OPPOSITION No B 3 085 835

Audio Design Lautsprecher Vertriebs GmbH, Am Breilingsweg 3, 76709 Kronau, Germany (opponent), represented by Gollhofer Weidlich Leser-Rechtsanwälte Steuerberater, Lessingstr. 1, 68165 Mannheim, Germany (professional representative)

a g a i n s t

Altium LLC, 4225 Executive Square Suite 700, 92037 La Jolla, California, United States of America, (applicant), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha., 28009 Madrid, Spain (professional representative)

On 28/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 835 is upheld for all the contested goods.

2. European Union trade mark application No 18 005 917 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 18 005 917 for the word mark ‘ALTIUM CONCORD’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 17 969 667 for the word mark ‘Concord’. The opponent invoked Article 8(1)(a) and (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 the following:

Class 9: Entertainment electronics apparatus, in particular apparatus for receiving, recording, transmission or reproduction of sound or images, including amplifiers, headphones, loudspeakers, cabinets for loudspeakers and hi-fi systems; vehicles (navigation apparatus for -) [on-board computers]; navigational instruments; computers; wearable computers; monitors [computer hardware]; monitors [computer programs]; peripherals adapted for use with computers; recorded computer programs, other than computer programs for producing typefaces and fonts; downloadable computer programs, other than computer programs for producing typefaces and fonts; recorded computer software, other than computer programs for producing typefaces and fonts; interfaces for computers; multi-media apparatus; moniceivers; naviceivers; acoustic loudspeaker systems, acoustic loudspeaker components, acoustic sound systems, loudspeakers, stereo audio systems, noise suppression apparatus and computer-generated sound systems; electric and electronic apparatus and devices, namely apparatus and instruments for retrieval, storage, input, output, processing, display and transmission of data, sound and images; none of the aforesaid goods in relation to lighting apparatus, lighting installations, lighting equipment or with equipment in relation to lighting.

The contested goods are the following:

Class 9: Computer software used for database management and collaboration in electronic design automation.

The contested computer software used for database management and collaboration in electronic design automation overlaps with the opponent’s recorded computer software, other than computer programs for producing typefaces and fonts; none of the aforesaid goods in relation to lighting apparatus, lighting installations, lighting equipment or with equipment in relation to lighting. Therefore, they are identical.

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 are directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Concord	ALTIUM CONCORD
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 common element ‘CONCORD’ is meaningful in certain territories, for example in those countries where English is understood. It means ‘agreement or harmony between people or nations; amity’ (information extracted from Collins English Dictionary on 19/05/2020 at https://www.collinsdictionary.com/dictionary/english/concord). This meaning has no relation to the goods in question; therefore, the common element ‘CONCORD’ has a normal distinctive character. Since a coincidence in a distinctive element tends to increase the degree of similarity between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the consumers in Ireland and Malta.

The element ‘ALTIUM’ of the contested sign has no meaning for the relevant public and neither of the parties has argued otherwise. Therefore, it is distinctive.

Visually and aurally, the signs coincide in the distinctive element ‘CONCORD’, which constitutes the entirety of the earlier mark and the second element of the contested sign. However, the signs differ in the element ‘ALTIUM’, positioned at the beginning of the contested sign.

While, generally, as pointed out by the applicant, the beginning of signs has a greater impact on the consumer, this does not make the signs as a whole dissimilar and does not overwhelm the clearly perceivable similarities. In the present case, notwithstanding the difference in the initial parts of the signs, their endings do coincide; moreover, the earlier mark is entirely incorporated in the contested sign as an independent element.

Therefore, contrary to the applicant’s arguments, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the concept of their common distinctive element ‘CONCORD’, while the additional element of the contested sign is meaningless, the signs are conceptually 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.

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

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.

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).

The goods at issue found to identical are directed at the professional public, whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and conceptually highly similar, as they share the element ‘CONCORD’, which is the sole element of the earlier mark and is included in its entirety in the contested sign. Moreover, this element plays an independent and distinctive role within the contested sign and is its only meaningful element. In an overall assessment of the marks, the contested sign’s differing element, although positioned at the beginning of the sign, is not of such an impact as to counteract the similarities and to enable the relevant public to safely distinguish between them.

Therefore, in contrast with the applicant’s arguments, it is highly conceivable that the relevant public, who, even if highly attentive, will also have to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical goods originate from the same or economically linked undertakings.

Bearing in mind the possible imperfect recollection, it cannot be excluded that, owing to the inclusion of the sole element of the earlier mark in the contested sign, the relevant consumers might 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.

In its observations, the applicant implies a low distinctive character of the term ‘CONCORD’ since it is highly used in many EUTM registrations for the relevant goods.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CONCORD’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking parts 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 and the contested trade mark must be rejected for all the contested goods.

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)(a) 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

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.