OPPOSITION No B 3 083 645

Beats Electronics, LLC, 8600 Hayden Place, Culver City, California 90232, United States of America (opponent), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative)

a g a i n s t

Shenzhen Lannuowei Technology Co., Ltd., 6th Floor, Building 43, Miaoxi 1 Market, Guihua Road, Guanlan Street, Longhua New District, Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, LT-01109 Vilnius, Lithuania (professional representative).

On 22/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 645 is upheld for all the contested goods, namely Class 9 in its entirely.

2. European Union trade mark application No 18 017 812 is rejected for all the contested goods (Class 9). It may proceed for the remaining goods (Class 11).

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 017 812 , namely all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 8 433 195 . 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 8 433 195.

a) The goods

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

Class 9: Audio and video equipment including audio players, video players, media players, portable media players, DVD players, portable DVD players, CD players, portable CD players, media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players, digital video players, portable digital audio players, portable digital video players; digital audio players for automobiles; digital video players for automobiles; MP3 players; MP4 players; protective carrying cases for portable music players; cell phones; personal digital assistants (PDA); smart phones; headsets for mobile phones; speakers; car speakers; loudspeakers; loudspeaker cabinets; horns for loudspeakers; racks for loudspeakers; electric actuators; floor stands and table tops for loudspeakers; surround sound systems; audio equipment; pre-amplifiers; amplifiers; sound amplifiers; audio amplifiers; racks for amplifiers; high-fidelity stereo systems comprising amplifiers, loudspeakers, receivers and tuners; subwoofers; signal separating distributing, generating and converting circuits all for audio signals, video signals or audio-video signals; electro acoustic transducers; audio mixers; electronic audio mixers; sound mixers; sound mixers with integrated amplifiers; acoustic conduits; acoustic couplers; acoustic coupling devices; acoustic membranes; acoustic meters; acoustic separation units; apparatus for wireless transmission of acoustic information; wave reflectors for acoustic speakers, lighting apparatus, and air flow devices; pickups for use with musical instruments; electronic effects pedals for use with musical instruments; musical juke boxes; musical instrument adaptors; musical instrument amplifiers; musical instrument connectors; metronomes; time clocks being time recording devices; teleprinters; scales; micrometers; signal bells, sound locating instruments, namely, sound alarms, sound level meters; projection screens; automatic switchboards; automatic turnstiles; stereo receivers; stereo tuners; stereo amplifiers; audio equipment components; video equipment; video equipment components; microphones; audio and video electric cables and connectors; power cables and connectors; sound and video recording apparatus; portable telephones and accessories; compact disc players; record players and equipment; stereo players and equipment; eyewear and sunglasses; headphones; laptop computers; computer hardware; computer software; computer accessories; electronic devices, including televisions, radios, MP3 players, MP4 players, video players and audio players, all with sound elements; sound systems and sound elements for televisions, radios, audio equipment, namely, media players, portable media players, DVD players, portable DVD players, CD players, portable CD players, media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players, portable digital audio players, digital audio players for automobiles; audio speakers for home theatre systems; audio speakers for computers; audio recordings featuring music; computer software for processing digital music files; digital photo frames for displaying digital pictures, video clips and music; downloadable music via the Internet and wireless devices; downloadable MP3 or MP4 files, MP3 or MP4 recordings and downloadable pod casts featuring music, audio books and news broadcasts; video recordings featuring music; music-composition software; visual recordings and audio visual recordings featuring music; downloadable visual recordings featuring music and musical based entertainment; downloadable cellular phone ringtones; apparatus for recording, transmission or reproduction of sound or images.

The contested goods are the following:

Class 9: In-ear headphones; headphones; stereo headphones; headsets; cabinets for loudspeakers; loudspeakers; speakers for portable media players; microphones; portable vibration speakers; computer mice; computer keypads; lithium batteries; rechargeable batteries; batteries for electronic cigarettes; stereo receivers; audio receivers; protective cases for smartphones; MP3 players; eyeglasses; music headphones.

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.

All of the contested goods except lithium batteries; rechargeable batteries; batteries for electronic cigarettes are identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) (e.g. headphones, loudspeakers, cabinets for loudspeakers; microphones; stereo receivers; MP3 players) or because the contested goods include, are included in, or overlap with, the opponent’s. For example:

 The contested in-ear headphones; stereo headphones; music headphones are included in the opponent’s headphones.

