OPPOSITION No B 3 102 427

Commend International GmbH, Saalachstraße 51, 5020, Salzburg, Austria (opponent), represented by Dr. Ägidius Horvatits Rechtsanwalts GmbH, Ginzkeyplatz 10/II, 5020, Salzburg, Austria (professional representative)

a g a i n s t

ShenZhen Soar trading Co.,Ltd, 2F, Room 209, Hedong street No.10, Wuhe middle Road, Bantian street, Longgang district null, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Ping Zhang, Fifth Floor, 3 Gower Street, WC1E 6HA London, United Kingdom (employee representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 427 is partially upheld, namely for the following contested goods:

Class 9: Microphones; Headphones.

2. European Union trade mark application No 18 054 303 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 all the goods of European Union trade mark application No 18 054 303 for the figurative mark . The opposition is based on European Union trade mark registration No 609 842 for the figurative mark . 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: Direct intercoms.

The contested goods are the following:

Class 9: Couplers [data processing equipment]; computer peripheral devices; sleeves for laptops; smartwatches; protective films adapted for computer screens; covers for tablet computers; navigation apparatus for vehicles [on-board computers]; cell phone straps; covers for smartphones; cases for smartphones; protective films adapted for smartphones; cabinets for loudspeakers; microphones; headphones; selfie sticks [hand-held monopods]; wires, electric; materials for electricity mains [wires, cables]; electrical adapters; batteries, electric; USB cables for cellphones; USB chargers; chargers for electric batteries.

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.

An intercom can be defined as ‘a small box with a microphone which is connected to a loudspeaker in another room. You use it to talk to the people in the other room or (informal) an internal telephone system for communicating within a building, an aircraft, etc.’ (information extracted from Collins English Dictionary on 10/12/2020 at https://www.collinsdictionary.com/dictionary/english/intercom).

As such, the contested microphones; headphones are considered similar to a low degree to the opponent’s direct intercoms. The contested goods often constitute an integral part of intercoms and can be obtained as separate headsets. These goods have the same distribution channels and target the same public. Moreover, they share the same nature and purpose, as they function as voice amplifiers and, as such, they facilitate communication between people at a distance.

The remaining contested goods, namely couplers [data processing equipment]; computer peripheral devices; sleeves for laptops; smartwatches; protective films adapted for computer screens; covers for tablet computers; navigation apparatus for vehicles [on-board computers]; cell phone straps; covers for smartphones; cases for smartphones; protective films adapted for smartphones; cabinets for loudspeakers; selfie sticks [hand-held monopods]; wires, electric; materials for electricity mains [wires, cables]; electrical adapters; batteries, electric; usb cables for cellphones; usb chargers; chargers for electric batteries are mainly batteries and their accessories, cables, electrical products, accessories for phones and tablets, smartwatches. These contested goods and the opponent’s goods do not have the same nature, purpose or methods of use. They are neither complementary nor in competition. Finally, they do not share the same distribution channels and usual producers and do not target the same specific public.

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 a low degree 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 higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

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 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 verbal element ‘COMMEND’ of the earlier mark is meaningful in certain territories, for example in those countries where English is spoken, where it will be understood as ‘to praise formally or officially’ (information extracted from Lexico on 16/12/2020 at https://www.lexico.com/definition/commend). As such, it will have somewhat laudatory connotations. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public for which the verbal elements are meaningless and, therefore, have a normal degree of distinctiveness.

The arrow of the earlier mark will be perceived as such. As it has no clear and evident meaning in relation to the goods, it is considered distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements. Despite the fact that the figurative element is much bigger than the verbal element, and is placed in a prominent position, it is depicted in white and grey, whereas the white verbal element is placed against a black background, which makes it more visible.

When signs consist of both verbal and figurative components, 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 ‘COM*END’, which comprises the whole contested sign. However, they differ in the additional ‘M’ placed in the middle of the verbal element of the earlier mark, where it can easily go unnoticed by the relevant public.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs also differ in their graphic depiction and the figurative element of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs are aurally either identical or at least similar to a high degree for the part of the public that would pronounce the additional ‘M’ of the earlier mark.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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 goods are similar to a low degree and they target the public at large and professionals. The level of attention varies from average to higher than average.

The signs are visually similar to an average degree, aurally identical or at least similar to a high degree and conceptually not similar.

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 verbal element of the earlier mark and the contested sign coincide in their beginnings, ‘COM*’, and their ends, ‘*END’. The coinciding letters comprise the entire contested mark and the marks are, therefore, visually similar to an average degree. The single visual difference between the verbal elements of the marks is in the additional letter ‘M’ placed in the middle of the earlier mark, which is the part of the sign where the public does not focus their attention, as described above.

Taking the above into account, and despite the fact that the degree of attention is high for some of the relevant goods and that the goods are only similar to a low degree, the Opposition Division concludes that a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree 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

María del Carmen COBOS PALOMO

Katarzyna ZANIECKA

Christian STEUDTNER

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.