OPPOSITION Nо B 3 109 277

 

Baidu Online Network Technology (Beijing) Co., Ltd., Baidu Campus, No. 10, Shangdi 10th Street, Haidian District, Beijing, People’s Republic of China and Apollo Intelligent Driving Technology (Beijing) Co., Ltd., 105, 1st floor, building 1, No. 10, Shangdishi Street, Haidian District, Beijing, People’s Republic of China (opponents), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Apollo Medical Optics, Ltd., 2f. No 43, Ln. 188, Ruiguang Rd., 114 Neihu Dist. Taipei City, Taiwan, Province of China (applicant), represented by Wuesthoff & Wuesthoff Patentanwälte PartG mbB, Schweigerstr. 2, 81541 Munich, Germany (professional representative).

On 13/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 109 277 is partially upheld, namely for the following contested goods:

 

	Class 9: Optical apparatus and instruments; objectives (lenses) (optics); optical fibers; optical lenses.
2.	European Union trade mark application No 18 117 323 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

REASONS

 

On 22/01/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 117 323 ‘ApolloVue’ (word mark), namely against all the goods and services in Classes 9 and 42. However, the services in Class 42 were subsequently deleted by the applicant. The opposition is based on the following earlier marks:

1) European Union trade mark registration No 18 024 370 (figurative mark) in Classes 9, 12 and 42;

2) European Union trade mark registration No 18 032 715 ‘Apollo Pilot’ (word mark) in Classes 9, 35, 37, 38, 41 and 42;

3) European Union trade mark registration No 17 453 804 ‘Apollo Computing Unit’ (word mark) in Classes 9, 38, 39 and 42;

4) European Union trade mark registration No 17 589 623 ‘Apolloneer’ (word mark) in Classes 9, 12, 38, 39 and 42.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opposition was initially filed by Baidu Online Network Technology (Beijing) Co., Ltd., as owner of the four European Union trade mark registrations on which the opposition was based. In the course of the opposition proceedings, three of these four European Union trade mark registrations were transferred to Apollo Intelligent Driving Technology (Beijing) Co., Ltd. In cases where some of the European Union trade mark registrations on which the opposition is based are transferred during the proceedings, the new owner becomes an opponent with the result that there are two opponents treated as joint opponents. Unless the new opponent appoints a representative of its choice, the Office considers the original representative as the common representative for both opponents and does not invite the new opponent to appoint a representative.

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.

a) The goods and services

 

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

1) European Union trade mark registration No 18 024 370 (earlier mark 1)

Class 9: Computer operating systems in the field of automobiles, namely, an operating system for use in autonomous vehicles and vehicles with intelligent driver assistance system, for turning standard vehicles into autonomous vehicles and vehicles with intelligent driver assistance system, and for the operation of autonomous and vehicles with intelligent driver assistance system; computer software in the field of automobiles, namely, software for use in vehicles to facilitate the transmission of data between vehicles and between vehicles and another application; open platforms, computer software systems and application programming interface (API) software for use in the development of computer operating systems for driving, navigating, parking and monitoring autonomous cars and driverless cars with intelligent driver assistance systems; downloadable computer software platforms and recorded computer software platforms for use in computer operating systems for driving, navigating, parking and monitoring autonomous cars and driverless cars; artificial intelligence software, virtual assistant software and computer systems for driverless cars with intelligent driver assistance system; artificial intelligence and machine learning software in the field of autonomous driving and intelligent driver assistance; computer software for voice, speech, facial, image, motion and gesture recognition and for data collection, processing, conversion and output for use in automated and autonomous driving assistance systems.

Class 12: Autonomous cars and structural parts therefor; smart cars with intelligent driver assistance system and structural parts therefor.

Class 42: Platform as a service (PAAS) providing access to source codes and software in the fields of autonomous vehicles, smart vehicles, Internet of vehicles and intelligent transportation; platform as a service (PAAS) providing a platform for the development of source codes and software in the fields of autonomous vehicles, smart vehicles, Internet of vehicles and intelligent transportation; research, design, development, engineering, installation, updating, maintenance and consulting of open platforms, computer software systems, application programming interface (API) and operating systems in the field of autonomous driving, of artificial intelligence software and computer systems for driverless cars and of computer operating systems for driving, navigating, parking and monitoring driverless cars; development of computer software application solutions in the field of autonomous driving and driving assistance; none of the aforesaid in relation to bicycles and their parts and fittings.

