OPPOSITION No B 3 098 468

Panda Security, S.L., Calle Santiago de Compostela 12, 1ª, 48003 Bilbao (Bizkaia), Spain (opponent), represented by Alexander Zuazo & Asociados, Capitán Haya, 51-4º, oficina 8, 28020 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen CooSpo Tech Co., Ltd, 11th Floor, Lingyun Building, Bao’an District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, LT-01109 Vilnius, Lithuania (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 468 is upheld for all the contested goods, namely:

Class 9: Computer software applications, downloadable.

2. European Union trade mark application No 18 092 809 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 18 092 809 for the word mark ‘CYCLING PANDA’, namely against some of the goods in Class 9. The opposition is based on, inter alia, international trade mark registration No 1 027 040 designating the European Union for the word mark ‘PANDA’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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 1 027 040 designating the European Union.

a) The goods

The opposition is based, inter alia, on the following goods:

Class 9: Antivirus computer programmes; antivirus software and hardware; antimalware computer programmes; antimalware software and hardware; computer security programmes; computer security software and hardware; computer threat prevention computer programmes; computer threat prevention software and hardware.

The contested goods are the following:

Class 9: Computer software applications, downloadable.

The contested goods overlap with the opponent’s goods. Therefore, they are identical.

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 and at business customers with specific professional knowledge or expertise. Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention may vary between average and above average, depending on the degree of sophistication of the goods and their price.

c) The signs

PANDA	CYCLING PANDA
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.

Both signs contain words that are meaningful in English. The word ‘PANDA’, being the only element of the earlier mark and one of the two words of the contested sign, means ‘[a] large bearlike mammal with characteristic black and white markings, native to certain mountain forests in China.’ (information extracted from Lexico Dictionary on 11/09/2020 at https://www.lexico.com/definition/panda). As this meaning is not related to the relevant goods, the word ‘PANDA’ has a normal degree of distinctiveness.

The word ‘CYCLING’ of the contested sign refers to ‘[t]he sport or activity of riding a bicycle’ (information extracted from Lexico Dictionary on 11/09/2020 at https://www.lexico.com/definition/cycling). The whole expression ‘CYCLING PANDA’ of the contested sign may be associated with ‘a panda riding a bike’. These elements create a conceptual unit that is not related to the relevant goods and is, therefore, distinctive to a normal degree. Nevertheless, the role of the word ‘CYCLING’ is diminished because it qualifies the word ‘PANDA’.

In view of the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Visually and aurally, the signs coincide in the word ‘PANDA’, and its sound, which is the only element of the earlier mark and the second word of the expression ‘CYCLING PANDA’ of the contested sign. The signs differ in the word ‘CYCLING’, and its sound, of the contested sign. This differing element is more noticeable as it is at the beginning of the contested sign and slightly longer than the coinciding element ‘PANDA’. However, the first word ‘CYCLING’ qualifies the second word ‘PANDA’ in the contested sign. In this respect, the element ‘CYCLING’ has less impact.

Therefore, the signs are visually and aurally similar to a degree just below average.

Conceptually, reference is made to the previous statements concerning the semantic content conveyed by the marks. Both signs refer to the concept of ‘PANDA’. However, this concept is affected in the contested sign by the concept of the word ‘CYCLING’. However, the role of the latter is attenuated, as explained above. Therefore, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods are identical and the signs are visually and aurally similar to a degree just below average and conceptually similar to an average degree. The degree of the earlier mark’s inherent distinctiveness is normal. The level of attention of the relevant public may vary between average and above average.

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).

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.

In view of all the above it is considered that, given that the signs are visually and aurally similar to a degree just below average and conceptually similar to an average degree on account of the coincidence in the word ‘PANDA’, which is the only element of the earlier mark and is distinctive to a normal degree, the consumers, even if their level of attention is heightened, may be led to believe that the identical goods originate from the same or economically linked undertakings. The relevant consumer may 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 027 040 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 1 027 040 designating the European Union 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.

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

Maria SLAVOVA

Justyna GBYL

Michele Maria BENEDETTI ALOISI

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.