OPPOSITION No B 3 104 175

Vivo Mobile Communication Co., Ltd., No.168 Jinghai East Rd., Chang’an, Dongguan, Guangdong, People’s Republic of China (opponent), represented by Ballester IP, Avda. de la Constitución, 16, 1D, 03002 Alicante, Spain (professional representative)

a g a i n s t

Ojim Inc., 8f‑3, No.270, Zhongming S. Rd., West Dist., Taichung City 403, Taiwan, People’s Republic of China (applicant), represented by Langpatent Anwaltskanzlei, Ingolstädter Str. 5, 80807 Munich, Germany (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 175 is partially upheld, namely for the following contested goods:

Class 9: Computer software applications, downloadable.

2. European Union trade mark application No 18 083 800 is rejected for the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 083 800 ‘NexCell’ (word mark), namely against all the goods in Class 9. The opposition is based on, inter alia, Spanish trade mark registration No 3 747 856, ‘NEX’ (word 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.

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 3 747 856.

a) The goods

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

Class 9: Smartphones; mobile telephones; covers for smartphones; cases adapted for mobile phones; downloadable application software for smart phones; global positioning instruments; wireless chargers; cabinets for loudspeakers; wireless headsets for smartphones; rechargeable batteries; battery chargers; batteries, electric; power adapters; USB cables; selfie lenses; selfie sticks used as smartphone accessories; wireless headsets for use with mobile telephones; headphones; stands adapted for mobile phones; protective films adapted for smartphones.

After a limitation made by the applicant during the opposition proceedings and considering that the opposition has been maintained, the contested goods are the following:

Class 9: Computer software applications, downloadable; couplers [data processing equipment]; network servers; intelligent gateways for communication; internet of things [IoT] gateways; intelligent gateways for real-time data analysis; electrical controlling devices; control panels [electricity]; programmable logic controllers; process control units [electric]; bicycle helmets.

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 contested computer software applications, downloadable include, as a broader category the opponent’s downloadable application software for smart phones. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested couplers [data processing equipment]; network servers; intelligent gateways for communication; internet of Things [IoT] gateways; intelligent gateways for real-time data analysis; electrical controlling devices; control panels [electricity]; programmable logic controllers; process control units [electric]; bicycle helmets are dissimilar to all the goods and services covered by the opponent’s right because they have nothing in common. For example, couplers [data processing equipment], which are small devices for connecting two cables to make a longer cable, have a completely different nature, purpose and method of use to USB cables. The latter are used for connecting devices (such as mobile phones and computers) mainly to transfer data and, therefore, they do not coincide with couplers. They also do not coincide in distribution channels, end users or producers and are neither in competition, nor complementary. It follows, therefore, that they have nothing in common with the rest of the opponent’s goods. The contested intelligent gateways for communication; internet of Things [IoT] gateways; intelligent gateways for real-time data analysis are pieces of networking hardware that allow IoT communication or data processing. Moreover, the contested network servers are computers that are used as the central repository for data and various programmes. Therefore, all the aforementioned contested goods refer to hardware, which is not intended for use by the end user, unlike the opponent’s downloadable application software for smart phones, to which the general public has direct access through their mobile phones. Consequently, these contested goods have a different nature, purpose and method of use to the opponent’s goods. Furthermore, they do not target the same public, are not distributed through the same market channels and do not have the same producers, nor are they in competition or complementary. This is also true in for the rest of the opponent’s goods, which refer to mobile phone accessories and other types of devices meant for direct use by the end user.

The contested electrical controlling devices; control panels [electricity] control electricity flow, while programmable logic controllers are industrial digital computers that have been ruggedised and adapted for the control of manufacturing processes. Process control units [electric] are microprocessor-based controllers specifically designed for automatic residual or compound loop control. None of the above contested goods coincide with the opponent’s goods in any of the relevant criteria. The electricity related goods in the opponent’s list, namely wireless chargers; rechargeable batteries; battery chargers; batteries, electric; power adapters have a different nature, purpose (to store electricity) and method of use. Moreover, they do not share distribution channels, end users or producers and are neither in competition nor complementary.

