OPPOSITION Nо B 3 112 114

 

Wiko, 1 rue du Capitaine Dessemond, 13007 Marseille, France (opponent), represented by Gpi Marques, 39, rue Fessart, 92100 Boulogne-Billancourt, France (professional representative) 

 

a g a i n s t

 

Wisko sp. z o. o., Towarowa 23a, 43 100 Tychy, Poland (applicant), represented by Bartłomiej Henryk Tomaszewski, ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warszawa, Poland (professional representative).

On 23/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 112 114 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 131 921 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 20/02/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 131 921 ‘WISKO’. The opposition is based on, inter alia,  European Union registration No 11 081 395, (figurative mark). The opponent invoked  Article 8(1)(b) and Article 8(4) and (5) EUTMR.

  

PROOF OF USE

  

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

  

 

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

 

In the present case, the date of filing of the contested trade mark is 03/10/2019.

 

Earlier trade mark namely, European Union trade mark registration No 11 081 395 was registered on 18/02/2019. Therefore, the request for proof of use is inadmissible.

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 European Union trade mark registration No 11 081 395.

 

a) The goods and services

 

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer software;  Particle accelerators;  Electric couplings; Electric batteries; Battery chargers; Plates for batteries; Vehicle batteries; Acidimeters for batteries; Cleaning apparatus for sound recording discs; Actinometers; Adding machines;   Electronic diaries; Headphones; Disks, magnetic; Optical discs; Cd roms; Reflecting discs for wear, for the prevention of traffic accidents; Floppy disks;   Ticket dispensers;   Dynamometers; Fire escapes; Telephone receivers; Projection screens; Fluorescent screens; Screens [photography];  Radiology screens for industrial purposes; Video screens; Racks (Photographic -); Electrolysers; Electric batteries; Transmitters of electronic signals; Telephone wires; Compact disc players; DVD players; Readers [data processing equipment]; Optical character readers;  Sounding lines; Limiters [electricity]; Logs [measuring instruments]; Games software; Computer programmes [programs], recorded;   Sunglasses; Goggles for sports; Sighting telescopes for firearms; Instruments for glasses; Surveyors' levels; Spectacles [optics]; Word processors; Video tape players; Wind socks for indicating wind direction; Junction sleeves for electric cables; Crash test dummies; Mannequins (Resuscitation -) [teaching apparatus];   Divers' masks;  Mathematical instruments; Disk drives for computers; Megaphones; Computer memory devices; Mercury levels; Speed measuring apparatus [photography]; Electric measuring devices; Precision measuring apparatus;  Meteorological instruments; Rules [measuring instruments]; Metronomes; Microphones; Microprocessors; Microscopes; Microtomes; Time switches, automatic; Egg-candlers; Mirrors for inspecting work; Mirrors [optics]; Furniture especially made for laboratories; Modems; Monitors [computer hardware]; Monitors [computer programs]; Computers; Laptop computers; Portable computers; Oscillographs; Oxygen transvasing apparatus; Ozonisers [ozonators]; Micrometer gauges; Signalling panels, luminous or mechanical; Surge arresters; Asbestos screens for firemen; Parking meters; Spark-guards; Horns for loudspeakers; Apparatus for measuring the thickness of skins; Peripherals adapted for use with computers; Radios; Audiovisual receivers; Mouse [computer peripheral];  Spherometers;   Stereoscopic apparatus; Sulfitometers; Magnetic data carriers; Optical data carriers; Railway traffic safety appliances; Monitoring apparatus, electric; Step-up transformers; Electronic display boards; Electricity control panels; Switchboards; Distribution boards [electricity]; Plotters; Tachometers; Walkie-talkies; Ear plugs for divers; Mouse mats; Screw-tapping gauges; Taximeters; Facsimile machines; Telegraphs [apparatus]; Remote control apparatus; Telemeters; Mobile phones; Telephone apparatus; Telephone transmitters; Teleprompters; Circuit breakers; Telescopes; Teletypewriters; Television apparatus.

