OPPOSITION No B 3 078 731

Ziber B.V., Zijperweg 4 J, 1742 NE Schagen, Netherlands (opponent), represented by Maikel Bauer, Zijperweg 4 J, 1742 NE Schagen, Netherlands (employee representative)

a g a i n s t

Ziiber Inc., 200 Continental Dr Ste 401, Rm 411, Newark 19713, United States of America (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 10/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 731 is partially upheld, namely for the following contested goods:

Class 9: Computers; computer software, recorded; counters; scales with body mass analysers; signal lanterns; transmitters of electronic signals; headphones; audiovisual teaching apparatus; lenses for astrophotography; wires, electric; electrolysers; sprinkler systems for fire protection; protection devices for personal use against accidents; theft prevention installations, electric; spectacle chains; batteries, electric; sports whistles; chips [integrated circuits].

2. European Union trade mark application No 18 023 609 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 023 609 for the word mark ‘ZIIBER’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 7 299 531 for the word mark ‘ziber’. 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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for the conduction, distribution, conversion, storage, regulation and management of electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Computers; computer software, recorded; counters; scales with body mass analysers; signal lanterns; transmitters of electronic signals; headphones; audiovisual teaching apparatus; lenses for astrophotography; wires, electric; igniting apparatus, electric, for igniting at a distance; electrolysers; sprinkler systems for fire protection; protection devices for personal use against accidents; theft prevention installations, electric; spectacle chains; batteries, electric; animated cartoons; sports whistles; chips [integrated circuits].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 9

The following contested goods are identical to the opponent’s goods.

 Computers are identically contained in both lists of goods.

 The contested counters are included in the broad category of the opponent’s measuring apparatus and instruments.

 Scales with body mass analysers are included in the broad category of the opponent’s weighing apparatus and instruments.

 The contested transmitters of electronic signals overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images.

 Signal lanterns and sport whistles are included in the broad category of the opponent’s signalling apparatus and instruments.

 Headphones are included in the broad category of the opponent’s apparatus for transmission of sounds.

 Audiovisual teaching apparatus are included in the broad category of the opponent’s teaching apparatus and instruments.

 Lenses for astrophotography are included in the broader category of the opponent’s optical apparatus and instruments.

 The contested electrolysers are electrochemical cells that convert electric energy into chemical energy. They are included in, or overlap with, the broad category of the opponent’s apparatus and instruments for conversion of electricity.

 The contested sprinkler systems for fire protection overlap with the opponent’s fire-extinguishing apparatus.

 The contested batteries, electric are included in the broad category of the opponent’s apparatus and instruments for storage of electricity.

 The contested protection devices for personal use against accidents is a broad category which overlaps with the opponent’s life-saving apparatus and instruments.

The contested wires, electric, which are used to conduct electricity, are similar to at least an average degree to the opponent’s apparatus for conducting electricity, since they can coincide in their nature, purpose, producers and distribution channels. Furthermore, they target the same public and may be complementary.

The contested computer software, recorded is similar to the opponent’s computers. Software is composed of programs, routines and symbolic languages that control the functioning of the hardware and direct its operation. Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate. Therefore, the contested software is complementary to the opponent’s computers. They also have the same distribution channels, can come from the same kind of undertakings, and target the same consumers.

The contested chips [integrated circuits] are similar to the opponent’s computers. Integrated circuits play a large and primary role in the functioning of computers and many peripheral devices. They are needed for computers to function. Therefore, there is a close relationship and high degree of complementarity between the goods. Moreover, it is very likely that companies that manufacture computers, will also manufacture circuit boards. Furthermore, they share the same distribution channels.

The contested theft prevention installations, electric include various devices and mechanisms that are designed to protect against intruders and the risk of theft. Part of the contested installation could include devices such as cameras, microphones and voice recorders. Therefore, these contested goods are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images. They can coincide in producers and distribution channels and target the same public. Furthermore, they share the same purpose.

The contested spectacle chains are similar to a low degree to the opponent’s optical apparatus and instruments because they coincide in end user and distribution channels. Furthermore, they are complementary.

The contested animated cartoons are films for the cinema, television or computer screen that are made using sequential drawings. They are dissimilar to all of the opponent’s goods since they have nothing in common in terms of nature, purpose, method of use, manufacturers, distribution channels and public. Moreover, they are neither complementary nor in competition with each other. Admittedly, they might be watched on the opponent’s apparatus for recording, transmission or reproduction of sound or images, which means they are complementary to some extent. However, they have different natures, purposes, methods of use, manufacturers, distribution channels, and consumers, and they are not in competition with each other. Therefore, this is not sufficient for finding similarity.

The contested igniting apparatus, electric, for igniting at a distance are devices used to start generating heat by distance. They are dissimilar to all the opponent’s goods because they have nothing relevant in common. They have a different nature and purpose. They do not have the same method of use. They are neither complementary nor in competition. Furthermore, they do not share the same distribution channels and do not target the same end user. Finally, they are produced by different companies.

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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. The degree of attention will be high, for example, in relation to specialised goods such as lenses for astrophotography or sprinkler systems for fire protection, which have an impact on people’s safety and therefore involve an enhanced degree of the public’s attention.

c) Distinctiveness of the earlier mark and the comparison of signs

ziber	ZIIBER
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 distinctiveness of the earlier mark, which consists of a single verbal element, 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 present assessment will rest on the earlier mark’s inherent distinctiveness.

Both ‘ziber’ and ‘ZIIBER’ are invented words, which do not exist as such in any of the languages of the relevant territory. Therefore, as these words are fanciful, they are distinctive for the goods in question. As ‘ziber’ is the only element it contains, the distinctiveness of the earlier mark must be seen as normal.

Visually, the signs coincide in the sequence of letters ‘ZI*BER’, which constitute the entirety of the earlier mark. They only differ in the additional ‘I’ of the contested sign. This is located in the middle part of the word where, given its length, it is not particularly striking. In the case of word marks, such as the signs under comparison, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the earlier mark is written in lower-case letters and the contested sign in upper-case letters. Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ZI*BER’, present identically in both signs. Since the additional ‘I’ in the contested sign follows an identical vowel, it may not even be noticed. Consequently, the signs are aurally identical or quasi-identical.

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).

The relevant goods are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large as well as business consumers. The degree of attention will vary from average to high. The distinctiveness of the earlier mark is normal. The signs are visually highly similar and aurally identical or quasi-identical, with the conceptual aspect playing no role in the assessment.

The differences between the signs will largely go unnoticed: one additional letter in the middle of the word does very little to assist in distinguishing between the signs. Moreover, the common letters are placed in the same order, which reinforces the similarity between the signs.

In this regard, 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).

Consequently, the relevant consumer is likely to confuse the marks, since the differences between the signs are simply not enough to outweigh the clear similarities. Due to the abovementioned striking similarities between the signs, there is also a likelihood of confusion in respect of those goods found similar to only a low degree.

Therefore, there is a likelihood of confusion and the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 7 299 531. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those 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.

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

Loreto URRACA LUQUE

Zuzanna STOJKOWICZ

Christophe DU JARDIN

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.