Spanish-speaking public. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. For the part of the public under analysis ‘SHIVER’ is meaningless and therefore normally distinctive.

The contested sign is composed of the meaningless and therefore normally distinctive verbal element ‘SHIVR’ and of the figurative element either representing an abstract decoration or, according to both parties, reproducing one or more stylised letters ‘S’. According to the applicant, in particular, the contested sign should be seen and read as ‘SSSSHIVR’. This claim is not endorsed by the Opposition Division, since the relevant consumer will clearly see the two separate elements composing the contested sign, and there is no reason to assume that the consumers will see it an read it as an eight-letters’ word. What is important to note is that the figurative element will be perceived as an ordinary means of bringing the first letter of the verbal element of the sign, ‘S’, to the attention of the public. Moreover, account must be taken 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).

Visually, the signs coincide in the distinctive letter sequence ‘SHIV*R’ and they differ in the omission of the letter ‘E’ in the contested sign’s verbal element and in its additional figurative element, which is however of lesser impact.

Therefore, the signs are visually similar to at least 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 sequence of sounds ‛SHIV’ and of the last letter ‘R’, present identically in both signs. The pronunciation differs in the additional letter ‛E’ in the earlier mark, which has no counterpart in the contested sign. However, it cannot be excluded that the public under analysis will pronounce the missing ‘E’ also when facing the contested sign, in order to be able to read the letters as a single word.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) 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).

In the present case, the goods at issue were found to be identical or similar to varying degrees. The degree of attention may vary from average to high, and the earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally at least similar to an average degree. The Opposition Division considers that the one letter difference between the signs, namely an additional letter ‘E’ in the earlier mark between the marks’ identical letter sequence ‘SHI’ and their identical last letter ‘R’ are not capable of making sufficient difference to safely exclude the likelihood of confusion between the signs, even when the relevant public displays a heightened degree of attention, and even with regard to goods that are only similar and not identical. In this regard, account must be taken of the fact that consumers tend to focus on the beginning of the signs, which is in the present case, identical until their fourth letter.

Moreover, 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). This is particularly relevant in the present case considering that the general consumers cannot rely on any conceptual differences in order to safely distinguish the signs.

Considering all the above, there is a likelihood of confusion on the part of the Italian- and Spanish-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.

The applicant refers to previous decisions of the Court to support its arguments and these should be duly considered. In the present case, the previous cases referred to by the applicant are not applicable.

The judgements cited by the applicant have all a conceptual element, which is not the case in the present proceedings, since here it has been assessed that for the public under analysis the signs are meaningless.

The applicant further states that small differences may frequently lead to different overall impressions in short words, and cites 06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39 in support of its arguments. The Courts have not exactly defined what a short sign is. However, signs with three or less than three letters/numbers are considered by the Office as short signs, which is not the case for the signs under comparison. In any event, while it is true that the length of signs may influence the effect of the differences between them (namely that, in principle, the shorter a sign, the more easily the public is able to perceive all its single elements - in contrast, the public is usually less aware of differences between longer signs), each case must be judged on its own merits, having regard to all the relevant factors. In the present case, as assessed above, the omission of one letter in the verbal element of the contested sign and the addition of a figurative element in it that is understood as a repetition of the initial letter of the verbal element, is not sufficient to lead to different overall impressions.

In view of the above, the applicant’s arguments must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 249 316 designating the European Union. 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 (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

Meglena BENOVA

Valeria ANCHINI

Sylvie ALBRECHT

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.