OPPOSITION No B 3 099 551

Alexander Mouselli, 5 XiangYue Road, 361100 Xiamen, People’s Republic of China (opponent), represented by Bird & Bird Lyon, Le Bonnel 20 rue de la Villette, 69328 Lyon Cedex 03, France (professional representative),

a g a i n s t

Guangli Inc., Room 201, Floor 2, Building 1, 88 Jucai Road, Binjiang District, Hangzhou, People’s Republic of China (applicant), represented by Arcade & Asociados, c/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 29/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 099 551 is upheld for all the contested goods.

2. European Union trade mark application No 18 090 610 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 of European Union trade mark application No 18 090 610 . The opposition is based on, inter alia, international trade mark registration No 1 480 530 designating the European Union . 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 international trade mark registration No 1 480 530 designating the European Union.

a) The goods

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

Class 9: Holography apparatus; artificial intelligence apparatus; communications apparatus for vehicles; communication apparatus for headsets; automatic speed checking devices for vehicles; temperature control devices for vehicles [electric contactors]; visual inspection apparatus; security surveillance apparatus; remote monitoring apparatus; digital optical transmission apparatus; electric control apparatus for robotics; electric monitoring apparatus; electronic surveillance apparatus; photovoltaic apparatus and installations for solar electricity production; devices and instruments for vehicles speed control; optical apparatus and instruments; infrared optical apparatus; optical apparatus for laboratory use; optical measuring devices; optical sighting apparatus; photovoltaic apparatus for converting solar radiation to electrical energy; breathing apparatus except for artificial respiration; breathing apparatus other than for artificial respiration; optical surveying devices; interactive video apparatus; computer applications for vehicle navigation apparatus; computer applications for the automatic driving of vehicles control; computer applications for the automatic parking of vehicles control; batteries; electric batteries; electric batteries for electric vehicles; electric accumulators for vehicles; electric cells and batteries; external batteries; lithium-ion batteries; batteries for electronic cigarettes; batteries for vehicles; car batteries; rechargeable batteries; solar batteries for household use; solar batteries for industrial use; interactive touch-screen terminals; charging stations for electric vehicles; multi-functional touch buttons; smart bracelets; fiber-optic cables; optical cables; cables for optical signal transmission; helmet video cameras; biochip sensors; fiber-optic sensors; automatic solar tracking sensors; ultrasonic sensors; active infra-red sensors; acceleration sensors; wearable activity sensors; washing machines alarm sensors; solar energy collectors for electricity generation; distance sensors; light sensors; measuring sensors; sensors for measuring speed; rotational measurement sensors; vibration sensors; optical speed sensors; electric sensors; electro-optical sensors; electronic sensors; electronic sensors for measuring solar radiation; sensors and detectors; magnetic sensors; optical sensors; photoelectric sensors; sensors [for telecommunication apparatus]; sensors for telecommunication apparatus; sensors to determine velocity; sensors for touch screens; sensors for measuring instruments; projected capacitive touch sensors; thermal sensors [thermostats]; optical cards; hands-free headphones for mobile phones; headphones; audiovisual headsets for video games; headsets; music headphones; personal headphones for sound transmitting apparatus; wireless headsets for mobile telephones; cyclist helmets; American football helmets; batting helmets for baseball; ice hockey helmets; karate helmets; motorcyclist helmets; motorcycle helmets; skateboard helmets; diving helmets; protective helmets; protective helmets for sport use; helmets for protection against injury; helmets for protection against accidents; protective helmets for motorists; protective helmets for cyclists; protective helmets for motorcyclists; protective helmets for children; protective helmets for sports; protective helmets for the prevention of accidents or injuries; virtual reality headsets; catcher’s helmets for baseball; safety helmets; ski helmets; welding helmets; helmets for sports; helmets for snowboarding; helmets for sports; headphones for telephones; helmets for mobile phones; protective helmets; protective helmets for sports; protective helmets for boxing; caps for protection against accidents; crystalline silicon solar cells; solar cells; solar cells for the production of electricity; battery chargers for motor vehicles; battery chargers for cellular telephones; solar battery chargers; clip-on sunglasses; jumpsuits for protection against accident or injury; touch electronic switches; electronic optical components; optical condensers; headphone consoles; suits with sensors; tire balancing devices for land vehicles; control devices for navigation apparatus for vehicles; optical devices for target localization; magneto-optical disks; optical disks; optical compact disks; optical discs featuring music; optical discs containing audio recordings; blank optical discs; screens; liquid crystal displays (LCD screens); video projection screens; display screens; electronic touch-sensitive display screens; electroluminescent display screens; display screens for vehicles; projection screens; projection screens for movie films; video projection screens; body-shields for protection against injury; face-shields for protective helmets; optical display screens; facial screens other than for medical use; interactive graphic screens; holographic screens; electroluminescent display flat screens; mobile telephone screens; computer touch screens; touch screens [electronic]; optical measuring elements; optical transmitters for use with fiber optic cables; optical transceivers; optical encoders; recordings on optical disks; sets of solar panels for electricity generation; labels containing optically recorded or encoded information; artificial sensors; optical