 The contested headsets and the opponent’s headsets for mobile phones overlap.

 The contested speakers for portable media players; portable vibration speakers are included in the opponent’s speakers.

 The contested audio receivers and the opponent’s receivers overlap.

 The contested eyeglasses and the opponent’s eyewear also overlap.

 The contested computer mice and computer keypads are also included in the opponent’s computer accessories.

 The contested protective cases for smartphones and the opponent’s protective carrying cases for portable music players are also clearly identical as they overlap.

The contested lithium batteries; rechargeable batteries; batteries for electronic cigarettes are at least similar to the opponent’s electric actuators, which is a mechanical device used to convert electricity into kinetic energy in either a single linear or rotary motion. They have a similar nature, target the same users, are distributed through the same channels and are manufactured by the same producers.

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.

The relevant public of the goods in Class 9 are both the public at large and professional customers. Even though part of the relevant goods in Class 9, such as the opponent’s ‘sound reproduction and transmitting apparatus’ are technical in nature, they do not necessarily require particular technical knowledge and may be of relatively little monetary value (03/12/2015, T‑105/14, iDrive / IDRIVE, EU:T:2015:924, § 34-37; 27/03/2014, T‑554/12, AAVA MOBILE / JAVA, EU:T:2014:158, § 27). The remaining goods constitute articles of mass consumption. Therefore, the level of attention of the relevant public at large will be average for all the relevant goods.

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).

The earlier mark is a figurative mark composed of a white circle, outlined in black (‘the outer device’), inside of which a circular device is positioned centrally, from which on its left-hand side a vertical line points upwards and flows into the outer device (‘the central circular device with a vertical line’), whereas another smaller circle is placed inside the second circular device (‘the inner smaller circle’).

The contested complex mark is composed of a black unfinished circular device with rounded outer edges (‘the outer device’) and a black circular device is positioned centrally, from which on its left-upper side a vertical line points upwards (‘the central circular device with a vertical line’). Another smaller black circle is placed outside the central circular device (‘the inner smaller circle’). The verbal element ‘iBesi’ of the contested sign in black letters is placed below the figurative elements.

The relevant public will most likely perceive the common central circular devices with a vertical line as the lowercase round-based letter ‘b’.

The verbal element ‘iBesi’ of the contested sign contains the prefix ‘i’. The use of the lower case ‘i’ as a prefix indicates something internet-related has become so widespread the relevant public will perceive the prefix ‘i’ as a reference to the internet, which will be of limited distinctiveness for the contested goods. However, the verbal element ‘Besi’ is meaningless and is, therefore, distinctive.

When a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the denominative element as a point of reference (20/06/2019, T‑390/18, WKU WORLD KICKBOXING AND KARATE UNION (fig.) / WKA et al., EU:T:2019:439, § 65; 23/05/2019, T‑837/17, SkyPrivate (fig.) / SKY et al., EU:T:2019:351, § 39; 18/02/2004, T‑10/03, Conforflex, EU:T:2004:46, § 45). Nonetheless, it does not automatically follow that the verbal element must always be considered the single dominant element. It also follows from the case-law of the Court that, in a complex sign, the figurative element may occupy a place equivalent to the verbal element (24/10/2018, T‑63/17, Bingo Viva! Slots (fig.) / vive bingo (fig.), EU:T:2018:716, § 43).

Neither element dominates the visual impression of the mark because both the verbal element ‘iBesi’ and the figurative element occupy a roughly equivalent area. The two elements may thus be considered as co-dominant.

Visually, despite the presence of the verbal element ‘iBesi’ in the contested sign, the signs demonstrate common essential characteristics as described above. They have a similar structure and composition of their figurative elements, namely a central circular device with a vertical line on its left side that flows into the other device and an inner smaller circle, which are likely to be perceived as the lower-case letter ‘b’. That perception is further enhanced by the verbal element of the contested sign, which is also depicted in lower-case letters and contains the letter ‘B’ immediately following the letter ‘i’. Both signs have highly similar graphic depictions, proportions and stylisations.

The difference between the signs lies in the verbal element ‘iBesi’, and in the fact that the other device of the contested sign is not completed in a circular way at the top side, whereas it has a circular shape in the earlier mark, and further in the dot that appears in the contested sign. Moreover, the central circular device with a vertical line of the contested sign is not fully closed, as it is in the earlier mark, which is, however, of less importance given the reduced size of this feature in the entire composition of the contested sign.