2) European Union trade mark registration No 18 032 715 (earlier mark 2)

Class 9: Car navigation computers; electronic navigational and positioning apparatus and instruments; navigational instruments; computer applications for vehicle navigation apparatus; multimedia navigation systems for vehicles; downloadable electronic maps; navigation, guidance, tracking, targeting and map making devices; humanoid robots with artificial intelligence; downloadable image files; computer software applications, downloadable; electronic publications, downloadable; camcorders; computer programs (downloadable software); computer game software; network communication apparatus; global positioning system (GPS) apparatus; data processing apparatus; computer peripheral devices; portable media players; sound recording carriers; video telephones; intercommunication apparatus; cash registers.

Class 35: Retail services and wholesale services in relation to vehicles; retail services and wholesale services in relation to navigation devices; advertising services relating to the motor vehicle industry; on-line advertising on a computer network; systemization of information into computer databases; presentation of goods on communication media, for retail purposes; advertising; sales promotion for others; providing business information via a web site; business appraisals; business investigations; professional business consultancy; advisory services for business management; personnel recruitment; sponsorship search; business statistical information services.

Class 37: Vehicle servicing; vehicle service stations; vehicle repair and maintenance; vehicle repair consultancy; vehicle tyre fitting and repair; automobile washing; installation of vehicle security devices; installation of vehicle simulator units; vehicle battery charging; updating of computer networking and telecommunications hardware.

Class 38: Providing telecommunications connections to a global computer network; communications by computer terminals; computer aided transmission of messages and images; electronic bulletin board services (telecommunications services); providing internet chatrooms; providing online forums; transmission of electronic mail; message sending; television broadcasting; providing telecommunication channels for teleshopping services.

Class 41: Vehicle driving instruction; vehicle maintenance instruction; organization of competitions relating to motor vehicles; educational services; arranging and conducting of conferences; instruction services; providing on-line electronic publications, not downloadable; layout services, other than for advertising purposes; entertainment; production of shows; arranging and conducting of symposiums; health club services (health and fitness training); mobile library services.

Class 42: Design and development of vehicles, vehicle parts and components and navigation systems, none of the aforesaid in relation to bicycles and their parts and fittings; creation of GPS maps; mapping; vehicle roadworthiness testing; safety technology services relating to land vehicles; engineering services relating to robotics; computer software design; updating of computer software; consultancy in the design and development of computer hardware; creating and maintaining web sites for others; computer virus protection services; providing search engines for the internet; software as a service (SaaS); electronic data storage; providing information on computer technology and programming via a web site; cloud computing; computer software consultancy; computer technology consultancy; computer system design; computer security system monitoring services; research and development of new products for others.

3) European Union trade mark registration No 17 453 804 (earlier mark 3)

Class 9: Car navigation computers; electronic navigational and positioning apparatus and instruments; navigational instruments; computer applications for vehicle navigation apparatus; multimedia navigation systems for vehicles; downloadable electronic maps; navigation, guidance, tracking, targeting and map making devices; augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of locating vehicles, creating maps, navigating; humanoid robots with artificial intelligence; downloadable image files; computer software applications, downloadable; electronic publications, downloadable; camcorders; computer programs (downloadable software); computer game software; network communication apparatus; global positioning system (GPS) apparatus; data processing apparatus; computer peripheral devices; portable media players; sound recording carriers; video telephones; intercommunication apparatus; cash registers.

Class 38: Providing web site links to geographic information, map images, and trip routing.

Class 39: Vehicle rental services; vehicle location services; vehicle-driving services; rental of parking places and garages for vehicles; navigation services; navigational advisory services; rental of GPS equipment for navigational purposes; vehicle breakdown assistance (towing); providing customized driving directions; vehicle routing by computer on data networks; transportation services; transportation information; providing a web site on trip routing.

Class 42: Design and development of vehicles, vehicle parts and components and navigation systems, none of the aforesaid in relation to bicycles and their parts and fittings; creation of GPS maps; mapping; providing a web site on geographic information; providing a website on mapping; vehicle roadworthiness testing; safety technology services relating to land vehicles; engineering services relating to robotics; computer software design; updating of computer software; consultancy in the design and development of computer hardware; creating and maintaining web sites for others; computer virus protection services; providing search engines for the internet; software as a service (SaaS); electronic data storage; providing information on computer technology and programming via a web site; cloud computing; computer software consultancy; computer technology consultancy; computer system design; computer security system monitoring services; research and development of new products for others.

4) European Union trade mark registration No 17 589 623 (earlier mark 4)

Class 9: Computer software applications, downloadable; Electronic publications, downloadable; Camcorders; Computer programs; Computer game software; Network communication apparatus; Global positioning systems (GPS); Data processing apparatus; Computer peripheral devices; Portable media players; Sound recording carriers; Video telephones; Intercommunication apparatus; Cash registers; Car navigation computers; Electronic navigational and positioning apparatus and instruments; Navigational instruments; Computer applications for vehicle navigation apparatus; Multimedia navigation systems for vehicles; Downloadable electronic maps; Navigation, guidance, tracking, targeting and map making devices; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Humanoid robots with artificial intelligence; Downloadable image files.