Bicycle helmets are protective headgear used for cycling. They are, therefore, clearly part of an entirely different category of goods and have absolutely nothing in common with the opponent’s goods, which are, in general, mobile phone accessories and IT hardware and software.

In its observations, the opponent claimed that the contested goods share the same commercial area and channels of distribution and are complementary to the goods on which the opposition is based.

The degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it (16/01/2007, T‑53/05, Calvo, EU:T:2007:7, § 59). However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32).

Since the opponent did not provide any concrete arguments to support the previously mentioned assertions, nor any relevant evidence, it follows that this argument must be set aside by the Opposition Division. As explained above, the contested goods are specialised goods that do not target the public in general, unlike the goods on which the opposition is based and, therefore, they do not share distribution channels, target the same end user and are not complementary. They are, therefore, dissimilar to the goods on which the opposition is based.

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 are directed at the public at large as they refer to mobile phone applications, and also directed at business customers with specific professional knowledge or expertise as they are specialised goods such as computer software.

The degree of attention may vary from average to high.

c) The signs

NEX	NexCell
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 earlier mark comprises the verbal element ‘NEX’, which has no meaning for the relevant, Spanish-speaking public. Therefore, this element is distinctive for the goods in question.

The contested sign comprises the verbal element ‘NexCell’. Although it is one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This dissection will be made in the contested sign due to the upper-case letter ‘C’ within the sign. Therefore, the relevant public will perceive two components in the sign; ‘Nex’ and ‘Cell’. The previous assertions as regards the meaning and distinctiveness of the verbal element ‘Nex’ are also applicable to the contested mark. ‘Cell’ will bring to mind the word celular, which is ‘mobile phone’ in Spanish (information extracted from Collins Dictionary on 10/03/2021 at https://www.collinsdictionary.com/dictionary/spanish-english/celular). While this term is used mainly in Latin American territories, it will, for at least a part of the relevant public, bring this meaning to mind. As the goods in question are software applications for mobile phones, this element alludes to the nature of the goods and, therefore, is distinctive to a low degree.

Visually, the signs coincide in ‘NEX’. However, they differ in ‘Cell’ of the contested sign, which is distinctive to a low degree. It must be noted that 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. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NEX’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Cell’ of the contested mark. The component ‘Cell’, which has no counterparts in the earlier sign, is distinctive to a low degree and, therefore, has little influence in the comparison of the signs. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Cell’ of the contested sign, 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).

As previously established, some of the goods in question are identical, while the rest are dissimilar.

The relevant public is the public at large and the professional public and the degree of attention varies from average to high.

The signs coincide in the distinctive element ‘NEX’, which is the sole element of the earlier mark and the beginning of the contested sign. This results in an average visual and aural similarity of the signs, while conceptually the signs are not similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.

The opponent also based its opposition on the earlier European Union trade mark registration No 17 874 075, ‘NEX’ (word mark). This mark is identical to the one that has been compared, above, and covers only mobile phones; smartphones in Class 9. These goods are clearly different to those for which protection is sought under the contested trade mark. More precisely, the contested goods that have been found dissimilar to those covered by the earlier Spanish registration No 3 747 856 ‘NEX’ are also not similar to those covered by the European Union Trade mark registration No 17 874 075 ’NEX’. This is because mobile phones and smartphones refer to hardware that is for direct use by the public at large, while the remaining contested goods are, as previously stipulated, specialised software, hardware and electrical devices to which the end-user has, in principle, no access. For that reason, these goods do no coincide in any of the relevant criteria and are, therefore, dissimilar. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Inés GARCIA LLEDO

Birgit CESSY FILTENBORG

Renata COTTRELL

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.