OPPOSITION No B 3 093 393

Casa Prem, S.L., Calle Gamonal 45, Pol Ind. Vallecas - Nave A/B, 28031 Madrid, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant 9, 28045 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Xuyuan Network Technology Co., Ltd., 504, Block A, No. 5, East 3^rd Lane, Changkeng Rd., Bantian St., Longgang Dist., Shenzhen, People’s Republic of China (applicant), represented by A.BRE.MAR. S.R.L., Via Servais 27, 10146 Torino, Italy (professional representative).

On 22/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 393 is upheld for all the contested goods, namely:

Class 9: Cell phone straps; wearable activity trackers; protective films adapted for mobile phone screens; audio- and video-receivers; selfie sticks [hand-held monopods]; air analysis apparatus; automatic indicators of low pressure in vehicle tires; telemeters; hourglasses; hygrometers; fibre [fiber (am.)] optic cables; theft prevention installations, electric; peepholes [magnifying lenses] for doors; push buttons for bells; electric installations for the remote control of industrial operations.

2. European Union trade mark application No 18 056 910 is rejected for all the contested goods. It may proceed for the remaining goods.

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 18 056 910 ‘KOATECH’ (word), namely against all the goods in Class 9. The opposition is based on, inter alia, Spanish trade mark registration No 3 646 222 . 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 all the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 17/06/2019.

Earlier Spanish trade mark No 3 646 222 was registered on 26/05/2017. Therefore, the request for proof of use is inadmissible for this earlier trade mark.

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 Spanish trade mark registration No 3 646 222, which is not subject to a proof of use request.

a) The goods

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

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, control (inspection), teaching rescue equipment; apparatus and instruments for the conduction, distribution, transformation, accumulation, regulation or control of electricity; apparatus for recording, transmitting or reproducing sound or images; magnetic record carriers, acoustic discs; CD; DVD and other digital recording media; mechanisms for prepaid devices; cash registers, calculating machines, data processing equipment; electronic agendas, computers; software; magnetic encoders; computer printers, computer and computer memories; data processing apparatus; magnetic and optical data carriers; floppy; magnetic encoded identification bracelets; printed circuits; computer game programs; computer operating system programs; semiconductors: fire extinguishers.

The contested goods are the following:

Class 9: Cell phone straps; wearable activity trackers; protective films adapted for mobile phone screens; audio- and video-receivers; selfie sticks [hand-held monopods]; air analysis apparatus; automatic indicators of low pressure in vehicle tires; telemeters; hourglasses; hygrometers; fibre [fiber (am.)] optic cables; theft prevention installations, electric; peepholes [magnifying lenses] for doors; push buttons for bells; electric installations for the remote control of industrial operations.

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

The contested audio- and video-receivers are included in, or overlap with, the broad category of the opponent’s apparatus for recording, transmitting or reproducing sound or images. They are identical.

The contested air analysis apparatus (which covers apparatus for measuring air quality); automatic indicators of low pressure in vehicle tires; telemeters (for measuring the distance of an object from an observer); hourglasses (used to measure time); hygrometers (used to measure humidity) are included in, or overlap with, the broad category of the opponent’s measuring equipment or signalling equipment. They are identical.

The contested peepholes [magnifying lenses] for doors are included in, or overlap with, the broad category of the opponent’s optical equipment. They are identical.

The contested electric installations for the remote control of industrial operations are included in, or overlap with, the broad category of the opponent’s control (inspection) equipment. They are identical.

The contested wearable activity trackers are highly similar to the opponent’s computers. The goods are produced by the same manufacturers and have the same relevant public and distribution channels. They also have the same methods of use.

The contested fibre [fiber (Am.)] optic cables are network communications equipment for the transmission of data. There is a functional complementarity between those goods, which, by their nature, belong to the field of information technology, and the opponent’s data processing equipment and computers. Moreover, these goods are aimed at the same public and use the same distribution channels. They are, therefore, similar (28/11/2019, R 755/2019‑5, DH (fig.) / ELECTRO DH (fig.) et al., § 41).

The contested theft prevention installations, electric are at least similar to the opponent’s signalling equipment, which covers goods such as theft alarms or anti-theft warning apparatus. The goods are commonly integrated into a single system that serves the same purpose and satisfies the same needs of the public. Furthermore, the goods share channels of distribution and are produced by the same undertakings.

The contested push buttons for bells are at least similar to the opponent’s apparatus and instruments for the conduction, distribution, transformation, accumulation, regulation or control of electricity. The goods have the same nature (electrical apparatus), they are addressed to the same public and are distributed through the same specialised outlets.

The contested cell phone straps; protective films adapted for mobile phone screens; selfie sticks [hand-held monopods] are accessories for mobile (cell) phones. They are similar to a low degree to the opponent’s apparatus for recording, transmitting or reproducing sound or images, which, as a broad category, at least overlaps with mobile (cell) phones. The goods are produced by the same manufacturers and have the same relevant public and distribution channels.

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 and similar to various 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.

c) The signs

	KOATECH
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal elements of the signs, taken as a whole, are meaningless for the relevant public and, therefore, distinctive. However, at least part of the relevant public will recognise the English element ‘TECH’ in both signs and will understand it as referring to ‘technology’ (tecnología in Spanish). Since all the goods at issue involve or were developed with the application of some technology, this element is considered weak.

The stylisation and figurative element of the earlier sign, which consists of a broken black circle with a dot at the top right that coincides with the depiction of the penultimate letter ‘c’ of the verbal element, have a limited impact on consumers. 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).

The signs have no elements that could be considered dominant (visually eye-catching).

Visually and aurally, the signs coincide in ‘KO*’ and ‘*TECH’, which are their first two letters and their sounds and last four letters and their sounds. They differ in the letters ‘*OL*’ of the earlier mark and ‘*A*’ of the contested sign and their sounds. Consequently, the marks have a similar length. Moreover, one of the coincidences lies at the beginning of both signs where consumers generally tend to focus 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. Visually, the signs differ in the stylisation and figurative element of the earlier sign. These differences, however, have a limited impact on consumers for the reasons explained above.

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

Conceptually, for the part of the relevant public that does not perceive any meaning in either sign, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the relevant public that understands the word ‘TECH’, the signs are conceptually similar to a low degree. Since the word ‘TECH’ is weak, it cannot create a strong conceptual link.

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, despite the presence of a weak element in the mark (at least for part of the public), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are identical and similar to various degrees. The signs are visually and aurally similar to an average degree and conceptually similar to a low degree, at least for part of the relevant public. The earlier mark has a normal degree of distinctiveness.

The signs are similar in their coinciding letters/sounds ‘KO*’ and ‘*TECH’. Although there is a risk in relying too much on a mechanical quantitative evaluation, counting the total number of letters, identifying the number of identical letters and comparing their order in the signs at issue can provide certain guidance. Taking into account that the verbal elements of the signs consist of eight and seven letters respectively and that they share six of them in the same order, the differences provided by ‘*OL*’ versus ‘*A*’ are insufficient to make the signs distinguishable from one another when considered globally.

Account is also 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, while it is true that the trade marks have certain differences, these do not allow the public, even the one displaying a high degree of attention, to safely distinguish between the marks, especially considering the identity of some goods.

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 Spanish trade mark registration No 3 646 222. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 646 222 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).

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

Martin MITURA

Anna BAKALARZ

Katarzyna ZANIECKA

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.