Class 12: Bodies for vehicles; Camera drones; Cars; Civilian drones; Driverless cars; Electric vehicles; Electrically powered motor vehicles; Motors for land vehicles; Remotely controlled land vehicle; Tires for vehicle wheels; Anti-theft devices for vehicles.

Class 38: Communication services; Wireless broadcasting; Voice mail services; Electronic exchange of data stored in databases accessible via telecommunication networks; Providing on-line forums for transmission of messages among computer users; Providing access to databases; Providing online facilities for real-time interaction with other computer users; Electronic transmission of voices (Services for the -); Electronic transmission and retransmission of sounds, images, documents, messages and data; Transmission of sound, picture and data signals; Network transmission of sounds, images, signals and data; Transmission of data by means of telecommunications networks; Providing online forums; Provision of telecommunications links to computer databases and websites on the Internet.

Class 39: Transportation services; Transportation information; Vehicle rental services; Vehicle location services; Vehicle-driving services; Rental of parking places and garages for vehicles; Navigational advisory services; Rental of GPS equipment for navigational purposes; Vehicle breakdown assistance [towing]; Providing customized driving directions; Vehicle routing by computer on data networks; Navigation services.

Class 42: Computer software design; Updating of computer software; Consultancy in the design and development of computer hardware; Creating and maintaining web sites for others; Computer virus protection services; Providing search engines for the internet; Software as a service [SaaS]; Electronic data storage; Providing information on computer technology and programming via a web site; Cloud computing; Computer software consultancy; Computer technology consultancy; Computer system design; Computer security system monitoring services; Research and development of new products for others; Creation of GPS maps; Mapping; Vehicle roadworthiness testing; Safety technology services relating to land vehicles; Engineering services relating to robotics; Design and development of navigation systems; Design and development of route planning software; Design of vehicles and vehicle parts and components, none of the aforesaid in relation to bicycles.

The contested goods, after a limitation made by the applicant on 02/02/2021 (modification of Class 9 and deletion of Class 42), are the following:

Class 9: X-ray apparatus not for medical use; scientific research and laboratory instruments and apparatus; optical apparatus and instruments; objectives (lenses) (optics); optical fibers; optical lenses; optical lamps; microscopes.

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

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested optical apparatus and instruments are optical apparatus and instruments used, inter alia, for magnification of distant images and for magnifying very tiny images. The opponents’ data processing apparatus in Class 9 of earlier marks 2, 3 and 4 are devices used for acquisition, storage, manipulation and transmission of data. Optical drives need a data processor/computer to retrieve and/or store data on their discs. Therefore, the contested goods are similar to the opponents’ data processing apparatus in Class 9 of earlier marks 2, 3 and 4, because they coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested objectives (lenses) (optics); optical lenses are optical components designed to focus or diverge light. The opponents’ camcorders in Class 9 of earlier marks 2, 3 and 4 are portable video cameras which record both pictures and sound. The lens or combination of lenses form the image in such a camera. Therefore, the contested goods are similar to the opponent’s goods. They at least coincide in their producer/provider, share the same distribution channels and target the same relevant public.

The contested optical fibers refer to the medium and the technology associated with the transmission of information as light pulses along a glass or plastic strand or fiber. Optical fibers are a medium for telecommunication and networking with significant advantages for long-distance communications. Therefore, these goods are similar to a low degree to the opponent’s providing telecommunications connections to a global computer network in Class 38 of earlier mark 2. They have the same purpose, share the same distribution channels and target the same relevant public. Furthermore, they are complementary because the contested goods are used in close connection with the opponent’s services since they are, or can be, absolutely necessary for performing these services and, from the viewpoint of the consumer, they are indispensable for the provision of the service.

The contested x-ray apparatus not for medical use; scientific research and laboratory instruments and apparatus; optical lamps; microscopes are image capturing and developing devices, instruments and apparatus used for a wide range of scientific research and laboratory purposes, which might include measuring the effects of chemical, biochemical, biological and biotechnological products used in industry and science, signalling apparatus (optical lamps) and scientific instruments which make very small objects look bigger so that more detail can be seen (microscopes) respectively. These goods are dissimilar to all the goods and services covered by the opponents’ earlier marks because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

As seen above, some of the contested goods have been found similar (to varying degrees) to some of the goods and services covered by earlier marks 2, 3 and 4 and the Opposition Division finds it appropriate to first examine the opposition in relation to the opponents’ earlier mark 2, because it is the most relevant earlier mark vis-à-vis the contested sign.