Customers cannot be expected to memorise all details, such as the small interruption in the central circular device, the small dot or the rhomboid shape of the other device, because the average customer rarely has the possibility of making a direct comparison between the marks (08/11/2017, T‑754/16, CC (fig.)/ O (fig.), EU:T:2017:786, § 55). The differences between the signs could easily be overlooked when placed in a small format on the goods in question in comparison to their similarities. The figurative elements of the signs, in particular their central circular devices with vertical lines, are depicted in a similar fashion and comparable proportions, which gives the impression of a certain symmetry, which is a factor of similarity between two signs (07/02/2018, T‑775/16, CRABS (fig.) / DEVICE OF A CRAWFISH (fig.), EU:T:2018:74, § 45; 26/04/2016, T‑21/15, DINO (fig.) / DEVICE OF A DINOSAUR (fig.), EU:T:2016:241, § 70; 18/09/2014, T‑265/13, Boy on bike with mallet, EU:T:2014:779, § 26).

Although the differing elements of the signs obviously have to be taken into account and the verbal element ‘iBesi’ of the contested sign should not and cannot be overlooked, they are insufficient to counterbalance the visual similarity created by the similar figurative elements having considerable weight in the overall visual impression of the contested sign. Bearing in mind that consumers normally perceive a mark as a whole and do not analyse its details, they will perceive the verbal element as an integral part of the figurative aspect of the contested sign, which corresponds to the lower-case letter ‘b’, depicted by the central circular device of the figurative element and the word ‘headphone’, which describes the relevant goods (30/09/2015, T‑364/13, KAJMAN / Device of a crocodile et al., EU:T:2015:738, § 39).

Consequently, visually the signs are similar to a below-average degree.

Aurally, the central circular device with a vertical line of the earlier mark will be pronounced as ‘b’ and the contested sign will be pronounced as ‘b’ followed by the verbal element ‘iBesi’, which is partly descriptive. Therefore, the signs are aurally similar to, at least, a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs comprise a letter ‘B’, which, considering the additional letter ‘i’ of limited distinctiveness and the fact that the verbal element ‘Besi’ is meaningless, leads to a no-more-than-average degree of conceptual similarity.

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 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar. The earlier mark is distinctive to a normal degree.

The essential characteristics of the earlier mark are reproduced in the contested sign, leaving the overall impression given by the signs as being similar to one another: the contested sign reproduces the central circular device, albeit not fully closed, with a vertical line that points upwards and flows into the outer device and the inner smaller circle or device. The outer device of the contested sign, despite its shape, has rounded edges which resemble the rounded outer device of the earlier mark.

The presence of the verbal element ‘iBesi’ in the contested sign, which is co-dominant, and the limited differences in the figurative elements, having a similar structure, composition and proportions, are not sufficient to rule out the overall similarity between the signs.

When encountering the contested sign, the average consumer, who keeps in mind only an imperfect picture of the marks, might reasonably think that it is only a version of the earlier mark.

In light of the foregoing and taking into account the interdependence of the various factors, the below-average degree of visual and aural similarity (for a part of the public) between the marks, the assumed normal degree of distinctiveness of the earlier mark and the average degree of attention on the part of the public at large, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for the identical or similar goods.

The Opposition Division considers that even if consumers do not directly confuse the marks, they may still believe, erroneously, that the contested sign is a variation of the earlier mark and that the two marks, due to their many elements of similarity, have the same business origin. The fact that the earlier mark – contrary to the contested sign – does not contain any verbal element is not sufficient to rule out confusion or, in particular, association between the two marks within the meaning of Article 8(1)(b) EUTMR because it is sufficient, for such a confusion or association to take place, that one co-dominant and distinctive element of the earlier mark is reproduced, almost identically, in the contested sign. More concretely, consumers could plausibly consider that the contested sign is a re-styled version of the mute earlier mark. Consumers would, in other words, erroneously associate the two marks with the same business origin. Association is expressly mentioned in Article 8(1)(b) EUTMR as a form of confusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 433 195. It follows that the contested trade mark 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 right European Union trade mark registration No 8 433 195 leads to the success of the opposition and to the rejection of the contested trade mark 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(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

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

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.