fibers; shifted dispersion optical fibers; optical fibers [light conducting filaments]; non-linear optical fibers; light conducting filaments [optical fibers]; optical filters; optical filters for screens; optical filters for plasma display panels; filters for optical devices; filters for optical glass; sheaths for fiber optic cables; gloves equipped with sensors; holograms; holograms for authentic products certification; instruments for optical communications; chin straps for baseball helmets; optical disk players; optical readers; interactive software for computers for the exchange of information; interactive software for computers providing information on navigation and travel; virtual classroom software; computer software for operating virtual private networks [VPNs]; interactive entertainment software; entertainment software; downloadable interactive entertainment software for playing video games; downloadable interactive entertainment software for playing computer games; game software; virtual-reality game software; electronic game software; computer game software for interactive online games; interactive entertainment software for personal computers; interactive entertainment computer software; virtual reality software; virtual whiteboard software; interactive software; interactive multimedia software for games; interactive video software; virtual reality glasses; smart glasses; spectacles [optics]; (sun) glasses; respiratory masks other than for artificial respiration; virtual-reality computer hardware; virtual private network computer hardware; artificial limbs for medical teaching [training devices]; optical memories; micro-helmets for computers; micro-helmets for communication; mini projectors; mirrors [optics]; solar modules; photovoltaic solar modules; touch screen monitors; smartwatches; projector lenses; computers for self-steering for vehicles; analytical ortho-projectors; display panels for vehicles; solar panels; portable solar panels for generating electricity; solar panels for electricity production; solar panels for electricity production; balaclavas (helmet liners) for protection against accidents, radiation and fire; solar batteries; rechargeable solar batteries; solar plates; solar-powered radio stations; double plug sockets for headsets; interactive multimedia computer game programs; interactive computer game programs; interactive video game programs; operating system programs for smart TV; operating system programs for smartphones; programs recorded on electronic circuits for entertainment apparatus with liquid crystal displays; computer programs for interactive television and for interactive games and/or quizzes; computer programs intended to vehicles autonomous navigation; computer programs for operating vehicles; computer programs to provide a 360 degree view for a vehicle; interactive multimedia computer programs; projectors; auto-focus projectors; movie projectors; LCD projectors [lcd projectors]; image projectors; home theater projectors; film editing projectors; profile projectors; holographic projectors; multimedia projectors; digital projectors; projectors for the entertainment industry; planetarium projectors; sound projectors; protection (helmets for-); tempered glass screen protectors for mobile phones; screen protectors in the form of films for mobile telephones; electrified rails for mounting spot lights; optical networks; overhead projectors; humanoid robots with artificial intelligence; sports bags designed for protective helmets [pre-shaped]; optical scanners; power sources connected to audio apparatus and intended to motor vehicles; docking stations for smartphones; recording media [optical]; optical recording media; helmet-mounted camera supports; multiple camera systems for vehicles; autonomous control systems equipped with interactive displays; navigation systems for vehicles equipped with interactive displays; interactive computer systems; electronic interactive whiteboards; interactive white boards for computers; remote controls for projectors; solar-powered telephones; smart mobile phones; smart phones in the form of spectacles; interactive terminals; optical transmitters; optical glass; video projectors; optical finders; holographic video headsets; optical fiber viewers other than for medical use; scientific apparatus and instruments; photographic apparatus and instruments; cinematographic cameras; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus and instruments; signaling apparatus and instruments; checking (supervision) apparatus and instruments; sound recording apparatus; sound transmitting apparatus; sound reproduction apparatus; image recording apparatus; image transmission apparatus; image reproduction apparatus; digital recording media; computers; electronic tablets; smartphones; electronic book readers; game software; software (recorded programs); computer peripheral devices; detectors; clothing for protection against accidents, irradiation and fire; protection devices for personal use against accidents; spectacles (optics); 3D spectacles; virtual reality headsets; optical goods; spectacle cases; integrated circuit cards [smart cards]; bags designed for laptop computers; smartwatches; electric batteries; batteries for electronic cigarettes; charging stations for electric vehicles; diagnostic apparatus not for medical use.

The contested goods are the following:

Class 9: Data processing apparatus; computers; computer peripheral devices; microprocessors; smart rings; smartglasses; smart watches; computer software applications, downloadable; computer software platforms, recorded or downloadable; holograms; facial recognition apparatus; plotters; radios; smartphones; virtual reality headsets; cameras; optical apparatus and instruments; cables, electric; semi-conductors; integrated circuits; sensors; video screens; remote control apparatus; electric installations for the remote control of industrial operations; headgear being protective helmets; eyeglasses; batteries, electric; instruments for measuring length; length measuring gauges; measures; coordinate measuring instruments; measuring apparatus; distance measuring apparatus; audio analyzers; height measuring instruments.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘being’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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.