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 and services found to be 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 and services, the frequency of purchase and their price.

c) The signs

 

Apollo Pilot	ApolloVue
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 common verbal component ‘Apollo’ in the signs will be understood by a significant part of the relevant public as a reference to the Greek god’s name. In addition, this element also refers to the US spacecraft Apollo 11, which made the first moon landing in 1969. Bearing in mind the nature of the goods and services in question, it is distinctive.

The earlier mark’s verbal component ‘Pilot’, which in English means ‘a person who is trained to fly an aircraft’, ‘an experimental undertaking designed to assess the viability of a full-scale project or activity’ or a synonym for ‘navigate’, also exists as such (e.g. in Polish, Slovak and Czech), or has close equivalents (e.g. piloto in Spanish and Portuguese, pilote in French, pilota in Italian) in many languages of the European Union and therefore, it will be understood by a significant part of the relevant public. This element is distinctive, as it is not descriptive or otherwise weak for the goods and services in question.

The element ‘Vue’ of the contested sign, which is separated by its initial capital letter from the first element ‘Apollo’, will be understood by the French-speaking part of the relevant public as ‘view’, ‘vision’ or ‘eyesight’. Therefore, it is considered weak in relation to some of the relevant goods, for example, optical apparatus and instruments which, inter alia, processes light waves to enhance an image for viewing. For the rest of the relevant public or for the goods which have no connection to vision, this term is meaningless and thus its distinctiveness is normal.

In the present case, in order to avoid multiple scenarios of the conceptual comparison of the signs, the Opposition Division will assess the signs from the perspective of the English-speaking part of the public, which includes anglophone countries, as well as consumers with sufficient knowledge of English as a foreign language, for which the element ‘Vue’ of the contested sign is meaningless and, consequently, distinctive in relation to all the relevant goods.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Apollo’ which forms the first six letters and first three syllables of both signs. They differ in the earlier mark’s additional verbal element ‘Pilot’ and the contested sign’s verbal component ‘Vue’ and their sounds.

It should 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. This means that the identical beginnings ‘Apollo’ in the signs are particularly relevant.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning in their clearly distinctive common verbal element ‘Apollo’. Therefore, and even though the earlier mark contains an additional concept of a ‘Pilot’ and the contested sign’s verbal component ‘Vue’ is meaningless which slightly separates the signs, they 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.

 

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 and services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

 

The contested goods are partly similar (to varying degrees) and partly dissimilar to the opponents’ goods and services. They target the general public and business customers with specific professional knowledge or expertise, whose degree of attention varies from average to high. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods and services at issue.

The signs are visually and aurally similar to an above average degree and conceptually similar to an average degree.

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 and services covered are from the same undertaking or economically linked undertakings.

Overall, the differences between the signs lying in their second verbal components (the verbal element ‘Pilot’ in the earlier mark and the verbal component ‘Vue’ in the contested sign) are not considered sufficient to counteract their visual, aural and conceptual similarities, which derive from their common distinctive element ‘Apollo’ placed at the beginning of the signs to which the consumers pay attention the most. The signs’ differing verbal elements are placed in the secondary position within the signs where they catch the attention of consumers less. The Opposition Division considers, therefore, that the addition of these differing elements is insufficient to allow consumers to safely distinguish between the signs when they encounter them in the market on similar (to varying degrees) goods and services. Rather, the addition of these elements next to ‘Apollo’ makes it probable that the public under analysis will perceive the contested mark as a sub-brand or variation of the earlier mark, configured in a different way to designate a certain kind of the opponent’s products. Indeed, it is conceivable that this public will perceive the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same or economically linked undertaking.

In its observations, the applicant argued that the verbal element ‘Apollo’ has a low distinctive character, due to the existence of several brand names consisting of or containing this element and coexisting in the market. In support of its argument, the applicant referred to a list of companies using the signs consisting of or containing the verbal element ‘Apollo’ in the field of computers and software that are registered as European Union trade mark registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all these trade marks have been effectively used. Furthermore, the applicant submitted few examples of use of the signs consisting of or containing the verbal element ‘Apollo’. However, the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element in question. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the relevant 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 partly well founded on the basis of European Union trade mark registration No 18 032 715. It follows that the contested trade mark must be rejected for the goods found to be similar (to varying degrees) to the goods and services of earlier mark 2.

As regards the contested goods that have been found similar to a low degree to the opponent’s services, it is recalled that 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). In the present case, the overall visual, aural and conceptual similarity between the signs is sufficient to counteract the remote similarity between some of the goods and services, and a likelihood of confusion exists also in relation to them.

The rest of the contested goods are dissimilar to the goods and services of earlier mark 2 and of the remaining three earlier marks as established above. 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

 

 

Catherine MEDINA

Agnieszka PRZYGODA

Christophe DU JARDIN

 

 

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.