 

Class 35: Business management; Business administration; Office functions; Commercial administration of the licensing of the goods and services of others; Bill-posting; Import-export agencies; Commercial information agencies; Publicity agencies; Business management assistance; Cost price analysis; Procurement services for others [purchasing goods and services for other businesses]; Employment agencies; Commercial or industrial management assistance; Price comparison services; Accounting; Business management and organization consultancy; Business management consultancy; Personnel management consultancy; Business consultancy (Professional -); Publicity columns preparation; Typing; Tax preparation; Shop window dressing; Fashion shows for promotional purposes (Organization of -); Management (Advisory services for business -); Business management of performing artists; Relocation services for businesses; Business appraisals; Compilation of statistics; Marketing studies; Efficiency experts; Invoicing;   Business management of hotels; Business management of sports people; File management (Computerized -); Business information; Commercial information and advice for consumers [consumer advice shop]; Business investigations; Arranging newspaper subscriptions for others; Rental of advertising space; Rental of vending machines; Office machines and equipment rental; Publicity material rental; Rental of photocopying machines; Rental of advertising time on communication media; Modelling for advertising or sales promotion; Marketing; Updating of advertising material; Layout services for advertising purposes; Business organization consultancy; Payroll preparation; Photocopying services; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Sales promotion for others; Publication of publicity texts;   Radio advertising; Television advertising; Marketing research; Sponsorship search; Data search in computer files for others; Business research; Personnel recruitment; Compilation of information into computer databases;  Public relations; Accounts (Drawing up of statements of -); Business inquiries; Telephone answering for unavailable subscribers; Document reproduction; News clipping services; Secretarial services; Psychological testing for the selection of personnel;  Shorthand; Systemization of information into computer databases; Arranging subscriptions to telecommunication services for others; Administrative processing of purchase orders; Transcription; Auctioneering; Auditing.

The contested goods and services are the following:

 

Class 9: Digital and mobile telephones; Headsets for mobile telephones; Junctions [electrical]; Power supplies for telephones; Cases for cellular phones; Carrying cases for cellular phones; Telephone wires; Electronic diaries; Sound reproduction apparatus; Telephone receivers; Computer hardware and equipment; Computers; Lap-top computers; Modems; Routers; Computer card adapter; Transmitters and receivers of electronic signals; Audio video receivers; Radio and television apparatus; Data carrier; Disks, magnetic; Computer memory devices; Memory sticks; Headphones; Peripherals adapted for use with computers; hard disc drives; Microprocessors; Monitors; Mouse (data processing equipment); Data media (magnetic and optical); DVDs, compact discs (CDs); Compact disc players (CDP); DVD players; File players; Memory cards; Mouse pads; Spectacles [optics]; Sunglasses; Sports glasses; Spectacle frames; Spectacle cases; Eyeglass chains; Spectacle cords.

Class 35: Business and service management consultancy; Professional consultancy in the field of business and services; Wholesaling and retailing of accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment; Wholesaling and retailing via the internet of accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment; Efficiency experts; Commercial information relating to accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment; Sales promotion; Online advertising on a computer network; Publication and dissemination of publicity texts; Business inquiries; Computerized file management; Compilation and systemisation of information into computer databases; Systemisation of information into computer databases; Computerized file management; Document reproduction; Economic forecasting; Opinion polling.

Class 37: Repair, maintenance, installation and configuration of electronic equipment, computer hardware and telecommunications equipment. 

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.

Contested goods in Class 9

Telephone wires; Electronic diaries; Sound reproduction apparatus; Telephone receivers; Computers; Lap-top computers; Modems; Audio video receivers; Radio and television apparatus; Disks, magnetic; Computer memory devices; Headphones; Peripherals adapted for use with computers; Microprocessors; Monitors; Mouse (data processing equipment); Data media (magnetic and optical); DVDs, compact discs (CDs); Compact disc players (CDP); DVD players; Spectacles [optics] are identically contained in both lists of goods (including synonyms).

The contested digital and mobile telephones are included in the broad category of the opponent’s telephone apparatus. Therefore, they are identical.

The contested junctions [electrical] are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested data carrier includes, as a broader category, the opponent’s Magnetic data carriers. 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 memory sticks; Memory cards are included in the broad category of the opponent’s computer memory devices. Therefore, they are identical.

The contested hard disc drives are included in the broad category of the opponent’s disk drives for computers. Therefore, they are identical.

The contested sunglasses; sports glasses are included in the broad category of the opponent’s spectacles [optics]. Therefore, they are identical.

