OPPOSITION Nо B 3 089 680

Amh Sales Inc., 1845 W. 169th Street, 90247 Gardena, United States of America (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative)

a g a i n s t

Dialoga Servicios Interactivos, S.A., Plaza Euskadi Nº 5, Planta 12, 48009 Bilbao, Spain (applicant), represented by Luigi Carlini, C/ Lagasca 125, 1º Ext. Izq., 28006 Madrid, Spain (professional representative).

On 17/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 680 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 026 016 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 and services of European Union trade mark application No 18 026 016 (figurative mark). The opposition is based on EUTM registration No 4 805 743 (figurative mark) and EUTM registration No 5 250 972 ‘TRIDENT’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 21/02/2019.The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 21/02/2014 to 20/02/2019 inclusive.

Furthermore, the evidence must show use of the trade marks or the goods on which the opposition is based, namely the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computer software; recording consoles; mixing consoles; audio mixers; loud speakers; amplifiers; enhancers; equalizers; deessers; compressors; guitar cables; electric cables; microphone cables; connecting electrical cables; microphones; microphone pre-amplifiers; microphone pop filters; microphone windscreens; cases for microphones; audio stands; audio racks.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 08/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 13/06/2020 to submit evidence of use of the earlier trade marks. On 12/06/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following.

Annexes 1-3: printouts from the opponent’s website at www.tridentaudiodevelopments.com, which set out the history of Trident and Trident Studios, including a chronology of the various ‘TRIDENT’ audio consoles from 1971 to 2017. In addition, it shows how audio products (Trident) are promoted and sold throughout the relevant period. The following signs are depicted:

. . and the information refers to dates.

The images of the products in the printouts show the signs ‘TRIDENT’ and/or .

Annex 4: printouts from the Softube website with details of the software, as well as the website’s support page, which includes information specifically for customers living in the European Union. Prices are provided in euros. A description of one of the products reads: ‘The Trident A-Range equalizer is a legendary piece of equipment’. The dates are visible (2014-2019)

Annex 5: printouts from the Universal Audio website with details of the software. Prices are provided in pounds sterling. This Annex also contains a small number of corresponding WayBack Machine printouts relating to 2016-2019.

Annex 6: a printout from the opponent’s website with a map showing the locations of dealers across Europe.

Annex 7: a selection of printouts from websites, such as www.proaudioeurope.com, https://funkyjunk.it/shop/recording/mixer/trident-88-24-console-analogica-24-canali/, KMR, www.woodbrass.com/advanced_search_result.php?keywords=trident, showing the signs ‘TRIDENT’ and in relation to audio products and stating prices. One description reads: ‘One of the best known manufacturers of recording consoles’.

Annex 8: around 50 invoices for 2014-2019 from PMI Audio Group, in respect of sales of ‘TRIDENT’-branded audio products in different countries across Europe (e.g. Belgium, Germany, Spain, France, Italy, Austria, Sweden). The quantities and prices can be seen (in some cases the quantities are large) as well as the products (e.g. Trident Studio Monitors, Trident 80B Dual Mic Pre/EQ, Trident Dual Mic Pre / EQ, Trident Audio 88-32 Channel).

Annex 9: printouts from different websites in relation to the abovementioned product series in the invoices. There is also a description of the products. This evidence was published in July 2017. The following is depicted along with the products, prices and descriptions: .

Annex 10: several printouts titled ‘Royalty Report PMI Audio Group’ containing the product from the quarterly reports on the Softube website dated in the relevant period.

Annex 11: a printout from the internet mentioning the following: ‘The Best Brands: Create music using products from some of the audio world’s most renowned brands: Summit Audio, Trident Audio Developments, Drawmer Electronics, Doepfer Musikelektronik and Fix Audio Designs.’

Annex 12: a selection of printouts from the opponent’s social media pages and different posts.

Annex 13: a selection of reviews, news articles and online forum discussions relating to ‘TRIDENT’ products dated in the relevant period.

Preliminary remarks

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of genuine use

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Place of use

The invoices refer to the European Union (some of the amounts are expressed in euros and refer to 2014-2019). The same can be said for the catalogues, as their recipients and shipment addresses are within the European Union (Belgium, Germany, Spain, Austria, Sweden, etc.) Therefore, the evidence relates to the relevant territory.

Time of use

The applicant claims that it is not possible to ascertain from the documents use of the marks during the relevant period. However, given that the invoices and printouts are dated in the relevant period, that is from 2014 to 2019, the Opposition Division considers that the opponent has provided sufficient indications concerning the time of use of the earlier marks.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The invoices and the different printouts concerning the relevant goods provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Indeed, the invoices show substantial sales within the relevant period for products which mention ‘TRIDENT.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The applicant argues that the invoices do not refer to the sign ‘Trident’.

The earlier marks are a word mark and a figurative mark. In the latter, the letters of the verbal element ‘TRIDENT’ are slightly stylised and there is a triangular figurative device. It appears from the evidence that both signs are used, for example, the invoices contain the word mark ‘TRIDENT’, whereas the catalogues contain the figurative mark.

As regards the earlier word mark ‘TRIDENT’, the depiction of the mark in a stylised form together with some figurative elements is not considered as substantially changing the distinctive character of the word trade mark ‘TRIDENT’ as registered. The distinctiveness of the mark is largely due to the wording ‘TRIDENT’ and only marginally influenced by the figurative element (consisting of the letter T and some devices). Therefore, it is an acceptable alteration as the use of the mark in this way and the fact that the figurative element does not appear does not alter the distinctive character of the earlier mark as registered. This is because the stylisation is unable to divert attention away from the verbal element.

