OPPOSITION No B 3 098 209

Innovate Energy Solutions Ltd., 229 Shoreditch High Street, E1 6PJ, London, United Kingdom (opponent), represented by Schmitspartners - Schmits Rechtsanwälte Partnerschaft mbB, Maximilianstr. 2, 80539, München, Germany (professional representative)

a g a i n s t

Chargeup, S.R.L., Avenida Gustavo Mejía Ricart, Torre Piantini, Suite 1401, Piso 14, Santo Domingo, Dominican Republic (applicant), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001, Madrid, Spain (professional representative).

On 18/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 209 is upheld for all the contested goods.

2. European Union trade mark application No 18 123 917 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 18 123 917 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 18 081 388 for the word mark ‘ChargedUp’. The opponent invoked Article 8(1)(a) and (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. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 18 081 388.

a) The goods

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

Class 9: Battery chargers for use with telephones; battery chargers for mobile phones; battery charging equipment.

The contested goods are the following:

Class 9: Portable chargers for mobile phones; chargers for portable electronic devices.

The contested portable chargers for mobile phones and chargers for portable electronic devices overlap with the opponent´s battery charging equipment. 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 whose degree of attention will be average

c) The signs

ChargedUp
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.

In the present case, the Opposition Division takes the approach followed by the Boards of Appeal in case R-858/2019-2, Onecharge/Incharge of 23/01/2020 where the assessment was done under the perspective of the Bulgarian, Latvian, Estonian and Lithuanian part of the public for which ‘Charge’ was neither considered to be a basic English word nor having a similar or equivalent word in said languages. For this part of the public, it cannot be presumed that the relevant consumer will perceive it in a specific way.

According to this, the elements ‘ChargedUp’ and ‘CHARGEUP’ will be perceived as fanciful words with an average degree of distinctive character.

Notwithstanding the fact that the contested sign is represented in a combination of colours, it is likely that the relevant consumers will read it as a whole, as an invented word, being distinctive to an average degree. The stylisation and colouring of the sign will be regarded as being primarily decorative in nature and so play a secondary role in the perception of them. As for the figurative device contained at the beginning of the contested sign, irrespective of the way it could be perceived by the relevant consumers (i.e. stylised depiction of number ‘8’, a cable or even an abstract device with no concrete meaning), it is worth remembering that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

As for the earlier mark, it id to be noted that is a word mark. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if it is written in lower-case letters or in upper-case letters. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration. The perception of the relevant public, who will not fail to notice the use of irregular capitalisation, also cannot be disregarded. Therefore, the fact that the capital letter ‘U’ used in the middle of the earlier mark splits the earlier mark in two words ‘Charged Up’ is not irrelevant since the last letters ‘UP’ of the contested sign are also visually separated by the use of the colour yellow.

Neither element of the contested mark is clearly dominant (i.e. visually outstanding).

Visually, the signs coincide the string of letters ‘CHARGE*UP’ present identically and in the same order on both signs. The signs only differ in letter ‘*d*’ placed in the middle of the earlier mark. Since the letter combination at the beginning and at the ending of the signs coincides and the differences are in the middle, they will not be particularly noticeable. The signs also differ in the stylisation (with a decorative nature) and the figurative device of the contested sign (with less importance, as already explained).

For all the above, the signs are visually similar to an above average degree.

Aurally, the signs coincide the string of letters ‘CHARGE*UP’ present identically and in the same order in both signs. The signs only differ in the letter ‘*d*’ placed in the middle of the earlier mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although a part of the public in the relevant territory could perceive a certain meaning in the figurative device of the contested sign as explained above, the other sign has no meaning in that territory and, therefore, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public for which the figurative device is meaningless, 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 average.

e) Global assessment, other arguments and conclusion

The goods have been found to be identical and they target the general public that will display an average degree of attention when purchasing them.

The signs are visually similar to an above average degree and aurally similar to a high degree while the conceptual aspect either remains neutral or the signs are not conceptually similar. The earlier mark enjoys an average degree of distinctive character.

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).

In view of the foregoing and taking into account all the relevant circumstances of the case, it is considered that the additional differentiating elements, namely the additional letter in the middle of the earlier mark as well as the figurative device and the graphic representation of the contested sign are not sufficient to counteract the obvious visual and aural similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian, Latvian, Estonian and/or Lithuanian-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 081 388.It follows that the contested trade mark must be rejected for all the contested goods.

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 ground of the opposition, namely Article 8(1)(a) EUTMR.

As the earlier European Union trade mark registration No 18 081 388 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).

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

Helen Louise MOSBACK

Claudia SCHLIE

Saida CRABBE

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.