OPPOSITION Nо B 3 112 593

 

Av Tech Corporation, 14F., No. 104, Sec.1, Hsin Tai 5th Rd., Hsi-Chi City, Taipei Hsien, Taiwan, Province of China (opponent), represented by Landmark B.V., Nijverheidsweg-Noord 86c, 3812 PN Amersfoort, Netherlands (professional representative) 

 

a g a i n s t

 

Global Smart Distribution AS, Ernesta Birznieka-upīša Iela 20a - 4, 1050 Rīga, Latvia (applicant)

On 09/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 593 is partially upheld, namely for the following contested goods:

 

Class 9: Computers and computer hardware; work stations [computers]; all-in-one computers; portable computers; wearable computers; personal computers; input devices for computers; computer hardware; computer peripheral devices; mouse [computer peripheral]; pens with conductive point for touch screen devices; monitors [computer hardware]; uninterruptible power supply apparatus [battery]; battery boxes; battery adapters.

2.

European Union trade mark application No 18 151 807 is rejected for all the above goods. It may proceed for the remaining goods, namely: Class 9: Bags adapted for laptops; carrying cases for mobile computers; mouse pads; wrist rests for use with computers; laptop covers.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 151 807 for the figurative mark . The opposition is based on European Union trade mark registration No 4 777 471 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

 

PRELIMINARY REMARK

In its observations submitted on 23/06/2020 the applicant indicates that, in view of the opposition filed, it is prepared to reduce the scope of the contested application to computers and computer peripherals in Class 9. However, a restriction of the list of goods and services must be unconditional. Furthermore, it was not requested by way of a separate document as required by Article 8(8) EUTMDR and is thus in any event inadmissible.

 

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.

 

Within its observations submitted on 30/09/2020, the applicant refers to Article 47(2) EUTMR and claims that the opposition should be rejected in the absence of proof of use.

 

However, this cannot be considered to constitute an explicit request for proof of use by way of a separate document as required by Article 10(1) EUTMDR and must therefore be rejected as 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.

 

a) The goods

 

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

 

Class 9: Security systems and apparatus, namely video cameras, video monitors, video recorders and players, digital video recorders and players, audio recorders and players, wireless video transmitters and receivers, video camera lenses, video switchers, and video camera controllers; closed circuit television monitors; voice display monitors; video display monitors; video cameras for prevention of burglary; fire alarms; electronic burglar-proof locks; uninterrupted power supplies; magnetic card locks; burglar alarms; fire accident informing system comprising of the remote component which notifies the fire department of fire; video monitor controllers; computer hardware and software for electronic security systems for electronic article surveillance, access control, video surveillance and asset tracking and management.

The contested goods are the following:

 

Class 9: Bags adapted for laptops; Computers and computer hardware; Work stations [computers]; All-in-one computers; Portable computers; Wearable computers; Personal computers; Input devices for computers; Computer hardware; Carrying cases for mobile computers; Mouse pads; Computer peripheral devices; Mouse [computer peripheral]; Pens with conductive point for touch screen devices; Monitors [computer hardware]; Wrist rests for use with computers; Uninterruptible power supply apparatus [battery]; Battery boxes; Battery adapters; Laptop covers.

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

  

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

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 applicant indicates in its observations that it has revised the respective business activities of the parties by reviewing the opponent’s publicly available information and website vis-à-vis the goods provided by the applicant and claims that they do not overlap and are fundamentally different. However, these arguments are irrelevant because the task of the Opposition Division is to compare the goods as registered and as applied for and not as actually used, unless proof of use of the earlier mark has been submitted for particular goods, which is not the case here since the applicant did not submit an admissible request for proof of use of the earlier mark on which the opposition is based for the reasons set out above. Consequently, the comparison of the goods for the present proceedings will be made on the basis of the goods of the earlier mark in Class 9 as registered and the relevant goods of the contested sign as applied for.

 

Contested goods in Class 9

The contested computer hardware (listed twice) include, as a broader category, the opponent's computer hardware for electronic security systems for electronic article surveillance, access control, video surveillance and asset tracking and management. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested monitors [computer hardware]; computer peripheral devices are included in, or overlap with, the opponent's video display monitors to the extent that the opponent’s goods also include computer monitors. Therefore, they are identical.

The contested uninterruptible power supply apparatus [battery] are included in, or identically covered by, the broad category of the opponent's uninterrupted power supplies. Therefore, they are identical.

The contested battery boxes overlap with the opponent's uninterrupted power supplies to the extent that they both include battery boxes for uninterrupted power supply. Therefore, they are identical.