The contested cases for cellular phones; carrying cases for cellular phones are similar to the opponent’s mobile phones as they target the same public through the same distribution channels. Moreover, their commercial origin overlaps. Furthermore, they are complementary.

The contested headsets for mobile telephones; power supplies for telephones are similar to the opponent’s telephone apparatus as these goods are complementary. They target the same public through the same distribution channels.

The contested computer hardware and equipment; Routers; Computer card adapter; File players are at least similar if not identical to the opponent’s data processing equipment and computers. These goods at least coincide in the relevant public, distribution channels and producers.

The contested transmitters and receivers of electronic signals are at least similar if not identical to the opponent’s transmitters of electronic signals. These goods are sold in the same outlets and target the same public. They also originate from the same undertakings.

The contested mouse pads are similar to the opponent’s mouse [computer peripheral] as these goods are complementary. A mouse pad is solely used with a computer mouse and without it is devoid of any purpose. They target the same public through the same distribution channels. Moreover, their producers usually overlap.

The contested spectacle frames; spectacle cases; eyeglass chains; spectacle cords are at least similar to a low degree to the opponent’s spectacles [optics]. These goods have at least the same distribution channels and target the same public. Moreover, they are complementary. Some of them might coincide in the same producer.

Contested services in Class 35

Efficiency experts; economic forecasting; business inquiries; document reproduction are identically contained in both lists of services (including synonyms).

Business and service management consultancy; Professional consultancy in the field of business and services; Opinion polling are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested sales promotion; Online advertising on a computer network; Publication and dissemination of publicity texts are included in the broad category of the opponent’s marketing. Therefore, they are identical.

Computerized file management; Compilation and systemisation of information into computer databases; Systemisation of information into computer databases; Computerized file management are included in the broad category of the opponent’s office functions. Therefore, they are identical.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested Wholesaling and retailing of accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment; Wholesaling and retailing via the internet of accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images, data processing equipment and computers; microprocessors; Telephone apparatus.

Commercial information relating to accessories, equipment and fittings for electronic equipment, computer hardware and telecommunications equipment are included in the broad category of the opponent’s commercial information and advice for consumers [consumer advice shop]. Therefore, they are identical.

Contested services in Class 37

The contested repair, maintenance, installation and configuration of electronic equipment, computer hardware and telecommunications equipment are similar to the opponent’s data processing equipment and computers; telephone apparatus in Class 9. Even if these goods and services have a different nature, they still coincide in relevant public, distribution channels and producers. Moreover, they are complementary.

 

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 identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. 

 

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 and services purchased.

  

c) The signs

 

	WISKO
Earlier trade mark	Contested sign

 

 

The relevant territory is  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 elements ‘WIKO’ of the earlier mark and ‘WISKO’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

  

Visually and aurally, the signs coincide in the letters/sounds ‘WI*KO’. However, they differ in additional third letter/sound ‘S’ of the contested sign. From the visual perspective, the signs also differ in the stylization of the earlier sign. The marks have similar rhythm and intonation as both of them are composed of two syllables: ‘WI/KO’ and ‘WIS/KO’.

  

Therefore, the signs are similar to an above-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.

 

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 and services 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

 

 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 and services are partly identical and partly similar to varying degrees. They target the public at large and professionals, whose level of attention varies from average to high. The earlier mark enjoys a normal level of inherent distinctiveness.

The signs are visually and aurally similar to the extent that four letters/sounds of the contested sign coincide with all letters/sounds of the earlier mark. The signs differ merely in one additional letter of the contested sign which is placed in the middle of this sign. Moreover, there is no conceptual difference that could help to differentiate between the signs. The differences between the signs are clearly not sufficient to outweigh the visual and aural similarities between them.

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). Consequently, the relevant public, when encountering the signs in relation to identical or similar goods and services, including those similar only to a low degree, is likely to think that they come from the same undertaking or from economically linked undertakings.

 

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 European Union trade mark registration No 11 081 395. It follows that the contested trade mark must be rejected for all the contested goods and services

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 right European Union trade mark registration No 11 081 395 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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(4) and (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

 

 

Anna BAKALARZ

Katarzyna ZANIECKA

Monika CISZEWSKA

 

 

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.