OPPOSITION No B 3 105 367

Aukey E-Business Co., Ltd., Huanan City Electronic Trading part, Building P09 Room 102, Longgang District, Shenzhen, People’s Republic of China (opponent), represented by Arpe Patentes y Marcas, S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative)

a g a i n s t

Shenzhen Daisi Intelligent Technology Co., Ltd., 1703,17/F, E Times Bldg., Heng Rd., No. 159, Pingji Ave. North, Hehua, Pinghu St., Longgang Dist, Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 04/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 367 is partially upheld, namely for the following contested goods:

Class 9: Digital voice recorders; speaker microphones; computer peripherals; wearable computers in the nature of smartwatches; wearable computers in the nature of smartglasses; stands adapted for laptops; wireless chargers; power supplies [electrical]; rechargeable batteries.

2. European Union trade mark application No 18 096 113 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 18 096 113 for the word mark ‘Amzdest’. The opposition is based on European Union trade mark registration No 17 170 259 for the word mark ‘Amzdeal’. 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 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, 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: Cinematographic cameras; cases especially made for photographic apparatus and instruments; diaphragms [photography]; filters for ultraviolet rays, for photography; drying racks [photography]; shutter releases [photography]; enlarging apparatus [photography]; cameras [photography]; transparency projection apparatus; flash-bulbs [photography]; filters [photography]; stands for photographic apparatus; flashlights [photography]; lens hoods; bags for cameras and photographic equipment; darkroom lights; computer screens; projectors; photographic apparatus and instruments; carriers for dark plates [photography]; photographic viewfinders; tripods for cameras.

The contested goods are the following:

Class 9: Moveable sockets; electric sockets; power adapters; digital voice recorders; speaker microphones; computer peripherals; wearable computers in the nature of smartwatches; wearable computers in the nature of smartglasses; stands adapted for laptops; wireless chargers; power supplies [electrical]; rechargeable batteries.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Nowadays multi-media electronic devices combine many functionalities: video camera, mobile phone, mobile computing platform etc. For this reason, the contested digital voice recorders; speaker microphones at least overlap with the opponent’s photographic apparatus and instruments. Therefore, they are identical.

Computer peripherals are auxiliary devices used to input information into, and provide output from, a computer. Depending on the relationship between peripheral devices and the computer, various categories of peripheral devices can be identified, such as ‘input devices’ for sending data or instructions to the computer (e.g. a mouse, keyboard, webcam) or ‘output devices’ for providing output from the computer (e.g. a computer monitor, printer, projector). Therefore, the contested computer peripherals include, as a broader category, the opponent’s computer screens. 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 wearable computers in the nature of smartwatches; wearable computers in the nature of smartglasses are similar to the opponent’s photographic apparatus and instruments as they usually coincide in producer, relevant public and distribution channels.

The contested rechargeable batteries; wireless chargers; power supplies [electrical] are similar to the opponent’s photographic apparatus and instruments as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary, since rechargeable batteries are a type of apparatus for accumulating electricity, and an indispensable part of a camera. Wireless chargers, power supplies and power adapters are equally indispensable for cameras, since they are essential for supplying them with the electricity they need to function.

The contested stands adapted for laptops are similar to a low degree to the opponent’s stands for photographic apparatus as they can coincide in producer and distribution channels.

The contested moveable sockets; electric sockets; power adapters are dissimilar to the opponent’s goods. These contested goods are basic electrical and electronic components, and apparatus and instruments for controlling electricity. However, the opponent’s goods are essentially various photographic apparatus and instruments, as well as parts and accessories related thereto: computer screens and projectors. A finding of similarity will only be reached in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as common producers and target public and/or complementarity (in the sense that one is essential or indispensable for the use of the other) are established. However, the goods in question clearly differ in these factors. Moreover, they have a different nature, purpose and method of use, and are not in competition. They target a different public and are distributed through different channels. Even if some of the goods could, in a broad sense, be complementary to each other, as some of the opponent’s goods are electrically operated, this factor on its own is insufficient for a finding of similarity between them.

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 in question.

In the present case, the goods found to be identical or similar to varying 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

Amzdeal	Amzdest
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 signs ‘Amzdeal’ and ‘Amzdest’ and their components are meaningless and, therefore, have a normal degree of distinctiveness in relation to the relevant goods, in certain territories, for example in those countries where French and Polish are understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Polish-speaking parts of the public.

Both signs are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question deviates from the usual way of writing since both signs are written in title case, which is a fairly common way of depicting words. In addition, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

Visually and aurally, both signs have the same length and they coincide in the sequence of letters ‘Amzde’ (and their sounds). However, they differ in the signs’ last two letters (and their sounds): ‘AL’ in the earlier mark and ‘ST’ in the contested sign.

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. For this reason, the difference in two letters/sounds at the end of the signs is outweighed by the coincidence at the beginning of the signs.

Therefore, since the signs have their first five letters in common and only differ in their two final letters, they are both visually similar to a high degree and aurally similar to a higher-than-average degree.

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 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

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the trade mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical, partly similar to varying degrees and partly dissimilar. The current examination of the global assessment will proceed only for goods found to be identical and similar to varying degrees. The distinctiveness of the earlier mark is deemed to be normal. The goods target the public at large and professional public. The public’s degree of attentiveness is average to high.

As explained in section c) of this decision, the signs are considered visually similar to a high degree and aurally similar to a higher-than-average degree because they have the same length, and the coincidences are at the beginnings of the signs and the differences are only in the last two letters/sounds. In light of these similarities and bearing in mind that the conceptual comparison is not possible (which means that the average consumers cannot rely on any conceptual differences in order to safely distinguish between the signs), the overall impression of the signs for the relevant public will be that they are similar, as the differences between the marks will not be sufficient to counteract such an impression.

It must also be noted 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). In the present case, it is very likely that consumers may overlook or mispronounce the last two letters and confuse the signs.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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). In the present case, the low degree of similarity of some relevant goods is offset by the fact that the signs are visually similar to a high degree and aurally similar to a higher-than-average degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Polish-speaking parts 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 identical or similar to varying degrees 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

Gueorgui IVANOV

Anna PĘKAŁA

Jakub MROZOWSKI

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.