OPPOSITION No B 3 081 468

GS Yuasa International Ltd., 1, Inobaba-cho, Nishinosho, Kisshoin, Minami-ku, Kyoto-shi, 601-8520 Kyoto, Japan (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, EC2V 5DE London, United Kingdom (professional representative)

a g a i n s t

Shenzhen Chuangxin Shengshi Trading Co., Ltd., No. 18, Qiyu Rd, Fuyongbaishisha, Fuyong St, Bao’an Dist, Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 28/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 468 is partially upheld, namely for the following contested goods:

Class 9: Mobile telephones; cell phones; cellular phones; earphones; pedometers; telecommunication apparatus in the form of jewelry; computers; chargers for smartphones.

2. European Union trade mark application No 18 015 524 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods in Class 9 of European Union trade mark application No 18 015 524 (figurative mark). The opposition is based on European Union trade mark registration No 9 445 263 (figurative mark) and European Union trade mark registration No 17 949 782 (figurative mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARKS ON THE SCOPE OF THE OPPOSITION

According to Article 46(1) EUTMR, notice of opposition to registration of the trade mark may be filed within a period of three months following the publication of an EU trade mark application (opposition period). According to Article 2(2)(i) EUTMDR, the notice of opposition shall contain an indication of the goods or services against which the opposition is directed; in the absence of such an indication, the opposition shall be considered to be directed against all of the goods or services of the opposed EU trade mark application.

In the notice of opposition filed on 30/04/2019 the opponent indicated that the opposition is directed against some of the goods in Class 9, namely, mobile telephones; cell phones; cellular phones; covers for smartphones; earphones; pedometers; telecommunication apparatus in the form of jewelry; protective films adapted for smartphones; computers; chargers for smartphones. However, in its observations of 27/06/2019, filed after the opposition period, the opponent claimed that the opposition is directed against the following goods in Class 9: mobile telephones; cell phones; cellular phones; covers for smartphones; earphones; pedometers; ear pads for headphones; telecommunication apparatus in the form of jewelry; protective films adapted for smartphones; computers; chargers for smartphones.

The Opposition Division considers this enlargement of the list of the contested goods by adding an additional good in Class 9, namely ear pads for headphones, after the expiry of the opposition period, inadmissible. Therefore, the opposition is deemed to be directed against the goods in Class 9, as indicated in the opposition notice and listed in section a) of this decision.

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 9 445 263 .

a) The goods

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

Class 9: Batteries.

The contested goods are the following:

Class 9: Mobile telephones; cell phones; cellular phones; covers for smartphones; earphones; pedometers; telecommunication apparatus in the form of jewelry; protective films adapted for smartphones; computers; chargers for smartphones.

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 chargers for smartphones usually coincide in producer, end user and distribution channels with the opponent’s batteries, which include also batteries for smartphones. Furthermore, the goods are complementary. They are, therefore, highly similar.

The contested mobile telephones; cell phones; cellular phones; earphones; pedometers; telecommunication apparatus in the form of jewelry; computers are similar to the opponent’s batteries because batteries are used for accumulating electricity and are an indispensable part of all of the opponent’s goods. Therefore, they are complementary. Furthermore, the goods can coincide in their end user and distribution channels.

The remaining contested covers for smartphones; protective films adapted for smartphones are accessories for smartphones. These are all goods with a different nature and purpose to the opponent’s goods in Class 9, covering batteries. They are neither complementary nor in competition. Furthermore, they are unlikely to be produced by the same manufacturers. Therefore, the goods under comparison are considered to be dissimilar.

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 (to varying degrees) are directed at the public at large.

The degree of attention of the average consumer may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price (05/05/2015, T‑423/12, Skype / SKY et al., EU:T:2015:260, § 22; 27/03/2014, T‑554/12, AAVA MOBILE / JAVA, EU:T:2014:158, § 27; 08/09/2011, T‑525/09, Metronia, EU:T:2011:437, § 37).

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).

Both signs under comparison consist of the stylised upper-case letters ‘GS’, which bear no meaning for the public in the relevant territory and neither party has argued otherwise. They are, therefore, distinctive to a normal degree for the relevant goods in both signs.

The stylisation of these letters in each sign is more of a decorative nature and will not distract the consumer’s attention from the letters it embellishes.

In any event, the fact remains that when signs consist of both verbal and figurative components (or stylised typefaces as the signs do in the present case), 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 letters ‘GS’ and they only differ in their stylisation in each sign. Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs are identical, given that they coincide in all of their sounds, namely ‘GS’/‘GS’.

Conceptually, neither of the signs has a meaning for the relevant public. 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) 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested goods are partly similar (to varying degrees) and partly dissimilar to the opponent’s goods. Those found to be similar (to varying degrees) target the public at large, whose degree of attention varies from average to high. The earlier trade mark has a normal degree of inherent distinctiveness.

The signs in dispute are visually similar to an average degree, aurally identical and the conceptual aspect does not influence the assessment of their similarity, as explained above in section c) of this decision. They have the letters ‘GS’ in common and only differ in their typeface, which is of a decorative nature. This justifies the conclusion that there is a likelihood of confusion. It is indeed possible that the average consumer may be led to believe that the same undertaking is responsible for the production of the goods found to be similar (to varying degrees). Even the part of the public who pay a higher than average degree of attention may be confused as to the origin of the goods in question.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as 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).

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the relevant public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 445 263.

It follows from the above that the contested sign must be rejected for all the contested goods found to be similar (to varying degrees) to the goods of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the European Union trade mark registration No 17 949 782, , registered for the following goods in Class 9: batteries and cells; batteries, electric; batteries, electric, for vehicles; batteries for lighting; battery boxes; battery chargers; battery jars. These opponent’s goods cover different types of batteries, battery chargers and containers for batteries. They have no relevant points of contact with the contested covers for smartphones; protective films adapted for smartphones (i.e. accessories for protecting smartphones from damage), which have already been found dissimilar to the goods of the earlier mark compared above in the section a) of this decision. The goods have different natures, purposes and manufacturers. Furthermore, they are neither complementary nor in competition. Therefore, the goods of the opponent’s European Union trade mark registration No 17 949 782 are considered to be dissimilar to the remaining aforesaid contested goods. Consequently, the outcome of this decision cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña URIARTE VALIENTE

Martin MITURA

Martin INGESSON

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.