Computers; computer peripheral devices; smartglasses; smart watches; holograms; smartphones; virtual reality headsets; optical apparatus and instruments; remote control apparatus; headgear being protective helmets; eyeglasses; batteries, electric; measuring apparatus are identically contained in both lists of goods (including synonyms).

The contested data processing apparatus includes, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer software applications, downloadable; computer software platforms, recorded or downloadable are included in or at least overlap with the opponent’s software (recorded programs). Therefore, they are identical.

The contested facial recognition apparatus is included in the broad category of the opponent’s security surveillance apparatus. Therefore, they are identical.

The contested radios are included in the broad categories of the opponent’s sound transmitting apparatus; sound reproduction apparatus. Therefore, they are identical.

The contested cameras include, as a broader category, the opponent’s cinematographic cameras. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sensors; instruments for measuring length; length measuring gauges; measures; coordinate measuring instruments; distance measuring apparatus; audio analyzers; height measuring instruments are included in the broad category of, or overlap with, the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested integrated circuits; semi-conductors are components that play a primary role in the functioning of computers and many of their peripheral devices. They are needed in order for the computer to function. Therefore, the goods have a close relationship and a high complementary character. Furthermore, they are likely to be produced by the same manufacturers and have the same or similar distribution channels. Therefore, they are similar to the opponent’s computers.

The contested video screens are included in the broad category of the opponent’s screens. Therefore, they are identical.

The contested electric installations for the remote control of industrial operations include, as a broader category, or overlap with, the opponent’s remote monitoring apparatus. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested smart rings are highly similar to the opponent’s computers as they usually coincide in producer, relevant public, distribution channels and method of use.

The contested microprocessors are similar to the opponent’s software (recorded programs) as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested plotters are similar to the opponent’s computers as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested cables, electric are similar to the opponent’s fiber-optic cables; optical cables; cables for optical signal transmission as they have the same nature and can coincide in producer, 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 or similar to differing degrees are directed at the public at large (e.g. eyeglasses, radios) and at professionals (e.g. electric installations for the remote control of industrial operations).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods purchased.

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 signs are meaningless for the relevant public and therefore distinctive.

Both signs are figurative with a banal stylisation of the verbal elements (a slightly stylised black font). As consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word elements. Therefore, the public will not pay significant attention to these features as indicators of commercial origin.

Visually and aurally, the earlier mark is entirely reproduced at the beginning of the verbal element of the contested sign. They coincide in the first five letters and sounds, which form the whole earlier mark. They differ in the last two letters/sounds of the contested sign (-LI).

Contrary to the applicant’s argument, 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 further differ visually in the slightly stylised typeface of the signs, which have less impact, if any, as explained above.

Therefore, the signs are visually and aurally highly similar.

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) 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 claims that ‘the distinctiveness of the earlier trade marks must be seen as high. Indeed, in the earlier trade marks, the word ‘GUANG’ has no meaning for the relevant public on relation with the goods and services under protection.’

It is the Office’s practice, when an earlier mark is not descriptive or otherwise non-distinctive, to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that the earlier mark has acquired a higher degree of distinctiveness through use, or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

The opponent did not file any evidence for the enhanced distinctiveness of the earlier mark. 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 territories. 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 identical and similar to varying degrees. They target the public at large as well as professionals with a degree of attention that varies from average to high.

The signs are visually and aurally similar to a high degree, since the entire earlier mark is contained in the beginning of the contested sign, and therefore the signs coincide in five out of the contested sign’s seven letters. No conceptual comparison can be made. Therefore, this aspect has no impact on the assessment of likelihood of confusion. The earlier mark has a normal degree of 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). 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). Due to this imperfect recollection, consumers may overlook the differences at the end of the signs.

In its observations, the applicant claims that there is no risk of confusion between the signs on the market since the parties operate in different market fields, the opponent in ‘helmets and protective suits for motor racing and motorcycling’ and the applicant in ‘smartglasses and virtual reality glasses’. Concerning these arguments about the actual use of the trade marks in the marketplace for different goods and services, the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary over time depending on the wishes of the marks’ proprietors (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant. Therefore, the applicant’s claim concerning the alleged lack of real conflict between the signs on the marketplace is dismissed, as it has no impact on the present assessment.

The applicant also claims that the signs are used in the market in very different ways, and that the different depictions will help consumers to clearly differentiate them. The applicant provides some pictures showing the use of the contested sign in the market in support of this argument. However, the comparison must be made between the signs as they were registered or as they appear in the application for registration (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38). The actual or intended use of the signs is not relevant to the examination. Consequently, the applicant’s claim must be set aside.

Lastly, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the applicant refer to signs that have no similarities with those in the present case, where the entire earlier mark is fully reproduced at the beginning of the contested sign and the marks have no meaning that could help to differentiate them. Therefore, the same reasoning cannot be followed or the same outcome reached, and they are not considered relevant to the present proceedings.

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 international trade mark registration No 1 480 530 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right 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 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

Valeria ANCHINI

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

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.