In addition, as regards the additions (such as Trident Studio Monitors, Trident 80B Dual Mic Pre/EQ, Trident Dual Mic Pre / EQ, Trident Audio 88-32 Channel) in the invoices, and (88, HG3) in other documents, these are clearly descriptive of the characteristics of the goods. In this regard, the use of a registered word mark (or any other mark) together with a generic indication of the product or a descriptive term will be considered as use of the registered mark.

Additions that are just indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, do not in general constitute use of a variant, but use of the mark itself.

In view of the above, the Opposition Division considers that the evidence does show use of the sign in accordance with its function and as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Office evaluates the evidence submitted in an overall assessment. All the circumstances of the specific case have to be taken into account and all the material must be assessed as a whole. Therefore, although items of evidence may be insufficient by themselves to prove the use of an earlier trade mark, they may contribute to proving use in combination with other documentation and information.

Nature of use: use in relation to the registered goods

The goods on which the trade mark was used can be inferred directly from, for example, the invoices and catalogues. From the listing above, it is therefore clear that the evidence filed by the opponent does show genuine use of the trade mark for some, but not all, of the goods covered by the earlier trade marks (e.g. there is no evidence referring to guitar cables).

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Moreover, the opponent proved use for a variety of goods, such as recording consoles; mixing consoles; audio mixers, all belonging to the same broad category of apparatus for recording, transmission or reproduction of sound. Therefore, following the established case-law and taking into consideration that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration, the Opposition Division finds that the opponent managed to prove the use of its trade mark for some of the broad categories of the goods on which the opposition is based (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45-46). Therefore, the evidence shows genuine use of the trade mark for, at least, for the following goods:

Class 9: Apparatus for recording, transmission or reproduction of sound.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 EUTM No 5 250 972 ‘TRIDENT’ (word mark).

a) The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound.

The contested goods and services are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; other digital recording media; data processing equipment, computers; computer software; education software; interactive computer software; downloadable computer programs; freeware; compiler software; computer graphics software; downloadable software; computer software, recorded.

Class 38: Telecommunications.

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

Apparatus for recording, transmission or reproduction of sound are identically contained in both lists of goods. In addition, the contested data processing equipment, computers overlap with the opponent’s apparatus for recording, transmission or reproduction of sound, in that the latter can be data-processing equipment or computers and the former can actually be intended for recording transmission or reproduction of sound. Therefore, they are identical.

The contested apparatus for recording images and other digital recording media are similar to apparatus for recording, transmission or reproduction of sound covered by the earlier mark, as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The rest of the contested goods: computer software; education software; interactive computer software; downloadable computer programs; freeware; compiler software; computer graphics software; downloadable software; computer software, recorded are different types of software, and they are similar to the opponent’s goods as they usually coincide in producer, relevant public and distribution channels. Due to the technical know-how shared by both, they may come from the same undertakings, which the applicant acknowledges, and indeed may be provided via the same channels and target the same consumers. Consequently, they are similar.

Contested services in Class 38

Telecommunication services allow people to communicate with one another by remote means. Consumers use apparatus for recording, transmission or reproduction of sound when they want to communicate with others. Therefore, there is a link between these goods in Class 9 (telecommunication apparatus) and the services in Class 38 (telecommunication services). They are similar because they are complementary and, even though their nature is different, their purpose and distribution channels are the same.

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 are directed at the public at large and at a specialised public in the music industry. The degree of attention can vary from average to high depending on the price and sophistication of the goods.

c) The signs

TRIDENT
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 signs coincide fully in the verbal element ‘TRIDENT’, which is meaningful in some languages (e.g. in English or German) and meaningless in others. Irrespective of whether its meaning will be perceived by different parts of the public, its degree of distinctiveness is the same and has no impact on the comparison given that the only differentiating elements between the signs are the standard typefaces of the verbal element and the contested mark’s non-distinctive simple geometrical figure in three colours, which have a limited impact on the comparison.

Therefore, the signs are visually highly similar, aurally identical and conceptually either identical, if a meaning were assigned to the common element ‘TRIDENT’, or, if not, the conceptual similarity would not influence this assessment, given that the contested sign’s simple geometrical figure is non-distinctive and cannot, therefore, influence the conceptual comparison between 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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly similar, and they target the public at large and professionals, whose degree of attention varies from average to high. The signs are visually similar to a high degree, aurally identical and conceptually identical if a meaning were assigned to the common elements ‘TRIDENT or, if not, the conceptual similarity would not influence this assessment. Furthermore, the earlier mark, as a whole, has a normal degree of inherent distinctiveness.

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). The fact that the goods and services partly target specialist consumers having a higher degree of attention than average is not sufficient to exclude a likelihood of confusion, since strong similarities are clearly perceived between the marks.

Bearing in mind the consumers’ imperfect recollection, the differences between the marks, which are limited solely to the typeface and the contested sign’s figurative device and have limited importance in the comparison, are not sufficient to outweigh the similarities between them (i.e. the presence of the sole word ‘TRIDENT’ in both signs) and to exclude any likelihood of confusion in relation to identical and similar goods and services.

The Opposition Division is convinced that consumers might believe that the contested goods and services come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 5 250 972. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier word mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Martina GALLE

Gonzalo BILBAO TEJADA

Erkki MÜNTER

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.