The contested battery adapters are similar to the opponent's uninterrupted power supplies since they can target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The contested mouse [computer peripheral]; pens with conductive point for touch screen devices; input devices for computers; computers; work stations [computers]; all-in-one computers; portable computers; wearable computers; personal computers are similar to the opponent's video display monitors. These contested goods effectively consist of different types of computers as well as different types of computer hardware and, as outlined above, the opponent’s goods include computer monitors which are also computer hardware. Therefore, the goods under comparison can target the same relevant public, share the same distribution channels and be produced by the same undertakings. Furthermore, some of them are also complementary since for example computers and touch screen pens are, or can be, essential for the use of video display monitors or vice versa.

However, the contested bags adapted for laptops; carrying cases for mobile computers; mouse pads; wrist rests for use with computers; laptop covers are not similar to any of the goods covered by the earlier mark. For the sake of clarity, the Opposition Division notes that the opponent’s computer hardware for electronic security systems for electronic article surveillance, access control, video surveillance and asset tracking and management cannot be considered to include computers or laptop computers but must rather be considered to consist of computer networking equipment such as base stations for secure connection to the internet and for providing long range connectivity for security cameras, etc. Therefore, even if the opponent’s goods include some specific computer hardware articles, including also computer monitors, those goods are not complementary to the contested laptop bags and covers or mouse pads and wrist rests for computers. Furthermore, they are not in competition with each other and are not usually produced by the same undertakings. Furthermore, they do not have the same or a similar nature, purpose or methods of use and even if they can target the same relevant public and may conceivably share the same distribution channels, this is insufficient in itself for a finding of any similarity between them within the meaning of Article 8(1)(b) EUTMR. Therefore, these remaining contested goods must be considered to be dissimilar to all the opponent’s goods in Class 9.

 

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 or similar 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 higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

 

c) The signs

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).

Both signs are figurative marks consisting of the verbal element 'AVTECH' depicted in slightly stylised standard upper case letters in black and blue respectively. 

The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

Although the verbal element 'AVTECH' is composed of one verbal element in both signs, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In this respect, the ending 'TECH' is a conventional abbreviation of, inter alia, the English word 'technology' and commonly used in trade in the European Union in expressions such as 'high-tech' and 'biotech'. At least a significant part of the public throughout the relevant territory will associate the ending 'TECH' with the meaning of 'technology', either because they are familiar with English or these commonly used expressions, the same abbreviation is used in the official language in question or because the equivalent word for 'technology' is otherwise commonly abbreviated either as 'tec' or 'tek' which is also very close to the ending 'TECH' (see also to this effect, inter alia, 09/04/2020, R 1494/2019-4, MONTIBELLO T TREAT NATURTECH / naturaltech et al., § 31; 11/01/2019, R 57/2018-1, FENNOTECH / FINOTECH (fig.), § 34).

Technology refers to 'the application of practical sciences to industry or commerce' (information extracted from Collins English Dictionary at www.collinsdictionary.com/dictionary/english/technology on 04/03/2021) and the ending 'TECH' in both signs will therefore be perceived as a weak element merely alluding to the application of practical sciences in the development of the goods concerned.

However, the initial element 'AV' within the respective signs has no direct or clear meaning in relation to the goods concerned and is, therefore, distinctive to a normal degree.

 

Visually, the signs coincide in the verbal element ‘AVTECH’ and only differ in their respective stylisations and colours (black as opposed to blue) which are however not of such a nature as to detract the consumers’ attention away from the verbal element ‘AVTECH’ itself.

Therefore, the signs are visually highly similar.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, since the signs coincide in the same verbal element, ‛AVTECH’, they are aurally identical.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although neither of the signs has a meaning as a whole, they are conceptually similar to the extent that they will both be associated with the concept of 'technology', at least by a significant part of the relevant public, for the reasons set out above.

 

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 clear or direct 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

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 the present case, the goods concerned are partially identical or similar and partially dissimilar. The degree of attention of the relevant public may vary from average to higher than average.

The signs consist of the same verbal element 'AVTECH', albeit depicted in slightly different stylisations, standard typefaces and colours. On this basis, the signs have been found to be visually highly similar, aurally identical and conceptually similar to the extent that the element 'TECH' will be associated with the weak concept of 'technology', at least by a significant part of the relevant public. Furthermore, the distinctiveness of the earlier mark as a whole is normal.

Considering all the above, irrespective of the degree of attention paid by the relevant public when purchasing the goods concerned and even if they were to recall that there are some stylistic differences between the signs, in view of the significant similarities between them on account of their coincidence in the same verbal element, the relevant consumers are likely to believe that the identical or similar goods offered under the respective signs originated from the same or economically linked undertakings.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 777 471.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

 

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical, nor are the signs.

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

 

 

Cynthia DEN DEKKER

Sam GYLLING

Biruté SATAITE-GONZALEZ

 

 

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.